Dow Chemical Company v. NOVA Chemicals Corporation

Dow Chemical Company v. NOVA Chemicals Corporation
Court (s) Database
Federal Court Decisions
Date
2014-09-05
Neutral citation
2014 FC 844
File numbers
T-2051-10
Decision Content
Date: 20140905
Docket: T-2051-10
Citation: 2014 FC 844
Ottawa, Ontario, September 5, 2014
PRESENT: The Honourable Mr. Justice O'Keefe
BETWEEN:
THE DOW CHEMICAL COMPANY,
DOW GLOBAL TECHNOLOGIES INC. and
DOW CHEMICAL CANADA ULC
Plaintiffs
And
NOVA CHEMICALS CORPORATION
Defendant
REASONS FOR JUDGMENT
[1] The plaintiff, The Dow Chemical Company (TDCC) is a business corporation organized and subsisting under the laws of the state of Delaware in the United States of America. TDCC is the owner of Canadian Patent No. 2,160,705 (the ‘705 Patent).
[2] The plaintiff, Dow Global Technologies Inc. (DGTI), a wholly owned subsidiary of TDCC, is also a business corporation organized and subsisting under the laws of the state of Delaware in the United States of America. DGTI was the owner of the ‘705 Patent between 2004 and June 3, 2009. On June 3, 2009, DGTI transferred its rights in the ‘705 Patent to TDCC.
[3] The plaintiff, Dow Chemical Canada ULC (DCC) is a Nova Scotia entity. DCC manufactures polyethylene copolymers under license of the ‘705 Patent from its plant in Fort Saskatchewan, Alberta. DCC sells polyethylene film-grade copolymers under the name ELITE in Canada. The plaintiffs are also collectively known as Dow.
[4] The defendant, NOVA Chemicals Corporation (NOVA) is a business corporation organized and subsisting under the laws of Canada. The defendant manufactures and sells polyethylene film-grade copolymers under the name SURPASS in Canada.
I. The Plaintiffs’ Description of the Nature of the Action [5] The plaintiffs, TDCC and DCC are manufacturers of polyethylene compositions, films and products that are useful to the polyethylene industry. TDCC is the owner of a patent for polyethylene compositions and the films made from such compositions. The plaintiffs are bringing this action to stop the defendant from allegedly engaging in the unauthorized and infringing manufacture, distribution, offering for sale, sale and use in Canada of polyethylene compositions, which encompass this patented technology. TDCC and DCC compete with the defendant in the polyethylene market.
[6] The ‘705 Patent has a filing date of April 19, 1994 and a publication date of November 10, 1994. The ‘705 Patent issued on August 22, 2006 and claims priority from US Patent Application No. 08/054,379 which was filed on April 28, 1993.
[7] The statement of claim states that:
The 705 Patent relates to an invention entitled “Fabricated Articles Made from Ethylene Polymer Blends”. The invention, which is more particularly described and claimed in the 705 Patent, relates in general to polyethylene compositions comprising a blend of at least one homogeneously branched linear or substantially linear ethylene/α-olefin interpolymer and at least one heterogeneously branched ethylene/α-olefin interpolymer.
[8] The plaintiffs’ claim, as set out in the statement of claim, is for:
(a) a declaration that Canadian Patent No. 2,160,705 (“the 705 Patent”) and in particular claims 10, 11, 15, 29, 30, 33, 35, 36, 41 and 42 of the 705 Patent have been infringed by the defendant;
(b) a permanent injunction restraining the defendant, together with all officers and directors of the defendant, and all agents, employees, servants, and persons under the control of, or acting in concert with, the defendant, from:
(i) infringing the 705 Patent and, in particular, claims 10, 11, 15, 29, 30, 33, 35, 36, 41 and 42 of the 705 Patent;
(ii) manufacturing, distributing, offering for sale, selling, licensing or otherwise making available or using in Canada the infringing film-grade ethylene copolymer (polyethylene) compositions sold under the name SURPASS, or under any other name, as described further below;
(c) an order requiring the defendant to deliver to the plaintiff The Dow Chemical Company, or destroy, any materials in the possession, care, custody or control of the defendant, or for which the defendant has title, whether such materials are in bulk or in packaged form, as well as any and all packaging, marketing and promotional material associated therewith, which may offend the injunction sought in (b) above;
(d) damages for infringement or an accounting of the profits of the defendant, whichever the plaintiffs may, after due inquiry and full discovery elect;
(e) reasonable compensation for the acts of the defendant under section 55(2) of the Patent Act, R.S.C. 1985, c. P-4, during the time that the application for the 705 Patent became open to public inspection until the grant of the 705 Patent;
(f) pre and post judgment interest on all monetary awards;
(g) the plaintiffs’ costs of this action on the highest allowable basis; and
(h) such further and other relief as the plaintiffs may be entitled to and which to this Honourable Court may seem just.
