US Courts of Appeal, Federal Circuit (CAFC). Decided: November 20, 2017
BASF Corporation is the owner of U.S. Patent No. 8,524,185 the title of which is ¡°Integrated SCR and AMOX Catalyst Systems¡±. The application was filed at November 3, 2008, and the date of patent is September 3, 2013. The main feature of the patented invention is to remove nitrogen oxide (NOx) from a stream of exhaust gas while minimizing the amount of ammonia that ends up being released from the system to the atmosphere. Claim 1 is representative and shown below.
A 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 catalytic compositions.
BASF sued Johnson Matthey Inc., which is its competitor, for infringement of the ¡®185 patent in 2014. The district court held that the claims of the patent are invalid because of indefiniteness. BASF appealed.
The issue here is whether the language ¡°composition ¡¦effective to catalyze¡±/¡°composition ¡¦ effective for catalyzing¡±, is indefinite. One may think that, for example, in claims 1, ¡°a material composition A effective for catalyzing NH3 oxidation¡± and/or ¡°a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx¡± are indefinite, because no listings of specific materials are provided anywhere in the claims.
BASF argued that the phrases ¡°compositions ¡¦ effective to catalyze¡± have a plain and ordinary meaning ¡°as understood in the art of exhaust systems¡±, and that the disputed ¡®material composition¡¯ limitations should be construed to encompass all compositions known to those skilled in the art.
Johnson asserted that the phrases are indefinite because there are no ¡°objective boundaries on (1) what amount of effectiveness is required, or (2) how to measure the effectiveness¡±, and a person of ordinary skill in the art would not be able to determine with reasonable certainty the boundary of which materials are included within the claims.
The district court held that ¡°[w]ithout 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¡±, and decided that the claims of 185 patent are invalid because of indefiniteness.
CAFC disagreed with the district court¡¯s decision. CAFC proposed the question presented here as: ¡°Would the ¡°composition ¡¦ effective to catalyze¡± language, understood in the 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?¡±
And CAFC opined that ¡°reasonable certainty¡± does not require ¡°absolute or mathematical precision¡±, and the ¡°district court¡¯s analysis does not address the significance of the facts that both the claims and specification provide exemplary material compositions that are effective to catalyze the SCR of NOx and the oxidization of ammonia, disclose the chemical reactions that define ¡®SCR function¡¯ and ¡°NH3 oxidization function¡±. Therefore, CAFC reversed the district court¡¯s judgement and remanded for further proceedings.
LG Electronics, Inc. filed a trademark application to register QLED (in standard characters) on the Principal Register for goods including mobile phones, smart phones, laptop computers, Computers, tablet computers, and LED panels. The Trademark Examining Attorney originally refused registration on the ground that QLED is merely descriptive of Applicant¡¯s goods.
Then LG amended the application to seek registration on the Supplemental Register. But the Examining Attorney continued the the smae refusal, and also refused registration on the additional ground that QLED is generic and therefore incapable of distinguishing the identified goods.
When the Examining Attorney made both refusals final, LG filed a request for reconsideration, which the Examining Attorney denied. Applicant then appealed to TTAB (Trademark Trial and Appeal Board).
The sole issue to be decided at the TTAB was whether QLED is generic for the disputed goods and, thus unregistrable on the Supplemental Register for those goods. The TTAB affirmed the refusal.
In order to qualify for registration on the Supplemental Register, a proposed mark must be capable of distinguishing the applicant's goods or services. Generic terms are not qualified for registration. And a termm is generic if it refers to the class or category of goods or services in connection with which it is used.
The Examining Attorney maintained that QLED was an acronym for and substantially synonymous with the generic term ¡°quantum dot light emitting diode,¡± a type of display technology that is a key feature of the disputed goods, and that relevant consumers would readily recognize QLED as such.
LG contended that there was no consensus as to the meaning or understanding of QLED. However, LG did not dispute that the acronym QLED is ¡°substantially synonymous¡± with the generic term ¡°quantum dot light emitting diodes,¡± according to TTAB. After reviewing the contentions of both parties, the TTAB affirmed the refusal to register QLED on the Supplemental Register on the ground that it was generic for the disputed goods.