Federal Circuit IP

Rai Strategic Holdings, Inc. v. Philip Morris Products S.A.

By Tucker Mottl Published March 6, 2024

Summary: The Federal Circuit overturns the PTAB to find written description for a percentage range for the length of a heating element in the context of an electro-mechanical smoking device.

Background

  • Appellant-Patent Owner (Rai Strategic) appeals a PRG filed by Appellee-Petitioner (Philip Morris), which found that the challenged U.S. Patent No. 10,492,542 (“the ’542 patent”) lacked written description for a “heating projection along a segment having a length of about 75% to about 85% of a length of the disposable aerosol forming substance.”
  • The ’542 patent disclosed that the heating member had a length of “about 75% to about 125%, … about 80% to about 120%, about 85% to about 115%, or about 90% to about 110% the length of the inhalable substance medium.”
  • The PTAB considered certain Federal Circuit and CCPA precedent on written description for ranges (e.g., In re Baird, 348 F.2d 974 (C.C.P.A. 1965); Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323 (Fed. Cir. 2021)) to determine that the 75-85% range lacked written description.

Key Issue

  • Whether disclosed ranges of 75-125%, 80-120%, 85-115%, and 90-110% for the relative length of a heating element to inhalable substance of a smoking device provides written description for the range of 75-85%?

Applicable Rule/Statute

  • The written description requirement is met when the disclosure relied on for support “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
  • “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”
  • Given the predictability of electro-mechanical inventions such as the one at issue here, and the lack of complexity of the particular claim limitation at issue—i.e., reciting the length of a heating member—“a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.” Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018).

Holding

  • Considering the facts and technological context, disclosed ranges of 75-125%, 80-120%, 85-115%, and 90-110% provided written description for a heating element that was 75-85% the length of an inhalable substance because this range represents the same invention and is reasonably conveyed to those skilled in the art by the disclosed ranges.

Reasoning

  • The electro-mechanical context and disclosure of the ’542 patent falls closer to Federal Circuit and CCPA precedent finding written description support—g., In re Wertheim, 541 F.2d 257, 264–65 (C.C.P.A. 1976) (percentage of solids in instant coffee); In re Blaser, 556 F.2d 534, 536–37 (C.C.P.A. 1977) (temperature of acylation reaction); Kolmes v. World Fibers Corp, 107 F.3d 1534 (Fed. Cir. 1997) (yarn turns per inch)—than to cases finding a lack of written description—e.g., In re Baird, 348 F.2d 974 (C.C.P.A. 1965). (temperature of quench bath in polypropylene reaction); Indivior UK v. Dr. Reddy’s Laboratories, 18 F.4th 1323 (Fed. Cir. 2021) (% water-soluble polymetric matrix in therapeutic films).
  • The ’542 patent is distinguishable from In re Baird because the 75-85% range does not represent a new and different invention from the wider ranges disclosed in the specification.
  • The ’542 patent is distinguishable from Indivior because the ranges disclosed in the specification (i) specifically include 75-85% and (ii) each end point and (iii) are not internally inconsistent.

Takeaways

  • Consider including multiple consistent ranges in a specification. Avoid inconsistent ranges.
  • If priority is important, tailor the description of ranges of later filed claims to avoid portraying it as a new and different invention.
  • Consider the technological context when drafting specifications/claims, electro-mechanical technologies may require less express description than biological/chemical sciences.
  • While not dispositive, narrower ranges encompassed by a patent’s disclosure are more likely to represent the same invention and “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter” in the electro-mechanical context than in the biological/chemical context.
  • It does not appear that Philip Morris cited In re Wertheim, In re Blaser, or Kolmes before the PTAB. Don’t ignore older caselaw, including CCPA cases, if they remain good law and are applicable to a disputed issue.