By Bryan K. Wheelock, Principal
In BASF Corp. v. Johnson Matthey Inc., [2016-1770] (November 20, 2017), the Federal Circuit reversed the judgment of invalidity for indefiniteness of 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, and remanded.
The ’185 patent claims a partly-dual-layer arrangement of catalytic coatings on a substrate over which exhaust gas passes, e.g., the walls of a flow-through chamber having a honeycomb structure, whose function is to remove NOx from a stream of exhaust gas while minimizing the amount of ammonia that ends up being released from the system. The claims require a “composition … effective to catalyze” or a “composition … effective for catalyzing.” The accused infringer argued, and the district court agreed, that the phrases are indefinite, because the “effective to catalyze” language used to identify the claim compositions is functional, and there are no objective boundaries on (1) what amount of effectiveness is required, or (2) how to measure the effectiveness.
The Federal Circuit framed the issue of indefiniteness after Nautilus as: 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 Federal Circuit found that the district court’s analysis supplied no basis to answer this question in Johnson’s favor.
While the district court focused on the functional nature of the language, Federal Circuit noted that the Nautilus standard of “reasonable certainty” does not exclude claim language that identifies a product by what it does. The Federal Circuit said that nothing inherent in the standard of “reasonable certainty” precludes a relevant skilled artisan from understanding with reasonable certainty what compositions perform a particular function, and noted that it has held that nothing in the law precludes, for indefiniteness, “defining a particular claim term by its function.” Rather, what is needed is a context-specific inquiry into whether particular functional language actually provides the required reasonable certainty.
The district court also noted that the claims did not recite a minimum level of function needed to meet the “effective” limitation nor a particular measurement method for determining effectiveness. However, the Federal Circuit said that the mere observation of information not recited did not answer the question of whether a person of ordinary skill in the art would need to be given the level and measurement information to understand, with reasonable certainty, whether a composition is “effective to catalyze” the SCR (of NOx) or AMOx reactions.
While the district court said that without this information a person of ordinary skill in the art could not determine which materials are within the limitations and which are not, the Federal Circuit said this conclusion was “entirely unsupported.” The Federal Circuit said that the district court did not consider that the specification makes clear that it is the arrangement of the 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. The Federal Circuit found that the claims and specification let the public know that any known catalysts can be used as long as they play their claimed role in the claimed architecture.
The district court credited the accused infringer’s argument that “a practically limitless number of materials” could meet the claim requirements, and treated this scope as indicating that the claims, as written, fail to sufficiently identify the material compositions. However, the Federal Circuit admonished: “breadth is not indefiniteness.” The Federal Circuit found no persuasive support for the necessary conclusion that a relevant skilled artisan would lack reasonable certainty as to what compositions are “effective to catalyze” the reactions at issue.
The Federal Circuit focused on the point of novelty, noting:
The intrinsic evidence in this case makes clear that the asserted advance over the prior art is in the partly-dual-layer arrangement to create a two-phase operation for performing the identified conversion processes, not in the choices of materials to perform each of the required catalytic processes. It is in this context that the question of the certainty or uncertainty experienced by a relevant skilled artisan in understanding the claims, read in light of the specification, is presented. And it is in this context that the relevant skilled artisan would be informed by the specification’s numerous examples of qualifying compositions A and B,
The Federal Circuit concluded that the record did not contain intrinsic or extrinsic evidence that would support a judgment of indefiniteness.