Basf Corporation v. Johnson Matthey Inc.

United States Court of Appeals

for the Federal Circuit

______________________

BASF CORPORATION,

Plaintiff-Appellant

v.

JOHNSON MATTHEY INC.,

Defendant-Appellee

______________________

2016-1770

______________________

Appeal from the United States District Court for the

District of Delaware in No. 1:14-cv-01204-SLR-SRF,

Judge Sue L. Robinson.

______________________

Decided: November 20, 2017

______________________

DEANNE MAYNARD, Morrison & Foerster LLP, Wash-

ington, DC, argued for plaintiff-appellant. Also repre-

sented by MARC A. HEARRON, SETH W. LLOYD, DANIEL P.

MUINO.

DOUGLAS E. MCCANN, Fish & Richardson, P.C., Wil-

mington, DE, argued for defendant-appellee. Also repre-

sented by PATRICK D. COONEY, MARTINA TYREUS HUFNAL,

ROBERT M. OAKES.

______________________

Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.

2 BASF CORP. v. JOHNSON MATTHEY INC.

TARANTO, Circuit Judge.

BASF Corporation owns U.S. Patent No. 8,524,185,

which describes and claims systems for performing cata-

lytic conversion of nitrogen oxides (NOx) 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 arrange-

ment 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 mini-

mizing the amount of ammonia that ends up being re-

leased from the system. Claim 1 is representative:

BASF CORPORATION v. JOHNSON MATTHEY INC. 3

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 sub-

strate, 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 un-

dercoat washcoat layer, and containing a material

composition B effective to catalyze selective cata-

lytic reduction (SCR) of NOx; and

wherein material composition A and material

composition B are maintained as physically sepa-

rate 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 catalyz-

ing.”

The specification describes the generally contemplat-

ed 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

4 BASF CORP. v. JOHNSON MATTHEY INC.

NOx by catalyzing an SCR reaction between NOx and

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 un-

treated, 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 NOx via SCR,

id., col. 12, lines 37–45.

When referring to compositions A and B, the specifi-

cation 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 composi-

tion” and “NH3 oxidation composition.” E.g., id., col. 7,

line 58; col. 8, line 48.) The specification sets out the

specific stoichiometric chemical reactions for the cata-

lysts. 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.

BASF CORPORATION v. JOHNSON MATTHEY INC. 5

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 cata-

lyze” 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 sys-

tems.” 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 identi-

fy 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 NOx.

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. Neverthe-

less, 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

6 BASF CORP. v. JOHNSON MATTHEY INC.

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 indefi-

nite. 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 exam-

ples and testing conditions, “the disputed ‘material com-

position’ 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 under-

stand “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 exem-

plary 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 composition was an

‘effective’ SCR catalyst or an ‘effective’ AMOx catalyst,

BASF CORPORATION v. JOHNSON MATTHEY INC. 7

i.e., a material composition that could achieve or perform

catalysis.” J.A. 1319. He concluded: “The exemplary

evaluation conditions identified in the specification are

fairly standard and well-known. From these disclosures,

one of ordinary skill in the art would be reasonably cer-

tain as to what falls within the scope of the material

compositions in the disputed terms.” J.A. 1322.

When Johnson filed a sur-reply brief, it attached a

short additional declaration from Dr. Epling. He asserted

that a person of ordinary skill in the art would not inter-

pret the claims of the ’185 patent to include “any material

that possessed any degree of effectiveness” to catalyze

AMOx or SCR of NOx and that “scientists and engineers

in this 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 ammo-

nia.” J.A. 1410.

C

The district court agreed with Johnson. The court

reasoned as follows:

Each claim fails to limit the “material composition

A” or the “material composition B” to any specific

materials. Rather than explicitly defining the

material compositions, the claims utilize function-

al language, specifically “effective,” to purportedly

define them. In other words, the claims recite a

performance property the composition must dis-

play, rather than its actual composition. Moreo-

ver, none of the claims recite a minimum level of

function needed to meet this “effective” limitation

nor a particular measurement method to deter-

mine whether a composition is “effective” enough

to fall within the claims. Without such infor-

mation, a person of ordinary skill in the art could

not determine which materials are within the

8 BASF CORP. v. JOHNSON MATTHEY INC.

“material composition A” or “material composition

B” limitation, and which are not.