[9] The ‘705 Patent states the following about the film products to be produced at page 1 and 2 of the Patent:
Thin film products fabricated from linear low density polyethylene (LLDPE) and/or high density polyethylene (HDPE) are widely used for packaging applications such as merchandise bags, grocery sacks, and industrial liners. For these applications films with high tensile strength, as well as high impact strength, are desired because film producers can down gauge their film products and still retain packaging performance.
[…]
Surprisingly, we have now discovered compositions useful in films and molded parts having synergistically enhanced physical properties, which compositions comprise a blend of at least one homogeneously branched ethylene/α-olefin interpolymer and at lease [sic] one heterogeneously branched ethylene/α-olefin interpolymer.
In particular, formulated ethylene/α-olefin compositions have now been discovered to have improved physical and mechanical strength and are useful in making fabricated articles. Films made from these novel compositions exhibit surprisingly good impact and tensile properties, and an especially good combination of modulus yield, ultimate tensile, and toughness (e.g. dart impact).
[10] The ‘705 Patent states that the compositions are comprised of a blend of two components: component A which is 10 to 95 percent (by weight of the total composition) of at least one homogeneously branched substantially linear ethylene/α-olefin interpolymer having the stated properties; and component B which is 5 to 90 percent (by weight of the total composition) of at least one heterogeneously branched ethylene polymer with a certain density.
[11] As noted above, the combination of these two types of polymers results in a composition or film which has “synergistically enhanced physical properties” which includes both high tensile strength and high impact strength.
[12] To complete the background information, there has been litigation in the United States in relation to the corresponding U.S. Patent and certain claims constructions have been made. These findings are, however, not binding on this Court. As well, a finding of infringement has been made by a U.S. jury. This Court must carry out its own claims construction and make its own findings with respect to infringement. It may, however, be helpful to refer to the U.S. judgments on claim construction of similar claims.
II. Issues Relating to Claim Construction [13] The issues are:
1. Who is the person skilled in the art?
2. What is the meaning of “ethylene polymer composition” in the asserted claims of the ‘705 Patent?
3. What is the meaning of the term “comprising” in the asserted claims of the ‘705 Patent?
4. What is the meaning of the terms “homogeneously branched” and “heterogeneously branched” in the asserted claims of the ‘705 Patent?
5. What is the meaning of “linear” and “substantially linear” in the asserted claims of the ‘705 Patent?
6. What is the meaning of “slope of strain hardening coefficient” in the asserted claims of the ‘705 Patent?
7. What is the meaning of “linear polymer fraction” in the asserted claims of the ‘705 Patent?
[14] The plaintiffs submitted Issues 2 through 7 and I have added the first issue.
III. Principles of Patent Construction [15] In UView Ultraviolet Systems Inc v Brasscorp Ltd (cob Clipright Manufacturing Co), 2009 FC 58, 73 CPR (4th) 161 [UView], I stated at paragraph 35:
35 In order to construe a patent, there must be a review of the patent specification through the eyes of an “ordinary person skilled in the art”. Mr. Justice Binnie put it this way in Whirlpool Corp. v. Camco (2000), 9 C.P.R. (4th) 129 at 153 (S.C.C):
53. A second difficulty with the appellants' dictionary approach is that it urges the Court to look at the words through the eyes of a grammarian or etymologist rather than through the eyes and with the common knowledge of a worker of ordinary skill in the field to which the patent relates. An etymologist or grammarian might agree with the appellants that a vane of any type is still a vane. However, the patent specification is not addressed to grammarians, etymologists or to the public generally, but to skilled individuals sufficiently versed in the art to which the patent relates to enable them on a technical level to appreciate the nature and description of the invention: H. G. Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions (4th ed. 1969), at p. 185. The court, writes Dr. Fox, at p. 203, must place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and the manufacture at the time, and making itself acquainted with the technical meaning in that art or manufacture that any particular word or words may have... .
