Speculative And Tentative Disclosures In The Prior Art May Not Sufficiently Direct Or Instruct A Skilled Artisan

This article previously appeared in Last Month at the Federal Circuit, September, 2011.

Judges: Rader (author), Linn, Dyk (concurring-in-part and dissenting-in-part)

[Appealed from D. Md., Senior Judge Garbis] In Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., No. 10-1183 (Fed. Cir. Aug. 26, 2011), the Federal Circuit affirmed the district court's denial of Star Scientific, Inc.'s ("Star") JMOL of infringement and denial of Star's motion for a new trial, but reversed the district court's denial of Star's JMOL on validity.

Star is the exclusive licensee of U.S. Patent Nos. 6,202,649 ("the '649 patent") and 6,425,401 ("the '401 patent") (collectively "the Williams patents"), which claim methods for curing (drying) tobacco leaves. Since the 1970s, tobacco has been cured in direct-fired barns that heat and dry the tobacco in the presence of the combustion exhaust gases released by the heaters. The combustion gases can create an anaerobic, or oxygen-free, environment that can lead to the formation of a family of chemical compounds called tobacco-specific nitrosamines ("TSNAs"), known carcinogens, on curing tobacco leaves.

The Williams patents claim tobacco-curing methods that "substantially prevent" the formation of at least one TSNA during curing by creating a "controlled environment." Star filed a provisional patent application, and a year later filed a nonprovisional application, which issued as the '649 patent. The '401 patent issued from an application that was a continuation of the application that matured into the '649 patent.

Star sued R.J. Reynolds Tobacco Company ("RJR") for infringement of the Williams patents. RJR denied infringement and claimed that the patents were unenforceable for inequitable conduct and invalid for anticipation, obviousness, indefiniteness, and failure to disclose the inventor's best mode. After a bench trial, the district court found the patents unenforceable for inequitable conduct, granted SJ of invalidity for indefiniteness, and granted RJR's SJ motion that Star was not entitled to rely on the provisional application's priority date because the nonprovisional application contained new matter. Star appealed to the Federal Circuit. In an earlier decision, the Court reversed the findings of unenforceability and invalidity, and remanded for proceedings on infringement. Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008).

On remand, the jury, via special verdict, found the...