BASF Corp. v. Johnson Matthey, Inc.
875 F.3d 1360 (Fed. Cir. 2017)
Authored by Karl Lindgren
Statement of Facts: In 2014, BASF Corporation sued Johnson Matthey for infringement of its patent, No. 8,524,185 (“the ’185 patent”). The patent is a diesel fuel filtration system which includes several interrelated parts. The major controversy is the definiteness of description of one aspect of the patent. Specifically, the patent describes a catalytic coating to filter exhaust gas containing nitrogen oxide. This chemical reaction may be done through many different catalyzing agents (a limitless number), which were not enumerated in the patent, nor limitations in relation to which chemicals might be used. Johnson contended that this lack of definiteness rendered the patent indefinite; BASF contended that this is only an aspect of a greater invention, and that the controverted portion of the patent was not indefinite for a person in the industry of ordinary skill to ascertain which reactions were meant to be included.
Johnson Matthey made two specific points: first, that the language lacked an objective boundary as to the degree of effectiveness; and, second, regarding how the level of certainty is determined. Johnson Matthey’s expert testimony put forth that these forms of chemical reactions could be done through a multitude of methods, and the lack of specification makes the patent overly broad, or imprecise. BASF responded through its own expert testimony that the term would be ordinarily understood in the context of treating engine exhaust gas.
Procedural History: The district court entered a judgement of indefiniteness in favor of Johnson Matthey, deciding that “effective for catalyzing/effective to catalyze” is indefinite language and, as such, infringements cannot proceed on that basis. BASF appealed. 875 F.3d 1360, 1366. The Federal Circuit reversed on the law and remanded for further proceedings.
Question Presented: Does the language “composition . . . effective to catalyze” have a definite meaning under the standard set forth in Nautilus, Inc. v. Biosig Instruments, Inc.?
Holding: Yes, the language used in the ’185 patent, “composition…effective to catalyze”, is clear enough that a person of ordinary skill would be reasonably certain as to which reactions would qualify in regard to the catalyzation aspect of the patent. The uniqueness which warrants the patenting comes from the overall structure of the invention rather than the “choice of materials.” The Federal Circuit overturned the district court, finding a judgment of indefiniteness unsupported.
Reasoning: The Federal Circuit gives a specific rebuttal to the district court’s determination, as well as gives a more general rationale for overturning the judgment of indefiniteness. The specific rebuttal is based upon the standard set by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014), where the Court held that uncertainty is judged “in light of the specification delineating the patent, and the prosecution history” where the scope of the invention is not reasonably certain. Johnson Matthey was required to prove, by clear and convincing evidence, the patent’s indefiniteness. The Federal Circuit found that enumerating every possible catalyst for oxidation was unnecessary given the explanation of function, and the ordinary skill of those examining the patent.
More generally, the Federal Circuit’s reasoning appeared fundamentally guided by the related point that the invention’s novelty was not dependent on the contested portion. Essentially, the indefiniteness of the catalyzing agent portion of the invention did not make the patent indefinite overall. 875 F.3d 1360, 1367 (“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”) (emphasis added). In light of the modest controversy, relative to the overall structure and advances of the patent, it was reasonable to assume that an ordinary chemist would be reasonably sure what catalysts were included, and that the ambiguity was not sufficient to warrant a judgment of indefiniteness.