In Rai Strategic Holdings, Inc. v. Philip Morris Products, SA, [2022-1862] (February 9, 2024), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the PTAB’s final written decision holding claims of U.S. Patent No. 10,492,542 unpatentable as obvious or lacking written description. Te ’542 patent, which is directed to electrically powered smoking articles that provide an inhalable substance in vapor or aerosol form by heating tobacco or other substances without significant combustion.

Philip Morris argued that dependent claims 10 and 27, which recite a heating member with
“a length of about 75% to about 85% of a length of the disposable aerosol forming substance,” are not supported by written description because “the claimed range is different
from and substantially narrower than the ranges disclosed in the specification.” Specifically, Philip Morris asserted that while the specification describes ranges such as 75% to 125%, 80% to 120%, 85% to 115%, and 90% to 110%, it does not disclose a heater length range
with an upper limit of 85%. RAI countered that the specification provides written description support because it teaches heating length embodiments at both ends of the claim range, pointing to the 75% to 125% and 85% to the 110% ranges. The Board found that the claims lack written description support because no range contains an upper limit of about 85% making it “‘less clear’ that the inventors contemplated a range of ‘about 75% to about 85%’ as part of the invention.”

The Federal Circuit began with a review of In re Wertheim, where its predecessor found that a disclosure of a range of 25% to 60% and provided support for claims to a range “between 35% and 60%. In Wertheim the Court said that whether the written description requirement is met, “[m]ere comparison of ranges is not enough,” and that instead, “we must decide whether the invention appellants seek to protect by their claims is part of the invention that
appellants have described as theirs in the specification.” “Where it is clear, for instance, that the broad described range pertains to a different invention than the narrower (and subsumed) claimed range, then the broader range does not describe the narrower range” and the written description requirement would not be satisfied.

The Federal Circuit also noted In re Blaser, 556 F.2d 534, 536–37 (C.C.P.A. 1977), where it held the specification, which disclosed heating a mixture to temperatures between 60º and 200º C, “adequately support[ ed] the limitation ‘80º to 200º C” and Kolmes v. World Fibers Corp.,107 F.3d 1534 (Fed. Cir. 1997), where it found that the specification stating a range of wrappings formed “at the rate of 4–12 turns per inch, with 8 turns per inch being preferred” supported a claim to a “rate of 8-12 turns per inch.”

However, in In re Baird, 348 F.2d 974 (C.C.P.A. 1965), cited by the Board, the CCPA held that a claimed range that was narrower than the disclosed range lacked sufficient disclosure. The issued patent explained the specific claimed range is preferred because the material would curl above 60º F and would be too brittle below 40º F. The application in interference, however, only disclosed that the quenching temperature may be between 32º F and 176º F, without providing any further guidance. The court found that the application’s claims lacked written description support because “the copied claims ‘are drawn to an invention different from that disclosed in the specification.”

Similarly, Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323 (Fed. Cir. 2021), also cited by the Board, held that a claimed range “about 40 wt % to about 60 wt %” lacked written description support because (1) neither the range nor the end values were disclosed in the specification; and (2) the inconsistent statements regarding the desired amount of polymer in the specification made it “even less clear that an invention of ‘about 40 wt % to about 60 wt %’ was contemplated as an aspect of the invention.”

Turning to the case before it, the Federal Circuit said the question thus is whether the disclosure of a length of about 75% to about 125%, about 80% to about 120%, about 85% to about 115%, or about 90% to about 110% “reasonably conveys to those skilled in the art that
the inventor had possession” of the claimed length of “about 75% to about 85%.” The Court said among other things, we consider whether “the broad described range pertains to a different invention than the narrower (and subsumed) claimed range,” in which case the specification does not provide written description support for the narrower claimed range.

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The specification need not expressly recite the claimed range to provide written description support. While the ’542 patent specification does not disclose the claimed range itself, it
does expressly disclose both endpoints by providing that the length of the heating member may be “about 75% to about 125%” or “about 85% to about 115%.” In addition to considering what the specification expressly discloses, we also consider the context of the technology at issue and the knowledge gained by a person of ordinary skill in the art
reading the specification. Given the predictability of electro-mechanical inventions such as the one at issue here, and the lack of complexity of the particular claim limitation at issue—i.e., reciting the length of a heating member—“a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.” Further, nothing in the changes the invention, whether as to operability, effectiveness, or any other parameter.

Thus, the Federal Circuit we see no evidence suggesting that the broad described
ranges disclose a different invention than the claimed range of “about 75% to about 85%.” In other words, under the facts of this particular case, there is no evidence that the claimed
subrange results in a different invention than the invention disclosed in the specification. Accordingly, for all of the above reasons, we conclude that no reasonable fact finder could find that the claimed subrange is not within the appellant’s invention. In so holding, we note that our determination 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.”

Though the Board relied on Indivior and Baird in its decision, the facts in this case align more closely with those in Wertheim, Blaser, and Kolmes, where the broader disclosed
ranges did not constitute a separate invention from the narrower claimed ranges. The Federal Circuit vacated the Board’s decision on this issue and remand for further consideration consistent with this opinion.

The Federal Circuit concluded that substantial evidence supports the Board’s determination of obviousness.