1:13-cv-01601
Nova Chemicals Corp Canada v. Dow Chemical Co
I. Executive Summary and Procedural Information
Parties & Counsel:
- Plaintiff: NOVA Chemicals Corporation (Canada) and NOVA Chemicals Inc. (Delaware)
- Defendant: The Dow Chemical Company (Delaware)
- Plaintiff's Counsel: Potter Anderson & Corroon LLP
Case Identification: 1:13-cv-01601, D. Del., 02/05/2014
Venue Allegations: Venue is alleged to be proper because the Defendant resides in the district, the prior case was tried in the district, and a substantial part of the events giving rise to the claims occurred in the district.
Core Dispute: Plaintiff seeks to set aside a prior judgment of patent infringement, alleging the judgment was procured by Defendant through fraud on the court related to patent ownership (standing) and false expert testimony on the merits of infringement.
Technical Context: The technology relates to ethylene polymer blends, specifically compositions used to create high-strength, thin-gauge polymer films for packaging and other industrial applications.
Key Procedural History: The complaint centers on a prior patent infringement lawsuit in the same district (C.A. No. 05-737), where a judgment was entered against NOVA in 2010 for infringing two Dow patents. The complaint alleges that new evidence has emerged from separate litigation in Canada and Louisiana demonstrating that Dow (1) did not own the patents-in-suit when it filed the original case, thereby lacking standing, and (2) relied on knowingly false expert testimony to prove infringement. The complaint alleges that Dow concealed evidence and fabricated documents related to a 2002 mass transfer of its patents to a subsidiary for tax avoidance purposes.
Case Timeline
| Date | Event |
|---|---|
| 1991-10-15 | Priority Date for '053 and '023 Patents |
| 1998-12-08 | U.S. Patent No. 5,847,053 Issued |
| 2000-08-29 | U.S. Patent No. 6,111,023 Issued |
| 2005-10-21 | Original Infringement Lawsuit Filed (05-737) |
| 2010-06-18 | Judgment of Infringement Entered Against NOVA |
| 2010-08-26 | Judgment Made Final |
| 2012-10-01 | U.S. Supreme Court Denies NOVA's Petition for Certiorari |
| 2014-02-05 | Current Complaint Filed (13-1601) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,847,053 - Ethylene Polymer Film Made From Ethylene Polymer Blends
The Invention Explained
- Problem Addressed: The patent's background section describes the need for improved polymer films that possess a combination of high tensile strength, high impact strength, and good modulus, which would allow for the creation of thinner (down-gauged) films without sacrificing performance ʼ053 Patent, col. 1:36-49 Previous attempts to create such films by blending different polymers often resulted in a "destructive synergism," where the blend had properties inferior to its individual components ʼ053 Patent, col. 1:50-54
- The Patented Solution: The invention is a polymer composition created by blending two specific types of ethylene polymers. The first, Component A, is a "homogeneously branched substantially linear ethylene/α-olefin interpolymer" with specific characteristics, including a defined density range and a high slope of strain hardening coefficient (SHC). The second, Component B, is a "heterogeneously branched ethylene polymer" with a higher density ʼ053 Patent, abstract ʼ053 Patent, col. 2:25-50 The patent asserts that this specific combination yields films with synergistically enhanced physical properties ʼ053 Patent, col. 2:1-5
- Technical Importance: This technology aimed to provide a method for producing stronger, tougher, and thinner polymer films, offering material savings for manufacturers and environmental benefits through source reduction ʼ053 Patent, col. 1:61-67
Key Claims at a Glance
- The complaint identifies independent claim 6 as having been asserted in the prior litigation Compl. ¶105
- The essential elements of independent claim 6 are:
- An ethylene polymer composition comprising (A) from about 10 to 95 percent of at least one homogeneously branched linear ethylene/α-olefin interpolymer having: (i) a density from about 0.89 to 0.935 g/cm³; (ii) a molecular weight distribution (Mw/Mn) from about 1.8 to 2.8; (iii) a melt index (I₂) from about 0.001 to 10 g/10 min; (iv) no high density fraction; (v) a single melting peak; and (vi) a slope of strain hardening coefficient greater than or equal to 1.3 ʼ053 Patent, col. 16:6-23
- And (B) from about 5 to 90 percent of at least one heterogeneously branched linear ethylene polymer having a density from about 0.93 g/cm³ to about 0.965 g/cm³ ʼ053 Patent, col. 16:24-33
- The complaint notes that dependent claims 7, 10, and 12 were also asserted Compl. ¶105
U.S. Patent No. 6,111,023 - Fabricated Articles Made From Ethylene Polymer Blends
The Invention Explained
