BASF Corp v. Johnson Matthey Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: BASF Corporation (Delaware)
  • Defendant: Johnson Matthey Inc. (Pennsylvania)
  • Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP; Morrison & Foerster LLP
• Case Identification: 1:14-cv-01204, D. Del., 09/17/2014
• Venue Allegations: Venue is alleged to be proper based on Defendant JMI being registered to do business in Delaware, having an agent for service of process in the state, and purposefully availing itself of the benefits of Delaware's laws.
• Core Dispute: Plaintiff alleges that Defendant’s integrated catalyst systems for heavy-duty diesel engines infringe a patent related to a specific layered structure for reducing nitrogen oxide (NOx) and ammonia (NH3) emissions.
• Technical Context: The lawsuit concerns catalytic converters used to meet stringent emissions standards for diesel engines, a significant market where the parties are direct competitors.
• Key Procedural History: The complaint alleges that Plaintiff notified Defendant of the patent-in-suit and offered a license on May 16, 2014. Defendant allegedly declined the offer on May 27, 2014, establishing a date of alleged actual knowledge for the purposes of willfulness allegations. The patent's official record includes a Certificate of Correction, which removes a superfluous word from the first claim.

Case Timeline

Date	Event
2008-11-03	’185 Patent Priority Date (Application Filing)
2013-09-03	’185 Patent Issued
2014-05-16	Plaintiff allegedly notifies Defendant of the ’185 Patent
2014-05-27	Defendant allegedly declines license offer
2014-09-17	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,524,185 - "Integrated SCR and AMOx Catalyst Systems"

• Issued: September 3, 2013

The Invention Explained

• Problem Addressed: Ammonia selective catalytic reduction (SCR) is a key technology for reducing NOx emissions from diesel engines. However, a common problem is "ammonia slip," where unreacted ammonia, a caustic and regulated pollutant, escapes from the exhaust system, particularly during temperature changes or when ammonia is overdosed to maximize NOx conversion (’185 Patent, col. 1:30-48).
• The Patented Solution: The patent describes a catalyst system with a specific two-zone, two-layer architecture on a single substrate. An "upstream zone" contains a standard SCR catalyst. A "downstream zone" features a layered structure: an "undercoat" layer contains a material for ammonia oxidation (AMOx), and an "overcoat" layer contains the SCR catalyst (’185 Patent, Abstract; col. 11:1-14). This design is intended to use the AMOx layer to convert slipped ammonia into harmless nitrogen (N2), while the overlying SCR layer in the downstream zone further enhances N2 selectivity by reacting the intermediate NO products with remaining ammonia, preventing them from being released (’185 Patent, col. 12:5-36).
• Technical Importance: This integrated, layered approach seeks to solve the ammonia slip problem more efficiently than using separate SCR and AMOx catalyst bricks, potentially reducing system complexity and cost while meeting strict emission regulations (’185 Patent, col. 1:49-59).

Key Claims at a Glance

• The complaint makes a general allegation of infringement without identifying specific claims. Independent claim 1 is representative of the core invention.
• Independent Claim 1:
  • A catalyst system for treating an exhaust gas stream containing NOx, comprising:
  • at least one monolithic catalyst substrate having an inlet end and an outlet end;
  • an undercoat washcoat layer coated on 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;
  • wherein material composition A and material composition B are maintained as physically separate catalytic compositions.
• The complaint does not explicitly reserve the right to assert other claims, but this is standard practice.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "catalyst systems" manufactured, used, offered for sale, and sold by Defendant JMI (Compl. ¶14). The complaint specifically identifies JMI's "integrated SCR and AMOx catalyst systems" (Compl. ¶17).

Functionality and Market Context

• The complaint alleges that JMI's products comprise substrates coated with catalytic materials designed to reduce NOx and ammonia emissions from heavy-duty diesel engines (Compl. ¶9). It further alleges these products are used for selective catalytic reduction (SCR) of NOx and for ammonia oxidation (AMOx) (Compl. ¶9).
• No probative visual evidence provided in complaint.
• The complaint asserts that JMI and BASF are direct competitors in the mobile emissions control catalyst industry, particularly in the heavy-duty diesel engine market (Compl. ¶7). The accused products are sold to heavy-duty diesel engine manufacturers or their exhaust system suppliers (Compl. ¶9). The complaint does not provide further technical detail on the structure or operation of the accused JMI products.

IV. Analysis of Infringement Allegations

The complaint provides only general, conclusory allegations of infringement without mapping specific features of the accused products to the claim elements. The following chart is based on the general assertion in the complaint that JMI's products infringe the patent.

