Dow Chemical Co. v. Nova Chemicals Corp. (Canada)

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

THE DOW CHEMICAL COMPANY,
Plaintiff-Appellee,

v.
NOVA CHEMICALS CORPORATION (CANADA)
AND NOVA CHEMICALS INC. (DELAWARE),
Defendants-Appellants.
__________________________

2010-1526
__________________________

Appeal from the United States District Court for the
District of Delaware in case no. 05-CV-0737, Judge Leo-
nard P. Stark.
__________________________

Decided: January 24, 2012
__________________________

HENRY J. ROPER, Jenner & Block, LLP, of Chicago, Il-
linois, argued for plaintiff-appellee. With him on the brief
were AARON A. BARLOW and PAUL D. MARGOLIS. Of coun-
sel on the brief were RAYMOND N. NIMROD, Quinn
Emanuel Urquhart & Sullivan, of New York, New York.
DOW CHEMICAL v. NOVA CHEMICALS 2

DONALD R. DUNNER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
defendants-appellants. With him on the brief were
DARREL C. KARL and MARK J. FELDSTEIN. Of counsel on
the brief were H. WOODRUFF TURNER and DAVID R.
COHEN, K&L Gates, LLP, of Pittsburgh, Pennsylvania. Of
counsel were RONALD A. BLEEKER, FORD F. FARABOW, JR.,
MARTIN I. FUCHS and JOANN M. NETH.
__________________________

Before LINN, PROST, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST.
Dissenting opinion filed by Circuit Judge REYNA.

PROST, Circuit Judge.

Nova Chemicals Corporation (“Nova”) appeals from
the district court’s denial of its motion for judgment as a
matter of law. Nova argues that the district court should
have, in the first place, found that the Dow Chemical
Company (“Dow”) lacked standing to bring this suit.
Nova also argues that the district court should have set
aside a jury verdict of infringement in Dow’s favor and
instead found that the patents asserted by Dow are
invalid for indefiniteness and lack of an adequate written
description and are not infringed. Because we see no
error in the district court’s standing and invalidity analy-
ses, and because substantial evidence supports the jury’s
infringement finding, we affirm.

BACKGROUND

Dow brought this suit to enforce U.S. Patent No.
5,847,053 (“’053 patent”) and U.S. Patent No. 6,111,023
(“’023 patent”) (collectively, “the patents in suit”). The
patents in suit claim a new kind of plastic that is stronger
3 DOW CHEMICAL v. NOVA CHEMICALS

than conventional plastics, which allows, for example,
using thinner films (less plastic) for the same purpose.
Dow markets its invention as ELITE. Nova’s competing
product is named SURPASS. Dow claimed in the district
court that SURPASS infringes the patents in suit. Nova
put on a three-part defense. First, it argued that Dow
lacked standing to enforce the patents in suit. Second, it
argued that the patents in suit were invalid for indefi-
niteness and lack of an adequate written description. 1
Third, it argued that SURPASS did not infringe the
patents in suit.

Nova did not prevail on any of its arguments in the
district court. The district court held a bench trial to
resolve the standing issue and found that Dow had stand-
ing to enforce the patents in suit. Dow Chem. Co. v. Nova
Chems. Corp., 726 F. Supp. 2d 459, 463-64 (D. Del. 2010).
With respect to Nova’s indefiniteness argument, the
district court found that the patents were not indefinite
as a matter of law and construed the claims. The district
court nonetheless allowed the jury to consider whether
the patents were invalid for indefiniteness and lack of an
adequate written description. The infringement issue
was also submitted to the jury. In the end, the jury found
the patents in suit valid and infringed and awarded
approximately $61.7 million in damages to Dow for lost
profits and reasonable royalties. The district court subse-
quently denied Nova’s renewed motion for judgment as a
matter of law and entered judgment in line with the jury’s
verdict. This appeal ensued. We have jurisdiction under
28 U.S.C. § 1295(a)(1).

1 Nova also argued that the patents in suit were in-
valid for obviousness. The jury found that the patents
were not obvious. Nova does not appeal that determina-
tion.
DOW CHEMICAL v. NOVA CHEMICALS 4

ANALYSIS

Nova makes three main arguments on appeal. First,
it argues that Dow lacks standing to enforce the patents
in suit. Second, it argues that the patents in suit are
invalid for indefiniteness and lack of an adequate written
description. Third, it argues that the jury’s verdict of
infringement is not supported by substantial evidence.
We address each argument in turn below.

A. STANDING

The standing issue concerns the ownership of the pat-
ents in suit. There is no dispute that Dow is indeed the
original assignee of the patents in suit and record title
holder at the U. S. Patent and Trademark Office (“PTO”).
Therefore Dow is the presumed owner of the patents in
suit. See SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319, 1327-28 (Fed. Cir. 2010) (“The recording of an
assignment with the PTO is not a determination as to the
validity of the assignment. However, we think that it
creates a presumption of validity as to the assignment
and places the burden to rebut such a showing on one
challenging the assignment.” (citation omitted)). Effective
on January 1, 2002, however, Dow and its holding com-
pany, Dow Global Technologies, Inc. (“DGTI”) entered into
a “Contribution Agreement” (or “the agreement”) accord-
ing to which a large share of Dow’s intellectual property
rights was transferred to DGTI. Apparently, the Contri-
bution Agreement was intended to generate certain tax
benefits for Dow. Nova argues that the patents in suit
were among the intellectual property rights that were
transferred to DGTI under the Contribution Agreement.
As a result, according to Nova, Dow does not have stand-
ing to enforce the patents in suit. Cf. Arachnid, Inc. v.
Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991).
5 DOW CHEMICAL v. NOVA CHEMICALS

Dow disagrees, arguing that it held on to the patents in
suit so that it could enforce them in a suit such as this.

After holding a bench trial, the district court deter-
mined that the patents in suit were never transferred to
DGTI. In particular, the court found that the Contribu-
tion Agreement was unambiguous in that it incorporated
a document—entitled Schedule A—that contained a list of
all the patents that were transferred to DGTI. The court
heard and credited testimony from a Dow employee who
was in charge of preparing and maintaining Schedule A,
and she corroborated Dow’s assertion that the patents in
suit never appeared in Schedule A. Based on these find-
ings, the court found that Dow had met its burden of
establishing the ownership of the patents in suit. And,
because the court found that the clear terms of the
agreement controlled, it declined to evaluate the extrinsic
evidence that Nova suggested defeated Dow’s standing.
The court accordingly denied Nova’s request to dismiss
the suit for lack of standing. For the reasons set forth
below, we agree with the district court’s determinations.

Our standing analysis presents an issue of contract
interpretation: whether Dow transferred the patents in
suit to DGTI under the Contribution Agreement. Two
sections of the Contribution Agreement (sections 2.01 and
1.07) are particularly important to our analysis. Section
2.01 of the agreement states,

2.01 Transfer of Patent Rights and Technology.
Effective on the Transfer date, [Dow]
hereby conveys, transfers, assigns and de-
livers to DGTI, and DGTI hereby accepts
from [Dow] as an additional contribution
to DGTI’s capital, all of [Dow’s] right and
title to and interest in the Patent Rights,
DOW CHEMICAL v. NOVA CHEMICALS 6

Technology and Work Processes, which
rights are owned or controlled by [Dow] on
the Transfer Date or thereafter.

J.A. 5041-42. This section essentially provides that Dow
transferred its “Patent Rights” to DGTI. We must there-
fore determine whether the patents in suit fit within the
scope of “Patent Rights.” That brings us to section 1.07,
which defines “Patent Rights” in just two sentences:

1.07 "Patent Rights” means any and all pat-
ents and applications for patents of any
kind, filed with and/or granted by a gov-
ernmental body of the United States or
any other country . . . which are owned
solely or controlled by [Dow] on the Trans-
fer Date or thereafter, that [Dow] is able
to assign to DGTI without the consent of
or accounting to a Third Patty or Affili-
ated Company, without diminishing the
royalties paid or payable by or otherwise
materially affecting the obligations of
such Third Party or Affiliated Company
with respect to such Patent Rights, and
without resulting in a loss of rights. The
parties shall provide a schedule of Patent
Rights as Schedule A to this Agreement,
within ninety (90) days of the Effective
Date, and shall provide subsequent sup-
plements thereto from time to time during
the Term.

J.A. 5040.

We begin our analysis of the scope of Patent Rights by
noting that the first sentence in section 1.07 is not par-
7 DOW CHEMICAL v. NOVA CHEMICALS

ticularly helpful in determining whether the patents in
suit were transferred to DGTI. That sentence describes
that Patent Rights excludes those patents that cannot be
transferred “without resulting in a loss of rights.” 2 This
sentence cannot be interpreted literally because hardly
anything can be transferred “without resulting in [some]
loss of rights.” Nova and Dow thus each offer their own
theory of what this “loss of rights” exception entails.
Nova suggests that “loss of rights” only refers to loss of
standing in any litigation that was pending when the
agreement took effect. According to Nova, therefore, the
exception was meant to ensure that any patents that were
then involved in litigation remained with Dow. And
because the patents in suit were not involved in litigation
when the agreement took effect, Nova argues, they were
necessarily transferred to DGTI. Dow counters that the
“loss of rights” exception was meant not only to protect its
standing in then-pending litigation, but also to preserve
its ability to recoup lost profits for those patents that
would be asserted in future litigation (such as the patents
in suit). Neither one of these theories is anchored in the
text of the Contribution Agreement.

We are not at liberty, however, to detach our interpre-
tive analysis from the four-corners of the contract at the
mere suggestion that one phrase in the contract, viewed
in isolation, is not readily amenable to literal interpreta-
tion. Rather, we “must give effect to all terms of the
instrument, must read the instrument as a whole, and, if
possible, reconcile all the provisions of the instrument.”
Elliot Assocs. v. Avatex Corp., 715 A.2d 843, 854 (Del.

2 There is no dispute that other than the “loss of
rights” limitation, the remaining language of the first
sentence of section 1.07 is immaterial to the standing
issue presented here. Therefore, we only focus on the
phrase “loss of rights.”
DOW CHEMICAL v. NOVA CHEMICALS 8

1998); see generally, 11 Williston on Contracts § 32:5 (4th
ed. 2010). As we explain below, to the extent that the
phrase “loss of rights” may require interpretation, it does
not give us license to open the door to extrinsic evidence
(and Dow’s and Nova’s subjective understanding of the
term, for that matter) because the rest of section 2.01 and
the agreement as a whole reveal that the patents in suit
are not within the scope of Patent Rights.

