Monday, November 20, 2017

BASF wins appeal at CAFC; decision of Judge Sue L. Robinson reversed

BASF Corporation owns U.S. Patent No. 8,524,185,
which describes and claims systems for performing catalytic
conversion of nitrogen oxides (NOx) in an exhaust gas
stream. As relevant here, the patent claims a partly-duallayer
arrangement of coatings on a substrate over which
exhaust gas passes—a coat along the full length of the
substrate containing “a material composition B effective
to catalyze selective catalytic reduction (SCR) of NOx”;
and beneath part of that coat, on the outlet end of the gas
passage, a partial-substrate undercoat containing “a
material composition A effective for catalyzing NH3
oxidation” (ammonia oxidation, or AMOx). ’185 patent,
col. 19, lines 40–55 (claim 1); see also id., col. 20, lines 3–5
(dependent claim 5, similar); id., col. 20, lines 42–62
(independent claim 17, similar, but adding restrictions
concerning precious metals). In 2014, BASF sued its
competitor, Johnson Matthey Inc., for infringement of the
’185 patent. The district court held that the “effective for
catalyzing”/“effective to catalyze” language is indefinite
and entered judgment of invalidity of all claims on that

BASF appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1). We reverse the judgment of invalidity for
indefiniteness. We remand for further proceedings in
accordance with this opinion.

Of the law:

We review a determination of indefiniteness de novo.
Id. Determinations about governing legal standards and
about intrinsic evidence are reviewed de novo, and any
factual findings about extrinsic evidence relevant to the
question, such as evidence about knowledge of those
skilled in the art, are reviewed for clear error. Id. at
1377–78, 1382; see Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 841–42 (2015); UltimatePointer, L.L.C. v.
Nintendo Co., Ltd., 816 F.3d 816, 826 (Fed. Cir. 2016);
Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335,
1342 (Fed. Cir. 2015).

The CAFC found no reasoning in the district court opinion

Under Nautilus, the question presented here is this:
would the “composition . . . effective to catalyze” language,
understood in light of the rest of the patent and the
knowledge of the ordinary skilled artisan, have given a
person of ordinary skill in the art a reasonably certain
understanding of what compositions are covered? The
district court’s reasoning supplies no basis to answer that
question in Johnson’s favor.


Indeed, the district court did not treat the mere observation
about information not “recited” as itself answering
the question. The court immediately went on to
declare that “[w]ithout such information, a person of
ordinary skill in the art could not determine which materials
are within the ‘material composition A’ or ‘material
composition B’ limitation, and which are not.” J.A. 5.
That sentence is the crucial sentence in the district court’s
The problem with that sentence, however, is that it is
entirely unsupported, whether by reference to the specification
or other intrinsic evidence or by reference to extrinsic
evidence. Such support was central to our
determination that indefiniteness of certain physicalproperty
claims was proved in cases such as Dow Chemical
Co. v. Nova Chemicals Corp. (Canada), 803 F.3d 620,
633–35 (Fed. Cir.), rehr’g denied, 809 F.3d 1223 (Fed. Cir.
2015); Teva, 789 F.3d at 1342–45; Halliburton Energy
Services, Inc. v. M-I LLC, 514 F.3d 1244, 1252–54 (Fed.
Cir. 2008); and Honeywell International, Inc. v. International
Trade Commission, 341 F.3d 1332, 1340–42 (Fed.
Cir. 2003). The district court’s analysis in the present
case lacks such support for its conclusion about what a
relevant skilled artisan could determine without more
information than the patent here provides.
The district court’s analysis does not consider that the
specification makes clear that it is the arrangement of the
SCR and AMOx catalysts, rather than the selection of
particular catalysts, that purportedly renders the inventions
claimed in the ’185 patent a patentable advance over
the prior art. As a result, the claims and specification let
the public know that any known SCR and AMOx catalysts
can be used as long as they play their claimed role in the
claimed architecture. The district court’s analysis also
does not address the significance of the facts that both the
claims and specification provide exemplary material
compositions that are “effective” to catalyze the SCR of
NOx and the oxidation of ammonia, disclose the chemical
reactions that define the “SCR function” and “NH3 oxidation
function,” ’185 patent, col. 5, lines 33–49, and illustrate
through figures, tables, and accompanying
descriptions how the purportedly novel arrangement of
the catalysts results in improved percent conversion of
ammonia and improved nitrogen selectivity, see id., cols.


Dr. Epling’s declaration describes his own work with
“SCR catalysts,” speaks of “ammonia oxidation catalysts,”
gives examples of materials that can catalyze under
which conditions, and identifies materials that would “to
some measurable extent[] catalyze the oxidation of ammonia
if used to treat diesel engine emissions.” J.A. 951,
953. In those ways, Dr. Epling’s declaration implicitly
confirms that the terms at issue are ones whose scope is
understood with reasonable certainty by relevant skilled
artisans. Dr. Epling’s declaration also states: “In my
experience, scientists and engineers in th[e] field do not
consider materials that display only a minimal level of
SCR or ammonia oxidation function to be a material
effective to reduce NOx or to oxidize ammonia.” J.A.
1410. That assertion does not contradict the position of
BASF and its expert, which was that relevant skilled
artisans would reasonably understand what level (under
what conditions) qualify a composition as a claimed
catalyst. In fact, Dr. Epling’s assertion tends to confirm
the existence of just that understanding.

This record, we conclude, does not contain intrinsic or
extrinsic evidence that would support a judgment of


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