- Problem Addressed: The '023 Patent, a continuation of the application family leading to the '053 Patent, addresses the same technical challenge: the need for polymer blends that can produce films with an improved combination of strength and toughness, enabling down-gauging ʼ023 Patent, col. 1:39-54
- The Patented Solution: The solution is again a polymer composition comprising a blend of two distinct components. Component A is a "homogeneously branched" ethylene interpolymer defined by properties including density, melt index, a high slope of strain hardening coefficient, and a Composition Distribution Branch Index (CDBI) greater than 50 percent. Component B is a "heterogeneously branched" ethylene polymer defined by its density and the presence of a linear polymer fraction ʼ023 Patent, abstract ʼ023 Patent, col. 15:56-col. 16:21
- Technical Importance: As with the '053 Patent, the invention provides a pathway to creating higher-performance polymer films that are thinner and more resource-efficient ʼ023 Patent, col. 2:1-4
Key Claims at a Glance
- The complaint identifies independent claim 1 as having been asserted in the prior litigation Compl. ¶105
- The essential elements of independent claim 1 are:
- An ethylene polymer composition comprising (A) from about 10 to 95 percent of at least one ethylene interpolymer having: (i) a density from about 0.89 to 0.935 g/cm³; (ii) a melt index (I₂) from about 0.001 to 10 g/10 min.; (iii) a slope of strain hardening coefficient greater than or equal to 1.3; and (iv) a CDBI greater than 50 percent (ʼ023 Patent, col. 15:56-col. 16:10).
- And (B) from about 5 to 90 percent of at least one ethylene polymer characterized as having a density from about 0.93 to 0.965 g/cm³ and comprising a linear polymer fraction as determined by a Temperature Rising Elution Fractionation (TREF) technique (ʼ023 Patent, col. 16:11-21).
- The complaint notes that dependent claims 2, 5, and 8 were also asserted Compl. ¶105
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are identified as "certain grades of NOVA's SURPASS resins" Compl. ¶105
Functionality and Market Context
- The complaint describes the SURPASS resins as ethylene polymer compositions Compl. ¶106 The central infringement dispute in the prior case, as recounted in the complaint, revolved around whether these resins contained the specific two-component blend required by the patents. Dow's theory of infringement was that a "higher density fraction ('HDF')" within the SURPASS products constituted the claimed "Component B" Compl. ¶108 The complaint alleges these were "commercially successful products" for which Dow had sought to collect damages Compl. ¶103 Compl. ¶134
IV. Analysis of Infringement Allegations
The complaint alleges that the infringement verdict in the prior case was based on knowingly false testimony. The following tables summarize the infringement theory presented by Dow in the prior case, as described in the current complaint.
'053 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ethylene polymer composition comprising... (B) from about 5 percent... to about 90 percent... of at least one heterogeneously branched linear ethylene polymer having a density from about 0.93 g/cm³ to about 0.965 g/cm³. | In the prior case, Dow's expert, Dr. Soares, alleged that NOVA's SURPASS resins contained this component, which he identified as a "higher density fraction ('HDF')" made in NOVA's Reactor 2 Compl. ¶108 Dr. Soares claimed to have separated this HDF from the SURPASS product using a technique called Temperature Rising Elution Fractionation ("TREF") Compl. ¶109 A demonstrative exhibit showed a TREF curve where the peak appearing above 90°C was identified as the infringing Component B Compl. ¶110 The complaint includes this exhibit as FIG. 1, which shows a graph with two peaks, the rightmost of which is labeled "COMPONENT (B)" Compl. p. 33 | ¶¶108-110 | col. 7:27-54 |
'023 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ethylene polymer composition comprising... (B) from about 5 percent... to about 90 percent... of at least one ethylene polymer characterized as having a density from about 0.93 g/cm³ to about 0.965 g/cm³ and comprising a linear polymer fraction, as determined using a... (TREF) technique. | The infringement theory for the '023 Patent was the same as for the '053 Patent. Dow's expert testified that the HDF fraction he allegedly separated from the SURPASS resins using TREF met the limitations for Component B, including its density and its nature as a "linear polymer fraction" Compl. ¶108 Compl. ¶109 Dr. Soares allegedly testified that this separation was "easy" and that he had "actually isolated" the component and performed "tests on it" to confirm its properties (Compl. ¶¶111; Compl. ¶115). | ¶¶108-109; ¶111; ¶115 | col. 9:1-12 |
Identified Points of Contention
