Star Scientific v. R.J. Reynolds Tobacco (CAFC 2008-1183) precedential; Judges Rader (author), Linn, Dyk (dissent-in-part)

The inventor of the patents-in-suit is Williams. Star is exclusive licensee.

Evidentiary Objections

Here's the CAFC talking out of both sides of its mouth: the district court did nothing wrong, but what went on was "troubling." Judges stick up for each other, like cops and others with a law enforcement mentality, but with little regard for equity or accuracy. RJR was ruthless, and quite successful, in biasing the district court judge, as well as the CAFC, as shown by how the case played out.

Star contends that the trial court committed numerous reversible evidentiary errors. Star seeks reversal and remand for a new trial based on the court's exclusion of proffered data, failure to exclude the Burton slide, reproduced above, failure to exclude arguments made by RJR about failure to produce the Burton letter to the Patent Office, and other arguments made by RJR during trial.

The district court did not commit reversible error in its evidentiary rulings. Because inequitable conduct was not at issue in the trial, this court finds the presentation of the Burton slide troubling. The Burton slide, showing a shadowy figure conspicuously holding a piece of paper behind his back, does not support any claim at issue in this case. As a practical matter, however, Star did not show the presentation of the Burton slide affected its substantive rights. Accordingly, this court detects no abuse of discretion in the trial court's evidentiary decisions.

Best Mode

The best mode requirement contains two elements. First, the court must determine whether the inventor possessed a best mode of practicing the claimed invention at the time of filing the patent application. Green Edge Enter., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1296 (Fed. Cir. 2010). This first step is subjective and focuses on the inventor's preference for a best mode of practicing the invention at the time of the application's filing date. Id. (citing N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir. 2000)). The second step is an objective inquiry to determine whether the inventor concealed from the public the best mode of practicing the invention. Id. (citing Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir. 1990)).

RJR concedes that Williams had not yet contemplated a best mode as of September 15, 1998. Appellee Br. at 26. As discussed above, September 15, 1998 is the proper priority date for the asserted claims of the Williams patents. Therefore, at the time of filing, the record shows no best mode violation. Without evidence that Williams had possession of a best mode of practicing the claimed invention at the time of filing, the record cannot support invalidity under the best mode requirement. This court reverses the district court's finding that the Williams patents are invalid for failure to disclose the best mode of practicing the claimed invention.

Indefiniteness

Expressly contrary to law (§112 ¶2 - "claims particularly pointing out and distinctly claiming the subject matter"), the CAFC has an absurdly high bar for indefiniteness - claims are definite unless no one can make heads or tails of what a claim means.

Indefiniteness is a purely legal issue that this court reviews without deference. Bancorp Serv., LLC v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004). This court only finds claims "not amenable to construction" or "insolubly ambiguous" to be indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted). Thus, 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. Star I, 537 F.3d at 1371 (citations omitted). Absolute clarity is not required to find a claim term definite. This court has held that a claim term may be definite even when discerning the meaning is a "formidable [task] and the conclusion may be one over which reasonable persons will disagree." Source Search Tech., LLC v. Lendingtree, LLC, 588 F.3d 1063, 1076 (Fed. Cir. 2009) (citing Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)).

In this case, the offensive claim term: "controlled environment," was nowhere near the border of inscrutability, according to the majority opinion.

The record repeatedly shows that a person of skill in the art of tobacco curing would possess adequate understanding to manipulate these variables to create a controlled environment. Indeed, because conventional curing varies depending on the conditions for each cure, specific numerical values are not needed for one skilled in the art to implement conventional curing.

Demonstrating a dispositive difference depending on the panel drawn, Judge Dyk had a different reading of indefiniteness, showing the internal tension at the CAFC.

The Patent Act requires that claims "particularly point[ ] out and distinctly claim[ ] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112. A claim term is not indefinite simply because "it poses a difficult issue of claim construction"; rather, the claims are indefinite "only if reasonable efforts at claim construction prove futile." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). In other words, "if reasonable efforts at claim construction result in a definition that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim, the claim is insolubly ambiguous and invalid for indefiniteness." Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (citing Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249-51 (Fed. Cir. 2008).

Dyk's take rendered Rader and Linn as rubes.

The majority characterizes the patents as "explain[ing] that 'the controlled conditions described herein [are] according to conventional methods commonly and commercially used in the U.S.'" Id. at 16 (quoting '649 patent, col.6 ll.16-18). But that is the opposite of what the patents actually state.

The specifications elsewhere directly contradict the majority's conclusion, explaining that the claimed "controlled environment" is something different from conventional curing methods.

