Star Scientific, Inc. v. R.J. Reynolds Tobacco Company (a North Carolina Corporation) and R.J. Reynolds Tobacco Company (a New Jersey Corporation)

When claiming priority of a provisional application, the disclosure of best mode required is the best mode contemplated at the time of the provisional application; “a construed claim can be indefinite if the construction remains insolubly ambiguous, meaning it fails to provide sufficient clarity about the bounds of the claim to one skilled in the art,” but may be definite if “discerning the meaning is a formidable task and the conclusion may be one over which reasonable persons will disagree.”

For full opinion:
2011 U.S.App.LEXIS 17826
2011 WL 3768983

Opinion (Rader): Star Scientific, Inc. (“Star”) appealed the district court’s denial of its motion for judgment as a matter of law (“JMOL”) and, in the alternative, a new trial concerning non-infringement and invalidity of U.S. Patent Nos. 6,202,649 (“’649 patent”) and 6,425,401 (“’401 patent”). The Court of Appeals for the Federal Circuit AFFIRMED denial of JMOL and new trial concerning infringement, but REVERSED denial of JMOL concerning validity. Star filed a complaint against R.J. Reynolds Tobacco Company and R.J. Reynolds Tobacco Company (“RJR”) alleging that RJR’s U.S. Patent No. 6,805,134 (“’134 patent”) infringed the ‘649 and ‘401 patents. RJR countered the complaint by challenging the validity of the ‘649 and ‘401 patents due to anticipation, obviousness, indefiniteness, and failure to disclose best mode. The Court of Appeals disagreed with the district court finding that the ‘649 patent and the ‘401 patent were entitled to the priority date of September 15, 1998 of a provisional application. By finding this earlier priority date, the Court of Appeals held that at this time Star did not contemplate a best mode and RJR’s ‘134 patent was not prior art for anticipation and obviousness challenges. The Court of Appeals found that the challenged term “controlled environment” would be understood by a person having skill in the art and hence was not indefinite. For the previous reasons the Court of Appeals GANTED Star’s JMOL for invalidity. The Court of Appeals found a reasonable jury could make a finding of non-infringement from the evidence and DENIED JMOL or new trial for the issue.