Written Description of a Numerical Range

February 14, 2024

The Federal Circuit on February 9 decided another written description case involving a range not found in ipsis verbis in the patent specification in RAI Strategic Holdings Inc. v. Philip Morris Products S.A. RAI appealed from a PTAB holding in PGR2020-00071 that claims 10 and 27 of U.S.P. 10,492,542 lacked written description in the specification. Claims 27 is reproduced below; claim 10 is identical except it depends on claim 9:

27. The smoking article of claim 19, wherein the heating member is present on the heating projection along a segment having a length of about 75% to about 85% of a length of the disposable aerosol forming substance.

The specification describes four heating element lengths, one ranging from about 75 to about 125% of the length of the disposable aerosol element, a second from about 80 to about 120%, a third from about 85 to 115%, and a fourth from about 90 to 110% of the element. The CAFC considered the disclosure to be sufficient to show RAI’s possession of the invention. The PTAB relied on Indivior UK Ltd v.  Dr. Reddy’s Labs., Inc, 8 F.4th 1323, (Fed. Cir 2021) in deciding the claims did not have written description where the description was similar in the present case.  The Federal Circuit distinguished over Indivior based on the way the patent specification described the alternatives which the Court claimed caused uncertainty. Judge Linn wrote a vigorous dissent.

While the RAI specification did not describe the range in haec verba it is apparent from a comparison of the ranges described above, one range beginning at 75% and the other at 85% that range of 75 to 85% was clearly within the scope of what was described. In reaching its conclusion the Federal Circuit relied on its predecessor’s decision In re Wertheim, 541 F.2d 257 (C.C.P.A. 1976).  In Wertheim the Court found a solid contents range of 35% to 60% to have written description where the specification described a range of 25% to 60% and provided examples at 36% and 50%.  The PTAB can be criticized in not deciding the obviousness issue which had formed one of the reasons for the PGR.  Here the PTAB found the claims upon which claims 10 and 27 depended to be obvious but the PTAB ducked the issue with respect to claims 10 and 27 because they had found the claims unpatentable for lack of written description.  It would have been more efficient to consider the obviousness issue as well given that the only difference was the length of the heating projection. Because of this failure the case returns to the PTAB for decision on the obviousness issue.