IP Law Daily BASF’s compound to break down emissions deemed invalid as obvious
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Tuesday, July 17, 2018

BASF’s compound to break down emissions deemed invalid as obvious

By Brian Craig, J.D.

Claims for patents owned by BASF for a compound designed to break down nitrogen oxide emissions in automobile diesel engine exhaust were invalid as obvious in light of prior art, the U.S. Court of Appeals for the Federal Circuit has held, affirming a decision by the Patent Trial and Appeal Board. After determining that the court had jurisdiction to consider the Board’s final written decisions that terminated inter partes review (IPR) proceedings, the Federal Circuit held that substantial evidence supported the Board’s determination that all of the claims at issue were unpatentable (BASF Corp. v. Iancu, July 17, 2018, Chen, R.).

BASF Corporation appealed four Board final written decisions rendering unpatentable claims of its U.S. Patent Nos. 7,601,662 and 8,404,203. The patents claimed a special compound that can break down nitrogen oxide emissions in high temperature combustion processes, including automobile diesel engine exhaust. The breakdown process was called "selective catalytic reduction" or SCR. The claimed zeolite was arranged into a special tetrahedral framework of alumina and silica molecules. The Board found all of the claims at issue were unpatentable as obvious over prior art U.S. Patent No. 6,709,644 ("Zones") in view of U.S. Patent No. 4,046,888 ("Maeshima"). While the appeal was pending, the U.S. Supreme Court held in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1352–54 (2018) that the Board was statutorily prohibited from instituting an inter partes review on a subset of the petitioned claims.

Jurisdiction. The Federal Circuit first considered whether it had jurisdiction to consider the appeal in light of SAS Institute. The Federal Circuit held that BASF’s request was controlled by PGS Geophysical AS v. Iancu, in which the Federal Circuit rejected the jurisdictional challenge and proceeded to review the merits of the Board’s decision. This case—like PGS Geophysical—was a straight challenge to the court’s authority to hear the appeal. Therefore, the Federal Circuit held that the court had jurisdiction over the Board’s final decisions.

Obviousness. The Federal Circuit then turned to the merits of the appeal, considering whether the Board properly determined that all of the claims were unpatentable as obvious. The Federal Circuit recognized that obviousness was a question of law based on a review of the underlying factual findings for substantial evidence. BASF had sufficient notice of the Board’s basis for disclosure of the ammonia SCR limitation. As such, there was no due process violation. The Federal Circuit also held that substantial evidence supported the Board’s finding that a skilled artisan would understand the phrase "reduction of oxides in nitrogen" in the Zones patent to disclose ammonia SCR. In conclusion, the Federal Circuit affirmed the Board’s finding of obviousness over the prior art.

The case is Nos. 17-142517-142617-1427 and 17-1428.

Attorneys: Anish R. Desai (Weil, Gotshal & Manges LLP) for BASF Corp. Meredith Hope Schoenfeld, U.S. Patent and Trademark Office, for Andrei Iancu.

Companies: BASF Corp.

MainStory: TopStory Patent FedCirNews

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