Unlike the first sentence, the second sentence of sec-
tion 1.07 makes it abundantly clear that Dow and DGTI
intended Schedule A to include a list of all of the trans-
ferred patents (among other things). 3 In line with our
obligation to resolve ambiguities in favor of a harmonious
interpretation, we must hold that whatever the term “loss
of rights” implies, it cannot serve to wipe out the clear
reference to Schedule A. Moreover, “[s]pecific language in
a contract controls over general language, and where
specific and general provisions conflict, the specific provi-
sion ordinarily qualifies the meaning of the general one.”
DCV Holdings, Inc. v. ConAgra, Inc., 889 A.2d 954, 961
(Del. 2005). Here, the “loss of rights” phrase is part of a
broad exclusionary definition; whereas the reference to
Schedule A is inclusionary and, indeed, quite specific.
That gives us yet another reason to believe that the
specific reference to Schedule A manifests the objective
intent of the parties to the agreement and is thus control-
ling here. As we see it, well-established principles of
contract interpretation command us to hold that for the
purpose of the standing issue that we are called on to
decide, the scope of Patent Rights is not ambiguous.

3 As we explain below, section 9.07 of the Contribu-
tion Agreement incorporates Schedule A into the agree-
ment.
9 DOW CHEMICAL v. NOVA CHEMICALS

Because the patents in suit do not appear in Schedule A,
they were not transferred to DGTI.

Nova urges us to effectively read Schedule A out of
the Contribution Agreement. It posits that section 9.07 of
the Contribution Agreement reveals that Schedule A does
not matter at all. To support this argument, Nova selec-
tively recites a portion of section 9.07, which states,
“omission of an item from one or more schedules shall not
give rise to an implication that DGTI has rights less than
those otherwise provided for in this Agreement.” Appel-
lant Br. 11 (quoting J.A. 5046). Based on this snippet of
section 9.07, Nova concludes that the contents of the
schedules are not controlling. We disagree. Section 9.07
provides,

9.07 Schedules. Each of the schedules refer-
enced within this Agreement, prospec-
tively including any updates or
amendments thereto, is deemed incorpo-
rated herein by reference. While care
shall be taken in the provision of the
schedules, it is recognized that inadver-
tent errors may occur. Accordingly, inclu-
sion of an item on one or more schedules
shall not give rise to rights or an implica-
tion that DGTI has rights greater than
those expressly provided for in this Agree-
ment. Likewise, omission of an item from
one or more schedules shall not give rise
to an implication that DGTI has rights
less than those otherwise provided for in
this Agreement. Upon their mutual rec-
ognition of an error in one or more sched-
ules, the parties will amend the erroneous
item(s) on the affected schedule(s).
DOW CHEMICAL v. NOVA CHEMICALS 10

J. A. 5046. As it appears in the very first sentence, this
section of the contract is meant to incorporate the sched-
ules into the agreement. That alone gives us pause with
regards to Nova’s argument, for it would seem odd if the
parties intended to incorporate the schedules into the
agreement and yet declare them meaningless in the very
same section of the agreement. And of course, the re-
maining language of section 9.07 confirms that the sched-
ules are not meaningless. Section 9.07 provides that the
schedules carry meaning unless the parties (Dow and
DGTI) agree that a mistake or inadvertent omission has
been made. Far from supporting Nova’s interpretation—
which uses section 9.07 to wipe out Schedule A—section
9.07 reveals that Dow and DGTI intended the schedules
to be of great significance, so much so that they devised a
contingency plan to address inadvertent mistakes that
might occur during their creation and maintenance. And,
of course, even Nova does not seriously contend that any
mistake or inadvertent omission has occurred with re-
spect to Schedule A and the patents in suit. Thus, section
9.07 does not provide any basis for us to look beyond the
four-corners of the contract.

Nor do we see any basis for Nova’s argument that
Schedule A is somehow untrustworthy. Kathleen Max-
well, a paralegal at Dow, testified that she was in charge
of preparing and maintaining the schedules to the Contri-
bution Agreement from 2002 to September, 2005, three
months before this litigation began. Maxwell testified
that she prepared Schedule A in 2002 by looking up the
patents owned by DGTI in Dow’s Intellectual Property
Management System (“IPMS”), which is “a database that
holds patent records and agreement records” and is
11 DOW CHEMICAL v. NOVA CHEMICALS

“managed by [Dow’s] Patent Department.” 4 J. A. 7111.
According to Maxwell, she updated Schedule A in 2004 in
the same way, by looking up the patents in IPMS. From
2002 to 2005, Maxwell recalled, many patents were added
to Schedule A; indeed, the number of patents included in
Schedule A rose from approximately 5,600 to about 7,800.
And yet, here is what Maxwell had to say about whether
anything was ever taken out of Schedule A:

Q. And do you ever recall removing any patents
from the patent rights schedule?

A. No, I do not.

Q. And do you ever recall anyone else removing
any patents from the patent rights schedule?

A. No, I do not.

Q. Do you ever recall anybody asking you to re-
move patents from the patent rights schedule?

A. No, I do not.

4 Maxwell mistakenly entitled the Patent Rights
schedule as “Schedule B.” The district court found that
the typographical error did not have any substantive
effect, and therefore, we see no reason to restate the
analysis here. At any rate, we agree with the district
court’s finding in this respect as well.
DOW CHEMICAL v. NOVA CHEMICALS 12

J. A. 7111. 5 Finally, Maxwell testified that the patents in
suit did not appear in Schedule A while she was in
charge, thus dispelling any doubt that Dow might have
erased the patents in suit from Schedule A in anticipation
of litigation between September and December of 2005
(when this suit was filed). The district court expressly
found that Maxwell was credible, Dow Chem., 726 F.
Supp. 2d at 463, and this aspect of the district court’s
decision is virtually unassailable on appeal. Nova’s
suggestion that Schedule A is somehow unreliable, there-
fore, cannot be squared with the record before us. 6

5 The dissent argues that Schedule A cannot control
because under section 2.01, the transfer of Patent Rights
to DGTI was immediate, whereas Schedule A was not to
be prepared until ninety days after the Contribution
Agreement went into effect. Dissenting Op. at 11-12. But
section 2.01 itself states that Patent Rights may include
“rights [that] are owned or controlled by [Dow] on the
Transfer Date or thereafter.” J.A. at 5042 (emphasis
added). Moreover, section 9.07 also demonstrates that
Dow and DGTI allowed flexibility in editing the incorpo-
rated schedules (We assume, in line with Kathleen Max-
well’s testimony, that any editing would effect transfer in
only one direction, from Dow to DGTI.). Thus, unlike the
dissent, we do not understand the “hereby conveys . . .”
phrase in section 2.01 to undermine the significance of
Schedule A.
6 The Contribution Agreement also incorporates a
document entitled Schedule D, which was to contain a list
of “Excluded Intangible Assets.” J.A. 5040, ¶ 1.03. Dow
and Nova dispute the content of Schedule D, and each
hypothesizes how the content of Schedule D should affect
the standing analysis. There is nothing in the Contribu-
tion Agreement, however, that suggests Schedule D is
related to the scope of Patent Rights, and so we see no
need to explore the issue any further.
13 DOW CHEMICAL v. NOVA CHEMICALS

In sum, the terms of the Contribution Agreement un-
ambiguously show that the patents in suit were not
transferred to DGTI. Moreover, Nova’s arguments with
respect to the relevance and authenticity of Schedule A
are unfounded. Because the contract terms are clear, we
may not look beyond them to analyze Dow’s ownership of
the patents in suit. Nova failed to overcome the presump-
tion of title created by the record of assignment filed with
the PTO. The district court correctly determined that
Dow has standing to enforce the patents in suit. 7

7 As we explained, unlike the dissent, we believe
that the terms of the Contribution Agreement are not
ambiguous. But even if we were to look beyond the four-
corners of the contract, we would find no basis for the
dissent’s suggestion that the extrinsic evidence counsels
reversing the district court’s standing determination. We
note that the cornerstone of the dissent’s analysis of the
extrinsic evidence is a chain of Dow’s intra-office e-mail
communications. The content of the e-mails is disputed,
however, and, as we read them, they do not conclusively
establish that Dow transferred the patents in suit. The
dissent’s interpretation of the e-mails is based mainly on
one specific e-mail, in which one of Dow’s attorneys (Mr.
Bruce Kanuch) suggests that the patents that were then
in litigation remain with Dow. Dissenting Op. at 17-18
(citing J.A. 5663). The dissent infers from this one e-mail
that the remaining patents were transferred. Dissenting
Op. at 18-19. But the e-mail itself says nothing about
what should happen to the patents in suit, and in any
event, there is no evidence that the suggestion in this one
e-mail was ever adopted by or incorporated into the
Contribution Agreement. It is true that the next e-mail in
the chain states that “the issue” was addressed by adding
the phrase “loss of rights” to the contribution Agreement,
J.A. 5663, but this subsequent e-mail does not suggest
that the phrase “loss of rights” was limited to a loss of
standing in then-pending litigation. On the contrary, it is
entirely plausible (and in our view, likely) that “the issue”
addressed by the addition of the phrase “loss of right” was
DOW CHEMICAL v. NOVA CHEMICALS 14

B. INDEFINITENESS

The district court also correctly found that the patents
in suit were not indefinite. 8 A patent specification must
“conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
This requirement is satisfied where “one skilled in the art
would understand the bounds of the claim when read in
light of the specification . . . .” Exxon Research & Eng’g

Dow’s “legal standing to bring and/or maintain [suit].” Id.
(emphasis added). Therefore, as the record before us
stands, the e-mails do not shed much light onto the mean-
ing of “loss of rights.” We also disagree with the dissent’s
choice to foray into analyzing Dow’s tax incentives in
structuring the Contribution Agreement. In our view, the
record does not reveal what, if any, tax benefits Dow
received from the purported transfer of the patents in
suit. Even if the evidence did reveal some tax benefits,
however, it will not tell us much about the parties’ objec-
tive intent in entering into the Contribution Agreement
when the agreement took effect. Finally, even if we were
in a position to consider the totality of the extrinsic evi-
dence (including the e-mails and the alleged tax incen-
tives) for the first time on appeal, we would find nothing
more compelling in the record than Schedule A—which at
the very least should serve as a telling piece of extrinsic
evidence. In sum, we respectfully disagree both with the
dissent’s decision to take on the analysis of the extrinsic
evidence in the first place, and also with regard to the
results.
8 Because the district court provided a construc-
tion to the jury, which was the only basis upon which the
jury could reach the conclusion it did, we do not need to
reach the question of whether it was error to submit the
question of indefiniteness to the jury: Even had the
district court not done so, the outcome would be no differ-
ent.
15 DOW CHEMICAL v. NOVA CHEMICALS

Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
A claim is not indefinite merely because it is difficult to
construe. Id. To be indefinite, a claim term must be such
that “no narrowing construction can properly be adopted”
to interpret the claim. Id. Indefiniteness is a question of
law that this court reviews de novo. Star Scientific, Inc.
v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1373 (Fed.
Cir. 2011); Bancorp Servs., LLC v. Hartford Life Ins. Co.,
359 F.3d 1367, 1371 (Fed. Cir. 2004); Exxon, 265 F.3d at
1376.

