The Dow Chemical Company v. Nova Chemicals Corporation

United States Court of Appeals
for the Federal Circuit
______________________
THE DOW CHEMICAL COMPANY,
Plaintiff-Cross-Appellant
v.
NOVA CHEMICALS CORPORATION (CANADA),
NOVA CHEMICALS INC. (DELAWARE),
Defendants-Appellants
______________________
2014-1431, 2014-1462
______________________
Appeals from the United States District Court for the
District of Delaware in No. 1:05-cv-00737-LPS, Chief
Judge Leonard P. Stark.
______________________
ON PETITION FOR PANEL REHEARING AND
REHEARING EN BANC
______________________
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
2 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
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.
PER CURIAM.
ORDER
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.
∗ Circuit Judge Stoll did not participate.
THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS 3
CORPORATION
The petition for rehearing en banc is denied.
The mandate of the court will be issued on December
28, 2015.
FOR THE COURT
December 17, 2015 /s/ Daniel E. O’Toole
Date Daniel E. O’Toole
Clerk of Court
United States Court of Appeals
for the Federal Circuit
______________________
THE DOW CHEMICAL COMPANY,
Plaintiff-Cross-Appellant
v.
NOVA CHEMICALS CORPORATION (CANADA),
NOVA CHEMICALS INC. (DELAWARE),
Defendants-Appellants
______________________
2014-1431, 2014-1462
______________________
Appeals from the United States District Court for the
District of Delaware in No. 1:05-cv-00737-LPS, Chief
Judge Leonard P. Stark.
______________________
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.
2 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
The opinion in this case does not depart from, and in fact
directly applies, those principles.
United States Court of Appeals
for the Federal Circuit
______________________
THE DOW CHEMICAL COMPANY,
Plaintiff-Cross-Appellant
v.
NOVA CHEMICALS CORPORATION (CANADA),
NOVA CHEMICALS INC. (DELAWARE),
Defendants-Appellants
______________________
2014-1431, 2014-1462
______________________
Appeals from the United States District Court for the
District of Delaware in No. 1:05-cv-00737-LPS, Chief
Judge Leonard P. Stark.
______________________
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, concur-
ring 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
2 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
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 allega-
tion of invalidity, remains on the party challenging validi-
ty 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.,
135 S. Ct. 831, 838 (2015) (“Teva”) (claim construction in
indefiniteness); Green Edge Enters., LLC v. Rubber Mulch
Etc., LLC, 620 F.3d 1287, 1299 (Fed. Cir. 2010) (“Defi-
niteness . . . 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 (1986) (obviousness). There is likewise no
dispute that, under controlling precedent, extrinsic evi-
dence 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 (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
THE DOW CHEMICAL COMPANY V. NOVA CHEMICALS 3
CORPORATION
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 substan-
tive standard for indefiniteness, which, in many though
not all cases, requires factual inquiries into skilled arti-
sans’ 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 de-
fends 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 Com-
bined 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 man-
ner. 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
4 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
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 evi-
dence 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 state-
ments:
During prosecution of the related ’847 and ’539
patents, which with respect to molecular weight
have identical specifications, examiners twice re-
jected the term “molecular weight” as indefinite
for failing to disclose which measure of molecular
weight to use (Mp, Mn, or Mw). And the patentee
in one instance stated that it was Mw and in the
other stated it was Mp. We find no clear error
in the district court’s fact finding that one of
the statements contained a scientifically er-
roneous claim. We hold that claim 1 is invalid
for indefiniteness by clear and convincing evi-
dence because read in light of the specification
and the prosecution history, the patentee has
failed to inform with reasonable certainty those
THE DOW CHEMICAL COMPANY V. NOVA CHEMICALS 5
CORPORATION
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
Mp. This is the legal question—and on this ques-
tion—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.” 766 F.3d at 1370 & n.6. Dow cannot
alter our precedent or overrule the Supreme Court’s
decision that subsidiary fact findings are given deference
on appeal.