• ’185 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A catalyst system for treating an exhaust gas stream containing NOx...	JMI manufactures, offers for sale, and sells "catalyst systems" for use in heavy duty diesel truck exhaust systems to control NOx and ammonia emissions.	¶8-9, 14	col. 19:40-41
at least one monolithic catalyst substrate having an inlet end and an outlet end;	JMI's catalyst systems comprise "substrates coated with catalytic materials."	¶9, 14	col. 19:42-43
an undercoat washcoat layer coated on the outlet end of the monolithic substrate and which covers less than 100% of the total length... containing a material composition A effective for catalyzing NH3 oxidation;	JMI's catalyst systems are alleged to be "integrated SCR and AMOx catalyst systems" containing a material composition effective for catalyzing ammonia oxidation.	¶9, 11, 17	col. 19:44-49
an overcoat washcoat layer coated over a total length of the monolithic substrate... sufficient to overlay the undercoat washcoat layer, and containing a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx;	JMI's catalyst systems are alleged to be "integrated SCR and AMOx catalyst systems" containing a material composition effective to catalyze SCR of NOx.	¶9, 11, 17	col. 19:50-56
wherein material composition A and material composition B are maintained as physically separate catalytic compositions.	The complaint does not provide sufficient detail for analysis of this element.	¶11, 14	col. 19:57-59

• Identified Points of Contention:
  • Structural Questions: A primary point of contention will be factual. Do JMI's accused products actually employ the specific two-zone, layered structure required by Claim 1? Specifically, what evidence shows that JMI's products have an AMOx-effective "undercoat" coated only on the "outlet end" and an SCR-effective "overcoat" that overlays it? The complaint lacks any specific evidence (e.g., product teardowns, technical diagrams) to support this structural allegation.
  • Scope Questions: The interpretation of "physically separate catalytic compositions" will be critical. The case raises the question of what degree of separation is required. If JMI's manufacturing process results in a gradient or partial mixing of the AMOx and SCR materials, the court will need to determine if this still meets the "physically separate" limitation as defined by the patent.

V. Key Claim Terms for Construction

• The Term: "physically separate catalytic compositions"

• Context and Importance: This term is central to defining the invention's layered structure. The infringement analysis will depend on whether JMI's product, which is also described as an "integrated" system, maintains a sufficient degree of separation between its SCR and AMOx components to fall within the scope of this limitation. Practitioners may focus on this term because the patent contrasts its layered approach with uniform mixtures, making the boundary between them a likely point of dispute.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: An argument for a broader reading might suggest that "physically separate" does not require perfect, hermetic separation, but rather two compositionally distinct regions that retain their primary catalytic functions, even with some interfacial mixing. The patent's focus is on functional separation enabled by physical placement (’185 Patent, col. 12:5-10).
  • Evidence for a Narrower Interpretation: The patent consistently depicts the invention as having a distinct "undercoat washcoat layer" and an "overcoat washcoat layer" (’185 Patent, FIG. 1B, 2; col. 11:5-9). This language and these figures strongly support a narrower construction requiring two discrete, non-intermingled layers.

• The Term: "undercoat washcoat layer coated on the outlet end of the monolithic substrate"

• Context and Importance: This phrase defines the specific location of the ammonia oxidation catalyst. Infringement requires proving that JMI's products have a catalyst layer with this precise zonal arrangement. The dispute will likely focus on what portion of the substrate constitutes the "outlet end" and whether JMI's products are coated in this manner.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not define a precise length for the "outlet end," only that the undercoat "covers less than 100% of the total length" (col. 19:45-46), and embodiments describe a downstream zone covering "in the range of about 5% and 100% of the total substrate length" (’185 Patent, col. 11:42-44), which appears contradictory and may require clarification.
  • Evidence for a Narrower Interpretation: Claim 3, a dependent claim, narrows the undercoat layer to a range of "about 10% and 40% of the total substrate length" (’185 Patent, col. 22:59-61). Under the doctrine of claim differentiation, this suggests the scope of "on the outlet end" in Claim 1 is broader than this specific range but still implies a coating on a fractional portion of the substrate starting from the outlet. The patent consistently describes this as the "downstream or outlet zone 130" (’185 Patent, col. 11:5-7).

VI. Other Allegations

• Indirect Infringement: The complaint does not contain specific allegations of induced or contributory infringement. It alleges JMI directly infringes by "manufacturing, and/or using within the United States" the accused catalyst systems (Compl. ¶14).
• Willful Infringement: The complaint alleges that JMI's infringement has been and continues to be willful (Compl. ¶18). This allegation is based on JMI's alleged "actual knowledge of the existence of the '185 patent and... its relevance to JMI's integrated SCR and AMOx catalyst systems" as of May 27, 2014, following a specific communication from BASF offering a license (Compl. ¶12, ¶16-18).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A Factual Question of Structure: The central issue is whether discovery will reveal that JMI's accused "integrated SCR and AMOx catalyst systems" are built using the specific two-zone, layered architecture required by the '185 patent's claims. The complaint's lack of specific technical evidence makes this the primary open question.
2. A Definitional Question of Separation: The case will likely require a judicial determination of the term "physically separate." The outcome of the infringement analysis may hinge on whether this term requires discrete, non-intermingled layers, as depicted in the patent's figures, or if it can read on systems with a more graded or blended interface between the catalytic compositions.
3. A Question of Intent: Given the complaint's specific allegations of pre-suit notice and a rejected license offer, a key question for trial will be whether JMI's conduct after May 27, 2014, constitutes willful infringement, which would expose it to the risk of enhanced damages.