The patents in suit are directed at polymer composi-
tions. The only asserted independent claim of the ’053
patent is representative claim 6, which recites,

6. An ethylene polymer composition comprising

(A) from about 10 percent (by weight of the to-
tal composition) to about 95 percent (by
weight of the total composition) of at least
one homogeneously branched linear eth-
ylene/a-olefin interpolymer having:

(i) a density from about 0.89 grams/cubic
centimeter (g/cm3) toabout 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) to about
10 g/10 min,

(iv) no high density fraction,
DOW CHEMICAL v. NOVA CHEMICALS 16

(v) a single melting peak as measured us-
ing 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 to-
tal composition) to about 90 percent (by
weight of the total composition) of at least
oneheterogeneously branched linear eth-
ylene polymer having a density from
about 0.93 g/cm3 to about 0.965 g/cm3.

’053 patent col.16 ll.4-26 (emphasis added). Claim 1, the
only independent claim of the ’023 patent, claims a differ-
ent ethylene polymer, but it too recites a particular com-
ponent with “a slope of strain hardening coefficient
greater than or equal to 1.3.” 9 ’023 patent col.16 ll.30-31.

It is the “slope of strain hardening” (“SHC”) coefficient
that is at the center of Nova’s indefiniteness argument.
The SHC coefficient is a new Dow construct, not previ-
ously known in the art, defined by the patents in suit as
the slope of a material’s strain hardening multiplied by
the melt index raised to the 0.25 power. 10 ’053 patent
col.6 ll.45-50. The patents in suit teach that in order to

9 Although the patents in suit disclose different
polymer combinations, the differences between them are
not material to our analysis. For the sake of convenience,
we quote language from the ’053 patent throughout our
opinion but still use the phrase “patents in suit” to make
clear that our analysis applies to the asserted claims of
the ’023 patent as well.
10 SHC = (slope of stain hardening) * (I2)0.25. ’053
patent col.6 l.47.
17 DOW CHEMICAL v. NOVA CHEMICALS

determine a material’s slope of strain hardening, one
must first obtain a “stress/strain curve,” which results
when the tensile properties of the test sample is tested on
a tensile tester. Id. at col.6 ll.24-29. The slope of the
strain hardening is then “calculated from the resulting
tensile curve by drawing a line parallel to the strain
hardening region of the resulting stress/strain curve.” Id.
at col.6 ll.27-29.

Nova argues the patents in suit do not adequately
teach how one must determine the value of the SHC
coefficient for the claimed polymer because 1) the patents
in suit do not contain a schematic depiction of the tensile
curve of the claimed material, and 2) the patents in suit
do not disclose the suitable measurement units for meas-
uring the value of the SHC coefficient. Based on all the
evidence that is presented to us in the record, however,
we agree with the district court’s determination that the
patents in suit are not indefinite.

Nova first argues that the patents in suit do no in-
clude a schematic example of the strain/stress curve, and
posits that the patents in suit are indefinite as a result.
In particular, Nova suggests that without the aid of a
drawing, one of ordinary skill in the art would not know
at what part along the stress/strain curve the slope must
be measured. We disagree. It is true that the patents in
suit state that “FIG. 1 shows the various stages of the
stress/strain curve used to calculate the slope of strain
hardening,” and yet the patents in suit do not, for what-
ever reason, include the promised drawing. ’053 patent
col.6 ll.40-41. But that does not suggest that one of
ordinary skill in the art would not be able to determine
the slope of the strain hardening for the SHC coefficient.
Nova’s own expert witness, Dr. Fuller, agreed with Dow’s
attorney that a typical stress/strain curve was “very, very
DOW CHEMICAL v. NOVA CHEMICALS 18

well known [to a] person of ordinary skill in the art
. . . who worked with semi-crystalline polymers and
polyethylene,” and that one of ordinary skill in the art
would come across similar curves in relevant textbooks.
J.A. 3564-65. The mere fact that Figure 1 was missing
from the patents in suit, therefore, does not render them
indefinite. 11 And more importantly, Dow established that
one of ordinary skill in the art would know at which
particular part along the curve the slope of the
stress/strain curve should be measured. The patents in
suit teach that strain hardening occurs, or is reflected, at
a specific region of the stress/strain curve:

The strain hardening occurs after the sample has
pulled its initial load ((i.e., stress) usually with lit-
tle or no elongation during the initial load) and af-
ter the same has gone through a slight drawing
stage (usually with little or no increase in load,
but with increasing elongation (i.e., strain)). In
the strain hardening region, the load and the
elongation of the sample both continue to in-
crease. The load increases in the strain harden-
ing region at a much lower rate than during the
initial load region and the elongation also in-
crease, again at a rate lower than that experi-
enced in the drawing region.

’053 patent col.6 ll.30-39. In other words, although there
are multiple “regions” on a stress/strain curve, only one

11 We note that the patents in suit merely state that
Figure 1 was intended to depict “the various stages of the
stress/strain curve,” but they do not necessarily suggest
that Figure 1 would depict the specific point along the
curve at which the slope should be measured. ’053 patent
col.6 l.40.
19 DOW CHEMICAL v. NOVA CHEMICALS

region on the curve is the “strain hardening region,”
where the slope of the curve must be measured.

Nova objects that the strain hardening region is itself
a curve, not a straight line. It points to the testimony of
Dow’s own expert witness, Dr. Hsiao, who indeed admit-
ted that most strain hardening data samples gathered
from the stress/strain test reveal some curvature (when
graphed), and that curves do not have a single slope.
Nova thus argues that the patents in suit are indefinite.
We disagree. Dr. Hsiao explained that one of ordinary
skill in the art would understand that during the initial
portion of the strain hardening region, there is a mixture
of drawing effects and strain hardening effects. During
the draw region, the material deforms without increasing
the load. Beyond that point, the test sample hardens,
and, eventually, it breaks. According to Dr. Hsiao, one of
ordinary skill in the art would know that the slope of the
hardening curve would have to be measured at its maxi-
mum value, which reflects the best tensile performance of
the material.

Nova further notes that “Dow’s internal files and later
disclosures contain multiple definitions for where the
slope of strain hardening for SHC should be determined.”
Appellant Br. 25. In particular, Nova points to some of
Dow’s internal documents that reveal Dow indeed ex-
perimented with four different methods to measure the
slope of the strain hardening curve. Nova argues, accord-
ingly, that there is no single method for one of ordinary
skill in the art to measure the slope, and that the failure
of the patents in suit to identify one distinct method
renders them indefinite. Again, we disagree. To begin
with, whether Dow used various methods to measure the
slope of the strain hardening curve is of questionable
significance because there is no evidence to suggest that
DOW CHEMICAL v. NOVA CHEMICALS 20

the experimentations necessarily involved practicing the
claimed method. And in any event, “[t]he claims are not
indefinite even if some experimentation is required to
determine the exact [scope of the claims].” Enzo Biochem,
Inc. v. Applera Corp., 599 F.3d 1325, 1336 (Fed. Cir.
2010), cert. denied, 131 S. Ct. 3020 (2011); see also Exxon,
265 F.3d at 1379 (“Provided that the claims are enabled,
and no undue experimentation is required, the fact that
some experimentation may be necessary to determine the
scope of the claims does not render the claims indefi-
nite.”). We already noted, however, that Dow has estab-
lished that one of ordinary skill in the art would know
that the maximum slope of the stress/strain curve was the
appropriate value for calculating the SHC coefficient. At
best, Nova has shown that other regions in the slope may
also be measured. But that does not necessarily suggest
that one of ordinary skill in the art would not realize that
the maximum slope leads to the most appropriate reading
of the strain hardening slope for the purposes of the
patents in suit, or that it would be too difficult for one or
ordinary skill in the art to make a few measurements and
determine, based on the result, what the scope of the
invention is. In other words, the mere fact that the slope
may be measured in more than one way does not make
the claims of the patent invalid. See Exxon, 265 F.3d at
1375.

Next, Nova argues that the patents in suit are indefi-
nite because they do not disclose the unit of measurement
for the SHC coefficient. It is true that the patents in suit
do not specify any particular unit for the SHC coefficient.
But the specification teaches that the stress/strain test is
conducted with an Instron Tensile Tester “at a crosshead
speed of 1 inch/minute.” ’053 patent col.6 l.26. Experts
for Dow and Nova agreed that the user manual for the
Instron Tensile Tester, available when the patents in suit
21 DOW CHEMICAL v. NOVA CHEMICALS

were filed, specified that when the crosshead speed is
inches per minute, the units for load and elongation are
pounds and inches (English units), unless expressly
specified otherwise. And, the manual also showed that
when the user conducts the stress/strain test using cross-
head speeds in inches per minute, the output measure-
ment is reported in English units. Consistent with these
instructions, Table 3 of the patents in suit also reports the
output of the Instron Tensile Tester (e.g., yield, tensile
strength, and toughness) in English units. Because the
specification (directly in Table 3 and indirectly via the
Instron manuals) teaches that all measurement units
that are relevant to the determination of the slope of
strain hardening are made in English units, one of ordi-
nary skill on the art would also realize that the slope of
the strain hardening should be determined in English
units.

