Dow Chem. Co. v. Nova Chems. Corp.

• Decision Date: 17 December 2015
• Docket Number: Nos. 2014–1431,2014–1462.,s. 2014–1431
• Citation: 809 F.3d 1223 (Mem)
• Parties: The DOW CHEMICAL COMPANY, Plaintiff–Cross–Appellant v. NOVA CHEMICALS CORPORATION (CANADA), Nova Chemicals Inc. (Delaware), Defendants–Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

809 F.3d 1223 (Mem)

The DOW CHEMICAL COMPANY, Plaintiff–Cross–Appellant

v.NOVA CHEMICALS CORPORATION (CANADA), Nova Chemicals Inc. (Delaware), Defendants–Appellants.

Nos. 2014–1431

2014–1462.

United States Court of Appeals, Federal Circuit.

Dec. 17, 2015.

Harry J. Roper, Jenner & Block LLP, Chicago, IL, argued for plaintiff-cross-appellant. Also represented by, Aaron A. Barlow, Paul David Margolis ; Raymond N. Nimrod, Gregory D. Bonifield, William Adams, Cleland B. Welton, II, Quinn Emanuel Urquhart & Sullivan, LLP, New York, N.Y.

Donald Robert Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for defendants-appellants. Also represented by Mark J. Feldstein, Ronald Bleeker, Darrel Christopher Karl.

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK, MOORE, O'MALLEY, REYNA, WALLACH, TARANTO, CHEN, and HUGHES, Circuit Judges.^*

PROST, Chief Judge, DYK and WALLACH, Circuit Judges, concur in the denial of the petition for rehearing en banc.

MOORE, Circuit Judge, with whom NEWMAN, O'MALLEY, and TARANTO, Circuit Judges, join, and with whom CHEN, Circuit Judge, joins with respect to parts I and II, concurs in the denial of the petition for rehearing en banc.

O'MALLEY, Circuit Judge, with whom REYNA, Circuit Judge, joins, dissents from the denial of the petition for rehearing en banc.

ORDER

PER CURIAM.

Cross–Appellant The Dow Chemical Company filed a combined petition for rehearing and rehearing en banc. A response to the petition was invited by the court and filed by the Appellants NOVA Chemicals Corporation (Canada) and NOVA Chemicals Inc. (Delaware). The petition and response were referred to the panel that heard the appeal, and thereafter were referred to the circuit judges who are in regular active service. A poll was requested, taken, and failed.

Upon consideration thereof,

IT IS ORDERED THAT :

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will be issued on December 28, 2015.

PROST, Chief Judge, DYK and WALLACH, Circuit Judges, concurring in the denial of the petition for rehearing en banc.

We agree with Judge Moore that clear and convincing evidence is the standard for patent invalidation; that the burden to establish indefiniteness rests with the accused infringer; that findings of fact by juries are entitled to deference; and that knowledge of someone skilled in the art may be pertinent to the indefiniteness question. In particular, we agree that if a skilled person would choose an established method of measurement, that may be sufficient to defeat a claim of indefiniteness, even if that method is not set forth in haec verba in the patent itself.

The opinion in this case does not depart from, and in fact directly applies, those principles.

MOORE, Circuit Judge, with whom NEWMAN, O'MALLEY, and TARANTO, Circuit Judges, join, and with whom CHEN, Circuit Judge, joins with respect to parts I and II, concurring in the denial of the petition for rehearing en banc.

While I concur that en banc action is not warranted in this case, I write separately to make clear that the panel's opinion does not change the law of indefiniteness in three key respects. First, despite Nova's claim to the contrary, the panel opinion does not and cannot stand for the proposition that extrinsic evidence cannot be relied upon to determine whether, in light of the state of knowledge of the skilled artisan at the time, a patent's specification is sufficiently definite. Second, despite Dow's contention that it does, the panel's opinion does not alter Supreme Court and our own precedent that fact findings made incident to the ultimate legal conclusion of indefiniteness receive deference on appeal. Finally, the panel's opinion does not alter Supreme Court and our own precedent that the burden of proving indefiniteness, as with any allegation of invalidity, remains on the party challenging validity who must establish it by clear and convincing evidence.

I.

