809 F.3d 1223 (Fed. Cir. 2015), 2014-1431, Dow Chem. Co. v. NOVA Chems. Corp.

Docket Nº:2014-1431, 2014-1462
Citation:809 F.3d 1223
Opinion Judge:Per Curiam.
Party Name:THE DOW CHEMICAL COMPANY, Plaintiff-Cross-Appellant v. NOVA CHEMICALS CORPORATION (CANADA), NOVA CHEMICALS INC. (DELAWARE), Defendants-Appellants
Attorney: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, NY. DONALD ROBERT DUNN...
Judge Panel: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 TAR...
Case Date:December 17, 2015
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1223

809 F.3d 1223 (Fed. Cir. 2015)

THE DOW CHEMICAL COMPANY, Plaintiff-Cross-Appellant

v.

NOVA CHEMICALS CORPORATION (CANADA), NOVA CHEMICALS INC. (DELAWARE), Defendants-Appellants

2014-1431, 2014-1462

United States Court of Appeals, Federal Circuit

December 17, 2015

Appeals from the United States District Court for the District of Delaware in No. 1:05-cv-00737-LPS, Chief Judge Leonard P. Stark.

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, NY.

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.

CONCUR

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 Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 838, 190 L.Ed.2d 719 (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 Pharms. 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., 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...

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