FEDERAL CIRCUIT HOLDS THAT THE FUNCTIONAL LANGUAGE “COMPOSITION EFFECTIVE FOR CATALYZING” DOES NOT RENDER CLAIMS INDEFINITE

BASF CORP. v. JOHNSON MATTHEY, INC., Appeal No. 2016-1770 (Fed. Cir. November 20, 2017).  Before Lourie, O’Malley, and Taranto.  On appeal from D. Del. (Judge Robinson).  (Indefiniteness)
Background:

BASF sued Johnson for patent infringement for a catalytic system for removing nitrogen oxides from a stream of exhaust gas, referred to as a partly-dual-layer arrangement of catalytic coating compositions on a substrate over which exhaust gas passes.

In the claims, the coating compositions employed “composition…effective for catalyzing” and similar language.

In the district court, Johnson argued, with support from its expert witness, that the claims were indefinite under 35 USC 112 because the above-emphasized limitation and similar limitations were functional, without reciting “a minimum level of function needed to meet this ‘effective’ limitation,” or reciting a measurement method for determining effectiveness.  Johnson added that an exhaustive list of applicable catalysts were not disclosed in the specification.

BASF countered that the above-emphasized and similar limitations “have a plain and ordinary meaning” as understood in the art of exhaust systems and, with support from its expert witness, given the examples in the specification of applicable catalysts for the purposes thereof, one skilled in the art would understand that the term “effective for” meant “capable of” and would be reasonably certain of the claim’s scope.

The district court held that the patent was invalid, essentially agreeing with Johnson’s arguments regarding indefiniteness.  BASF appealed to the Federal Circuit.

Issue/Holding:

Did the district court err in holding the patent invalid?  (continue reading)

 Summary by:  Harris Pitlick

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