There is no dispute that, under controlling precedent, the ultimate question of indefiniteness is one of law. Indefiniteness, like enablement, obviousness, and claim construction, sometimes requires resolution of underlying questions of fact. Teva Pharm. USA, Inc. v. Sandoz, Inc., –––U.S. ––––, 135 S.Ct. 831, 838, ––– L.Ed.2d –––– (2015) ("Teva ") (claim construction in indefiniteness); Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1299 (Fed.Cir.2010) ("Definiteness ... and enablement ... are both questions of law with underlying factual determinations."); Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1345 (Fed.Cir.2015) ("Teva II ") (indefiniteness); Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed.Cir.2014) (enablement); Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811, 106 S.Ct. 1578, 89 L.Ed.2d 817 (1986) (obviousness). There is likewise no dispute that, under controlling precedent, extrinsic evidence may play a significant role in the indefiniteness analysis. Indeed, definiteness is evaluated from the perspective of a person of skill, Nautilus, Inc. v. Biosig Instruments, Inc., ––– U.S. ––––, 134 S.Ct. 2120, 2128, 189 L.Ed.2d 37 (2014) ; requires a determination of whether such a skilled person would understand the scope of the claim when it is read in light of the specification, Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.Cir.1986) ; and is evaluated in light of knowledge extant in the art at the time the patent application is filed, W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556–57 (Fed.Cir.1983). It has long been the case that the patent need not disclose what a skilled artisan would already know. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1367 (Fed.Cir.2011) ; see W.L. Gore, 721 F.2d at 1557–58. Nautilus did not change any of those principles; it changed only the governing formulation of the substantive standard for indefiniteness, which, in many though not all cases, requires factual inquiries into skilled artisans' understanding.

It would be incorrect to argue that the Dow decision changed this or that the intrinsic record alone must disclose which measurement method to use. Nova defends the decision in its favor by arguing that the decision correctly determined that extrinsic evidence cannot be relied upon to determine which measurement method to use. Defs.-Appellants' Resp. to Dow Chem. Co.'s Combined Pet. For Reh'g & Hr'g En Banc 5. We do not view the Dow decision as standing for such a sweeping change to our law or as limiting extrinsic evidence in this manner. Appreciating what a skilled artisan knew at the time of the invention is pertinent to whether the claims are reasonably clear in their meaning and scope. A question about the state of the knowledge of a skilled artisan is a question of fact, likely necessitating extrinsic evidence to establish. Dow itself recognizes that appreciation of the knowledge of skilled artisans at the time of the invention necessarily arises when trying to discern whether the claims are reasonably clear in their meaning and scope. Dow Chem. Co. v. Nova Chems. Corp., 803 F.3d 620, 635 n. 10 (Fed.Cir.2015) (noting that we considered "the knowledge of one skilled in the art" along with the claim language and prosecution history to conclude that the disputed claim term is definite in Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1382–84 (Fed.Cir.2015) ). Thus, Dow does not and cannot stand for the proposition that extrinsic evidence cannot be used to establish the state of knowledge of the skilled artisan, for example, whether one of skill in the art would know which measurement technique to employ to determine the maximum slope of a curve.

Dow's primary claim in its petition for en banc review is that the panel applied a de novo review to reverse a district court fact finding. The Dow decision cannot change the Supreme Court's recent holding, unequivocally clear, that fact findings which rely upon extrinsic evidence must be given deference on appeal. Teva, 135 S.Ct. at 835. In explaining that Nautilus changed the indefiniteness standard, Dow relies on two of our post-Nautilus cases, both of which recognize that fact findings underlying an indefiniteness determination are reviewed for clear error. Dow, 803 F.3d at 630–31 (citing Teva II, 789 F.3d at 1341, 1344–45 ; and Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed.Cir.2014) ). In Teva II, we determined the claims were indefinite because in response to two examiner rejections of indefiniteness of the same term (molecular weight) the patentee made conflicting statements in the prosecution history and the district court's fact findings—reviewed for clear error—could not overcome the uncertainty due to these statements:

During prosecution of the related '847 and '539 patents, which with respect to molecular weight have identical specifications, examiners twice rejected the term "molecular weight" as indefinite for failing to disclose which measure of molecular weight to use (M_p, M_n, or M_w). And the patentee in one instance stated that it was M_wand in the other stated it was M_p. We find no clear error in the district court's fact finding that one of the statements contained a scientifically erroneous claim. We hold that claim 1 is invalid for indefiniteness by clear and convincing evidence because read in light of the specification and the prosecution history, the patentee has failed to inform with reasonable certainty those skilled in the art about the scope of the invention. On this record, there is not reasonable certainty that molecular weight should be measured using M_p. This is the legal question—and on this question—we reverse the district court.

789 F.3d at 1345 (first emphasis added). And in Interval Licensing we reviewed the district court's indefiniteness determination de novo because it "rests only on intrinsic evidence, and ... there are no disputes about underlying questions of fact."...