2024 Federal Circuit IP Appeals – RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., 92 F.4th 1085 (Fed. Cir. 2024) (Chen, Stoll, Cunningham)

Philip Morris filed a PGR petition challenging RAI’s e-cigarette patent as invalid for lack of written-description support. The claims recited a heating member having a length of “about 75% to about 85%” of the e-cigarette’s length, while the specification disclosed different, substantially broader ranges: e.g., 75–125%, 80–120%, 85–115%, and 90–110%. The Board held that the claims lacked written-description support because each disclosed range contained an upper limit that exceeded 85%.

The Federal Circuit vacated the Board’s ruling as unsupported by substantial evidence. The court explained that the specification need not expressly recite a claimed range to provide written-description support. Rather, the relevant inquiry is whether the disclosed range “pertains to a different invention” than what is claimed.

Here, there was no evidence that the ranges disclosed in the specification pertained to a different invention than what was claimed. While the specification did not disclose the claimed range exactly, it did disclose both endpoints within broader ranges. And, given the predictability of e-cigarette technology, a “lower level of detail” could satisfy the written-description requirement than for more complicated inventions. Finally, nothing in the patent indicated that changing the length of the heating member would change the invention in any way.

The court acknowledged prior precedent holding claims invalid for a mismatch in claimed and disclosed ranges but reiterated that the written-description inquiry is “highly factual and dependent on ‘the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure.’” And, under the “unique facts” of the case at issue, substantial evidence did not support the Board’s ruling that the range mismatch in RAI’s patent rendered the claims invalid.

This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.