[16] Mr. Justice Binnie, also said the following about the principles of patent claim construction in Whirlpool Corp. v Camco Inc., 2000 SCC 67 at paragraphs 42 to 49, [2000] 2 SCR 1067:
1. The Principles of Patent Claims Construction
42 The content of a patent specification is regulated by s. 34 of the Patent Act. The first part is a “disclosure” in which the patentee must describe the invention “with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired”: Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504, at p. 517. The disclosure is the quid provided by the inventor in exchange for the quo of a 17-year (now 20-year) monopoly on the exploitation of the invention. The monopoly is enforceable by an array of statutory and equitable remedies and it is therefore important for the public to know what is prohibited and where they may safely go while the patent is still in existence. The public notice function is performed by the claims that conclude the specification and must state “distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he claims an exclusive property or privilege” (s. 34(2)). An inventor is not obliged to claim a monopoly on everything new, ingenious and useful disclosed in the specification. The usual rule is that what is not claimed is considered disclaimed.
43 The first step in a patent suit is therefore to construe the claims. Claims construction is antecedent to consideration of both validity and infringement issues. The appellants' argument is that these two inquiries -- validity and infringement -- are distinct, and that if the principles of “purposive construction” derived from Catnic are to be adopted at all, they should properly be confined to infringement issues only. The principle of “purposive construction”, they say, has no role to play in the determination of validity, and its misapplication is fatal to the judgment under appeal.
44 It is true that in Catnic itself there was no attack on the validity of the patent. The litigation turned on issues of infringement. The patent in issue dealt with galvanized steel lintels for use in building construction. Lintels are structural members placed over openings such as doors and windows to support the building above. The patent taught an ingenious new type of lintel of sheet metal bent into a box-like “lazy Z” shape that was light to handle and inexpensive to manufacture. The defendant knew of the plaintiff's product but was not familiar with the plaintiff's patent. The claims (of which they were unaware) taught that the lintel must have “a second rigid support member extending vertically from or from near the rear edge of the first horizontal plate” (underlining added; italics in original deleted). Vertical alignment would maximize the load-bearing capacity. For reasons unrelated to patent avoidance, the rigid support member in the defendant's product was inclined about eight degrees off vertical. The trial judge concluded that there was no literal infringement because the support did not extend precisely “vertically”, but that, since there was no material difference in function of the component part, there was, viewing the defendant's lintel as a whole, infringement of the “pith and marrow” of the plaintiff's invention. The trial judge was reversed by a majority in the Court of Appeal but was subsequently avenged by restoration of his judgment by a unanimous House of Lords. Lord Diplock's description of purposive construction was as follows, at pp. 242-43:
My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. “skilled in the art”), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called “pith and marrow” of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
[Emphasis in original]
45 The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the “essential” elements of his invention. This is no different, I think, than the approach adopted roughly 40 years earlier by Duff C.J. in J. K. Smit & Sons, Inc. v. McClintock, [1940] S.C.R. 279. The patent in that case related to a method of setting diamonds in devices such as rotary drill bits for earth boring. Duff C.J., citing the earlier jurisprudence, put the focus on the inventor's own identification of the “essential” parts of his invention, at p. 285:
Obviously, the invention, as described by the inventor himself, involves the use of air suction to hold the diamonds in place while the molten metal is being introduced into the mold. There can be no doubt, in my mind, that as the inventor puts it, that is an essential part of his process. That part of his process is clearly not taken by the appellants. Adapting the language of Lord Romer, it is not the province of the court to guess what is and is not of the essence of the invention of the respondent. The patentee has clearly indicated that the use of air suction at that stage of the process is an essential, if not the essential, part of the invention described in the specification.
