The Dow Chemical Co. v. NOVA Chemicals Corp. et al.

Addressing the post-Nautilus indefiniteness standard, the U.S. Court of Appeals for the Federal Circuit reversed a jury’s finding that the claims-at-issue are not indefinite and similarly reversed an associated order granting supplemental damages. The Federal Circuit’s reversal demonstrates how patent claims that were once held valid under the “insolubly ambiguous” standard (for determining indefiniteness) are no longer valid under the “reasonable certainty” standard. The Dow Chemical Co. v. NOVA Chemicals Corp. et al., Case No. 14-1431; -1462 (Fed. Cir., Aug. 28, 2015) (Dyk, J.)

Dow Chemical filed a suit against NOVA Chemicals alleging infringement of two patents directed to an ethylene polymer compositions with improved modulus, yield strength, impact strength and tear strength. In other words, the patents are directed to plastics that are made into thinner films without losing strength. The relevant element in two of the asserted independent claims requires “a slope strain hardening coefficient greater than or equal to 1.3.” NOVA argued that the patents were indefinite because they failed to teach one of ordinary skill in the art how to measure the “slope of strain hardening” which is necessary to calculate the strain hardening coefficient.

After a jury found the asserted claims to be infringed and not invalid, NOVA appealed and the Federal Circuit held the asserted claims were not indefinite. The pre-Nautilus jury instruction stated “[i]f the meaning of the claims is discernible, it is definite, even though the task may be formidable and even if the conclusion may be one over which reasonable persons will disagree”. The district court subsequently conducted a bench trial for the supplemental damages period through the expiration of the patents and granted Dow supplemental damages in the form of lost profits and reasonable royalties from January 1, 2010 through October 15, 2011, the date when the patents expired. After a final judgment was entered, NOVA again appealed.

While the appeal was pending, the Supreme Court decided Nautilus, holding the Federal Court’s standard for indefiniteness was contrary to 35 U.S.C. §112. Under the new standard, “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” (See IP Update, Vol. 18, No. 5.) In this appeal NOVA argued that the supplemental damages award should be vacated because the patents-in-suit are not valid for indefiniteness in view of Nautilus or the supplemental damages award was not supported by the evidence.

The Federal Circuit explained that the change-in-law exception applies while the case is at the district court or on appeal. Three conditions must be satisfied before reopening a previous decision under the change of law exception for both laws of the case and issue preclusion. First, the governing law must have been altered. Second, the decision sought to be reopened must have applied old law. Third, the change in law must compel a different result under the facts of the particular case.

The Federal Court determined the answer to the first two questions was clearly “yes.” With respect to whether a different substantive result was compelled by the Supreme Court’s Nautilus decision, the Court had to assess whether the existence of multiple methods leading to different results, without guidance in the patent or prosecution history as to which method should be used, renders the claims indefinite. Here the Court found there were at least four different procedures for measuring the slope of the strain hardening, each of which could produce a different value. A review of the intrinsic record provided no guidance as to which method should be used. Thus, the Court found the claims invalid as indefinite under the “reasonable certainly” standard and reversed the supplemental damages award.