In BASF Corporation v. Johnson Matthey Inc., C.A. No. 14-1204-SLR-SRF (D. Del. Feb. 9, 2016), Judge Sue L. Robinson concluded that certain disputed claim terms of U.S. Patent No. 8,524,185 were indefinite.
The terms “material composition A effective for catalyzing NH3 oxidation”, “material composition B effective to catalyze selective catalytic reduction (SCR) of NOx” , “material composition further effective to catalyze SCR of NOx”, and “a material composition B free from precious metal effective for catalyzing selective catalytic reduction (SCR) of NOx” was indefinite because
Each claim fails to limit the “material composition A” or the “material composition B” to any specific materials. Rather than explicitly defining [them], the claims utilize functional language, specifically “effective,” to purportedly define them. In other words, the claims recite a performance property the composition must display, rather than its actual composition. Moreover, none of the claims 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. Without such 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.
Id. at 5. Furthermore, “a practically limitless number of materials exist that would ‘catalyze SCR of NOx . . . indicating that the claims, as written, fail to sufficiently identify the materials compositions.” Id. at 5 n.10.
The Court also construed the following terms:
monolithic catalyst substrate; and
an overcoat washcoat layer coated over a total length of the monolithic substrate from the inlet end to the outlet end / an overcoat washcoat layer coated over a total length of the honeycomb substrate from the inlet end to the outlet end of the substrate.