[Emphasis in original]
46 To the same effect is the judgment of Thorson P. in McPhar Engineering Co. of Canada v. Sharpe Instruments Ltd., [1956-60] Ex. C.R. 467, at p. 525:
Thus it is established law that if a person takes the substance of an invention he is guilty of infringement and it does not matter whether he omits a feature that is not essential to it or substitutes an equivalent for it.
[Emphasis in original]
47 The “essential” elements approach was established in earlier English cases such as Marconi v. British Radio Telegraph and Telephone Co. (1911), 28 R.P.C. 181 (Ch. D.), at p. 217, referred to by Duff C.J. in J. K. Smit, supra, and more recent pre-Catnic decisions in that country such as Birmingham Sound Reproducers Ld. v. Collaro Ltd., [1956] R.P.C. 232 (Eng. C.A.), and C. Van Der Lely N.V. v. Bamfords Ltd., [1963] R.P.C. 61 (H.L.), where Lord Reid, dissenting on the result, said at p. 76: “you cannot avoid infringement by substituting an obvious equivalent for an unessential integer”.
[Emphasis in original]
48 The Catnic analysis therefore was not a departure from the earlier jurisprudence in the United Kingdom or in this country. It is no disrespect to Lord Diplock to suggest that at least to some extent he poured some fine old whiskies into a new bottle, skilfully refined the blend, brought a fresh clarity to the result, added a distinctive label, and voilà “purposive construction” In Catnic, as in the earlier case law, the scope of the monopoly remains a function of the written claims but, as before, flexibility and fairness is achieved by differentiating the essential features (“the pith and marrow”) from the unessential, based on a knowledgeable reading of the whole specification through the eyes of the skilled addressee rather than on the basis of “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge” (Catnic, supra, p. 243).
49 As stated, the Federal Court of Appeal applied the “purposive construction” approach to claims construction in O'Hara, supra, and, with respect, I think it was correct to do so. The appellants' argument that the principle of purposive construction is wrong or applies only to infringement issues must be rejected for a number of reasons: …
A. Purposive Construction is to be Used [17] I will repeat the statements I made in paragraphs 41 to 44 of UView:
41 It is important to note that when applying a purposive construction, the Court must, with the assistance of the skilled person, identify the particular words or phrases in the clause that describe what the inventor considered to be the “essential” elements of his invention. The construction given by the Court must be consistent with the text of the claims. A court must interpret the claims and not redraft them.
42 The construction of a patent is a question of law and is to be done on the basis that the addressee is a person skilled in the art.
43 The language of a patent should be construed as of the date of publication.
44 A patent cannot be construed with an eye on the allegedly infringing device in respect of infringement.
(1) The Witnesses – NOVA’s Witnesses (a) Expert Witnesses [18] Dr. Charles Stanley Speed has approximately forty years of experience in the field of polymer technology both as an employee and as an independent consultant. He has extensive experience in polymer physics, product application and development and technical service and product catalyst and process development. Dr. Speed was qualified as an expert in polymer science, polymerization techniques, process development, characterization and testing of polymers and compositions, product application development including blending and film blowing and product analysis.
[19] Dr. Francis Mirabella has a Ph. D. in polymer science. As of 1994, he had worked for many years as a consulting researcher. Dr. Mirabella was qualified as an expert in the characterization of polymers including both analytical and preparative temperature rising elusion fractionation (TREF) and gel permeation chromatograph (GPC) techniques and as an expert in polymer science generally.
[20] Dr. Mukerrem Cakmak is a professor of polymer engineering at the University of Akron. He was qualified as an expert in measuring and assessing the mechanical properties of polymers including the tensile testing of polyethylene copolymers. Dr. Cakmak testified about the meaning of strain hardening coefficient (SHC) as that term is used in the ‘705 Patent.
(b) Fact Witnesses [21] Dr. Eric Kelusky was the vice-president for research and technology for NOVA Chemicals Corporation when he retired in 2000. He remains a consultant with NOVA.
[22] Dr. Stephen Brown is a principal research scientist at NOVA.
[23] Ms. Tracey Henselwood’s testimony dealt with the handling of the samples.