We have consistently permitted courts to submit legal
questions which contain underlying factual issues, like
obviousness, enablement, or indefiniteness, to the jury.
See, e.g., BJ Servs. Co. v. Halliburton Energy Servs., Inc.,
338 F.3d 1368, 1372 (Fed. Cir. 2003) (“Like enablement,
definiteness, too, is amenable to resolution by the jury
where the issues are factual in nature.”); Orthokinetics,
806 F.2d at 1576; Beachcombers v. WildeWood Creative
Prods., Inc., 31 F.3d 1154, 1158 (Fed. Cir. 1994) (explain-
ing that our standard of review for denial of a motion for
JMOL in relation to a jury’s conclusion of indefiniteness is
“whether the jury’s express or implied findings of fact are
supported by substantial evidence, and whether those
findings support the conclusion of indefiniteness”). When
the jury renders a general verdict on validity or indefi-
niteness, we must presume all fact findings in support of
that verdict. Circuit Check Inc. v. QXQ Inc., 795 F.3d
1331, 1334 (Fed. Cir. 2015); Jurgens v. McKasy, 927 F.2d
1552, 1557 (Fed. Cir. 1991). And when we review jury
fact findings, we do so for substantial evidence. See
Orthokinetics, 806 F.2d at 1571. Whatever the results of
Dow, it should not be viewed as having changed this well-
established law.
6 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
II.
Precedent likewise requires that the burden of prov-
ing indefiniteness remains on the party challenging
validity and that they must establish it by clear and
convincing evidence. This burden—of establishing inva-
lidity of issued patent claims—has always been on the
party challenging validity. Microsoft Corp. v. i4i Ltd.,
P’ship, 131 S. Ct. 2238, 2243 (2011) (“‘[a] patent shall be
presumed valid’ and ‘[t]he burden of establishing invalidi-
ty of a patent or any claim thereof shall rest on the party
asserting such invalidity’” (quoting 35 U.S.C. § 282 (alter-
ations in original))); see also Brief for the United States as
Amicus Curiae Supporting Respondent at 25, Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014)
(No. 13-369), 2014 WL 1319151 (explaining that § 282
“provides no ground for distinguishing indefiniteness from
other defenses of invalidity”). In American Hoist & Der-
rick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed.
Cir. 1984), we explained that this presumption of validity
“imposes the burden of proving invalidity on the attacker.
That burden is constant and never changes and is to
convince the court of invalidity by clear evidence.” Nearly
thirty years later, the Supreme Court agreed with our
explanation in American Hoist, noting that Congress had
never once amended § 282 to lower the standard of proof
despite often amending this section during this time and
ongoing criticism of the clear and convincing standard.
Microsoft, 131 S. Ct. at 2252. The Supreme Court con-
cluded by stating that “any re-calibration of the standard
of proof” of our “correct interpretation of § 282” remains in
Congress’s hands. Id. And there it stays to this day.
For the same reasons that Dow cannot alter our re-
view of subsidiary fact findings for clear error, Dow can-
not and does not change settled law on the burden of
proving indefiniteness. The burden of proving indefinite-
ness, which may include proving what one of skill in the
art would know how to do or not know how to do, remains
THE DOW CHEMICAL COMPANY V. NOVA CHEMICALS 7
CORPORATION
at all times on the party challenging the validity of the
patent. In many different arts, measurement of some
variable may be required (value, temperature, concentra-
tion, depth, dispersion, etc.). The burden of proving
indefiniteness includes proving not only that multiple
measurement techniques exist, but that one of skill in the
art would not know how to choose among them. This
knowledge of the skilled artisan is part of the proof neces-
sary for indefiniteness and the burden of proving it is on
the challenger of validity. No panel of our court could
overrule the Supreme Court or this court’s prior precedent
on where this burden of proof lies, and the Dow decision
should not be read to change this burden of proof.
Because I do not believe that Dow could have changed
or did change the law of indefiniteness, I concur in the
denial of en banc. No doubt this case was confused by
Dow’s reliance on the particular testimony of Dow’s own
witness who created his own measurement technique
rather than simply relying on the state of the knowledge
in the art about such measurement techniques.