Finally, Nova argues that one of ordinary skill in the
art would not realize that the slope of the strain harden-
ing region should be measured in English units because
the equation for the SHC coefficient also incorporates the
melting index, and the patents in suit report the melting
index in metric, not English, units. See ’053 patent col.6
l.47. We disagree. Nova has not presented any evidence
that shows an equation, for a proprietary coefficient
indeed, may not combine variables measured in different
measurement systems. And in any event, the test for
indefiniteness is not whether the scope of the patent
claims is easy to determine, but whether “the meaning of
the claim is discernible, even though the task may be
formidable and the conclusion may be one over which
reasonable persons will disagree . . . .” Exxon, 265 F.3d at
1375. As we have already explained, one of ordinary skill
in the art would realize that the slope of the strain hard-
ening, as defined in the patents in suit, should be meas-
DOW CHEMICAL v. NOVA CHEMICALS 22

ured and reported in English units. Therefore, Nova’s
final argument regarding indefiniteness fails. In sum,
because one of skill in the art would understand the
bounds of the claims, the district court correctly rejected
Nova’s indefiniteness challenge. 12

C. INFRINGEMENT

Nova’s final challenge to the district court’s denial of
its motion for judgment as a matter of law targets the
jury’s finding of infringement. We review the district
court’s denial of Nova’s motion for judgment as a matter
of law under the standard of review of the regional circuit.
ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307,
1311 (Fed. Cir. 2007). The Third Circuit reviews de novo
a district court’s denial of judgment as a matter of law.
McKenna v. City of Philadelphia, 649 F.3d 171, 176 (3d
Cir. 2011). Infringement is a question of fact, and we
review the jury’s verdict of infringement for substantial
evidence. Finjan, Inc. v. Secure Computing Corp., 626
F.3d 1197, 1202 (Fed. Cir. 2010).

Here, the jury’s verdict of infringement is supported
by substantial evidence. As we already stated, the plastic
claimed in the patents in suit contains two components,
Component A and Component B. There is no dispute that
Nova’s accused product contains Component A. The
infringement dispute revolves around one particular

12 Nova also argues, essentially based on the same
contentions made in its indefiniteness appeal, that the
patents in suit do not meet the written description re-
quirement of 35 U.S.C. § 112, ¶ 1. Based on our analysis
above, we also reject Nova’s written description argu-
ments.
23 DOW CHEMICAL v. NOVA CHEMICALS

limitation in the composition of Component B. 13 Specifi-
cally, Nova argues that Dow did not present sufficient
evidence that showed the high density component of
Nova’s accused product, referred to as “HD fraction,” is
“heterogeneously branched,” as required by the patents in
suit. ’053 patent col.16 l.24. We disagree. Dr. Soares,
Dow’s expert witness, testified that he conducted two
different analyses to determine whether Nova’s HD
fraction is heterogeneously branched. First, Dr. Soares
stated that he studied Nova’s manufacturing process,
including Nova’s own modeling of its reactor, and ex-
plained that due to the non-uniformity of the reactor zone
(the ratio between the ethylene and octane in various
areas surrounding the area in the reactor where the HD
fraction is formed), molecules with different amounts of
branching are produced. In other words, he explained,
the HD fraction is heterogeneously branched. Second, Dr.
Soares testified that he performed a “cross fractionation”
analysis, which also revealed that the HD fraction is
heterogeneously branched.

Nova argues that whether Component B is “heteroge-
neously branched” is not relevant because the district
court construed the term “heterogeneously branched” as
having “branching different from and broader than the
homogenously branched component.” Appellant Br. 63;
see also J.A. 110. Nova argues, rather, that in order to
evaluate infringement, one must “compare the relative
distribution exhibited by Nova’s [HD Fraction].” Appel-
lant Br. 64. We are skeptical of the logic of this hyper-
technical analysis because it implies that the district

13The remaining limitations of the patents in suit
that are relevant to Component B are satisfied by the
high density component of Nova’s accused product. We do
not address them here.
DOW CHEMICAL v. NOVA CHEMICALS 24

court erred in its claim construction—which is not chal-
lenged on appeal. But in any event, Dr. Soares testified
that the particular characteristics of the mixture of ethyl-
ene and octane in Nova’s reactors results in “different
branching levels” or “broadening of the distribution [of
branching]” in the HD fraction. J.A. 2078-79. We are
persuaded that Dr. Soares’s testimony gave the jury
sufficient justification to find that the accused polymer
has “branching different from and broader than [the]
homogeneously branched [component].” J.A. 110. There-
fore, whether the infringement analysis is performed with
attention to the phrase “heterogeneously branched” or by
focusing on the specific language of the district court’s
claim construction, it leads to the same result. Substan-
tial evidence supports the jury’s finding of infringement in
Dow’s favor.

CONCLUSION

For the foregoing reasons, we affirm the judgment en-
tered against Nova.

AFFIRMED
 NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

THE DOW CHEMICAL COMPANY,
Plaintiff-Appellee,
v.
NOVA CHEMICALS CORPORATION (CANADA)
AND NOVA CHEMICALS INC. (DELAWARE),
Defendants-Appellants.
__________________________

2010-1526
__________________________

Appeal from the United States District Court for the
District of Delaware in case no. 05-CV-0737, Judge Leo-
nard P. Stark.
__________________________

REYNA, Circuit Judge, dissenting.
This patent infringement case involves a substantial
question of standing based on an agreement relating to
the ownership of the patents-in-suit. In order to achieve
certain tax and business benefits, Dow transferred essen-
tially its entire patent portfolio to its holding company
pursuant to an agreement entered into in 2002. Dow sued
Nova in 2005 for infringement of the patents-in-suit,
which were ostensibly transferred to Dow’s holding com-
pany under the 2002 agreement. The 2002 agreement
and related documents, however, were not produced in
DOW CHEMICAL v. NOVA CHEMICALS 2

litigation by Dow until July 2009, well after discovery had
closed. After reviewing the documents, Nova moved to
dismiss the case on grounds that Dow lacked standing
because it was not the owner of the patents-in-suit when
the lawsuit was initiated. The district court opted not to
have a hearing on the standing issue until after a jury
trial and verdict on the merits of the infringement and
invalidity claims. Ultimately, the district court found
that the patents-in-suit had never been transferred by
Dow to its holding company via the 2002 agreement and,
concluding that Dow therefore had standing, entered final
judgment on the verdict against Nova.
Because I conclude that the 2002 agreement in fact
did transfer the patents-in-suit to Dow’s holding company,
and that standing did not exist at the time the complaint
was filed, I would reverse the district court and dismiss
the case without prejudice. I would not reach the under-
lying merits of the judgment that the asserted claims of
the patents-in-suit were valid and infringed. I respect-
fully dissent.
I. BACKGROUND
A. The Agreements Between Dow and DGTI
The Dow Chemical Company (“Dow” or “TDCC”) is the
original assignee of U.S. Patent Nos. 5,847,053 and
6,111,023 (the “patents-in-suit”), which are directed to
polymer compositions for a stronger form of polyethylene.
Dow later established Dow Global Technologies, Inc.
(“DGTI”) as a holding company and entered into a Contri-
bution Agreement with DGTI effective January 1, 2002.
The recitals of the Contribution Agreement explained that
Dow intended to “contribute to DGTI . . . all TDCC Patent
Rights . . . for the licensing thereof by DGTI to TDCC . . .
.” A5039. As explained in more detail below, this ar-
rangement afforded certain tax advantages to Dow.
3 DOW CHEMICAL v. NOVA CHEMICALS

All of Dow’s “Patent Rights” were broadly assigned to
DGTI under Section 2.01 of the Contribution Agreement,
which provided that “TDCC hereby conveys, transfers,
assigns and delivers to DGTI . . . all of TDCC’s right and
title to and interest in the Patent Rights, Technology and
Work Processes, which rights are owned or controlled by
TDCC on the Transfer Date . . . .” A5041-42 (emphasis
added). Central to this appeal is the question of whether
the patents-in-suit were among the transferred “Patent
Rights,” which were defined in Section 1.07 as follows:
“Patent Rights” means any and all patents and
applications for patents of any kind, filed with or
granted by a governmental body of the United
States or any other country . . . which are owned
solely or controlled by TDCC on the Transfer Date
or thereafter . . . that TDCC is able to assign to
DGTI without the consent of or accounting to a
Third Party or Affiliated Company, without di-
minishing the royalties paid or payable by or oth-
erwise materially affecting the obligations of such
Third Party or Affiliated Company with respect to
such Patent Rights, and without resulting in a
loss of rights. The parties shall provide a sched-
ule of Patent Rights as Schedule A to this Agree-
ment, within ninety (90) days of the Effective
Date, and shall provide subsequent supplements
thereto from time to time during the Term.
A5040. This definition and the parties’ understanding of
its meaning are critical to the resolution of this case.
A Schedule A of Patent Rights was not prepared
within 90 days of the Effective Date, as was contemplated
under Section 1.07. However, the Contribution Agree-
ment did not make the transfer of Patent Rights contin-
gent on the creation or ultimate content of Schedule A.
DOW CHEMICAL v. NOVA CHEMICALS 4

The substantive language of the agreement—not the
schedules—was intended to be controlling as to the rights
and obligations of the parties. In particular, Section 9.07
provided that while schedules were incorporated by
reference into the agreement, the inclusion or omission of
an item from a schedule “shall not give rise to rights or an
implication that DGTI has rights greater than those
expressly provided for in this Agreement” or “give rise to
an implication that DGTI has rights less than those
otherwise provided for in this Agreement,” respectively.
A5046. Thus, the Contribution Agreement overall pro-
vided that upon execution DGTI was to receive all of
Dow’s “Patent Rights” as generally defined above, regard-
less of whether Schedule A existed or what might have
been listed on it.
In accordance with the stated purpose of the Contri-
bution Agreement, Dow and DGTI simultaneously en-
tered into a Patent and Technology License Agreement
(“PTLA”), whereby DGTI licensed back to Dow patent
rights transferred under the Contribution Agreement on a
non-exclusive, royalty-bearing basis. The PTLA provided
mechanisms for Dow to seek enforcement of Licensed
Patent Rights through DGTI's reassignment of any trans-
ferred patents to Dow, or by DGTI permitting Dow to file
suit in DGTI’s name. At Dow's request, DGTI was re-
quired to promptly assign patents to Dow “in a manner
that avoids loss of rights.” A5590.
An overall objective of this ownership and licensing
scheme established between Dow and DGTI was for Dow
to realize certain tax benefits. For the scheme to work,
the holding company DGTI was required to be the owner
of the Patent Rights, and to then license the patents back
to Dow in exchange for royalty payments. Indeed, be-
tween 2005 and the third quarter of 2009, approximately
$68 million in royalties were paid by Dow to DGTI for its
5 DOW CHEMICAL v. NOVA CHEMICALS