[24] Miss Jennifer Li’s evidence was received by way of stipulation. She has a Master’s degree in chemical engineering. Her evidence dealt with her observance of Dow’s experiments in Terneuzen, Netherlands, with respect to the reproduction of the polyethylene manufactured in NOVA’s first reactor that is used to manufacture SURPASS.
[25] Ms. Monika Kleczek’s evidence was received by stipulation. She is a Ph. D. graduate student in chemistry who also observed Dow’s experiments in Terneuzen.
[26] Mr. Sachit Chopra’s evidence was also received by stipulation. He has a Master’s degree in polymer chemistry. He observed Dow’s experiments in Freeport, Texas.
(2) The Witnesses - Dow’s Witnesses (a) Expert Witnesses [27] Dr. Joao Soares is a professor in the Department of Chemical and Materials Engineering at the University of Alberta. Dr. Soares obtained his Ph. D. in 1994. Dr. Soares oversaw some of the experiments conducted by Dow including the experiments at Dow’s Terneuzen facility.
[28] Dr. Robert Young is a professor of polymer science and technology at the University of Manchester. He has a Ph.D. in “deformation mechanisms in crystalline polymers” and has served as head of the Department of Polymer Science and Technology at the University of Manchester Institute of Science and Technology. He has published a text book, “Introduction to Polymers.”
[29] Dr. Christopher Scott is president of Material Answers LLC and he specializes in material structure, properties and processing. He has extensive experience with manufacturing, product development, product design and failure analysis. He has published in the areas of polymer processing and structure relationships, compounding and mixing in multiphase polymer systems and structure and morphology development during polymer processing. He has a Ph.D. in chemical engineering from the University of Minnesota. He was an assistant professor and an associate professor in the department of material science at the Massachusetts Institute of Technology.
(b) Fact Witnesses [30] Dr. Shih-Yaw Lai is a named inventor on the ‘705 Patent. He gave evidence about his work leading up to the development of a mathematical function which would become the SHC coefficient in the ‘705 Patent.
[31] Mr. Ronald Markovich is a named inventor. His examination for discovery was read into evidence at trial and the evidence related to his work resulting in the filing for the application for the ‘705 Patent.
[32] Dr. Steve Chum is also a named inventor of the ‘705 Patent. Parts of his discovery evidence were read into the record.
[33] In its closing submissions at paragraph 43, NOVA stated:
Claims 11, 29, 30, 33, 35, 36, 41 and 42 are in issue. The terms in dispute are the following, which are common to all claims in issue:
(a) comprising;
(b) “homogeneously branched” and “heterogeneously branched”;
(c) “linear ethylene/α-olefin interpolymer”;
(d) strain hardening coefficient.
[34] The parties agree that the elements of every claim in issue are essential.
[35] The ‘705 Patent, in part, has the following claims:
10. An ethylene polymer composition, comprising:
(A) from 10 to 95 percent (by weight of the total composition) of at least one homogeneously branched linear ethylene/α-olefin interpolymer having:
(i) a density from 0.88 grams/cubic centimetre (g/cm3) to 0.935 g/cm3,
(ii) a molecular weight distribution (Mw/Mn) from 1.8 to 2.8,
(iii) a melt index (I2) from 0.001 grams/10 minutes (g/10 min) to 10 g/10 min,
(iv) no linear polymer fraction,
(v) a single melting peak as measured using differential scanning calorimetry; and
(vi) a short chain branching distribution index (SCBDI) of greater than 50 percent; and
(B) from 5 to 90 percent (by weight of the total composition) of at least one heterogeneously branched ethylene polymer having a density from 0.91 g/cm3 to 0.965 g/cm3.
11. The composition of claim 10, wherein the homogeneously branched linear ethylene/α-olefin interpolymer has a slope of strain hardening coefficient of from 1.3 to 10.
