from the United States District Court for the District of
Delaware in No. 1:14-cv-01204-SLR-SRF, Judge Sue L. Robinson.
Maynard, Morrison & Foerster LLP, Washington, DC, argued
for plaintiff-appellant. Also represented by Marc A. Hearron,
Seth W. Lloyd, Daniel P. Muino.
Douglas E. McCann, Fish & Richardson, P.C., Wilmington,
DE, argued for defendant-appellee. Also represented by
Patrick D. Cooney, Martina Tyreus Hufnal, Robert M. Oakes.
Lourie, O'Malley, and Taranto, Circuit Judges.
Taranto, Circuit Judge.
Corporation owns U.S. Patent No. 8, 524, 185, which describes
and claims systems for performing catalytic 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.
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.
'185 patent claims a partly-dual-layer arrangement 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 minimizing the amount of
ammonia that ends up being released from the system. Claim 1
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
substrate, 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 undercoat washcoat layer, and
containing a material composition B effective to catalyze
selective catalytic reduction (SCR) of NOx; and
wherein material composition A and material composition B are
maintained as physically separate ...