III.
This is not to say, however, that I agree with the deci-
sion in Dow. It is to say only that the questions raised by
the panel’s decision appear to be case-specific. It may be
that the panel erred. The Dow panel appears to have
decided the case on a basis not only not raised by Nova
(whether one of skill in the art would know how to select
from among multiple measurement techniques to deter-
mine maximum slope), but in fact expressly disavowed by
Nova. Defs.-Appellants’ Br. 49 (“Of course, one skilled in
the art could determine the ‘maximum slope’ location on a
stress-strain curve if the artisan knew that such an
approach was required by the patents-in-suit.”); Defs.-
Appellants’ Reply & Resp. Br. 13–14 (“Of course, one
skilled in the art could physically locate and calculate the
‘maximum slope’ on a stress/strain curve if the artisan
8 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
knew that such a ‘maximum slope’ approach was called
for by the patents-in-suit”). And it does so after a jury
verdict of no indefiniteness and without giving deference
to the jury’s underlying fact findings.
The question of whether one of skill in the art would
know which measurement method to use to determine the
maximum slope of a curve is unquestionably a factual
issue based upon extrinsic evidence. While I may disa-
gree and even find troubling the panel’s resolution of this
case and in particular its treatment of this factual issue,
that is not a sufficient reason for en banc review. So long
as the Dow opinion is not viewed as having changed the
law of indefiniteness regarding underlying fact findings,
the relevance of extrinsic evidence to the inquiry, or the
deference to be given to fact findings, then I concur in the
denial of en banc.
United States Court of Appeals
for the Federal Circuit
______________________
THE DOW CHEMICAL COMPANY,
Plaintiff-Cross-Appellant
v.
NOVA CHEMICALS CORPORATION (CANADA),
NOVA CHEMICALS INC. (DELAWARE),
Defendants-Appellants
______________________
2014-1431, 2014-1462
______________________
Appeals from the United States District Court for the
District of Delaware in No. 1:05-cv-00737-LPS, Chief
Judge Leonard P. Stark.
______________________
O’MALLEY, Circuit Judge, with whom REYNA, Circuit
Judge, joins, dissenting in the denial of the petition for
rehearing en banc.
I agree with Judge Moore that both The Dow Chemi-
cal Company (“Dow”) and NOVA Chemicals Corporation
(“NOVA”) mischaracterize the panel’s decision in this
matter. The panel did not and could not effect sweeping
changes in the law of indefiniteness. I write separately,
however, because I do not believe the panel should have
discussed the law of indefiniteness at all; the panel simply
did not have jurisdiction to render the judgment it did.
2 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
The panel could not reopen a validity determination
that had been the subject of a final judgment that was
affirmed on appeal, and as to which the Supreme Court
declined review. Even if the Supreme Court’s decision in
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
(2014) can be viewed as a substantial change in the law of
indefiniteness (a point the parties debate), and even if
that change justified a different conclusion regarding the
validity of the patent-at-issue here than reached by both
the district court and a prior panel of this court (which I
do not believe it did), there was no appeal before us that
would justify this panel’s decision to reach those issues.
In Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d
1305 (Fed. Cir. 2013) (en banc), we declared that different
rules of finality apply to this court than to every other
Article III court of appeals. Specifically, we concluded
that because damages calculations—even those done in
the context of a jury trial on damages—constitute no more
than an “accounting” within the meaning of 28 U.S.C.
§ 1292(c)(2), an action can be final for purposes of appeal
even where damages determinations remain outstanding.