“ELITE” family of products, which are covered by the ’023
patent. For these payments, DOW does not contest that
it obtained a two percent (after federal tax) state tax
savings. Dow contends that these royalty payments were
for “Technology” and “Work Processes” such as trade
secrets transferred by the Contribution Agreement and
licensed under the PTLA, not the ’023 patent. No docu-
mentary evidence in the record apportions out the royalty
payments, and witnesses testified that they had “no basis
to know” and were “not sure” to what extent the royalty
payments were attributable to licensed patent rights as
opposed to other intellectual property. A7106, A7140.
While the royalties recited in the PTLA are expressed
in terms of “Technology” and “Work Processes,” neither of
which is defined to expressly include “Patent Rights,” the
PTLA makes clear that Dow was to pay those royalties
“[i]n consideration of the licenses . . . granted [to Dow],”
which include a license to use the Licensed Patent Rights.
A5582-83. Indeed, one of the PTLA’s preambles refers to
Dow obtaining a “royalty-bearing non-exclusive license to
the Intangible Assets owned by DGTI,” and “Intangible
Assets” are defined as including the “Patent Rights”
transferred to DGTI under the Contribution Agreement.
A5576, A5578. Moreover, “Patent Rights” are clearly
related to “Technology” under the PTLA, since “Licensed
Patent Rights” are defined as “that portion of Patent
Rights that are relevant to the manufacture, sale and
direct or indirect use of Licensed Products [i.e., products
manufactured with Licensed Technology] . . . or to the
utilization of Licensed Processes [i.e., methods and tech-
niques for manufacturing products with Licensed Tech-
nology] . . . .” A5579 (emphasis added). Royalties were
thus paid by Dow to DGTI at least in part for the grant-
back licenses to the Patent Rights under the PTLA.
DOW CHEMICAL v. NOVA CHEMICALS 6

B. Litigation and Discovery Conduct By Dow
Dow filed its patent infringement complaint against
NOVA Chemicals Corporation and NOVA Chemicals Inc.
(collectively, “NOVA”) on October 21, 2005. It was not
until June 19, 2009, five months after discovery closed,
that Dow produced the Contribution Agreement in re-
sponse to NOVA’s outstanding requests for production.
The Contribution Agreement was accompanied by a
document entitled “Schedule A-Patent Rights,” which
contained no listing of patents, but was a single sheet
stating that “this Schedule includes all Patent Rights of
[Dow] . . . excluding Excluded Patent Rights set forth in
Schedule ‘D.’” A5520. Also produced was a document
entitled “Schedule D: Excluded Patents,” which did con-
tain a listing of patents and included the patents-in-suit.
A5521-74. This Schedule D had been updated by Dow to
add the patents-in-suit to it right before it was produced.
A7147. Lastly, Dow produced a Quitclaim Deed dated
June 15, 2009—four days prior to production and more
than three and a half years after the lawsuit was filed—
which assigned to Dow “all of DGTI's right, title, and
interest to the Patents[-in-suit], if any.” A5092-93. The
Quitclaim Deed was purportedly intended “to remove any
potential doubt as to ownership of the patents[-in-suit].”
Id.
While it is clear that Nova’s discovery requests
spurred Dow to update the Schedule D and execute the
Quitclaim Deed, the record does not explain why Dow
waited so long to produce the previously existing docu-
ments. The record also does not reflect the nature and
extent of Dow’s pre-filing investigation with respect to
standing, which presumably would have revealed those
existing documents four years prior, in 2005, when the
lawsuit was filed.
7 DOW CHEMICAL v. NOVA CHEMICALS

After receiving and reviewing the Contribution
Agreement, Schedules A and D, and the Quitclaim Deed,
Nova pressed Dow for additional related documents
bearing on standing. Dow then produced the original
Schedule D from 2002 which, unlike the previously pro-
duced and recently updated Schedule D, did not list the
patents-in-suit as “Excluded Patents.” Dow also produced
the December 15, 2005 version of a document labeled
"Schedule B Supplement," which Dow's paralegal testified
was intended to be Schedule A to the Contribution
Agreement. Unlike the previously produced Schedule A of
Patent Rights, the Schedule B Supplement comprised a
listing of patents, but it did not include the patents-in-
suit. Dow’s paralegal testified that she did not know what
modifications were made to the Schedule B Supplement
as it existed prior to the December 15, 2005 version that
was produced. Testimony also suggested that the Sched-
ule B Supplement was a print-out of a query to an inter-
nal patent database for DGTI patents, which database
was not updated to reflect the transfer of patents under
the Contribution Agreement.
Based on these documents, NOVA believed that Dow
transferred the patents-in-suit to DGTI in 2002 and did
not own them when the lawsuit was filed. Nova moved to
dismiss for lack of standing or, in the alternative, for full
standing discovery. Nova’s motion was pending and
languished for nine months, at which time the district
court finally denied NOVA’s request that standing be
addressed before the infringement trial. The district
court did, however, allow limited standing discovery
including abbreviated depositions of Dow’s witnesses.
With the threshold standing issue still unresolved, the
infringement trial proceeded. The jury found the patents-
in-suit to be infringed and not invalid, and awarded Dow
damages of $61.8 million. The district judge held a bench
DOW CHEMICAL v. NOVA CHEMICALS 8

trial on standing the following day and ultimately denied
NOVA’s motion to dismiss for lack of standing and en-
tered judgment in favor of Dow. Dow Chem. Co. v. Nova
Chems. Corp., 726 F. Supp. 2d 459, 463-64 (D. Del. 2010)
(“Standing Op.”).
The district court found the Contribution Agreement
to be clear on its face and held that “a transfer of the
patents-in-suit is not effectuated unless and until the
patents are explicitly listed on Schedule A.” Id. at 462-63.
The district court considered testimony from Dow’s wit-
nesses and found that the Schedule B Supplement pro-
duced by Dow was “in fact, intended to be Schedule A and
used by the parties as Schedule A.” Id. at 463-64. Be-
cause the Schedule B Supplement did not list the patents-
in-suit, in the district court’s judgment the patents-in-suit
were not transferred to DGTI under the Contribution
Agreement, and Dow had standing to bring and maintain
the lawsuit. Id.
II. DISCUSSION
Standing is a threshold jurisdictional question which
we review de novo. Mars, lnc. v. Coin Acceptors, Inc., 527
F.3d 1359, 1367 (Fed. Cir. 2008). The proper interpreta-
tion of a contract is a question of law that is also reviewed
de novo. First Annapolis Bancorp, Inc. v. United States,
644 F.3d 1367, 1373 (Fed. Cir. 2011). Dow has the burden
of proving standing to sue, and must demonstrate by a
preponderance of the evidence that it held enforceable
title on the date the complaint was filed. Tyco Healthcare
Group LP v. Ethicon Endo-Surgery, Inc., 587 F.3d 1375,
1378 (Fed. Cir. 2009); Lujan v. Defenders of Wildlife, 504
U.S. 555, 561 (U.S. 1992). 1 The threshold issue of stand-

1 While Dow received a Quitclaim Deed to the pat-
ents-in-suit from DGTI effective June 15, 2009, such a
nunc pro tunc assignment cannot confer standing retroac-
9 DOW CHEMICAL v. NOVA CHEMICALS

ing must be satisfied in all cases, as it is “an essential and
unchanging part of the case-or-controversy requirement of
Article III.” Lujan, 504 U.S. at 560.
The Contribution Agreement indicates that its inter-
pretation “shall be governed by and construed in accor-
dance with the laws of the state of Delaware, without
regard to principles of conflicts of laws,” and so Dela-
ware’s principles of contract interpretation are to be
applied in this case. A5046; Parental Guide of Tex., Inc. v.
Thomson, Inc., 446 F.3d 1265, 1269 (Fed. Cir. 2006)
(“Contract interpretation is a matter of state law.”). As
explained by the Supreme Court of Delaware,
In analyzing disputes over the content of a con-
tract, we give priority to the intention of the par-
ties. We start by looking to the four corners of the
contract to conclude whether the intent of the par-
ties can be determined from its express lan-
guage. In interpreting contract language, clear
and unambiguous terms are interpreted according
to their ordinary and usual meaning. We will also
construe the agreement as a whole, giving effect
to all provisions therein, conscious of the fact that
the meaning which arises from a particular por-
tion of an agreement cannot control the meaning
of the entire agreement where such inference runs
counter to the agreement’s overall scheme or plan.
Keeping these rules in mind, we should look to
harmonize the entire agreement and remain con-

tively. Abraxis Bioscience, lnc. v. Navinta, LLC, 625 F.3d
1359, 1366-67 (Fed. Cir. 2010) (“Abraxis was required to
have legal title to the patents on the day it filed the
complaint and that requirement can not be met retroac-
tively.”).
DOW CHEMICAL v. NOVA CHEMICALS 10

sistent with the objective intent of the parties that
drafted the contract.
Land-Lock, LLC v. Paradise Prop., LLC, 963 A.2d 139
(Del. 2008) (Table) (citations and quotations omitted).
Thus, Delaware courts are required to read a contract as
a whole and to give effect to each provision thereof in
order not to render any part of the contract “meaningless
or illusory.” Estate of Osborn v. Kemp, 991 A.2d 1153,
1159 (Del. 2010).
While parties are generally bound by the plain mean-
ing of the contractual language, such language is properly
deemed ambiguous “when the provisions in controversy
are reasonably or fairly susceptible of different interpreta-
tions or may have two or more different meanings.”
AT&T Corp., v. Lillis, 953 A.2d 241, 252-53 (Del. 2008). If
a Delaware court finds that a disputed contract term is
ambiguous, then the “consideration of extrinsic evidence
is required” to determine the intended meaning of the
parties. Id. at 253 (quoting Appriva Shareholder Litig.
Co., LLC v. ev3, Inc., 937 A.2d 1275, 1291 (Del. 2007))
(emphasis added); see also Eagle Industries, Inc. v. DeVil-
biss Health Care, Inc., 702 A.2d 1228, 1232 (Del. 1997)
(“When the provisions in controversy are fairly suscepti-
ble of different interpretations or may have two or more
different meanings, there is ambiguity. Then the inter-
preting court must look beyond the language of the con-
tract to ascertain the parties' intentions.”) (emphasis
added).
Looking to the intention of the parties as reflected by
the four corners of the Contribution Agreement, it is clear
that the Contribution Agreement was intended to effectu-
ate a broad mass transfer of patents from Dow to DGTI so
that DGTI could grant back a license to Dow. Only cer-
tain patents subject to three specified exceptions under
11 DOW CHEMICAL v. NOVA CHEMICALS