J.A. 5. In a footnote, the court, quoting Dr. Epling, added

that “‘a practically limitless number of materials’ exist

that would ‘catalyze SCR of NOx, even within the normal

operating conditions of an exhaust aftertreatment sys-

tem,’ indicating that the claims, as written, fail to suffi-

ciently identify the material compositions.” Id. at 5 n.10

(quoting J.A. 955).

II

The Supreme Court in Nautilus, Inc. v. Biosig In-

struments, Inc. 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.” 134 S. Ct. 2120, 2124

(2014). “Reasonable certainty” does not require “absolute

or mathematical precision.” Biosig Instruments, Inc. v.

Nautilus, Inc., 783 F.3d 1374, 1381 (Fed. Cir. 2015)

(internal quotation marks omitted). Johnson had the

burden of proving indefiniteness by clear and convincing

evidence. Id. at 1377.

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).

BASF CORPORATION v. JOHNSON MATTHEY INC. 9

A

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.

The court first described the functional character of

the claim language. But the Nautilus standard of “rea-

sonable certainty” does not exclude claim language that

identifies a product by what it does. Nothing inherent in

the standard of “reasonable certainty” precludes a rele-

vant skilled artisan from understanding with reasonable

certainty what compositions perform a particular func-

tion. Not surprisingly, we have long held that nothing in

the law precludes, for indefiniteness, “defining a particu-

lar claim term by its function.” Hill-Rom Servs., Inc. v.

Stryker Corp., 755 F.3d 1367, 1374–75 (Fed. Cir. 2014);

see Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838

F.3d 1224, 1232 (Fed. Cir. 2016) (explaining that claims

“are not per se indefinite merely because they contain

functional language”), cert. denied, 137 S. Ct. 2267 (2017);

Microprocessor Enhancement Corp. v. Tex. Instruments

Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (explaining that

“apparatus claims are not necessarily indefinite for using

functional language”); In re Swinehart, 439 F.2d 210, 212

(CCPA 1971) (ruling that “there is nothing intrinsically

wrong with the use of such a technique in drafting patent

claims”). What is needed is a context-specific inquiry into

whether particular functional language actually provides

the required reasonable certainty.

The district court next stated that the claims do not

“recite a minimum level of function needed to meet this

‘effective’ limitation nor a particular measurement meth-

10 BASF CORP. v. JOHNSON MATTHEY INC.

od to determine whether a composition is ‘effective’

enough to fall within the claims.” J.A. 5. By itself, that

observation merely describes two things not expressly

stated in the claims. But “an inventor need not explain

every detail because a patent is read by those of skill in

the art.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d

1355, 1367 (Fed. Cir. 2011). The mere observation of

information not “recited” does not answer the question

whether a person of ordinary skill in the art would need to

be given the level and measurement information to un-

derstand, with reasonable certainty, whether a composi-

tion is “effective to catalyze” the SCR (of NOx) or AMOx

reactions.

Indeed, the district court did not treat the mere ob-

servation about information not “recited” as itself answer-

ing 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 mate-

rials 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

analysis.

The problem with that sentence, however, is that it is

entirely unsupported, whether by reference to the specifi-

cation or other intrinsic evidence or by reference to ex-

trinsic evidence. Such support was central to our

determination that indefiniteness of certain physical-

property claims was proved in cases such as Dow Chemi-

cal 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. Interna-

tional 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

BASF CORPORATION v. JOHNSON MATTHEY INC. 11

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 inven-

tions 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 oxida-

tion function,” ’185 patent, col. 5, lines 33–49, and illus-

trate 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.

13–19.

The district court’s footnote adds nothing helpful to

Johnson. It credits Dr. Epling’s assertion that “a practi-

cally limitless number of materials” could catalyze SCR of

NOx, and it treats that scope as “indicating that the

claims, as written, fail to sufficiently identify the material

compositions.” J.A. 5 n.5. But the inference of indefinite-

ness simply from the scope finding is legally incorrect:

“breadth is not indefiniteness.” SmithKline Beecham

Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir.

