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Applying the pre-Nautilus standard for determining claim indefiniteness, the district court held that the claim term “slope of a strain hardening coefficient greater than or equal to 1.3” was not indefinite and entered judgment of infringement, which was affirmed by the Federal Circuit.  On remand, the district court awarded supplemental damages for the time period of January 1, 2010 to October 11, 2011, the expiration date of the patent, which defendants appealed.  During that appeal, the Supreme Court issued its opinion in the Nautilus case, which changed the standards for determining indefiniteness.  Now, in this appeal, the defendants argue that the supplemental damages award should be vacated because, under the new Nautilus standard for determining indefiniteness, the claims are indefinite. 

The court held that the prior holding of indefiniteness was not binding on the subsequent supplemental damages claims, because the Nautilus case changed the standard for determining indefiniteness and the new rule compels a different result than that of the original decision.  Here, there are potentially four different ways to measure the required slope.  Under the pre-Nautilus standard, the claim was definite, because “the mere fact that the slope may be measured in more than one way does not make the claims of the patent invalid.”  But, under the Nautilus standard, the required guidance is not provided by the claims, specification, or file history.  

The Dow Chemical Co. v. Nova Chemicals Corporation (Canada), Case Nos. 2014-1431, -1462 (August 28, 2015); Opinion by: Dyk, joined by Prost and Wallach; Appealed From: District Court for the District of Delaware, Stark, J.  Read the full opinion here.

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