BASF Corp. v. Johnson Matthey Inc.

• Decision Date: 20 November 2017
• Docket Number: 2016-1770
• Citation: BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360 (Fed. Cir. 2017)
• Parties: BASF CORPORATION, Plaintiff–Appellant v. JOHNSON MATTHEY INC., Defendant–Appellee
• Court: U.S. Court of Appeals — Federal Circuit

875 F.3d 1360

BASF CORPORATION, Plaintiff–Appellant

v.JOHNSON MATTHEY INC., Defendant–Appellee

2016-1770

United States Court of Appeals, Federal Circuit.

Decided: November 20, 2017

Deanne Maynard , Morrison & Foerster LLP, Washington, DC, argued for plaintiff–appellant. Also represented by Marc A. Hearron , Seth W. Lloyd , Daniel P. Muino .

Douglas E. McCann , Fish & Richardson, P.C., Wilmington, DE, argued for defendant–appellee. Also represented by Patrick D. Cooney , Martina Tyreus Hufnal , Robert M. Oakes .

Before Lourie, O'Malley, and Taranto, Circuit Judges.

Taranto, Circuit Judge.

BASF Corporation owns U.S. Patent No. 8,524,185, which describes and claims systems for performing catalytic conversion of nitrogen oxides (NO_x) in an exhaust gas stream. As relevant here, the patent claims a partly-dual-layer 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 basis.

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.

I

A

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 NO_xfrom a stream of exhaust gas while minimizing the amount of ammonia that ends up being released from the system. Claim 1 is representative:

A catalyst system for treating an exhaust gas stream containing NOx, the system comprising:

at least one monolithic catalyst substrate having an inlet end and an outlet end; an undercoat washcoat layer coated on one the outlet end of the monolithic substrate and which covers less than 100% of the total length of the monolithic substrate, and containing a material composition A effective for catalyzing NH3 oxidation;

an overcoat washcoat layer coated over a total length of the monolithic substrate from the inlet end to the outlet end sufficient to overlay the undercoat washcoat layer, and containing a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx; and

wherein material composition A and material composition B are maintained as physically separate catalytic compositions.

'185 patent, col. 19, lines 40–55. Relevantly similar language about effective catalysis appears in claims 5 and 17, as already noted. The parties have not suggested any distinction among the claims or their language that is material to the point at issue. We focus on the language, "composition ... effective to catalyze," but our analysis applies equally to "composition ... effective for catalyzing."

The specification describes the generally contemplated two-phase operation of a partly-dual-layer, two-zone coating system, which involves a full-length coating that is the sole coat for part of the substrate (the first zone) and that lies atop another layer on part of the substrate, toward the outlet of the gas stream (the second zone). The gas stream travels along the substrate from the inlet to the outlet and is exposed, along the full length of the substrate, to "material composition B," which removes NO_xby catalyzing an SCR reaction between NO_xand ammonia. Id. , col. 11, lines 40–47. The ammonia for the reaction may be injected into the gas upstream of the catalysts. Id. , col. 3, lines 28–29. That SCR process, however, can leave unreacted ammonia, which, if untreated, might escape through the outlet of the system along with the treated gas stream. Id. , col. 1, lines 41–48. The '185 patent's system addresses that problem (so-called "ammonia slip," id. , col. 1, line 41) by use of an undercoat layer, beneath a part of the full-length layer of SCR catalyst, toward the outlet end of the substrate. At that dual-layer end of the substrate, the ammonia is exposed to the undercoat, which contains a "material composition A" effective to catalyze an AMOx reaction, reducing the residual ammonia, see id. , col. 11, lines 47–52; and the overcoat continues to minimize NO_xvia SCR, id. , col. 12, lines 37–45.

