Digest of The Dow Chem. Co. v. Nova Chems. Corp. (Canada), Nos. 2014-1431, 2014-1462 (Fed. Cir. Aug. 28, 2015) (precedential). On appeal from D. Del. Before Prost, Dyk, and Wallach.

Procedural Posture: After a jury trial finding the asserted patents valid and infringed and an appellate determination that the claims were not indefinite, the District Court awarded supplemental damages in the form of lost profits and reasonable royalties, but not enhanced damages, to the patentee. Subsequently, the Supreme Court’s decision inNautilus Inc. v. Biosig Instruments, Inc. changed the standard for indefiniteness. Parties cross-appealed the supplemental damages award. CAFC found that rearguing indefiniteness was not precluded because the substantive law had changed in Nautilus, and that, under Nautilus, the claims were indefinite. CAFC reversed the damages award, dismissing Plaintiff’s cross-appeal as moot.

  • Claim/Issue Preclusion: The Court explained that claim preclusion did not apply to bar relitigation of the invalidity issue for the supplemental damages period because supplemental damages is a separate claim for compensation for infringement not considered by the jury, so to prevail on a claim for supplemental damages, the patentee must establish infringement and validity during the supplemental damages period. Issue preclusion, however, would normally apply to bar relitigation of issues that were previously resolved in a valid court determination essential to the prior judgment. Neither claim nor issue preclusion apply, however, when the law governing a previously determined issue is changed by a later authoritative decision. Three conditions must be met to reopen a previous decision that has not reached the stage of final judgment under this change of law exception: 1) the governing law must have been altered; 2) the decision sought to be reopened must have applied the old law; and 3) the change in law must compel a different result under the facts of the particular case. The Court found that all three conditions were met here.
  • Indefiniteness: The claim term “slope of strain hardening coefficient” was indefinite under the new Nautilus standard. The Court found that there where at least four methods of calculating this coefficient, each of which produced different results, and only one of which was supported by Dow’s expert. Because Dow’s expert was himself a person skilled in the art, and because he was able to measure the coefficient, the term was not indefinite under the pre-Nautilus standard. However, neither the patent, nor its prosecution history, nor Dow’s expert testimony provided guidance as to which of these four methods should be used to determine the scope of the claim. Under Nautilus, a claim is indefinite if the intrinsic record fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Because none of the multiple tests were supported by the intrinsic record, the intrinsic record did not inform those of skill in the art about the scope of the invention, and thus the claim was held invalid.