Free Order on Motion for Judgment on the Pleadings - District Court of Delaware - Delaware

Case 1:05-cv-00737-JJF Document 27 Filed 07/23/2007 Page1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
THE DOW CHEMICAL COMPANY, :
Plaintiff, E
v. ; Civil Action No. 05-737-JJF
NOVA CHEMICALS CORP., and ;
NOVA CHEMICALS INC., :
Defendants. i
MEMORANDUM ORDER
Pending before the Court is Defendants’ Motion For Judgment
On The Pleadings (D.I. 20). For the reasons discussed, the
Motion will be denied.
I. BACKGROUND
Plaintiff The Dow Chemical Company (“Dow”) is incorporated
in Delaware with its principal place of business in Michigan.
Defendant NOVA Chemicals Corporation is a Canadian corporation
and Defendant NOVA Chemicals, Inc. is incorporated in Delaware
(collectively “Nova"). On October 21, 2005, Plaintiff filed this
action alleging infringement of U.S. Patent Nos. 5,847,053 (“the
‘053 patent") and 6,11,023 (“the ‘023 patent") which relate to
ethylene polymer blends. On August 10, 2006, Defendants
counterclaimed alleging invalidity and non—infringement. On
November 7, 2006, Defendants filed the instant Motion. Discovery
has not yet commenced.
II. PARTIES' CONTENTIONS
By its Motion, Defendants contend that judgment on the
pleadings is warranted because Plaintiff's patent is invalid for

Case 1:05-cv-00737-JJF Document 27 Filed 07/23/2007 Page 2 of 4
failure to comply with the statutory requirements of 35 U.S.C. §§
lll and 113. Specifically, Defendants contend that Sections 111
and 113 require that a drawing referred to in the specification
be included and, because Plaintiff admits that a drawing referred
to in the specification was omitted, both the ‘053 and ‘O23 are
invalid. In response, Plaintiff contends that the omitted
drawing does not render the patents invalid because Sections 111
and 113 are not bases for patent invalidity. Plaintiff further
contends that the drawing is not required by the statute because
it is not “necessary."
III. LEGAL STANDARD
A motion for judgment on the pleadings under Federal Rule of
Civil Procedure 12(c) is governed by the same standards that
apply to a motion to dismiss under Rule 12(b)(6). Specifically,
the Court must accept all factual allegations in the pleadings as
true and draw all reasonable factual inferences in the light most
favorable to the nonmovant. The Court is not required to accept
legal conclusions alleged or inferred from the pleaded facts.
“[O]nce a claim has been stated adequately, it may be supported
by showing any set of facts consistent with the allegations in
the complaint.” Bell Atlantic Corp. v. Twombly, 127 S.Ct. 1955,
1969 (2007) .1
[Where the parties submit matters outside the pleadings with
their briefing, the Court, pursuant to Fed. R. Civ. P. l2(c}, may
treat the Motion as one for summary judgment under Rule 56.
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Case 1:05-cv-00737-JJF Document 27 Filed 07/23/2007 Page 3 of 4
IV. DISCUSSION
Under 35 U.S.C- § 113, a patent applicant “shall furnish a
drawing where necessary for the understanding of the subject
matter sought to be patented.” (emphasis added). Defendants
contend that a drawing is “necessary” where a drawing is referred
to in the specification but omitted. Defendants contend that
this drawing requirement is a “condition of patentability” and
omission of a necessary drawing is sufficient ground for finding
a patent invalid. To support its contention that a drawing is
necessary where referred to but ommitted, Defendants rely on the
Manual of Patent Examining Procedure (“MPEP”) of the U.S. Patent
and Trademark Office (“USPTO”) and its procedural guidelines for
assigning filing dates to patent applications. However, the
Court understands that the MPEP is a training and instruction
manual which does not have the force of law. Racing Strollers,
Inc. v. TRI Indus., Inc., 878 F.2d 1418, 1422 (Fed. Cir. 1989}.
For this reason, the Court concludes that the necessity of a
drawing is not a purely legal question. Accordingly, the Court
concludes that the issue presented by the instant Motion will
require factual context, and therefore, Defendants’ Motion will
be denied.
However, the district court has the discretion to limit its
ruling to the complaint and properly treat the motion as a motion
to dismiss. eee Kulwicki v. Dawson, 969 F.2d 1454, 1462 (3d Cir.
1992). In the circumstances here, the Court concludes that the
additional materials attached to the parties' submissions are not
necessary to a determination of the instant Motion, and
therefore, will treat the Motion as a motion for judgment on the
pleadings under Rule 12(c).
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Case 1:05-cv-00737-JJF Document 27 Filed 07/23/2007 Page 4 of 4
ORDER
NOW THEREFORE, IT IS HEREBY ORDERED that Defenda¤tS' M0ti0n
For Judgment On The Pleadimgs (D.I. 20) is DENIED.
U A
July g-»’, 2007 ._ — we
UNk ED S T DISTRICT GE
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