Federal Circuit upends PTAB win for Philip Morris
Federal Circuit weighs in on patent dispute between RAI and Philip Morris | Court rejects PTAB ruling, citing validity and obviousness concerns | Setback follows tobacco giant’s settlement with British American Tobacco last week.
The US Court of Appeals for the Federal Circuit has reversed a Patent Trial and Appeal board’s finding in favour of Philip Morris that invalidated a patent covering a vaping cartridge.
The US Court of Appeals for the Federal Circuit delivered its precedential decision on February 9 in the case involving RAI Strategic Holdings v Philip Morris Products.
RAI challenged the Patent Trial and Appeal Board's (PTAB) final written decision in a post-grant review concerning claims in US patent number 10,492,542, owned by RAI.
The PTAB found that certain claims within the ‘542 patent were unpatentable because they were obvious or “lacked written description”.
The '542 patent covers smoking devices designed to provide an inhalable substance in vapour or aerosol form by heating tobacco or other substances.
The Federal Circuit affirmed the PTAB’s ruling that some claims were unpatentable as obvious, but disagreed with the board’s finding that two claims lacked the necessary written description. These findings have been sent back for further proceedings.
The dispute arose when Philip Morris filed a petition with the PTAB, challenging RAI’s patent's validity and citing issues related to the patent’s written-descriptions and its obviousness based on prior art.
The PTAB sided with Philip Morris, deeming that certain claims were unpatentable on these grounds. On appeal, RAI highlighted issues related to the written description requirement and obviousness based on prior art.
The court’s discussion
RAI raised two main points, firstly arguing that the board made an error in finding that two claims lacked sufficient written description.
This concerned the interpretation of the patent's written description requirement, which demands a comprehensive demonstration that the inventor possessed the claimed subject matter at the filing date.
Philip Morris held that the claimed length ranges lacked adequate written description support because they were narrower than the ranges disclosed in the specification.
RAI countered, arguing that the specification adequately supported the claims.
Drawing on key cases, the court evaluated whether the disclosed ranges reasonably conveyed possession of the claimed subject matter to a skilled artisan.
The court concluded that the '542 patent's specification provided sufficient support for the claimed length ranges, rejecting Philip Morris’ argument.
Second, RAI argued against the board's decision that claims would have been obvious based on prior art references.
The court went on to address the issue of obviousness, focusing on whether a person of ordinary skill in the art would have been motivated to combine prior art references.
It then affirmed the board's determination, finding that there was substantial evidence in support of it.
Philip Morris and BAT settlement
This decision follows a high-profile settlement between Philip Morris and British American Tobacco last week.
The companies settled multiple lawsuits that resolved all ongoing patent infringement litigation between the two concerning heated tobacco and vapour products on February 2, 2023.
This settlement included non-monetary provisions between the two that include all related injunctions and exclusion orders, and prevents future claims against current products.
The settlement also allows each party to innovate and introduce product iterations.
Commenting on the settlement, Jacek Olczak, CEO of Philip Morris, said: “There is a clear and growing global desire from adults who smoke to choose from a range of smoke-free products, and we believe continued reduced-risk category innovation can accelerate declines in the harms associated with smoking to the benefit of consumers and public health at large—as we continue PMI’s journey to end the sale of cigarettes.”
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