The Dow Chemical Company v. Nova Chemicals Corporation
803 F.3d 620
| Fed. Cir. | 2015Background
- Dow sued NOVA for infringement of two patents (the ’053 and ’023 patents) covering ethylene polymer compositions; a jury found infringement and no invalidity for the period through Dec. 31, 2009.
- The Federal Circuit affirmed the jury verdict on earlier appeal applying pre-Nautilus indefiniteness law; the Supreme Court denied certiorari.
- The district court later held a bench trial and awarded Dow supplemental damages (Jan. 1, 2010–Oct. 15, 2011); NOVA appealed.
- While the appeal was pending, the Supreme Court decided Nautilus, which announced a new, stricter indefiniteness standard requiring claims to inform skilled artisans of scope with "reasonable certainty."
- The Federal Circuit considered (1) whether Nautilus’s change in law allows revisiting indefiniteness despite the prior appellate ruling and (2) whether the claims are indefinite under Nautilus; it concluded both prerequisites for reopening were met.
- The court held the claims indefinite under Nautilus because the claim term "slope of strain hardening coefficient ≥ 1.3" (SHC) lacked guidance: multiple, materially different measurement methods existed and the patents/prosecution history did not tell a skilled artisan which method to use; thus it reversed the supplemental damages award and dismissed the cross-appeal as moot.
Issues
| Issue | Plaintiff's Argument (Dow) | Defendant's Argument (NOVA) | Held |
|---|---|---|---|
| Whether Nautilus’s change in indefiniteness law permits reopening relitigation of indefiniteness for the supplemental damages period | Prior Federal Circuit decision rejecting indefiniteness is binding; law-of-the-case/issue preclusion bars reopening | Nautilus changed controlling law while proceedings pending, so exception to law-of-the-case/issue preclusion applies | Exception applies: Nautilus materially changed the law, earlier decision applied old standard, and new law compels reconsideration; relitigation permitted |
| Whether the claim term "slope of strain hardening coefficient ≥ 1.3" is definite under the Nautilus standard | The term is ascertainable: a skilled artisan (and Dow’s expert) can measure the slope; multiple methods exist but one can be selected | Multiple known measurement methods (including expert’s ad hoc method) yield different results; patent and prosecution history give no guidance which to use | Indefinite under Nautilus: intrinsic evidence does not inform skilled artisans with reasonable certainty which measurement approach defines claim scope; claims invalid |
| Effect of indefiniteness on supplemental damages and enhanced damages claim | Supplemental damages should stand; enhanced damages claimed for supplemental period | Invalidity of claims negates infringement basis for supplemental damages | Supplemental damages award reversed; enhanced-damages cross-appeal dismissed as moot |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (establishes the "reasonable certainty" indefiniteness standard)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (addresses review standard for subsidiary factual findings in claim construction; applied in indefiniteness context)
- Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001) (prior Federal Circuit "amenable to construction/insolubly ambiguous" test rejected by Nautilus)
- Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) (discusses need for objective claim boundaries under Nautilus)
- Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) (indefiniteness can result from leaving skilled artisans to "unpredictable vagaries" of opinion)
- Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015) (invalid patent cannot be infringed; supports that validity affects damages entitlement)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (framing of claim construction and public-notice function of claims)