Dow Chemical Co. v. Nova Chemicals Corp. (Canada)
458 F. App'x 910
Fed. Cir.2012Background
- Dow sued Nova for infringement of U.S. patents 5,847,053 and 6,111,023; Nova challenged standing, indefiniteness, and infringement; district court held Dow had standing, patents not indefinite, jury found infringement and awarded damages; Nova appealed; this court affirmed standing and validity and infringement findings; core issue is whether Dow transferred Patent Rights to Dow Global Technologies, Inc. (DGTI) under Dow’s Contribution Agreement; Schedule A lists patents transferred, Schedule D lists excluded patents; extrinsic evidence debated but contract terms controlled; district court found no transfer of the patents-in-suit to DGTI and Dow had standing; the panel affirmed.
- Dow and DGTI engaged in a tax-driven scheme where DGTI owned Patent Rights and licensed back to Dow; Section 2.01 purports transfer of all Patent Rights to DGTI; Section 1.07 defines Patent Rights and exclusions, including “loss of rights”; Schedule A was intended to list transferred patents but its exact contents were contentious; contemporaneous communications showed concern about standing in pending litigation and led to the “loss of rights” clause; evidence showed the patents-in-suit were not listed in Schedule A at the relevant time, supporting Dow’s lack of standing absent later actions such as a quitclaim.
- The district court treated Schedule A as controlling for transfer; the majority affirms standing and thus sustains the infringement verdict; the dissent argues the 2002 agreement did transfer the patents-in-suit to DGTI and Dow lacked standing at filing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing to sue established | Dow | Nova | Dow had standing; patents not transferred to DGTI under the Agreement. |
| Indefiniteness of SHC-based claims | Dow | Nova | Claims not indefinite; SHC defined and measurable by ordinary skilled person. |
| Infringement supported by substantial evidence | Dow | Nova | Yes, jury verdict supported by substantial evidence. |
Key Cases Cited
- SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed.Cir.2010) (presumption of validity from PTO assignment recording; burden to rebut)
- Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574 (Fed.Cir.1991) (standing and assignment considerations in patent transfers)
- Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371 (Fed.Cir.2001) (indefiniteness requires discernible meaning; some experimentation not fatal)
- Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed.Cir.2010) (claims not indefinite if enablement; some experimentation allowed)
- DCV Holdings, Inc. v. ConAgra, Inc., 889 A.2d 954 (Del.2005) (specific vs. general language; contract interpretation)