Id. at 1317 (finding that “an ‘accounting’ within the
context of § 1292(c)(2) includes a trial on damag-
es . . . [and] that § 1292(c)(2) confers jurisdiction on this
court to entertain appeals from patent infringement
liability determinations when a trial on damages has not
yet occurred”). Indeed, we went so far as to conclude that
a determination of a patent’s invalidity, or of a valid
patent’s infringement, can be final, and, thus, subject to
an immediate appeal, even where a claim of willful in-
fringement remained outstanding. Id. at 1319 (“[W]e hold
that § 1292(c)(2) confers jurisdiction on this court to
entertain appeals from patent infringement liability
determinations when willfulness issues are outstanding
and remain undecided.”). These appeals are not, accord-
ing to us, interlocutory appeals; they are appeals from
final judgments. Id. at 1308 (framing the relevant in-
THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS 3
CORPORATION
quiry as whether or not determinations of damages and
willfulness issues are “accountings” that, under 28 U.S.C.
§ 1292(c)(2), constitute “exceptions to the final judgment
rule”).
This decision authorized, nay encouraged, parties to
engage in piecemeal appeals in patent cases and encour-
aged district judges to authorize the same. The district
judge in this case, at the invitation of Appellant NOVA,
accepted that invitation. Because the only procedural
vehicle that existed for entry of a final judgment on the
liability determination in this case was Rule 54(b) of the
Federal Rules of Civil Procedure, that is the vehicle the
trial court necessarily employed. It is also the vehicle we
endorsed when the first panel to hear an appeal in this
case accepted the appeal and rendered judgment on it.
Having rewritten the rules of appellate finality in
Bosch, the current panel now violates the Rules of Civil
Procedure by ignoring the implications of the trial court’s
Rule 54(b) final judgment in this case and our affirmance
of it. The panel also ignores, moreover, the perhaps even
more basic rule that an appellate court may not address
issues not raised in the judgment on appeal. See Fed. R.
App. P. 4(a)(1)(B) (“The notice of appeal may be filed by
any party within 60 days after entry of the judgment or
order appealed from . . . .” (emphasis added)); accord
Singleton v. Wulff, 428 U.S. 106, 120 (1976) (“It is the
general rule, of course, that a federal appellate court does
not consider an issue not passed upon below.”).
DISCUSSION
Although the panel says that the judgment now on
appeal came after a “remand” from this court, that is
inaccurate. We did not remand anything in our earlier
mandate; there was nothing to remand. The new appeal
arises from a completely separate judgment than the
original appeal.
4 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
Prior to the first appeal, a jury returned a verdict on
validity, infringement, and damages, all in Dow’s favor.
The trial court then conducted a hearing regarding
whether the relief afforded Dow should include not just
the damages awarded for past infringement, but a per-
manent injunction as well. The trial court declined to
issue a permanent injunction on July 30, 2010 because,
among other reasons, NOVA convinced it that a running
royalty until the soon-to-occur expiration of the patent
would be adequate to provide Dow the full scope of the
relief to which it was entitled. Dow Chem. Co. v. Nova
Chems. Corp., 1:05-cv-737 (D. Del. July 30, 2010), ECF
No. 603. After that order, NOVA moved for entry of
partial final judgment pursuant to Rule 54(b), stating
that the only “remaining claims, [Dow’s] claim of willful
infringement (D.I. 1, ¶ 18) and NOVA’s antitrust counter-
claim (D.I. 40, Counts VII and VIII),” were sufficiently
separate that they did not render improper the entry of
final judgment on the issues of validity, infringement, and
damages. Dow Chem. Co. v. Nova Chems. Corp., 1:05-cv-
737 (D. Del. Aug. 17, 2010), ECF No. 612.
While we were not required to accept review of the
trial court’s Rule 54(b) judgment on these issues—indeed,
we arguably should not have done so even despite Bosch
given the pending antitrust counterclaims—we did so.
And we affirmed the lower court verdict and findings
across the board. That put an end to the proceedings as
to that final judgment.
While the trial court did proceed to calculate the
measure of ongoing royalties to be awarded in lieu of an
injunction once the first appeal was completed, that was
not by virtue of a remand on that issue. The district court
at all times retained jurisdiction on those issues that were
not included in the Rule 54(b) final judgment, and our
affirmance ended our consideration of all issues that were
included in that final judgment. That is how the Rule
operates. The trial court merely lifted its own stay on the
THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS 5
CORPORATION
accounting of post-verdict infringement damages—one
imposed for the parties convenience—and on the other
claims that actually did remain—willfulness and the
antitrust counterclaim.
