RAI STRATEGIC HOLDINGS, INC. v. PHILIP MORRIS PRODUCTS S.A

Before Chen, Stoll, and Cunningham. Appeal from the Patent Trial and Appeal Board.

Summary: Claimed ranges can be narrower than alternative, broader ranges disclosed in the specification if one of ordinary skill in the art can adequately determine that the broader range does not result in a different invention than the narrower range.

Phillip Morris Products, S.A. (“Phillip Morris”) petitioned for post-grant review (“PGR”) of an RAI Strategic Holdings, Inc. (“RAI”) patent directed to an electrically powered smoking device with various electro-mechanical components. Phillip Morris argued that the claims were invalid for obviousness and for lacking written description support because the claimed range of the length of a heating element in the device was substantially narrower than the ranges disclosed in the written description. In particular, the claimed range was stated as being between “about 75% to about 85%” and the specification disclosed ranges such as “75% to 125%” and “85% to 115%.” The Board agreed with Phillip Morris and stated that the claims were unpatentable. RAI appealed.

The Federal Circuit vacated the Board’s finding that the claims lack written description support. The Federal Circuit stated that determining whether a narrower range than disclosed in the specification is supported by the written description is a highly factual determination and is dependent on the nature of the invention and the amount of knowledge imparted to those skilled in the art. In this case, the predictability and lack of complexity of the combination of the elements in the device supports claims with a narrower range than disclosed in the written description. Because there was no evidence that the claimed range would lead to changes in the invention, operability, or effectiveness when compared to the ranges disclosed in the written description, the claims were supported under 35 U.S.C. § 112.