Rock Creek Pharmaceuticals Inc. (fka RCPIQ)

[NukeJohn]

Let's look at the CAFC ruling in the Star v. RJR case (bold is mine)....

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1183.pdf

excerpts....

Indefiniteness is a purely legal issue that this court reviews without deference. Bancorp Serv., LLC v. Hart-ford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004). This court only finds claims “not amenable to construction” or “insolubly ambiguous” to be indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted). Thus, a construed claim can be indefinite if the construction remains insolubly ambiguous, meaning it fails to provide sufficient clarity about the bounds of the claim to one skilled in the art. Star I, 537 F.3d at 1371 (citations omitted). Absolute clarity is not required to find a claim term definite. This court has held that a claim term may be definite even when discerning the meaning is a “formidable [task] and the conclusion may be one over which reasonable persons will disagree.” Source Search Tech., LLC v. Lendingtree,LLC, 588 F.3d 1063, 1076 (Fed. Cir. 2009) (citing Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)).

The district court construed the claim term “controlled environment” to mean “controlling one or more of humidity, temperature and airflow in the curing barn, in a manner different from conventional curing, in order to substantially prevent the formation of TSNAs.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., No. 8:01-cv-01504, Dkt. No. 458, slip op. at 2 (D. Md. March 31, 2004). The parties do not contest that an ordinarily skilled artisan knows the meaning of the term “controlled environment,” but they dispute whether a person of ordinary skill would know how to establish a controlled environ-ment to perform the claimed method. Here indefiniteness requires a showing that a person of ordinary skill would find “controlled environment” to be insolubly ambiguous.

From that perspective, this record does not present reasonable grounds for showing that “controlled environment” is indefinite. The jury’s verdict assumes that a person of skill in the art would not recognize a “controlled environment” because the Williams patents do not give exact numbers measuring humidity, temperature, and airflow in a conventional curing barn. However, the record repeatedly shows that a person of skill in the art of tobacco curing would possess adequate understanding to manipulate these variables to create a controlled envi-ronment. Indeed, because conventional curing varies depending on the conditions for each cure, specific numerical values are not needed for one skilled in the art to implement conventional curing. As described in the ’649 patent:

[T]he practice of tobacco curing is more of an art than a science, because curing conditions during any given cure must be adjusted to take into ac-count such factors as varietal differences, differ-ences in leaves harvested from various stalk positions, differences among curing barns in terms of where they are used, and environmental variations

’649 patent col.6 ll.35-41. The ’649 patent further ex-plains that “the controlled conditions described herein [are] according to conventional methods commonly and commercially used in the U.S.” Id. col.6 ll.16-18. The later-filed Peele patent, assigned to RJR, confirms that:
[V]arieties of Virginia tobacco that can be grown and cured in accordance with [the Peele method] will be readily apparent to those skilled in the art of tobacco growing, harvesting, and processing, and tobacco manufacture. The manner of which Virginia tobacco is grown, harvested, and proc-essed is well known.

’134 patent col.4 ll.3-8. Moreover, the record demonstrates that tobacco curing variables are well known in the tobacco industry. In that context, the term “controlled environment” falls well within the bounds of ordinary skill in the art. Thus, this term is not insolubly ambiguous and is not indefinite.

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You can see by the comments in bold that this case does not come close to meeting the criteria that any court would need to change the settled law on indefiniteness and/or the terminology "insolubly ambiguous". At some point in time a case may come along where the claim terminology is intentionally vague and puposefully designed to get the USPTO to grant a patent when it really may be truly indefinite. If and when a case like that comes along, the CAFC may choose to revisit the previous ruling where they defined the term "insolubly ambiguous".....but this is not that case and both the CAFC and the Supreme Court know it.

Furthermore, the US Solicitor General has already weighed in on a similar case where "insolubly ambiguous" was an issue. In that case, they encouraged the Supreme Court to let the "insolubly ambiguous" standard to remain in effect. Link courtesy of thefamilyman on yahoo.

http://sblog.s3.amazonaws.com/wp-content/uploads/2011/05/10-426_Applera.pdf


JMHO,

NJ