The record, thus, establishes that Dow was entitled to
relief for NOVA’s continued infringement of its patent as
of our affirmance of the Rule 54(b) final judgment. When
the trial court denied Dow’s request for a permanent
injunction, it made clear that a remaining royalty for the
life of the patent would be awarded, as it should have.
See Finjan, Inc. v. Secure Computing Corp., 626 F.3d
1197, 1213 (Fed. Cir. 2010) (“Accordingly, we have noted
that a patentee is ‘not fully compensated’ if ‘the damages
award did not include future lost sales.’” (quoting Carbo-
rundum Co. v. Molten Metal Equip. Innovations, Inc., 72
F.3d 872, 882 (Fed. Cir. 1995)); see also Whitserve, LLC v.
Comput. Packages, Inc., 694 F.3d 10, 38 (Fed. Cir. 2012)
(“[W]e would normally direct an accounting of damages
flowing from post-verdict and pre-judgment infringe-
ment . . . .”); Fresenius USA, Inc. v. Baxter Int’l, Inc., 582
F.3d 1288, 1303 (Fed. Cir. 2009) (holding that “the district
court was within its discretion to impose a royalty on
[post-verdict sales not considered by the jury] in order to
fully compensate” the patentee); Ecolab, Inc. v. FMC
Corp., 569 F.3d 1335, 1353 n.5 (Fed. Cir. 2009), modified
in part by 366 F. App’x 154, 155 (Fed. Cir. 2009) (stating
that an accounting should be ordered to adequately
compensate the patentee). We have consistently treated
these as ministerial calculations conducted by the court to
reflect the full relief which appropriately should flow from
a prior infringement and validity determination.
NOVA acknowledged both the ministerial nature of
the calculation remaining before the district court and the
final nature of the earlier liability determinations when,
in its brief supporting its position on supplemental dam-
ages, it asserted that the only thing left for the district
court to do on the damages question was to undertake an
6 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
“accounting” regarding the dollar amount due to Dow.
Dow Chem. Co. v. Nova Chems. Corp., 1:05-cv-737 (D. Del.
July 3, 2013), ECF No. 750, at 1. Indeed, NOVA acknowl-
edged that this judgment was “final” as late as September
of 2013 when it filed a separate suit against Dow seeking
to set aside the judgment under Federal Rule of Civil
Procedure 60(d)(1), a motion that only applies to final
judgments. Nova Chems. Corp. (Canada) v. Dow Chem.
Co., No. 1:13-cv-1601 (D. Del Sep. 23, 2013), ECF No. 1,
¶ 7. Tellingly, NOVA never sought to reopen the question
of indefiniteness before the district court and—
importantly—the judgment rendered by the district court
did not address it. Dow Chem. Co. v. Nova Chems. Corp.,
1:05-cv-737 (D. Del. July 16, 2010), ECF No. 593 (NOVA
arguing how to determine the ongoing royalty, not Dow’s
entitlement to that ongoing royalty). The only judgment
entered by the district court after its liability determina-
tions were affirmed was one which contained a calculation
of damages for the period between the initial infringe-
ment judgment and the expiration of the patent. And,
that is the only judgment which was appealed to us; it is
that judgment which delimits the scope of our jurisdic-
tion.
It was not until that very narrow appeal from that
very narrow judgment reached us—long after the patent
had expired and the damages period had closed—that the
Supreme Court issued its decision in Nautilus. While the
panel reaches to apply that later-decided case to the
earlier final judgment on validity here, Rule 54(b) prohib-
its it from doing so. The only thing we should have re-
viewed on appeal is the measure of royalty owed post-
verdict and pre-expiration of the patent that is memorial-
ized in the judgment from which this appeal was taken.