…
29. An ethylene polymer composition comprising
(A) from about 10 percent (by weight of the total composition) to about 95 percent (by weight of the total composition) of at least one homogeneously branched linear ethylene/α-olefin interpolymer having:
(i) a density from about 0.89 grams/cubic centimetre (g/cm3) to about 0.935 g/cm3,
(ii) a molecular weight distribution (Mw/Mn) from about 1.8 to about 2.8,
(iii) a melt index (I2) from about 0.001 grams/10 minutes (g/10 min),
(iv) no high density fraction,
(v) a single melting peak as measured using differential scanning calorimetry, and
(vi) a slope of strain hardening coefficient greater than or equal to 1.3; and
(B) from about 5 percent (by weight of the total composition) to about 90 percent (by weight of the total composition) of at least one heterogeneously branched linear ethylene polymer having a density from about 0.93 g/cm3 to about 0.965 g/cm3
30. The composition of claim 29, wherein the at least one homogeneously branched linear ethylene/α-olefin interpolymer has a slope of strain hardening coefficient greater than or equal to 1.5.
…
33. The composition of claim 32, wherein the at least one homogeneously branched linear ethylene/α-olefin interpolymer is a copolymer of ethylene and 1-octene.
…
35. The composition of claim 34, wherein the at least one heterogeneously branched ethylene polymer is a copolymer of ethylene and 1-octene.
36. The composition of claim 29, wherein the density of the at least one homogeneously branched linear ethylene/α-olefin interpolymer is in the range from about 0.905 g/cm3 to about 0.925 g/cm3 and the I2 melt index is in the range of from about 0.001 g/10 minutes to less than about 1 g/10 minutes.
…
41. An ethylene polymer composition comprising
(A) from about 10 percent (by weight of the total composition) to about 95 percent (by weight of the total composition) of at least one homogeneously branched linear or substantially linear ethylene/α-olefin interpolymer having:
(i) a density from about 0.89 grams/cubic centimetre (g/cm3) to about 0.935 g/cm3,
(ii) a molecular weight distribution (Mw/Mn) from about 1.8 to about 2.8, as determined using gel permeation chromatography,
(iii) a melt index (I2) from about 0.001 grams/10 minutes (g/10 min,) to about 1 g/10 min.,
(iv) a single melting peak, as determined using differential scanning calorimetry,
(v) a slope of strain hardening coefficient greater than or equal to 1.3, and
(vi) a Composition Distribution Branch Index (CDBI) greater than 50 percent; and
(B) from about 5 percent (by weight of the total composition) to about 90 percent (by weight of the total composition) of at least one heterogeneously branched ethylene interpolymer 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 temperature rising elution fractionation (TREF) technique.
42. The composition of claim 41, wherein the at least one ethylene interpolymer (A) has a slope of strain hardening coefficient greater than or equal to 1.5.
IV. Issues Relating to Claims Construction A. Issue 1 – Who is the person skilled in the art? [36] The parties agree that the person skilled in the art of the ‘705 Patent would be a scientist. The person would have at least a Bachelor’s degree in chemical engineering, chemistry, materials science or polymer science. The person should have at least two years’ experience in the characterization of polyolefins. The person should also have an understanding of polymer compositions and experience with the materials science of polymers such as experience with tensile properties. The skilled person need not be an individual person. The skilled person can be a combination of skilled workers, scientists and technicians, each of whom brings their own expertise to the problem (see Westaim Corp v Royal Canadian Mint, 2002 FCT 1217 at paragraph 36, 224 FTR 184).
B. Issue 2 – What is the meaning of “ethylene polymer composition” in the asserted claims of the ‘705 Patent? [37] This term must be given a meaning as it has implications on validity.
[38] For the purpose of these reasons, I will use the construction summary given by Dow for its proposed constructions and for NOVA’s proposed constructions.
[39] The parties suggested these constructions of “ethylene polymer composition”:
Dow’s Construction
NOVA’s Construction
The term ethylene polymer composition in the context of the claims requiring polymer components A and B would be understood by the person skilled in the art to mean a blend of distinct polymer components.
NOVA has not explicitly articulated its position on the meaning of “ethylene polymer composition’ but appears to be arguing that a composition does not need to be a blend of polymers and would include any arbitrary selection of polymer molecules taken from a single polymer.
[40] The claims of the ‘705 Patent refer to an “ethylene polymer composition”. What meaning should be given to this term? When I review the ‘705 Patent, I note that it basically states that you mix two interpolymers to obtain a composition or blend which has better properties. The Patent refers to the two polymers as components “A” and “B”. Component “A” is homogeneously branched and component “B” is heterogeneously branched.