Section 1.07 of the Contribution Agreement were not
subject to the transfer. The first two exceptions, which
are not at issue in this case, encompassed patents that
cannot be transferred without affecting the rights or
obligations of Dow, its Affiliated Companies, or third
parties under prior agreements or assignments relating to
Dow’s patents. The third exception, which is disputed
and central to this appeal as discussed below, encom-
passed patents for which transfer “would result in a loss
of rights.”
The threshold jurisdictional issue before us is whether
the patents-in-suit were excluded from transfer under the
Contribution Agreement. Resolution of this issue centers
around the proper interpretation of Section 1.07, which
requires a careful analysis of the purpose of Schedule A,
the meaning of the “loss of rights” provision in the defini-
tion of Patent Rights, and other extrinsic evidence offered
to show the parties’ intent. Guided by the above princi-
ples of Delaware contract law, I address each of these
matters in turn.
A. The Purpose of Schedule A
The district court erred in finding that Schedule A
was the legally operative document that effectuated all
transfers of patents under the Contribution Agreement.
The operative transfer language is provided in Section
2.01. A5041-42 (“TDCC hereby conveys, transfers, as-
signs and delivers to DGTI . . . all of TDCC's right and
title to and interest in the Patent Rights . . . .”). Section
1.07 defines the transferred Patent Rights as “any and all
patents” owned by Dow that Dow can assign without
implicating one of three exceptions, none of which refer-
ence Schedule A. Nowhere in the Contribution Agree-
ment is the transfer predicated or dependent upon
whether patents are listed on Schedule A. Indeed, Section
DOW CHEMICAL v. NOVA CHEMICALS 12

9.07 makes clear that the contents of the schedules are
not controlling. Moreover, Section 2.01 provides that Dow
“hereby” transfers the patents, which strongly indicates
an immediately effective transfer, while Schedule A was
not even required to be completed until after the Contri-
bution Agreement was executed. See Abraxis, 625 F.3d at
1364-65 (distinguishing a party who “hereby assigns”
rights from one that merely “agrees to assign” such rights
in the future); DDB Techs., L.L.C. v. MLB Advanced
Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008) (con-
trasting a present assignment of rights to future inven-
tions, which causes transfer by operation of law when a
future invention comes into being, with a promise or
obligation to assign those same rights in the future).
To find that no patents were transferred unless and
until listed on the Schedule A ignores Section 9.07, nulli-
fies the transfer set forth in Section 2.01, renders super-
fluous the detailed and specific definition of Patent Rights
in Section 1.07, and rearranges the fundamental purpose
of the tax and business scheme intended under the
agreement as a whole. Such a reading would cause most
of the Contribution Agreement to be “meaningless or
illusory.” Osborn, 991 A.2d at 1159. The reference to
Schedule A in the Contribution Agreement shows that the
parties desired to make and maintain a listing of the
patents that were transferred to DGTI as a matter of
convenience, not as a prerequisite to a valid transfer.
The majority takes great effort in arguing that
Schedule A necessarily dictates the operation of the
agreement. Because Section 9.07 acknowledges that
“inadvertent errors” may occur in the preparation of the
schedules and provides that that these errors should be
corrected by the parties, the majority believes that
Schedule A is intended to be controlling unless the parties
mutually agree that a mistake or omission has been made
13 DOW CHEMICAL v. NOVA CHEMICALS

in its preparation. A5046. This view turns the Contribu-
tion Agreement on its head by eviscerating Section 1.07’s
definition and inflating the role of Schedule A without any
basis in the Contribution Agreement or Delaware law.
Under Section 9.07, any erroneously included or omitted
items from the schedules “shall not give rise to rights or
an implication that DGTI has rights greater than those
expressly provided for in this Agreement” or “give rise to
an implication that DGTI has rights less than those
otherwise provided for in this Agreement,” respectively.
A5046. Section 9.07 is thus better understood as a provi-
sion whereby the parties expected that Schedule A would
accurately reflect the transferred Patent Rights, and to
the extent Schedule A did not accord with the definition of
Patent Rights in Section 1.07—i.e., it included “inadver-
tent errors”—Section 1.07 would control and Schedule A
would be appropriately updated.
While the majority focuses on whether Schedule A is
“meaningful,” the real issue before us is whether Schedule
A alone dictates which patents were transferred from Dow
to DGTI. The language of Sections 1.07, 2.01, and 9.07,
when read together to give effect to the intended scheme
of the Contribution Agreement, makes clear that it does
not.
B. The Meaning of “Loss of Rights”
Dow argues in the alternative that the patents-in-suit
did not fall within the definition of Patent Rights that
Dow transferred to DGTI. As noted above, in Section 1.07
there were three circumstances which excepted a patent
from being transferred: (1) the transfer would require “the
consent of or accounting to a Third Party or Affiliated
Company”; (2) the transfer would “diminish[] the royalties
paid or payable by or otherwise materially affecting the
obligations of such Third Party or Affiliated Company
DOW CHEMICAL v. NOVA CHEMICALS 14

with respect to such Patent Rights”; or (3) the transfer
would result in “a loss of rights.” A5040. Dow does not
contend that the transfer of the patents-in-suit would be
precluded under the two former exceptions. Rather, Dow
claims that the patents-in-suit were not transferred
because such a transfer would have resulted in a “loss of
rights” to Dow, namely, Dow’s ability to recover lost
profits from NOVA by not owning the patents during the
period of NOVA’s alleged infringement. Dow’s position
would therefore preclude transfer of any and all enforce-
able patents covering technology that Dow was then using
or might have begun using in the future.
Unlike Dow, the majority declines to address the
meaning of the “loss of rights” clause at all. The majority
believes that in the context of Section 1.07, Schedule A is
a “quite specific” provision, whereas the phrase “loss of
rights” is “part of a broad exclusionary definition,” such
that Schedule A must trump and substitute for the gen-
eral definition because the “specific and general provi-
sions conflict.” Maj. Op. at 8 (citing DCV Holdings, Inc. v.
ConAgra, Inc., 889 A.2d 954, 961 (Del. 2005) (“Specific
language in a contract controls over general language,
and where specific and general provisions conflict, the
specific provision ordinarily qualifies the meaning of the
general one.”)). To reach this conclusion, the majority
finds a false conflict between the qualitative definition of
Patent Rights in Section 1.07 and the reference to Sched-
ule A. As discussed above, the “loss of rights” clause
describes one category of patents that are excluded from
transfer, and Schedule A is merely a document intended
to accurately list the transferred Patent Rights. Schedule
A’s “quite specific” listing and Section 1.07’s “broad exclu-
sionary definition” co-exist without conflict because the
definition governs the transfer in the event of any incon-
sistency between the definition and Schedule A.
15 DOW CHEMICAL v. NOVA CHEMICALS

Again, it is impermissible for the majority to treat the
entire definition of Patent Rights as superfluous, and
thereby decline to interpret its language. Osborn, 991
A.2d at 1159. The effect of the “loss of rights” clause in
particular is a critical disputed issue in this case that
begs the question as to its meaning. In order to “read the
instrument as a whole, and, if possible, reconcile all the
provisions of the instrument,” the “loss of rights” clause
must be interpreted, for it is a key component of the
agreement. Elliot Assocs. v. Avatex Corp., 715 A.2d 843,
854 (Del. 1998).
The phrase “loss of rights” is not defined in the Con-
tribution Agreement, nor it is used anywhere other than
in Section 1.07. Nevertheless, it is clear that this “loss of
rights” language cannot mean what it says on its face
because no patent can be transferred without a loss of
some rights by the transferor. Contrary to Dow’s asser-
tions, there is nothing in the agreement suggesting that
the “loss of rights” clause contemplated the right to re-
cover lost profits in litigation. In contrast with the rights
relating to the payable royalties expressly mentioned in
Section 1.07, lost profits are not mentioned in the Contri-
bution Agreement, nor is the word “litigation” used. The
context in which the loss of rights clause appears—i.e.,
being listed third in a sentence after two other exceptions
involving third party rights and obligations under the
patents, including those relating to royalties—is unhelp-
ful because “loss of rights” is in no way tied to the other
exceptions. The overall objective of the Contribution
Agreement to transfer patents to DGTI for licensing back
to Dow does not assist us in deciding to what extent the
clause implicates litigation standing or substantive reme-
dial rights. Even the majority agrees that the parties’
best attempts to give meaning to the “loss of rights”
phrase have no discernible basis in the four corners of the
DOW CHEMICAL v. NOVA CHEMICALS 16

agreement. Maj. Op. at 7 (“Neither one of [the parties’]
theories is anchored in the text of the Contribution
Agreement.”). As such, the phrase “loss of rights” is
ambiguous as used in the Contribution Agreement and
Delaware law requires examination of the extrinsic evi-
dence to resolve the ambiguity. AT&T Corp., 953 A.2d at
253. While the district court and the majority both erro-
neously fail to undertake this analysis, I will now address
the pertinent extrinsic evidence bearing on the meaning
of “loss of rights.” 2

2 Under these circumstances, whereby in our de
novo review I would reverse the district court and find
ambiguity, this court has the authority to fully delve into
the extrinsic evidence to resolve the ambiguity, rather
than remand to the district court for further fact finding.
See Metric Constructors, Inc. v. NASA, 169 F.3d 747, 749,
753-54 (Fed. Cir. 1999) (reversing Board decision where
evidence of trade practice, custom, and the parties’ con-
duct was given “no weight ‘in light of the clear words’ of
the contract,” and resolving the ambiguity without re-
mand).

