The Dow Chemical Company v. Nova Chemicals Corporation et al

Docket No. 2014-1431, 2014-1462

August 28, 2015

Brief Summary: DC’s supplemental damages award (lost profits and reasonable royalties) after jury/FC determination claims were not indefinite (2012, cert denied) reversed as claims found indefinite under the SC’s Nautilus “reasonable certainty” standard in an “exception to the doctrine of law of the case or issue preclusion”.

Summary: NOVA appealed DC grant of supplemental damages (lost profits and reasonable royalties) for the period between Jan. 1, 2010 to Oct. 15, 2011 (expiration of patents) to Dow following a jury determination claims were not indefinite under pre-Nautilus precedent (e.g., Exxon, FC 2001) (affirmed by FC 2012, cert denied 2012). Here, the FC panel considered “only whether, under Nautilus, the supplemental damages award must be reversed because the claims are indefinite.” Pre-Nautilus, the court asked whether the claim was “amenable to construction” or “insolubly ambiguous”; after Nautilus, the question is whether the claim “inform[s], with reasonable certainty, those skilled in the art about the scope of the invention.” As described below, the FC panel held the claims indefinite and reversed the supplemental damages award, finding “the intervening change in the law of indefiniteness resulting from Nautilus provides an exception to the doctrine of law of the case or issue preclusion” (where “the governing law must have been altered…the decision sought to be reopened must have applied the old law…[and] the change in law must compel a different result under the facts of the particular case…Each of these requirements was satisfied here.”) The claims cover ethylene polymer compositions requiring “a slope of strain hardening coefficient greater than or equal to 1.3.” NOVA argued “the patents are indefinite because they fail to teach a person having ordinary skill in the art how to measure the ‘slope of strain hardening’, which is required to calculate the strain hardening coefficient” (“SHC”, “a property wherein a material becomes harder as it is stretched”). The opinion explained that indefiniteness is a question of law reviewed de novo (Teva, US 2015) and its “previous decision is not binding on the issue of indefiniteness because Nautilus changed the applicable law” (“our prior decision rested on the earlier law”). The patents provide an equation for calculating SHC which is described as “a new Dow construct, not previously known in the art”. NOVA argued the claims were indefinite because “the patent fails to teach with reasonable certainty where [within the three phases of behavior during stretching] and how the ‘slope of strain hardening’ should be measured”. The opinion explains there were four methods that could be used to make this measurement, “[t]here is no question that each of these four methods may produce different results, i.e., a different slope”, and that “the method chosen…could affect whether or not a given product infringes the claim.” And “[n]either the patent claims nor the specification here [and the prosecution history was not argued to] discusses the four methods or provides any guidance as to which method should be used or even whether the possible universe of methods is limited to these four methods.” The opinion explained that “[b]efore Nautilus, a claim was not indefinite if someone skilled in the art could arrive at a method and practice that method” but that the required Nautilus guidance is not provided here (comparing this case to Teva, “decided under the Nautilus standard”, regarding three possible ways to determine molecular weight; also referring to Interval Licensing (“a claim term is indefinite if it ‘leave[s] the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion’”). Thus, the claims were held invalid and the award of supplemental damages reversed.

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