PETERSBURG, Va. -- Star Scientific Inc. said that the U.S. Court of Appeals for the Federal Circuit issued its opinion today on Star Scientific's appeal of rulings by the U.S. District Court in its patent infringement lawsuit against RJ Reynolds Tobacco Co. Inc. A three-judge panel ruled unanimously that the lower court's ruling, that Star Scientific had engaged in inequitable conduct, was "clearly erroneous", and also reversed the district court's grant of summary judgment holding Star's patents indefinite. Based on those rulings the Federal Circuit Court remanded the case for further proceedings.[image-nocss]
Star Scientific sued RJR regarding two patents related to a process that allegedly reduces cancer-causing toxins known as tobacco-specific nitrosamines, said a Dow Jones report. Star Scientific sold its StarCured tobacco to British American Tobacco's Brown & Williamson in 1999. Soon thereafter, RJR announced its own system to reduce nitrosamines.
But a federal judge last year ruled against Star Scientific in an "inequitable conduct" bench trial, which had delayed the implementation of a prior patent ruling that said the Reynolds American Inc. unit didn't infringe on Star's patents. In patent law, "inequitable conduct" suggests the patentholder knowingly misrepresented itself or withheld relevant information in applying for its patent, allowing the court to deem its patent unenforceable.
A bench trial was held in early February 2005 on RJR's defense claim of inequitable conduct. Shortly before that trial began, RJR was permitted by the District Court to file summary judgment motions that claimed that the patents were neither sufficiently definite nor was the patent application entitled to a priority date. Two years later, in January 2007, the district court issued rulings that granted RJR's summary judgment motions. Six months later, on June 26, 2007, the district court ruled that Star Scientific committed inequitable conduct in the prosecution of its patents.
Star Scientific filed a notice of appeal with the US Court of Appeals for the Federal Circuit the following day. Oral arguments on the appeal were heard by the Federal Circuit Court on March 7, 2008.
As a result of Star Scientific's success in its appeal, the case will be remanded to the US District Court of Maryland for further proceedings.
The company said that it believes it ultimately will be successful before a jury at trial.
Jacob McConnico, a spokesperson for Winston-Salem, N.C.-based RJR, told CSP Daily News, "As this is pending litigation, I can't go into any specific details, but I can tell you that we are disappointed with the decision and we are currently reviewing the court's ruling. We're exploring our options."He added, "The court rejected our inequitable conduct defense and ruled that our summary judgement motion on indefiniteness should not have been granted. This simply means that the matter will likely now go to trial. [RJR]"continues to believe that we didn't infringe the patents, the patents in question are invalid and if and when the matter goes to trial, we are confident that we will prevail."Petersburg, Va.-based Star Scientific markets dissolvable hard smokeless tobacco products made with tobacco that is 100% Virginia StarCured tobacco: Hard Snuff, developed for traditional moist snuff users, and Ariva, which was developed for adult smokers.
Click hereto view the court's opinion.
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