To determine whether a claim is invalid for indefiniteness, a court must determine "whether those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Expert testimony may be helpful in making this determination. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005) (holding that a court may "rely on extrinsic evidence, such as expert testimony," to determine whether the claims are indefinite) (internal quotation marks and citation omitted); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (stating that, in making legal determinations, the court may rely on expert testimony to aid in understanding the patent). Here, R.J. Reynolds' expert testified that a person of ordinary skill in the art would be unable to draw the line between conventional curing methods and the "controlled environment" required by the claims. J.A. 46543-45. Specifically, he noted that one of ordinary skill in the art would understand the "controlled environment" limitation to require the "control [of] humidity, temperature, and airflow in a way that's different from [conventional curing processes], and with the objective and the purpose of substantially preventing the formation of TSNAs." J.A. 46543. He noted, however, that the patents do not provide sufficient guidance for one of skill in the art to determine the ranges of temperature, humidity, and airflow "covered by the [term] controlled environment that are also not covered by the conventional curing processes." J.A. 46545. Further, when pressed on the issue, Star's expert could not provide any guidance regarding the difference between the airflow in a conventional curing process and that required in a "controlled environment," noting that it would be impossible to pinpoint values for the temperature, airflow, and humidity required by the claims because barn conditions are continually changing. J.A. 45680.

Infringement

The jury returned a special verdict finding that Star did not show infringement of the Williams patents by a preponderance of the evidence. The district court denied Star's motions for JMOL and, in the alternative, a new trial.

To prove infringement, a plaintiff must prove the presence of each and every claim element or its equivalent in the accused method or device. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). Infringement is a question of fact reviewed for substantial evidence. Id. (citing Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008)).

Star's expert witness was discredited. That snuffed infringement.

Star's expert testimony was dispositive in this case. The record shows that Star presented Dr. Lee as its "primary evidence of infringement[.]" J.A. 36951. In fact, upon the court's threat to conditionally limit or exclude Dr. Lee's testimony, Star conceded that "for all practical cases" there would be no case of infringement. J.A. 36950. Indeed, the district court remarked that the jury "as it most certainly should have, rejected Dr. Lee's opinion altogether." J.A. 52. In fact, the district court indicated that, had the jury not discredited Dr. Lee, the court "would now exclude Dr. Lee's testimony as not meeting the Daubert standard." Id.

The jury is entitled to credit or discredit testimony before it. In this situation, where expert testimony was needed to establish infringement, it was not unreasonable for the jury to discredit the testimony of Star's expert and find that the Williams patents were not infringed. See Verizon, 602 F.3d at 1341 (denying motion for JMOL when jury found noninfringement after weighing conflicting expert testimony); see also Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010, 1024 (Fed. Cir. 2009) (finding that a jury can accept the testimony it finds most persuasive).

Obviousness

Non-infringement mooted the validity issue.

Under 35 U.S.C. § 103(a), a patent is invalid "if the differences between the [claimed] subject matter . . . and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Obviousness is a determination of law based on underlying determinations of fact. Geo M. Martin Co. v. Alliance Mach. Sys. Int'l, 618 F.3d 1294, 1300 (Fed. Cir. 2010). These factual determinations include the scope and content of the prior art, the level of ordinary skill in the art, the differences between the claimed invention and the prior art, and secondary considerations of nonobviousness. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).

Whether prior art invalidates a patent claim as obvious is determined from the perspective of one of ordinary skill in the art. Id. at 420 ("The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art."). Through the lens of one of ordinary skill in the art, even when all claim limitations are found in prior art references, the fact-finder must not only determine what the prior art teaches, but whether prior art teaches away from the claimed invention and whether there is a motivation to combine teachings from separate references. See Dystar Textilfarben GMBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006) (citing In re Fulton, 391 F.3d 1195, 1199- 1200 (Fed. Cir. 2004)). Ultimately, obviousness requires careful judgment and analysis in light of technical facts. KSR, 383 U.S. at 419; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997) ("[T]here is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention. Rather, the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art.").

Importantly, the great challenge of the obviousness judgment is proceeding without any hint of hindsight. See ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998) (observing that obviousness "cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention"). Further, secondary considerations "may often be the most probative and cogent evidence [of nonobviousness] in the record." Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983).

 Yet RJR couldn't smoke Willaims' patents, in a decision that could easily have gone the other way, as it has many times in the past, with much the same evidentiary basis. Anticipation also failed, by the grace period given in U.S. law, to allow patenting of non-novel inventions.

Affirmed-in-part and reversed-in-part.