When referring to compositions A and B, the specification uses the language of "composition ... effective to catalyze" (or comparable "effective" terminology), e.g. , id. , col. 2, lines 5, 9, 22, 24; col. 3, lines 9, 14, 33, 38–39; col. 5, lines 40, 48, 55–58, and, in ways that are interchangeable for present purposes, the names "SCR catalyst" and "ammonia oxidation [or AMOx] catalyst," e.g. , id. , col. 1, lines 30–58; col. 5, lines 38–49; col. 6, lines 48–55; col. 8, lines 4–14, 37–41; col. 10, lines 56–61; col. 11, lines 9–20; col. 11, line 65 through col. 12, line 3; col. 12, lines 13–26. (It also uses certain other terms, such as "SCR composition" and "NH₃oxidation composition." E.g. , id. , col. 7, line 58; col. 8, line 48.) The specification sets out the specific stoichiometric chemical reactions for the catalysts. Id. , col. 5, lines 33–49. It identifies a variety of materials that can be used for "material composition A" (e.g. , "refractory metal oxide[s] containing alumina, silica, zirconia, titania, ceria") and "material composition B" (e.g. , an "aluminosilicate molecular sieve [with] one of the crystal framework types FAU, MFI, MOR, BEA"). Id. , col. 2, lines 29–58. And it includes various examples of how catalyst layers are prepared and how they perform under practical engine conditions in comparison to the prior art. Id. , col. 13, line 54 through col. 19, line 14.

B

In its opening brief on claim construction in this case, BASF urged that the "composition ... effective to catalyze" phrases have a plain and ordinary meaning, so it proposed simply using those phrases followed by the qualification, "as understood in the art of exhaust systems." J.A. 105. BASF also argued that the phrases are not indefinite, contrary to the contention Johnson had stated in advance of claim construction.

Johnson responded 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." J.A. 380; see id. at 379–93. Johnson's expert, Dr. William S. Epling, filed a declaration in support. He stated that there are effectively a "limitless number" of materials that can catalyze ammonia oxidation or SCR reactions. J.A. 953, 955. Regarding SCR catalysts, he stated that the materials listed in the '185 patent specification were known in the art to be effective catalysts for SCR of NO_x. Regarding AMOx catalysts, Dr. Epling listed various materials he considered to be known in the art as effective catalysts. He also stated that "objective standards," such as "percent conversion," exist in the field of catalysis to test and quantify catalytic function. J.A. 957. Nevertheless, he concluded that the claims here are indefinite because the materials given in the specification are not an "exhaustive list" and the patent "does not define the level of function required to be considered ‘effective’ " or the "particular conditions" under which a material would have to be effective. J.A. 954, 956; see J.A. 954–58. For those reasons, Dr. Epling opined, a person of ordinary skill in the art "would not be able to determine with reasonable certainty the boundary of which materials are included within" the claims. J.A. 955; see J.A. 953–56.

In reply, BASF argued that the claims are not indefinite. It rejected Johnson's core contentions that the patent had to specify a "level" of effectiveness and the "conditions" under which that level would be achieved. Rather, BASF argued, based on ordinary meaning and the considerable information in the specification about examples and testing conditions, "the disputed ‘material composition’ limitations" (those at issue here) "should be construed to encompass all compositions known to those of skill in the art that perform the recited SCR or AMOx functions," J.A. 1165, to whatever degree and under whatever conditions would be viewed by a relevant skilled artisan as making the material an SCR or AMOx catalyst, J.A. 1162–68.

BASF attached a declaration from an expert, Dr. Mark Crocker, that responded to Dr. Epling. He stated that a person of ordinary skill in the art would understand "composition ... effective to catalyze" in the context of the '185 patent to mean a "composition capable of catalyzing" the reaction in question "in a catalyst system for treating engine exhaust gas." J.A. 1318. And he stated that such a "person would be reasonably certain about the scope of the claims from reviewing the '185 patent claims and the specification (including the exemplary compositions, exemplary measurements of catalytic performance, and exemplary evaluation conditions)." Id. "[I]t was well-known to persons of ordinary skill in the art that the catalytic performance would vary based on environmental considerations, such as temperature," he said, and "known variance in catalytic performance would not have created confusion among ones of ordinary skill in the art as to whether a material...