- Technical Questions: The complaint raises fundamental questions about the factual basis of the infringement allegations from the prior case. A central issue is whether the TREF technique, as applied by Dow's expert, could actually separate the claimed Component B. The complaint alleges that in a subsequent Canadian litigation, the same expert admitted that the separation was incomplete and the resulting material was contaminated with Component A Compl. ¶¶118-120 This raises the question of whether the tests performed on this allegedly contaminated material could reliably establish the properties of Component B, such as its weight percent, density, and heterogeneity, as required to prove infringement Compl. ¶¶124-126
V. Key Claim Terms for Construction
- The Term: "heterogeneously branched" polymer
- Context and Importance: This term defines "Component B," one of the two essential components of the claimed invention. The ability to identify and characterize this component in an accused product is critical to any infringement analysis. The current complaint alleges that the infringement verdict in the prior case was based on fraudulent evidence related to the separation and testing of this very component Compl. ¶108 Compl. ¶118 Practitioners may focus on this term because its definition is tied to analytical techniques that are at the center of the alleged evidentiary fraud.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents distinguish "heterogeneously branched" polymers from their "homogeneously branched" counterparts primarily by their branching distribution ʼ053 Patent, col. 7:27-31 Figure 2 in the patents visualizes this by showing the TREF curve for a heterogeneously branched polymer (Dowlex® 2045) as having a much broader distribution and a distinct high-temperature peak corresponding to a linear fraction, compared to the single narrow peak of a homogeneous polymer ʼ053 Patent, FIG. 2 This contrast could support an interpretation based on the overall shape of the TREF curve.
- Evidence for a Narrower Interpretation: The patents provide more specific, measurable characteristics for heterogeneously branched polymers. The specification notes that they typically have at least two melting points as determined by DSC ʼ053 Patent, col. 8:25-27, and claim 1 of the '023 Patent explicitly requires that Component B comprise "a linear polymer fraction, as determined using a... (TREF) technique" ʼ023 Patent, col. 16:17-21 These quantifiable metrics could support a narrower construction requiring specific results from analytical tests.
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of any indirect infringement allegations from the prior proceeding.
- Willful Infringement: The complaint does not provide sufficient detail for analysis of any willfulness allegations from the prior proceeding.
VII. Analyst's Conclusion: Key Questions for the Case
This action is not a standard infringement suit but an independent action in equity to vacate a prior judgment. The key questions, therefore, relate to the integrity of the prior judicial process.
A core issue will be one of jurisdiction and fraud on the court: Did Defendant knowingly misrepresent its ownership of the patents-in-suit when it filed the original 2005 lawsuit, as Plaintiff alleges? The resolution will depend on evidence regarding a 2002 patent transfer for tax purposes and whether Defendant subsequently concealed this transfer from the court (Compl. ¶11; Compl. ¶12; Compl. ¶13; Compl. ¶14; Compl. ¶15; Compl. ¶16; Compl. ¶17; Compl. ¶18; Compl. ¶19; Compl. ¶20; Compl. ¶21; Compl. ¶22; Compl. ¶23; Compl. ¶24; Compl. ¶25; Compl. ¶26; Compl. ¶27; Compl. ¶28; Compl. ¶29; Compl. ¶30; Compl. ¶31; Compl. ¶32; Compl. ¶33; Compl. ¶34; Compl. ¶35; Compl. ¶36; Compl. ¶37; Compl. ¶38; Compl. ¶39; Compl. ¶40; Compl. ¶41; Compl. ¶42; Compl. ¶43; Compl. ¶44; Compl. ¶45; Compl. ¶46; Compl. ¶47; Compl. ¶48; Compl. ¶49; Compl. ¶50; Compl. ¶51; Compl. ¶52; Compl. ¶53; Compl. ¶54; Compl. ¶55; Compl. ¶56; Compl. ¶57; Compl. ¶58; Compl. ¶59; Compl. ¶60; Compl. ¶61; Compl. ¶62; Compl. ¶63; Compl. ¶64).
A second central issue is one of evidentiary integrity: Was the infringement verdict in the prior case procured through what the complaint alleges was knowingly false expert testimony? The case may turn on whether Plaintiff can prove that Defendant's expert deliberately misrepresented his ability to analytically separate and measure the claimed polymer components from Plaintiff's products (Compl. ¶¶18; Compl. ¶118).
Finally, the case will involve a question of materiality and remedy: If fraudulent conduct is found, was it sufficiently material to the outcome of the prior case to justify the extraordinary remedy of setting aside a final, appellate-affirmed judgment? The court will have to weigh the public policy favoring the finality of judgments against the policy of preventing fraud on the courts Compl. ¶138