2005) (internal brackets omitted).

B

In this court, Johnson has supplemented the district

court’s reasoning. But we do not find persuasive support

for the necessary conclusion that a relevant skilled arti-

12 BASF CORP. v. JOHNSON MATTHEY INC.

san would lack reasonable certainty as to what composi-

tions are “effective to catalyze” the reactions at issue—or,

equivalently, what compositions are SCR catalysts or

AMOx catalysts—in the context of this patent.

Johnson suggests that certain intrinsic evidence

shows that this particular patent departs from a relevant

skilled artisan’s general understanding of what consti-

tutes an SCR or AMOx catalyst and, instead, requires

some minimal level of catalysis but fails to identify that

level. In particular, Johnson points to language describ-

ing a certain catalyst (Q) that the patent calls an “SCR-

only” catalyst, which under some conditions had a low

“NH3 percent conversion” and under other conditions had

a conversion percent higher than another catalyst (P) that

the patent calls an “SCR+AMOx catalyst.” ’185 patent,

col. 18, lines 3–9 & tbl. 2; id. figure 10. From that mate-

rial in the specification, and another passage referring to

“AMOx-only parts,” id., col. 18, line 1, Johnson infers that

this patent requires, but fails to specify, a distinctive,

patent-specific set of criteria for what constitutes an SCR

catalyst or an AMOx catalyst.

Johnson has read too much into the specification.

Contrary to Johnson’s essential contention in this specifi-

cation-based argument, it strongly appears that the

language on which Johnson relies—“SCR-only,” “AMOx-

only,” and “SCR+AMOx”—does not refer to whether a

composition can produce only one or the other or both of

the catalytic reactions. Instead, the language refers to

the catalysts being located in different “zones” on the

substrate. For example, the specification describes the

“upstream zone compris[ing] an SCR catalyst washcoat

layer disposed on the carrier and the downstream zone

compris[ing] an undercoat layer containing an NH3 oxida-

tion component disposed on the carrier and an SCR

catalyst washcoat layer disposed on at least a portion of

the undercoat layer.” Id., col. 11, lines 15–20. The speci-

fication goes on to describe the upstream portion as the

BASF CORPORATION v. JOHNSON MATTHEY INC. 13

“SCR zone” and the downstream portion as the “AMOx

zone.” Id., col. 11, lines 29–30, 49–50. The labels, as

merely structure-describing shorthands, do not carry the

implications that Johnson urges. Johnson has given us no

persuasive reason to conclude that a relevant skilled

artisan, reading the claims in light of the specification,

would conclude that this patent departs from such an

artisan’s general understanding and instead adopts a

special, patent-specific standard without identifying what

it is.

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 composi-

tions A and B, disclosure of the stoichiometric reactions,

and equating of the “composition . . . effective to catalyze”

phrases with familiar terms such as “SCR catalyst” and

“AMOx catalyst.”

The extrinsic evidence does not show that a person of

ordinary skill in the art would lack reasonable certainty

as to what compositions would qualify as an SCR or

AMOx catalyst in this context. To the contrary, the

record here could not support a finding of lack of such

reasonable certainty.

Both parties’ experts agreed that materials capable of

performing the claimed reactions were known in the art

at the time of the invention. The experts also agreed that

objective tests to determine the effectiveness of the cata-

lysts in question, e.g., percent conversion, were available

14 BASF CORP. v. JOHNSON MATTHEY INC.

and well known at the time. BASF’s expert declared, with

explanation, that “one of ordinary skill in the art would be

reasonably certain as to what falls within the scope of the

material compositions in the disputed terms.” J.A. 1322.

And Johnson’s expert, Dr. Epling, did not provide sub-

stantial evidence to the contrary.

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 am-

monia 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

indefiniteness.

III

For the foregoing reasons we reverse the district

court’s judgment that the claims of the ’185 patent are

indefinite. We remand for further proceedings.

REVERSED AND REMANDED