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Putting an end to a decade-long patent dispute, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s finding of non-infringement but reversed a finding of invalidity. Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., Case No. 2010-1183 (Fed. Cir., Aug. 26, 2011) (Rader, C.J.).
Plaintiff Star Scientific sued R.J. Reynolds Tobacco Co. (RJR) for allegedly infringing U.S. patents 6,202,649 and 6,425,401, which are directed to tobacco curing methods. The method recites the creation of a “controlled environment” whereby various factors such as humidity, temperature, airflow and air composition are regulated while the leaves are being cured.
Both patents derived from a provisional application. After the provisional application was filed, but before filing the non-provisional application, the inventor developed the commercial embodiment, which the parties agreed was the best mode. The best mode was not disclosed in the applications.
At trial the district court ruled against Star Scientific, holding that its asserted patents were unenforceable for inequitable conduct. Additionally, the court granted summary judgment that the patents were invalid for indefiniteness and that the patents were not entitled to the priority date of the provisional application. On appeal, the Federal Circuit reversed the findings of unenforceability and invalidity without reviewing the priority date determination.
On remand, the district court entered a verdict, which was again based on the later, non-provisional priority date, finding non-infringement, anticipation, obviousness, failure to disclose best mode and indefiniteness.
On appeal for the second time, the Federal Circuit disagreed with the district court, which had held that the provisional application did not support the patents’ disclosed air flow rate of 25,000 cubic feet per minute (CFM), as the provisional application disclosed a minimum airflow rate at about 28,000 CFM. The Federal Circuit stated that the “district court’s reliance on specifically disclosed air flow rates improperly narrowed the scope of the provisional application based on an added example.” Moreover, one of ordinary skill would know that minimum air flow “may vary” and “that the conditions in a curing barn could demand an air flow of 25,000 CFM.”
With the earlier priority date established, the Federal Circuit held that there was no best mode violation, given the parties’ agreement that the best mode was developed after the provisional application was filed. The Court also held that the patents were not anticipated or rendered obvious in light of the fact that the earlier priority date knocked out intervening art relied upon by the lower court.
Additionally, the Federal Circuit held that the patents were not indefinite. The Court stated that only claims which are “not amenable to construction or insolubly ambiguous” are indefinite. Moreover, the Court confirmed that “ [a]bsolute clarity is not required to find a claim term definite.” The Court held that a person of skill in the art would not find the term “controlled environment” indefinite, but would rather understand how to control the multiple factors necessary to practice the inventions.
Finally, the Federal Circuit affirmed non-infringement, finding that the jury was entitled to discredit Star Scientific’s expert witness.
© 2012 McDermott Will & EmeryAbout the Author