Because the district court found the Contribution
Agreement to be unambiguous, it did not engage in a
thorough discussion of the extrinsic evidence. Neverthe-
less, while the district court made clear that it did con-
sider such evidence, it determined that it ultimately was
“not persuaded” that the extrinsic evidence should change
the result. Standing Op. at 461, 463. Despite also deem-
ing the Contribution Agreement unambiguous, the major-
ity analyzes extrinsic evidence alleged to support its
conclusion, such as testimony from Dow’s paralegal
Kathleen Maxwell on the issue of the accuracy and au-
thenticity of the Schedule B Supplement in evidence.
These internally contradictory approaches of the district
court and the majority belie their findings that there is no
ambiguity concerning the Contribution Agreement and
Schedule A.
17 DOW CHEMICAL v. NOVA CHEMICALS

1. Contemporaneous Communications
Under Delaware law, outside the express terms of an
agreement, communications and documentation made
contemporaneously with the agreement are the best
extrinsic evidence of the parties’ intent. See Hudak v.
Procek, 806 A.2d 140, 148 (Del. 2002) (explaining that
absent contemporaneous documentation, parties may
generally offer two types of evidence to prove intent:
testimony concerning their intent or post-transaction
conduct). This case presents an instance in which there
are documents in the record that were contemporaneously
prepared by the parties to the Contribution Agreement,
and which explicitly discuss their reasoning for including
the disputed “loss of rights” term. Importantly, these
discussions address the effect the transfer of Patent
Rights would have on Dow’s standing to assert patents in
litigation.
On January 27, 2002, shortly before the Contribution
Agreement was signed, 3 Dow’s Managing Patent Counsel
Mr. Bruce Kanuch sent an email posing the following
question about the Contribution Agreement’s effect on
Dow’s then-pending litigations:
Did transfer of all patents into this new company
have any provisions on how to handle pending
litigations under Dow patents . . . . It is a ques-
tion of who had standing and who is the real party
in interest in these litigations.
A5664 (emphasis added). Other in-house counsel ex-
plained that standing for future potential litigations, such

3 Although the Contribution Agreement was effec-
tive January 1, 2002, it was not actually signed by Dow
and DGTI until February 17 and 7, 2002, respectively.
DOW CHEMICAL v. NOVA CHEMICALS 18

as in this case, could be easily addressed by the PTLA’s
provisions for re-assignment of patents to Dow, but that
pending litigations were not specifically addressed by the
Contribution Agreement:
The Patent and Technology License Agreement,
which also will be executed shortly, makes provi-
sion for DGTI to convey rights to bring suit under
patents even after these are contributed, but no
specific mention was made of the current litiga-
tions.
A5663. Mr. Kanuch then elaborated on his standing
concerns, observing that while licensing arrangements
can in some circumstances impart licensees with stand-
ing, it was generally easier to just sue in the name of the
owner/licensor. He therefore proposed that it would be
best for patents involved in pending litigation to remain
with Dow and not be transferred to DGTI:
The issue is primarily one of legal standing to
bring and/or maintain the lawsuit. Normally an
exclusive license must include an essentially com-
plete transfer of all rights under the patent in or-
der for the licensee to have standing to bring the
suit in its own name without adding the patent
owner. If not the court’s fear is that the patent
owner could later bring a second suit. It would be
cleaner to have title stay with TDCC or transfer
the patent and bring suit in the name of Dow
Tech, Inc. For the suits that are already pending
it would make it simpler to have the patents just
remain with Dow.
Id. (emphasis added). Dow’s in-house counsel agreed with
Mr. Kanuch’s proposal and explained that she added a
“loss of rights” provision to address his concern:
19 DOW CHEMICAL v. NOVA CHEMICALS

Thank you for the feedback. I’ve addressed this
issue in the contribution agreement by excluding
patents that can’t be transferred to DGTI without
a loss of rights (previously, it excluded patents
that can’t be transferred to DGTI without a loss of
patent protection). As an overall safety net, there
is a schedule of excluded intangible assets, just in
case there may be other instances in which we de-
termine that there would be some disadvantage in
transferring the assets to DGTI.
Id. (emphasis added). In an abundance of caution, other
in-house counsel responded with a proposal to schedule
the patents that were involved in pending lawsuits:
It is desirable to avoid any ambiguity with regard
to TDCC’s rights to continue the suits. I recom-
mend that we schedule the patents involved in
these litigations to affirm these are not contrib-
uted to [Dow Global] for the duration of the litiga-
tion.
A5662 (emphasis added). Finally, Dow’s paralegal re-
sponded with an email attaching “a listing of Dow’s pat-
ents involved in litigation on Jan. 1, 2002.” A5662.
These emails show that Dow and DGTI were con-
cerned with losing standing in pending litigations by
transferring the asserted patents to DGTI in the middle of
the case. The solution to the problem in their minds was
the loss of rights clause, which operated to preclude
transfer of patents involved in pending cases that had
been brought in Dow’s name only. To remove any doubt,
they even scheduled a list of patents involved in litiga-
tions pending on January 1, 2002, which were supposedly
not to be transferred. Future cases were not perceived as
problematic from a standing perspective since such cases
could simply be brought by DGTI or, upon Dow’s request,
DOW CHEMICAL v. NOVA CHEMICALS 20

DGTI could transfer patents back to Dow. In any event,
the focus of these contemporaneous communications
concerning the loss of rights provision was solely on the
issue of legal standing. Notably absent from these emails
is any mention of lost profits, which is reasonable since
the right to collect lost profits has no bearing on Dow’s
ability to “bring and/or maintain . . . lawsuit[s].” A5663.
These contemporaneous communications show that
“loss of rights” in Section 1.07 was meant to address the
loss of ownership rights that would eliminate Dow’s
standing in any litigations pending as of January 1, 2002.
Since the patents-in-suit were not asserted against NOVA
until 2005, they were not excepted from transfer under
the “loss of rights” clause, and as such were transferred to
DGTI under the Contribution Agreement.
C. Other Extrinsic Evidence
Other extrinsic evidence offered by the parties regard-
ing transfer and/or the meaning of the “loss of rights”
clause comprises Dow’s and DGTI’s post-execution con-
duct, primarily with respect to the contents of Schedules
A and D. In brief, I find this additional evidence is not
persuasive to overcome the express language of the
agreements or the clear evidence as to the meaning of
“loss of rights.”
1. The Schedule B Supplement
First, the parties argue whether the presence or ab-
sence of the patents-in-suit on Schedule A to the Contri-
bution Agreement reflect an intention of Dow and DGTI
to exclude the patents-in-suit from transfer under the loss
of rights clause. While I conclude that the district court
did not clearly err in finding that Dow’s Schedule B
Supplement was in fact intended to be Schedule A, and
that this version of Schedule A did not list the patents-in-
21 DOW CHEMICAL v. NOVA CHEMICALS

suit, as discussed above, Schedule A does not control what
was or was not transferred. Whether the patents-in-suit
were listed on Schedule A also has little to no bearing on
what the operative language “loss of rights” means.
To the extent the Schedule B Supplement lists what
Dow and DGTI thought was transferred to DGTI under
the Contribution Agreement, I note that no version of
Schedule A in the record was prepared contemporane-
ously with the Contribution Agreement. The only version
of Schedule A before us that listed any patents was dated
December 15, 2005, far removed from the effective date of
the Contribution Agreement (January 1, 2002) and there-
fore of very limited probative value regarding the parties’
intent in 2002. Moreover, because this Schedule A was
dated nearly a month after the complaint was filed (Octo-
ber 21, 2005), and because Dow did not introduce evidence
or testimony to show what changes were made to the
document prior to December 15, 2005, there is no basis—
much less a preponderance of the evidence—to conclude
that the patents-in-suit were not listed on Schedule A
when the lawsuit was initiated. Lastly, Dow contends
that since the Schedule A in the record lists only four of
Dow’s approximately 7,300 pre-2002 United States pat-
ents, U.S. patents in addition to those involved in pending
litigation were excluded from transfer. Yet there is no
evidence in the record that explains why those four U.S.
patents in particular were the only ones listed. It strains
credibility to suggest that only four U.S. patents were
transferred by an agreement having such broad transfer-
ring language, particularly given the substantial antici-
pated tax benefits that would accrue from a mass transfer
of U.S. patents under Dow’s overall assignment and
grant-back scheme.
The majority finds no basis to doubt the accuracy of
the October 21, 2005 Schedule A in terms of reflecting
DOW CHEMICAL v. NOVA CHEMICALS 22

ownership of the patents-in-suit when this lawsuit was
filed. Despite finding the Contribution Agreement unam-
biguous and requiring no inquiry into extrinsic evidence,
the majority selectively points to the extrinsic testimony
of Dow’s paralegal Kathleen Maxwell to suggest that no
version of Schedule A ever listed the patents-in-suit so as
to effectuate their transfer to DGTI. The majority points
out that Schedule A was originally created in 2002 by Ms.
Maxwell from Dow’s internal database listing of patents
owned by DGTI. However, this proves nothing as to the
effect of the Contribution Agreement on Dow’s patent
portfolio ownership because Ms. Maxwell, who testified
that she was responsible for managing the database, also
testified that she had not updated the database in 2002 to
reflect the Contribution Agreement. Likewise, Ms. Max-
well’s testimony does not explain which patents were
added or removed from the database over time, or why
such changes were made, in relation to subsequent up-
dates to Schedule A leading up to the December 15, 2005
version in evidence. Ms. Maxwell’s only means of verify-
ing that the patents-in-suit were not listed on Schedule A
currently was to query Dow’s new internal database
which the evidence shows was only in use since 2009, long
after the Contribution Agreement’s execution and the
filing of the present lawsuit. Regardless of the “virtually
unassailable” credibility of Ms. Maxwell with respect to
the statements cited by the majority, those statements
tell only part of the story and were controverted by other
testimony. This weak and inconclusive testimony as to
the contents of Schedule A over time, particularly in light
of the absence of any documentary evidence as to Dow’s
internal database or Schedule A prior to October 21, 2005,
calls into question which patents, if any, were listed on
any version of Schedule A that existed prior to the filing
of this lawsuit.
23 DOW CHEMICAL v. NOVA CHEMICALS