[41] NOVA seems to suggest that the polymer composition, as used in the claims of the ‘705 Patent would include polymers that are not blends of polymer components. My reading of the ‘705 Patent does not lead to this conclusion. I am of the view that the ‘705 Patent states that you mix a component A interpolymer with a component B polymer to obtain the desired blend. Thus, the ‘705 Patent does not address polymers that are not blends of at least two polymer components.
[42] I would therefore accept that “[t]he term ‘ethylene polymer composition’ in the context of the claims requiring polymer components A and B would be understood by the person skilled in the art to mean a blend of distinct polymer components.”
C. Issue 3 – What is the meaning of the term “comprising” in the asserted claims of the ‘705 Patent [43] Dow’s summary of the parties’ constructions for the term “comprising” is:
Dow’s Construction
NOVA’s Construction
Comprising, as used in all claims, means including but not limited to.
In the preamble to each of the asserted claims “comprising” should be construed as restrictive in scope and given a meaning similar to “consisting of” such that the components A and B cannot be combined with additional polymer components or additives.
However, in claim 41 the use of “comprising” with respect to component B should be given the conventional meaning of including but not limited to
[44] I will first deal with NOVA’s position to give a different meaning to comprise in claim 41 of the ‘705 Patent than in the other claims in the suit.
[45] The jurisprudence dealing with the construction of terms in the claims of a patent has consistently held that the meaning of a term in the claims of a patent must be given the same meaning in all of the claims of the patent and the same meaning within any claim of the patent. In Johnson & Johnson Inc v Boston Scientific Ltd, 2008 FC 552, 327 FTR 49 [Boston Scientific], Madam Justice Carolyn Layden-Stevenson stated at paragraph 212:
While the plaintiffs are correct that a dependent claim cannot narrow the scope of an independent claim, there is a presumption of claim consistency, that is, the same words are given the same meaning throughout the claims. …
[46] I do not agree with NOVA’s position that two different meanings should be given to the word “comprise” in claim 41 of the ‘705 Patent.
[47] As well, NOVA takes the position that the word “comprising” when used in the claims in the suit means that you can only have component A and component B when forming the composition.
[48] Dow, on the other hand, submits that you can have component A and component B plus other components. Dow claims that “comprising” means including the following components but not excluding others. In other words, “comprising” would mean “including but not limited to”.
[49] That definition finds support in the jurisprudence. In Burton Parsons Chemicals, Inc v Hewlett-Packard (Canada) Ltd, [1976] 1 SCR 555 at 566, the Supreme Court of Canada said of “comprising” that it “is a word very frequently used in patent claims. It is no vaguer than ‘includes’.” Similarly in Boston Scientific at paragraph 213, Justice Layden-Stevenson said that “comprising” should be construed as meaning “including, but not limited to”, so long as all elements essential to the invention are found within the claim.
[50] This definition is also supported by the experts. During Dr. Soares’ testimony, this exchange occurred:
Q. …And at paragraphs 43 and 44 you discuss the interpretation Dr. Speed gives to this. You state at paragraph 44 that the word comprising would indicate to the person skilled in the art:
…that the claim is not limited to the recited component polymers…but could include additional polymers.
And that the person skilled in the art would know that:
…any additional polymer components could not be of a type, nature or amount so as to deprive the composition of the desired benefits.
Can you explain what you’re saying here?
A. Yes, it’s my understanding that comprising has a very precise meaning in patent law. It does include the possibility of adding other components besides component A and B. A person skilled in the art of course is reading the patent and trying to understand the patent and make use of the good features it will have. So the person skilled in the art tried to add a third component that’s not A nor B, that person will look for a component that of course would not destroy the formulation and come up with a component that’s clear and compatible if it had been selected for A and B. So I believe that the comprising does include other components besides A and B, but those components will be selected in such a way that wouldn’t damage the final property of the product.
