{"id":1813,"date":"2017-11-20T15:21:49","date_gmt":"2017-11-20T20:21:49","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1813"},"modified":"2017-11-24T15:52:58","modified_gmt":"2017-11-24T20:52:58","slug":"breadth-is-not-indefiniteness-if-the-relevant-skilled-artisan-has-reasonable-certainty-as-to-what-is-covered-the-claim-is-not-indefinite","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1813","title":{"rendered":"Breadth is not Indefiniteness; If the Relevant Skilled Artisan\u00a0has Reasonable Certainty as to What is Covered the Claim is Not Indefinite"},"content":{"rendered":"

In BASF Corp. v. Johnson Matthey Inc.<\/em><\/a>, [2016-1770](November 20, 2017), the Federal Circuit\u00a0reverse the judgment of invalidity for\u00a0indefiniteness of U.S. Patent No. 8,524,185,
\nwhich describes and claims systems for performing catalytic\u00a0conversion of nitrogen oxides (NOx) in an exhaust gas\u00a0stream, and remanded.<\/p>\n

The \u2019185 patent claims a partly-dual-layer arrangement\u00a0of catalytic coatings on a substrate over which\u00a0exhaust gas passes, e.g., the walls of a flow-through\u00a0chamber having a honeycomb structure, whose function is\u00a0to remove NOx from a stream of exhaust gas while minimizing\u00a0the amount of ammonia that ends up being released
\nfrom the system.\u00a0 The claims require a\u00a0\u201ccomposition . . . effective to catalyze\u201d or a \u201ccomposition . . . effective for catalyzing.\u201d\u00a0 The accused infringer argued, and the district court agreed, that\u00a0the phrases are indefinite,\u00a0because the \u201ceffective to catalyze\u201d language used to identify\u00a0the claim compositions is functional, and there are no\u00a0objective boundaries on (1) what amount of effectiveness\u00a0is required, or (2) how to measure the effectiveness.<\/p>\n

The Federal Circuit framed the issue of indefiniteness after Nautilus as:\u00a0would the \u201ccomposition . . . effective to catalyze\u201d language,\u00a0understood in light of the rest of the patent and the\u00a0knowledge of the ordinary skilled artisan, have given a\u00a0person of ordinary skill in the art a reasonably certain\u00a0understanding of what compositions are covered?\u00a0 The Federal Circuit found that the district court’s analysis supplied no basis to answer this question in Johnson’s favor.<\/p>\n

While the district court focused on the functional nature of the language, Federal Circuit noted that the Nautilus standard of \u201creasonable\u00a0certainty\u201d does not exclude claim language that\u00a0identifies a product by what it does. The Federal Circuit said that nothing inherent in\u00a0the standard of \u201creasonable certainty\u201d precludes a relevant\u00a0skilled artisan from understanding with reasonable\u00a0certainty what compositions perform a particular function, and noted that it has\u00a0held that nothing in\u00a0the law precludes, for indefiniteness, \u201cdefining a particular\u00a0claim term by its function.\u201d\u00a0 Rather, what is needed is\u00a0a context-specific inquiry into\u00a0whether particular functional language actually provides\u00a0the required reasonable certainty.<\/p>\n

The district court also noted\u00a0that the claims did not\u00a0recite a minimum level of function needed to meet the “effective” limitation nor a particular measurement method for determining effectiveness.\u00a0 However the Federal Circuit said that the mere observation of\u00a0information not recited did not answer the question of\u00a0whether a person of ordinary skill in the art would need to\u00a0be given the level and measurement information to understand,\u00a0with reasonable certainty, whether a composition\u00a0is \u201ceffective to catalyze\u201d the SCR (of NOx) or AMOx\u00a0reactions.<\/p>\n

While the district court said that without this information\u00a0a person of\u00a0ordinary skill in the art could not determine which materials\u00a0are within the limitations and which are not, the Federal Circuit said this conclusion was “entirely unsupported”. The Federal Circuit said that the district court did\u00a0not consider that the\u00a0specification makes clear that it is the arrangement<\/em> of the\u00a0catalysts, rather than the selection<\/em> of\u00a0particular catalysts, that purportedly renders the inventions\u00a0claimed in the \u2019185 patent a patentable advance over\u00a0the prior art.\u00a0 The Federal Circuit found that\u00a0the claims and specification let\u00a0the public know that any known catalysts\u00a0can be used as long as they play their claimed role in the\u00a0claimed architecture.<\/p>\n

The district court credited the accused infringer’s argument that\u00a0\u201ca practically\u00a0limitless number of materials\u201d could meet the claim requirements, and treated this scope as indicating that the\u00a0claims, as written, fail to sufficiently identify the material\u00a0 compositions.\u00a0However the Federal Circuit admonished:\u00a0\u201cbreadth is not indefiniteness.\u201d The Federal Circuit found\u00a0no persuasive support\u00a0for the necessary conclusion that a relevant skilled artisan\u00a0would lack reasonable certainty as to what compositions
\nare \u201ceffective to catalyze\u201d the reactions at issue.<\/p>\n

The Federal Circuit focused on the point of novelty, noting:<\/p>\n

The intrinsic evidence in this case makes clear that\u00a0the asserted advance over the prior art is in the partly-dual-layer arrangement to create a two-phase operation\u00a0for performing the identified conversion processes, not in\u00a0the choices of materials to perform each of the required\u00a0catalytic processes. It is in this context that the question\u00a0of the certainty or uncertainty experienced by a relevant\u00a0skilled artisan in understanding the claims, read in light\u00a0of the specification, is presented. And it is in this context\u00a0that the relevant skilled artisan would be informed by the\u00a0specification\u2019s numerous examples of qualifying compositions\u00a0A and B,<\/p><\/blockquote>\n

The Federal Circuit concluded that the record did not contain intrinsic or\u00a0extrinsic evidence that would support a judgment of\u00a0indefiniteness.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In BASF Corp. v. Johnson Matthey Inc., [2016-1770](November 20, 2017), the Federal Circuit\u00a0reverse the judgment of invalidity for\u00a0indefiniteness of U.S. Patent No. 8,524,185, which describes and claims systems for performing catalytic\u00a0conversion of nitrogen oxides (NOx) in an exhaust gas\u00a0stream, and … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[14],"tags":[],"class_list":["post-1813","post","type-post","status-publish","format-standard","hentry","category-indefiniteness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1813","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1813"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1813\/revisions"}],"predecessor-version":[{"id":1814,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1813\/revisions\/1814"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1813"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1813"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1813"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}