Friday, January 19, 2007

Star Scientific loses key issues to Reynolds

U.S. District Judge Marvin Garbis invalidated key patent claims at issue in an infringement suit against R.J. Reynolds Tobacco brought by Star Scientific over patents directed to a tobacco-curing process designed to reduce some cancer-causing chemicals.

The motions ruled upon involved Reynolds' "motion for summary judgment of invalidity based on claim indefiniteness; Star Scientific's cross-motion for summary judgment that all the asserted claims of the patents-in-suit are not indefinite; and Reynolds' motion for summary judgment of invalidity based on the effective filing date of the patents-in-suit.

The filing date issue pertained to whether Star would be granted the filing date of its provisional application. Jonnie Williams filed a provisional application on September 15, 1998. A regular application was filed a year later. Relevant prior art arose in the time in between, so that Star would need the earlier date to avoid invalidity. Judge Garbis noted that, to utilize the filing date of the earlier application, there must be compliance with the written description requirement. IPBiz notes in passing that this is exactly what the journal Science (and Eli Kintisch) ignored in July 2006, as pointed out in 88 JPTOS 743. Judge Garbis cited Tronzo v. Biomet as to written description and Schering v. Geneva [339 F.3d 1373] as to anticipation. The nub of the problem is that the provisional disclosed an airflow of about or "at least about 28,000 CFM" but the disclosure of the nonprovisional pertained to a rate of approximately 25,000 CFM. The potential issue with the Garbis' ruling is that he applied it to claims that had no limitation of flowrate ["claims ... that do not expressly specify a flowrate"] One rule of patent law is that limitations in the specification will not be read into claims. However, as the LizardTech/Berkeley case illustrated, this can be a bit tricky. One should note well what Judge Garbis ruled: RJR got partial summary judgment that Sept. 15, 1999 is the effective filing date [which ruling can be reasonably challenged] but RJR was denied partial summary judgment that the effective filing date ruling rendered Star's claims invalid. Of patent practice tips, if the CAFC upholds the district court, this case might illustrate that casual preparation of provisional applications can create trouble for the applicant. As noted above, IPBiz is not especially thrilled with the district court analysis; however, this episode could have been avoided by resolving 28,000 vs. 25,000 CFM issue at the time of the provisional filing. That is, if one is going to write about a minimum flow of air of 28,000 CFM in the provisional application, then having a caveat that the minimum flow of air may vary, may or may not help one with a district court judge. Pick a minimum in the provisional application that really is a minimum, and don't be trying to create a new minimum later. [Although not fully discussed at the time, the Hilton Davis case illustrates some of the problems one can encounter when going from a claim with no numerical limit to a case with a numerical limit.]

The ruling on indefiniteness of claims of US 6,202,649 and US 6,425,401 cited All Dental v. Advantage, 309 F.3d 774. It did cite Exxon v. US, 265 F.3d 1371, a case in which Exxon was saved on a indefiniteness problem by the CAFC. In this case, testimony of Star's expert witness was used against Star. Further, Judge Garbis made reference to Geneva v. GlaxoSmithKline, 349 F.3d 1373. There was a remark in the decision possibly interrelating the claim term "anaerobic condition" to "epitome of indefiniteness." The patenthawk blog also discusses the indefiniteness issue.

The Richmond Times-Dispatch quoted August Borschke, chief patent counsel for R.J. Reynolds: It has been R.J. Reynolds' position that Star's patents are invalid.

BusinessWeek noted: In 1999, Star Scientific said Brown & Williamson agreed to buy its "StarCured" tobacco -- a process that reduces cancer-causing toxins known as tobacco-specific nitrosamines, or TSNAs, that develop during the curing process.

In May 2001, Star Scientific sued R.J. Reynolds for patent infringement, saying that shortly after learning of Star's innovation, R.J. Reynolds Tobacco announced a similar system to decrease nitrosamines.

IPBiz notes this is another patent litigation which followed a breakdown in business negotiations. In NTP v. RIM, the situation ultimately ended badly for the accused infringer; here it is going poorly for the patent holder The Wright Brothers won all their patent litigations, but didn't do as well as might have been expected because of government intervention in the form of the patent pool. Merck v. Integra is another case of a negotiation breakdown. All of the cases illustrate the difficulty in objectively valuing patents.


Blogger Lawrence B. Ebert said...

See the Serenkin case on bad things that can happen when using a provisional application.

12:04 PM  
Blogger Unknown said...


Star Scientific Inc. v. R.J. Reynolds Tobacco Co

8:40 AM  
Blogger Justhinkin said...

Update 9/9/2009.

The Appeals Court (2008) struck down (reversed/remanded) virtually everything that the judge in the lower court wrote.

The Supreme Court just this week (Monday March 9, 2009) refused to hear the RJR (RAI, now) appeal. The patent matter is scheduled for trial in April-May. The inequitable conduct matter is DEAD.

After successfully, somehow, putting the judge (a sudden, "new judge" on the case in 2005) "in their pocket" and successfully delaying this matter for an extra 3 years (!), RJR/RAI finally faces the prospect of having to convince a jury of our peers of RAI's benevolence in fighting, for 8 YEARS, to avoid paying royalties of, on average, less than 1% of the cost of its products, retail, to virtually eliminate chemicals (TSNAs) that are believed to be THE major source/cause of cancers in RAI's customers.

It is my belief ... and hope ... that a loss in this matter by RJR/RAI will not only benefit Star Scientific and consumers at large, but open up RAI to a whole new class of liability suits ... for failing for 8 years to take measures believed, by the scientific community, to make their products much less lethal to their users, all for the sake of increasing their revenue by apparently something less than 1% over that period.


12:03 PM  
Blogger Justhinkin said...


Izof said...
Update 3/9/2009.

The Appeals Court (2008) struck down (reversed/remanded) virtually everything that the judge in the lower court wrote.

The Supreme Court just this week (Monday March 9, 2009) refused .....

9:48 PM  

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