(Transcript, 28 October 2013, pages 4673 to 4674)
[51] To similar effect, NOVA’s expert, Dr. Speed, gave the following testimony:
Q. So yesterday we did come to an agreement on how you were – or you acknowledged that your interpretation of the word comprising in the claims of the 705 patent were different than the traditional meaning of comprising, correct?
A. Yes, I believe that’s true.
Q. Yes. And the traditional meaning as we understand is including but not limited thereto?
A. That’s my understanding of the common use of the word.
(Transcript, 16 October 2013, pages 3494 to 3495)
[52] I do not agree with NOVA’s position that “comprising” means “consisting” of components A and B or that it means “limited” to components A and B.
[53] I base my conclusion on the jurisprudence with respect to the traditional meaning of the word comprising and the testimony of Dr. Soares. I prefer that to Dr. Speed’s evidence since Dr. Speed also admits the traditional meaning of the word comprising is “including but not limited thereto.” Dr. Speed also uses the traditional meaning of the word “comprising” in his construction of part of claim 41
[54] My construction of the word “comprising” is the construction put forward by Dow:
“comprising” as read in all claims, means including but not limited to.
D. Issue 4 – What is the meaning of the terms “homogeneously branched” and “heterogeneously branched” in the asserted claims of the ‘705 Patent? [55] The parties’ suggested constructions are as follows:
Dow’s Construction
NOVA’s Construction
“homogeneously branched” means a polymer in which the comonomer is randomly distributed within a given interpolymer molecule and wherein substantially all the interpolymer molecules have the same ethylene/comonomer ratio within that interpolymer (705 Patent at page 4 lines 23-28).
NOVA proposes that CDBI is used as a bright line test for determining whether a polymer is “Homogeneously branched”, irrespective of the polymers known properties and method of manufacture. NOVA’s experts differ on whether the bright line for homogeneity is drawn at CDBIs of greater that either 30% or 50%.
“Heterogeneously branched” refers to a polymer having a distribution of branching different from and broader than the homogeneously branched ethylene/α-olefin interpolymer at similar molecular weight and SCB averages.
NOVA argues that CDBI is also used to define a heterogeneous polymer, with the bright line being drawn at CDBIs of less than either 30% or 50%.
[56] The ‘705 Patent defines the term “homogeneously branched” on page 4 at lines 22 to 27:
The homogeneously branched ethylene/α-olefin interpolymers useful for forming the compositions described herein are those in which the comonomer is randomly distributed within a given interpolymer molecule and wherein substantially all of the interpolymer molecules have the same ethylene/comonomer ratio within that interpolymer. …
The parties agree that this is the ‘705 Patent’s definition of homogeneously branched.
[57] They also agree that a polyethylene copolymer is either homogeneously branched or heterogeneously branched. Dr. Speed stated it this way in his testimony:
Q. And as I understand it, and this is probably a trite statement to make after all these days in evidence, a polymer can be either homogeneously branched or heterogeneously branched but it cannot both be one - - or cannot be both at the same time?
A. The same time. To my understanding, if your definitions are working right, you’re in one camp or the other camp.
Q. All right.
A. But not in both.
(Transcript, 17 October 2013, page 3775)
[58] NOVA submits that the use of Composition Distribution Branch Index (CDBI) should be used to determine whether a polymer is homogeneously branched or heterogeneously branched. According to the experts, the CDBI of the polymer can be determined easily. NOVA proposes that CDBI is a bright line test for distinguishing the two types of polymers. NOVA’s experts do not seem to agree as to where the bright line for determining homogeneity should be placed. Should it be that polymers having a CDBI of greater than 30% are homogeneously branched or should it be polymers having a CDBI of 50% are homogeneously branched? Similarily, would a polymer having a CDBI of less than either 30% or 50% be heterogeneously branched?
[59] Dow’s proposed construction of “homogeneously branched” follows the definition contained in the ‘705 Patent which sets out these characteristics:
…the compositions described herein are those in which the comonomer is randomly distributed within a given interpolymer molecule and wherein substantially all of the interpolymer molecules have the same ethylene/comonomer ratio within that polymer …
[60] The testimony of the experts establishes that before 1994, it was well known to the person skilled in the art that the average branching frequency for homogeneously branched polymers did not change with changes in the molec