2,160,705 / film-grade polymers / ELITE SURPASS
In this action, O’Keefe J found Dow’s ‘705 patent related to film-grade polymers to be valid and infringed by Nova. The result turned largely on the evidence, and no novel points of law were raised. The decision does exemplify a modest approach to the construction of the promise of the patent – indeed, O’Keefe J held that there was no promise at all, and the “scintilla” standard for utility should be applied – and the treatment of the inventive concept of the patent in the context of obviousness is also of some interest.
Claim Construction and Infringement
Dow’s ‘705 patent relates to film-grade polymers, used to make products such as plastic bags. Toughness is a desirable property of such films, and the patent taught that a blend of two different types of polymers would produce compositions with good properties. The claims were to a polymer composition, comprising a blend of homogeneously branched polymers (with specified properties) and heterogeneously branched polymers (also with specified properties).
A large part of the case is taken up with claim construction. Dow prevailed on all points. No new points of law were raised. O’Keefe J applied the established principle of claim consistency, that is, the same words are given the same meaning throughout the claims . He also adopted the standard interpretation of the term “comprising,” as meaning "including but not limited to" . This is particularly welcome in light of the FCA’s disappointing holding in Purdue Pharma 2011 FCA 132 that “comprising” does not have a standard meaning (see here).
O’Keefe J then held that Nova’s product infringed. A variety of issues were raised in the infringement context, but these were all resolved either on the basis of the claim construction, or on the facts.
Turning to validity, the key question with respect to utility, not surprisingly, was the construction of the promise of the patent. While O’Keefe J’s opinion does not make new law, it is noteworthy in not only construing the promise modestly, but in expressly holding that there is no promise at all, so that the “scintilla” standard is applicable.
The key phrase in the specification was :
Surprisingly, we have now discovered compositions useful in films and molded parts having synergistically enhanced physical properties, which compositions comprise . . .
The question was whether this constituted a promise of “synergistically enhanced physical properties.” O’Keefe held it did not. He quoted the leading FCA decision, Plavix 2013 FCA 186, but he relied particularly on Zinn J’s statement in Fournier / Fenofibrate 2012 FC 741, discussed here. As O’Keefe J accurately summarized it:
 The Fournier case and other cases tell us that we should look for the elevated promise or claimed utility in the claims of the patent. Further, any statement found elsewhere should be taken as a mere statement of advantage unless the inventor clearly and unequivocally states that it is part of the promised utility of the invention.
O’Keefe J concluded that the statement in question was not a promise; nor was there an promise anywhere else in the patent . This is significant, because the phrase in question is the kind of statement which might well have been construed as being a promise under a more aggressive approach. In my view, the the introductory word “surprisingly” makes it clear that this statement is intended to identify why the invention is non-obvious, and not to make a promise of utility. However, it should be emphasized that O’Keefe J’s conclusion that the patent did not make any promise was not a matter of law. As is standard in construing the promise, extensive evidence was heard from experts, and this evidence was reviewed at length by O’Keefe J.
O’Keefe J then held that:
 Since I have found that the inventors did not make an explicit promise of a specific result, the test for utility will be a “mere scintilla” of utility.
This is significant, because in prior cases, even post-Plavix, which take a modest approach to the construction of the promise, the general practice has been to assess utility against a modestly construed promise, rather than expressly holding that the scintilla standard applies.
This conclusion with respect to the promise of the patent was determinative of utility, as all of NOVA’s arguments that the invention lacked utility turned on its claim of an enhanced promise .
Overbreadth and Anticipation
Attacks based on overbreadth and anticipation were rejected largely on the facts.
One point of some interest relates to the prior art Garza patent. As noted, the 705 patent claimed a blend of homogeneously and heterogeneously branched polymers. As O’Keefe J explained
 The Garza patent provides the reader with a broad description of compositions and asks the reader to pick polymers from a number of broad categories to make the blend.
 Indeed, by making a choice of certain polymers, a person would obtain a composition that was outside the claims of the ‘705 Patent.
O’Keefe J held that this did not make the Garza patent anticipatory, because “the jurisprudence explicitly states that the prior patent must disclose subject matter that if performed would 'necessarily result in infringement of that patent.' In this case, you could perform the Garza patent and not arrive at the invention of the ‘705 Patent” . This conclusion is entirely in accordance with the established jurisprudence cited by O’Keefe J, and it would not be in the least noteworthy, but for Kane J’s recent holdings to the contrary (see here and here).
O’Keefe J’s conclusion that the claimed invention was not obvious turned largely on the facts, and on his identification of the inventive concept:
 In my view, the inventive concept of the ‘705 Patent is that you can use the SHC [of strain hardening coefficient] characteristic of the polymer used as component A in the claims of the ‘705 Patent, to predict that the composition would have the desired characteristics.
This statement of the inventive concept is interesting, as it is very far from the mere paraphrase of the claims which we often see. My own view, stated in previous posts, is that it is normally necessary to look to the disclosure, and indeed to the common general knowledge, to properly identify the inventive concept. It seems that this is what O’Keefe J has done. Unfortunately, it is not clear, at least to me, how he arrived at this inventive concept. My sense is that it turned on the expert evidence (see eg , ). I would consider this to be sound, but it would have been useful if O’Keefe J had elaborated on how he had arrived at this statement of the inventive concept.
There are a couple of other points of interest. One is that while O’Keefe J adverted to the controversial (in my view) proposition that so-called secondary factors such as commercial success should be given less weight in assessing obviousness , he nonetheless said that “one cannot ignore”the fact that NOVA had designed the infringing product in response to Dow’s patented product . In my view, he was right to do so: see Secondary” Evidence of Obviousness is Not Secondary, (2012) 28 CIPR 279.
On another point, O’Keefe J held that an expert witness for NOVA, Dr Speed, has applied the wrong standard in his analysis because in response to the question as to whether the notional skilled work “has an imagination,” Dr Speed replied “I expect so.” . O’Keefe J held this was inconsistent with the Beloit description of the “notional person” as a “technician skilled in the art but having no scintilla of inventiveness or imagination” . While O'Keefe J was right as a matter of law, I have considerably sympathy for Dr Speed, who was tripped up by a conceptual problem with the standard obviousness analysis. On the one hand, it purports to be an essentially factual inquiry as to whether a person with certain characteristics – in this case at least an undergraduate degree in chemical engineering or a related field, and two years experience – would in fact have arrived at the invention without difficulty. This is nominally a factual inquiry, which turns on expert evidence. And yet, it is clear enough that no actual skilled person with an engineering degree and two years experience would be without any scintilla of imagination. Engineering, and science generally, are not fields in which automata can keep a job for two years, except perhaps as bottle washers. Dr Speed’s assessment that a skilled person, as defined in this case, would have some imagination, was no doubt correct as a matter of fact, but it was not right as a matter of law – which highlights the artificiality of the inquiry.
Dow was successful in establishing that its patent was valid and infringed. O’Keefe J allowed Dow to elect between an accounting and damages [283.2], without making any comment. An accounting is discretionary, and while it was for a long time allowed routinely, some recent cases have suggested that it should not be granted as a matter of course. O’Keefe J’s willingness to grant an accounting so readily may be significant, though it may simply be that the request was not opposed.