Federal Circuit Flash Digest – BASF Corp. v. Johnson Matthey Inc.

BASF Corp. v. Johnson Matthey Inc., No. 2016-1770, 2017 WL 5559629 (Fed. Cir. Nov. 20, 2017)

Last week, in BASF Corp. v. Johnson Matthey Inc., No. 2016-1770, 2017 WL 5559629 (Fed. Cir. Nov. 20, 2017), the U.S. Court of Appeals for the Federal Circuit reversed and remanded a decision by the U.S. District Court for the District of Delaware. The patent of BASF Corp. (“BASF”) claims a partly-dual-layer arrangement of materials “effective to catalyze” to convert exhaust gas, and the district court held such language was indefinite and thus the patent was invalid.

The Federal Circuit held that the evidence in the case did not establish that the claims of U.S. Patent No. 8,524,185 were indefinite in the context of the patent and specification. The court concluded that the claims and specification showed the major advancement was the arrangement of catalysts. The court further concluded that the extrinsic evidence did not establish that an ordinary skilled artisan could not determine to a reasonable certainty what compositions fall within the claims. In so holding, the Federal Circuit clarified the legal standard to examine whether functional language renders a patent claim indefinite.

The patent in dispute claims a partly-dual-layer arrangement of coatings on a substrate to catalyze selective catalytic reduction (SCR) of NOx and ammonia oxidation in an exhaust gas stream. The claims recite material compositions “effective to catalyze” or “effective for catalyzing” such reactions, but do not expressly specify the required compositions. The accused infringer, Johnson Matthey Inc. (“Johnson”), argued that such “effective to catalyze” language was functional, and there were no “objective boundaries on (1) what amount of effectiveness is required, or (2) how to measure the effectiveness.” Johnson’s expert filed a declaration in support, which was credited by the district court, stating that there were effectively a “limitless number” of compositions that can catalyze such reactions.

Following Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), hosted by eff.org, the Federal Circuit concluded that the evidence in this case did not prove indefiniteness by clear and convincing evidence. In Nautilus, the Supreme Court held that a patent claim is indefinite if, when “read in light of the specification delineating the patent, and the prosecution history, [the claim] fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The Federal Circuit framed the question in BASF as whether the “composition . . . effective to catalyze” language, understood in light of the patent and the knowledge of an ordinary skilled artisan, can reasonably indicate what compositions are covered. The court first concluded that functional claims were legitimate and not indefinite per se, and suggested that some broad claims, in a context-specific inquiry, can provide reasonable certainty to an ordinary skilled artisan. The court then found the district court’s analysis in favor of Johnson offered inadequate evidential support.

The Federal Circuit reviewed the intrinsic evidence de novo and concluded that the district court’s analysis did not consider that it was the arrangement of the catalysts, rather than the selection of particular catalysts, that rendered the invention patentable. The Federal Circuit also found Johnson’s argument based on the patent specification went too far in suggesting that the intrinsic evidence pointed to a patent-specific standard for catalysts. The court read the claims in the context of the patent related to a two-phase operation process to perform such catalyzing effects, and held such operation and the patent’s specification were relevant to determine qualifying compositions. As for extrinsic evidence of the knowledge of an ordinary skilled artisan, the court reviewed such evidence for clear error. The Federal Circuit held that because there was no dispute on the materials which were capable of catalyzing the claimed reactions (some of which were also listed in the specification), and there were objective tests to determine the effectiveness of the catalysts, such as percent conversion, the evidence did not establish that an ordinary artisan could not reasonably determine the choices of effective catalysts for the patent. Therefore, the court reversed the judgment of indefiniteness and remanded for further proceedings. Dennis Crouch of Patently-O suggested there were important distinctions in the indefiniteness analysis when considering claims “directed to well-known versus novel features.”

Kyle Xu is a 2L student at Harvard Law School.