21 November 2017Americas

BASF scores patent win at Federal Circuit

The US Court of Appeals for the Federal Circuit handed a win to BASF yesterday, after the chemical company appealed against a finding that its patent was invalid.

US patent number 8,524,185, which describes and claims systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust gas stream, is at the centre of the dispute.

The patent describes 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)”.

According to the Federal Circuit, the gas stream travels along the substrate from the inlet to the outlet and is exposed to “material composition B”, which removes NOx by catalysing a selective catalytic reduction (SCR) reaction between NOx and ammonia.

However, this SCR process can leave unreacted ammonia which, if left untreated, might escape through the outlet of the system along with the treated gas stream.

The patent addresses the problem by using an undercoat layer, which contains a “material composition A” effective to catalyse an ammonia oxidation reaction.

In 2014, BASF sued its competitor Johnson Matthey at the US District Court for the District of Delaware, alleging infringement of the ‘185 patent.

The district court held that the “effective for catalysing”/“effective to catalyse” language is indefinite, and invalidated all claims on that basis.

BASF appealed, arguing that the phrases are not indefinite.

Citing the US Supreme Court’s decision in Nautilus v Biosig Instruments, the Federal Circuit noted that the question presented is:

“Would the ‘composition ... effective to catalyse’ 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?”

According to the Federal Circuit, the lower court’s reasoning “supplies no basis to answer that question in Johnson’s favour”.

“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 method to determine whether a composition is ‘effective’ enough to fall within the claims,” said Circuit Judge Richard Taranto, on behalf of the Federal Circuit.

Taranto added that the Delaware court ruled that without this information, “a person of ordinary skill in the art could not determine which materials are within the ‘material composition A’ or ‘material composition B’ limitation, and which are not”.

“That sentence is the crucial sentence in the district court’s analysis,” he said, explaining that the sentence is “entirely unsupported, whether by reference to the specification or other intrinsic evidence or by reference to extrinsic evidence”.

The Federal Circuit reversed the district court’s judgment that the claims of the ‘185 patent are indefinite and remanded the case for further proceedings.

A spokesperson for Johnson Matthey said that the company does not comment on ongoing litigation.

But they added: “We reiterate that it is Johnson Matthey’s policy to respect the IP rights of third parties, as we expect our own rights to be respected, and we do not knowingly infringe the validly granted patents of third parties.”

A spokesperson for BASF said that the company was pleased with the decision.

"BASF will continue to press its claim that Johnson Matthey is infringing BASF’s technology," they added.

In March, sister site WIPR published an interview with Hans-Jürgen Lutz, vice president, marketing communication, brand and trademark management crop protection at BASF, about brand valuation. Click here to read the interview (which was published in association with Brandstock).

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