See Dow Chem. Co. v. Nova Chems. Corp., 1:05-cv-737 (D.
Del. Apr. 23, 2014), ECF No. 764. There should be no
question regarding either the validity of Dow’s patent or
Dow’s entitlement to damages for the short interim period
THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS 7
CORPORATION
between the judgment and the expiration of the patent;
those had already been established and affirmed. Accord
Bosch, 719 F.3d at 1309 (holding that a trial on damages
is merely an “accounting”). Importantly, this is not a
situation where new, unexpected acts of infringement
occurred and the patentee sought new relief to address
them. This is a situation where the relief before us in the
second appeal was an aspect of the relief to which all
parties understood the patentee was entitled as of the
long-since affirmed, original verdict; the only question
was how much that relief would be. That the parties and
the court saw efficiencies from the use of a partial final
judgment, and we endorsed that use, does not mean the
later accounting opens up reconsideration of all underly-
ing legal issues. 1
To justify reaching the indefiniteness issue anew, the
panel describes why it believes it is not limited by either
the law of the case doctrine or concepts of issue preclu-
sion. But that discussion is an unnecessary detour. First,
the law of the case doctrine does not apply when there
already has been a Rule 54(b) final judgment on an issue.
The “law of the case [doctrine] does not involve preclusion
after final judgment, but rather it regulates judicial
affairs before final judgment.” Hughes Aircraft Co. v.
United States, 86 F.3d 1566, 1581 (Fed. Cir. 1996) (em-
phasis added) vacated on other grounds, 520 U.S. 1183
(1997); see Wright & Miller § 4478, at 10; Pit. River Home
& Agricultural Coop. Ass’n v. United States, 30 F.3d 1088,
1097 (9th Cir. 1994) (“Law of the case is not synonymous
with preclusion by final judgment.”). Accordingly, once
1 It is odd that we would characterize a jury trial on
the full range of infringement damages as a mere account-
ing, but treat the calculation the district court did here as
a determination that justifies the reopening of all issues
subject to an earlier final judgment.
8 THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS
CORPORATION
there was a final judgment on indefiniteness—which we
affirmed in the first appeal—the law of the case doctrine
no longer applies to that issue.
And, for issue preclusion to apply, the issue must ac-
tually be raised in the judgment we are reviewing on
appeal. Accord Wright & Miller § 4405 (“Ordinarily both
issue preclusion and claim preclusion are enforced by
awaiting a second action in which they are pleaded and
proved by the party asserting them.”). In this case, the
issue of indefiniteness was not pending before the district
court in this claim for supplemental damages; indefinite-
ness had already been subject to a Rule 54(b) judgment
that we affirmed on appeal. Compare Dow Chem. Co. v.
Nova Chems. Corp., 1:05-cv-737 (D. Del. Aug. 26, 2010),
ECF No. 615 (entering final judgment on “validity, in-
fringement and damages”), with Dow Chem. Co. v. Nova
Chems. Corp., 1:05-cv-737 (D. Del. Apr. 14, 2014), ECF
No. 763 (“granting the request of [Dow] for supplemental
damages but denying its requests for a finding of willful
infringement and enhanced damages”). Because indefi-
niteness was not raised before the district court, and was
not part of the judgment on appeal, issue preclusion is not
a factor in this appeal.
To be sure, I disagreed with our conclusion in Bosch
that piecemeal appeals are appropriate in patent cases. I
also believe this court is, at times, too quick to accept
certification of judgments under Rule 54(b) from district
courts where aspects of the underlying action are unre-
solved. But my view of the law and best practices on
these issues is not the governing one in this circuit.
Having authorized appeals from seriatim final judgments
and encouraged district courts to employ Rule 54(b) to
effectuate those appeals, we should, at minimum, adhere
to Rule 54(b) and its dictates.
For these reasons, while I agree with Judge Moore’s
concurrence to the extent issues of indefiniteness are in
THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS 9
CORPORATION
play, I must dissent from the denial of en banc in this
matter.