The Dow Chemical Company v. Nova Chemicals Corporation
809 F.3d 1223
Fed. Cir.2015Background
- Dow sued NOVA for patent infringement; a jury previously found the patent valid and infringed and damages were awarded.
- The district court entered a Rule 54(b) partial final judgment on validity, infringement, and damages; further proceedings addressed supplemental/post-verdict royalties.
- After the earlier appeal affirmed liability, a later district-court judgment fixing supplemental royalties was appealed; during that interval the Supreme Court decided Nautilus (new definiteness standard).
- A panel subsequently addressed indefiniteness under Nautilus and concluded the asserted claim term was indefinite, reversing prior determinations; Dow sought rehearing en banc.
- The court denied rehearing en banc; separate opinions (concurrences and a dissent) discuss (1) whether the panel changed indefiniteness law, (2) deference to subsidiary fact findings, (3) burden of proof, and (4) appellate jurisdiction/finality under Rule 54(b) and Bosch.
Issues
| Issue | Plaintiff's Argument (Dow) | Defendant's Argument (NOVA) | Held |
|---|---|---|---|
| Proper role of extrinsic evidence in indefiniteness | Extrinsic evidence should not resolve which measurement method to use; panel erred if it relied on such evidence to find indefiniteness | Extrinsic evidence is appropriate to show what a skilled artisan would understand; measurement method can be established by art knowledge | Concurrences: extrinsic evidence may be relevant; panel did not eliminate its use; factual issues about skilled artisan can be proven extrinsically |
| Standard of review for underlying fact findings | Panel applied de novo review and failed to defer to district/jury fact findings | Subsidiary fact findings that rely on extrinsic evidence are entitled to clear-error or substantial-evidence deference | Courts reaffirm deference: Teva requires deference to fact findings; panel cannot overrule that precedent |
| Burden of proof for indefiniteness | Burden should shift or be relaxed given Nautilus | Burden remains on challenger to prove invalidity by clear and convincing evidence under 35 U.S.C. § 282 | Held: burden remains on challenger and standard is clear and convincing; Dow did not change that law |
| Jurisdiction/finality: could panel revisit previously decided validity after Rule 54(b) final judgment? | Panel had authority to address definiteness in the supplemental-damages appeal | The appeal was limited to a ministerial accounting/royalty determination after a final Rule 54(b) judgment; reopening validity violates finality and rule against addressing issues not in the appealed judgment | Dissent: panel lacked jurisdiction to reopen an affirmed final judgment under Rule 54(b); the court denied rehearing en banc but dissent urges en banc review on finality grounds |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (subsidiary factual findings underlying claim construction are reviewed for clear error)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (redefined indefiniteness standard requiring reasonable certainty)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011) (clear-and-convincing standard applies to patent invalidity challenges)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (post-Teva panel applying clear-error review to indefiniteness fact findings)
- Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) (indefiniteness may be reviewed de novo where only intrinsic evidence is relied upon)
- W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) (definiteness evaluated in light of knowledge in the art at the time of filing)
- American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (Fed. Cir. 1984) (patent validity presumed; burden of proving invalidity rests on challenger)
- Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305 (Fed. Cir. 2013) (discussing finality and appeals from liability determinations with outstanding damages/willfulness issues)