The Schedule A in the record simply does not help
Dow carry its burden to prove by a preponderance of the
evidence that the patents-in-suit were owned by Dow
when it initiated this lawsuit, nor does it provide any
guidance as to what was meant by “loss of rights” in 2002.
2. Schedule D
Second, the parties argue whether Schedule D to the
Contribution Agreement, which provides a listing of
“Excluded Intangible Assets,” indicates that the patents-
in-suit were transferred. Schedule D was prepared by
Dow and DGTI within the 90 day period specified under
the Contribution Agreement and, unlike the Schedule B
Supplement, was therefore contemporaneously created
with the Contribution Agreement. Delaware law treats
such contemporaneous documentation as more probative
of intent than later-created evidence or testimony. See
Hudak, 806 A.2d at 148 (emphasizing that evidence “at
the time of the transaction” is most probative of the
contemporaneous understanding of an agreement). The
contemporaneously prepared Schedule D did not list the
patents-in-suit, but a later version of Schedule D updated
by Dow in 2009 in response to Nova’s discovery requests
did list the patents-in-suit. NOVA argues that the ab-
sence of the patents-in-suit on the original Schedule D
indicates that the patents-in-suit were in fact transferred.
NOVA also contends that the later updated version of
Schedule D which included the patents-in-suit was essen-
tially a litigation-induced fabrication to make it appear as
if the patents-in-suit had not been transferred in 2002.
While Dow’s counsel understood Schedule D as “an
overall safety net” useful to avoid disadvantageous trans-
fers, A5663, the Contribution Agreement is not clear as to
how Schedule D relates to the definition of Patent Rights
in Section 1.07, if at all. Neither Schedule D nor the
DOW CHEMICAL v. NOVA CHEMICALS 24

“Excluded Intangible Assets” are referenced anywhere in
connection with the transferred Patent Rights. To the
extent Schedule D was intended to list patents that were
not transferred, the version of Schedule D prepared
contemporaneously with the Contribution Agreement did
not list the patents-in-suit, and this fact should not be
disregarded. See Hudak, 806 A.2d at 148.
Even if the presence of a patent on Schedule D ex-
cluded it from transfer for some reason, the inverse is not
necessarily true. Because the schedules to the Contribu-
tion Agreement are not controlling, a patent not listed on
Schedule D could still be excluded from transfer under
one or more of the exceptions in Section 1.07. Thus,
Schedule D alone cannot reveal why any given patents
were listed as Excluded Intangible Assets, and the ab-
sence of the patents-in-suit from the original Schedule D
could have been for any number of reasons. To the extent
Dow argues that there are generally more U.S. patents
listed on Schedule D than were involved in active litiga-
tion in 2002—which could arguably support its “lost
profits” theory—I see no evidence in the record to support
this statement or explain why the particular U.S. patents
listed on Schedule D were excluded from transfer, and I
see no need to engage in further analysis of this assertion.
See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371,
1380 (Fed. Cir. 2009) (emphasizing that “unsworn attor-
ney argument . . . is not evidence”). I therefore find the
parties’ arguments regarding Schedule D to be unpersua-
sive, and unhelpful in discerning what “loss of rights”
means.
3. USPTO Assignment Records and Maintenance Fees
Third, the parties point to other purportedly objective
indications of ownership of the patents-in-suit. For
example, Dow notes that Dow and DGTI filed assignment
25 DOW CHEMICAL v. NOVA CHEMICALS

documents with the U.S. Patent and Trademark Office
(“USPTO”) to record the transfer of ownership for many
patents to DGTI, but did not do so for the patents-in-suit.
NOVA counters that DGTI, not Dow, bore the cost of the
maintenance fees paid to the USPTO for the patents-in-
suit from 2004 to the present. Dow's chief IP counsel
conceded that typically it is the owner of a patent who
pays the maintenance fees. Despite that this conflicting
post-execution conduct is at best ambiguous as to whether
the patents-in-suit were conveyed by Dow to DGTI, the
majority finds the 1990s assignment records at the
USPTO persuasive to suggest that Dow is in fact the
proper owner of the patents-in-suit. The assignment
records merely create a presumption of ownership, how-
ever, and are not dispositive. See SiRF Tech., Inc. v. Int’l
Trade Comm’n, 601 F.3d 1319, 1327-28 (Fed. Cir. 2010).
In this case, subsequent to the USPTO assignment re-
cords are the Contribution Agreement and the Quitclaim
Deed showing Dow’s transfer and reacquisition of the
patents-in-suit. Rather than relying on an absence of a
future recorded assignment to show that Dow still owns
the patents-in-suit, as the majority does, I find the evi-
dence in the record of actual subsequent assignment
documents more persuasive to show which entity held
title to the patents-in-suit when this litigation com-
menced.
4. Patent Royalty Payments
Lastly, NOVA contends that Dow’s royalty payments
to DGTI and corresponding tax benefits indicate that Dow
transferred the patents to DGTI. Otherwise, according
NOVA, Dow has taken a position so as to have its cake
and eat it too—to own the patents for purposes of stand-
ing but not for purposes of royalties and taxation. While
the record is not clear as to how much of the royalty
payments are attributable of the ’023 patent, Dow has not
DOW CHEMICAL v. NOVA CHEMICALS 26

shown that the payments were made solely in exchange
for rights to intellectual property other than the patents-
in-suit. Dow concedes that it received tax benefits, and
the PTLA as a whole strongly suggests that the royalties
owed to DGTI relate at least in part to the ’023 patent
(i.e., to Dow’s ELITE product line), but Dow presented no
evidence to apportion out the royalty payments that gave
rise to its tax benefits. Only Dow would have this infor-
mation. This failure of proof by Dow tends to suggest that
the ’023 patent was transferred to DGTI. Again, Dow
bears the burden to establish standing, and this glaring
contradiction between the overarching goal of the agree-
ments and Dow’s assertion that the patents-in-suit were
somehow not part of the transfer and grant-back scheme
highlights Dow’s failure to carry its burden. Land-Lock,
963 A.2d 139 (explaining that contracts should not inter-
preted by making “inference[s] run[ning] counter to the
agreement’s overall scheme or plan”).
* * *
In sum, I find that the Contribution Agreement, when
read in light of all the extrinsic evidence, shows that the
patents-in-suit were transferred to DGTI as of January 1,
2002.
III. DISMISSAL WITH PREJUDICE IS UNWARRANTED
The law “universally disfavors dismissing an action
with prejudice based on lack of standing,” and I see no
compelling reason to so do as a sanction in this case.
Univ. of Pittsburgh v. Varian Med. Sys., Inc., 569 F.3d
1328, 1332-33 (Fed.Cir. 2009). Dismissal without preju-
dice tends to be appropriate where, as here, the plaintiff
is able to cure (and indeed already has cured via the
Quitclaim Deed) the standing problem. See Tyco, 587
F.3d at 1380 (affirming dismissal without prejudice in
part because “[a]s best we can tell, Tyco Healthcare may
27 DOW CHEMICAL v. NOVA CHEMICALS

become able to show that it owned the asserted patents.
Alternatively, Tyco Healthcare may be able to obtain
ownership of the patents.”); Sicom Sys. v. Agilent Techs.,
Inc., 427 F.3d 971, 980 (Fed. Cir. 2005) (affirming dis-
missal with prejudice where plaintiff “already had a
chance to cure the [standing] defect and failed”); Fieldturf,
Inc. v. Southwest Rec. Indus., 357 F.3d 1266, 1269 (Fed.
Cir. 2004) (“On occasion, . . . a dismissal with prejudice is
appropriate, especially where ‘it [is] plainly unlikely that
the plaintiff [will be] able to cure the standing problem.’”)
(citations omitted).
NOVA argues that Dow failed to perform a sufficient
pre-filing investigation, failed to provide timely and
adequate discovery on standing issues, and produced
schedules of questionable authenticity and accuracy, all of
which “wasted untold time and money on an infringement
case that should never have been brought or should
promptly have been dismissed.” NOVA Br. at 56. Essen-
tially, NOVA argues that Dow has engaged in the kind of
conduct that warrants a dismissal with prejudice as a
sanction. In support of its argument, NOVA cites Lans v.
Digital Equip. Corp., in which this court affirmed a dis-
trict court’s dismissal with prejudice where the plaintiff
“purported to own a patent he did not actually own . . . did
not disclose the actual owner until the [Defendants]
discovered the assignment . . . , and even then he equivo-
cated.” 252 F.3d 1320, 1328-29 (Fed. Cir. 2001). The
plaintiff in Lans, however, could not re-file because the
patent had expired and he could not recover past damages
under 35 U.S.C. § 287. Id. at 1328. Moreover, there was
no dispute that the plaintiff in Lans had actually assigned
away the patent to another entity before misrepresenting
that he still owned the patent. Rather, the plaintiff
alleged that he “had simply forgotten about the assign-
ment,” but the district court found this allegation of an
DOW CHEMICAL v. NOVA CHEMICALS 28

honest mistake was not credible. Id. at 1324-25. While
dismissal with prejudice was appropriate in that case,
this court has been appropriately reluctant to sanction
parties with a dismissal with prejudice. See Univ. of
Pittsburgh, 569 F.3d at 1333-34 (reversing dismissal with
prejudice despite district court’s specific findings of “un-
timely and unfair” conduct in choosing not to join a neces-
sary party for “tactical” reasons, as well as “undue delay”
via failure to abide by scheduling orders). I would decline
to impose such a harsh penalty on Dow based on the
record before us in this case.
IV. CONCLUSION
I believe that law schools still teach first year law
students that whether standing exists should always be
one of the first questions considered when a lawsuit is
likely to be filed. When a genuine question of standing is
presented, its resolution should not be delayed by the
parties or by the court, as every day spent in a litigation
brought without standing is wasteful. Counsel, as fiduci-
aries to their clients and officers of the court, are obli-
gated to diligently work to prevent such unnecessary
burdens on the justice system.