Basf Corporation v. Johnson Matthey Inc.
875 F.3d 1360
| Fed. Cir. | 2017Background
- BASF owns U.S. Patent No. 8,524,185, claiming a partly-dual-layer catalyst system for exhaust: a full‑length overcoat (composition B) for SCR of NOx and a partial undercoat (composition A) near the outlet for NH3 oxidation (AMOx).
- BASF sued Johnson Matthey for infringement; the district court held the claim phrases “composition ... effective to catalyze” indefinite and invalidated all claims.
- The dispute focused on whether functional claim language (“effective to catalyze” / “effective for catalyzing”) gives persons of ordinary skill in the art reasonable certainty about what compositions fall within the claims.
- Johnson argued indefiniteness because the claims lack objective boundaries: no minimum level of effectiveness or testing conditions were specified; many materials could have some catalytic activity.
- BASF argued the language has its ordinary meaning in the exhaust-art context and the specification provides examples, stoichiometric reactions, test conditions, and performance data sufficient to inform a skilled artisan.
- The Federal Circuit reviewed indefiniteness de novo (with extrinsic factual findings reviewed for clear error) and reversed the district court, finding the claims not indefinite and remanding for further proceedings.
Issues
| Issue | Plaintiff's Argument (BASF) | Defendant's Argument (Johnson) | Held |
|---|---|---|---|
| Whether "composition ... effective to catalyze" is indefinite under Nautilus | Ordinary meaning in the exhaust-art; specification + examples let skilled artisans know which compositions qualify | Functional limitation without objective bounds (no required effectiveness level or measurement method); too many materials could qualify | Reversed: not indefinite — reading claims with the spec and art gives reasonable certainty |
| Whether claim breadth alone makes a claim indefinite | Breadth is acceptable if a skilled artisan can apply the functional description in context | Breadth (many potential catalysts) shows lack of boundaries and uncertainty | Breadth is not indefiniteness; scope informed by specification and common knowledge |
| Whether intrinsic specification implies a special, unstated internal threshold for effectiveness | Specification shows the invention is the two‑zone architecture; examples, reactions, and labels equate "effective" with known SCR/AMOx catalysts | Intrinsic references to “SCR-only,” “AMOx-only,” and performance tables imply a patent‑specific standard that is not disclosed | Court rejects Johnson’s reading; those labels describe zones/structure, not a hidden effectiveness threshold |
| Whether extrinsic expert evidence establishes lack of reasonable certainty | BASF’s expert: tests and examples in specification provide reasonable certainty | Johnson’s expert: no defined functional threshold; many materials have some activity; minimal activity not considered “effective” in practice | Extrinsic evidence did not show reasonable-certainty gap; experts actually agreed on available tests and known catalysts |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (establishes indefiniteness standard: claims must inform skilled artisans with reasonable certainty)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (review standards for subsidiary factual findings in claim construction)
- Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) (functional claim language is not per se indefinite)
- Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d 1224 (Fed. Cir. 2016) (claims containing functional language are not automatically indefinite)
- SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005) (breadth of claim scope does not alone establish indefiniteness)