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In order for patent claims to be found invalid as obvious in light of the prior art, that art need not “predict with certainty” that a given result will be achieved through a modification suggested in the art, but need only teach that the result would have been expected, the U.S. Court of Appeals for the Federal Circuit ruled Oct. 17 ( Brown & Williamson Tobacco Corp. v. Philip Morris Inc., Nos. 99-1389, -1403). A Federal Circuit panel upheld a finding that a patent for a small-circumference cigarette held by Brown & Williamson Tobacco Corp. was invalid as obvious over the prior art, consisting both of a prior cigarette and articles in the trade press describing the results of reducing the circumference of cigarettes. The patent describes a cigarette with a circumference of 10 to 19 mm — compared with traditional circumferences of 23 to 27 mm — designed to burn the tobacco more efficiently, thereby allowing the use of less tobacco and reducing manufacturing expenses. About the time the patent issued, B&W began selling a 17 mm cigarette marketed under the name Capri. Phillip Morris Inc. then developed and later marketed a competing cigarette, Virginia Slims SuperSlims (VSSS). B&W filed a complaint for infringement before the U.S. District Court for the Western District of Kentucky, but that court ruled in favor of PM’s assertion that the patent was invalid as obvious. The District Court’s ruling was based on a combination of the prior art of the R.J. Reynolds Tobacco Co.’s 20.8 mm circumference “More” cigarette (marketed in 1974) and references known as the Rice, Resnik and Muramatsu articles. The More cigarette met the patent’s limitations for packing density and burn rate, although not its circumference limitation, the lower court found. But the articles taught the relationship between the burn rate of a cigarette and its circumference and provided experimental data for circumferences as low as 20.2 mm and theoretical data for a circumference of 18.8 mm, the District Court concluded. APPEAL On appeal, B&W said the inventor of its patent discovered that a cigarette with a 10 to 19 mm circumference used tobacco at a more efficient rate, which the inventor termed the “tobacco utilization efficiency,” wherein a lower value of TUE reflects a more efficient cigarette. It contended that recognition that a commercially adequate cigarette could be achieved with a circumference in that range was an unobvious advance and successfully achieved the goal of improving the efficiency of burning tobacco. The Federal Circuit noted that machines available in the industry for many years prior to the invention were capable of producing cigarettes with as small as a 15 mm circumference and that a person of ordinary skill would have the technical capability of producing a 19 mm cigarette if so motivated. It said that left the question of whether that person would have recognized that a reduction in the circumference of the thinnest cigarette then on the market would yield a cigarette that burns tobacco more efficiently as defined as TUE in the patent. PRIOR REFERENCES The opinion said that the Rice article includes an equation showing the direct proportional relationship between a cigarette’s static burn rate and its circumference for circumferences as low as 23 mm. “While such data does not predict with certainty that the relationship would hold at 19 mm, the district court is clearly not erroneous in concluding that it would have been an expected result,” Circuit Judge Richard Linn wrote for the panel. The Resnik article also described such a relationship and additionally taught that a reduction in circumference resulted in a decreased value of TUE as described in the patent, although Resnik did not refer to it as such. The author testified that the article was intended to show that the relationship could be extrapolated beyond the experimental data for 23 mm cigarettes, the court noted. “Thus, the Resnik article does teach that reducing circumference decreases the value of TUE and this provides a motivation to reduce the circumference of the More cigarette,” said the opinion. The Muramatsu article taught that the relationship extended at least theoretically to circumferences as low as 18.8 mm, said the court. B&W argued that the data point at that circumference was only theoretical and cannot be used as the basis for assuming that the article teaches that the relationship extends that far. But the opinion found persuasive the lower court’s reasoning that it could not presume that inclusion of the data point was without purpose or scientific reason. SECONDARY CONSIDERATIONS The Federal Circuit also agreed with the lower court that the secondary considerations of nonobviousness did not overcome those findings. It said that while the Capri did achieve commercial success and a nexus between that success and the claimed features should be presumed, that nexus was rebutted by other evidence, including the strong effect of B&W’s marketing and promotional efforts on the Capri’s behalf. The opinion said that while the lower court erred with regard to certain other secondary indicators, including the VSSS’s success, PM’s copying of the Capri and its statements in praise of the Capri, those considerations did not outweigh the “overwhelming evidence of obviousness.” Because of the finding on obviousness, the court did not address PM’s cross-appeals of the lower court’s findings that PM infringed, that the infringement was willful up to a point and that the B&W patent was not invalid due to alleged public use. B&W is represented by Stephen R. Smith of Morgan & Finnegan in New York. PM is represented by Peter T. Grossi Jr. of Arnold & Porter in Washington, D.C. � Copyright 2000 Mealey Publications, Inc.

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