Bifurcated Patent Trials, Expected Delays, and Press Statements
Petersburg, Virginia-based Star Scientific, whose published corporate mission is to “reduce toxins in tobacco so that adult consumers can have access to products that expose them to sharply reduced toxin levels,” sued R.J. Reynolds for patent infringement in the District Court for the District of Maryland in 2001. A bench trial on the issue of the enforceability of the asserted patents was held in 2005. Apparently put off by what it viewed as an excess delay in receiving the District Court’s decision, Star petitioned the Court of Appeals for the Federal Circuit (CAFC) seeking a writ of mandamus from the court that would order the Maryland District Court to issue its decision regarding unenforceability within 30 days. Star's petition was filed before June 7, 2007, which is the date the Maryland District Court issued an order stating that its decision would be posted on June 29, 2007. Defendants/respondents R.J. Reynolds Tobacco Company (a North Carolina corporation) and R.J. Reynolds Tobacco Company (a New Jersey corporation) opposed Star’s petition.
In an Order signed June 25, 2007, Federal Circuit Court Judge Pauline Newman denied Star’s petition, stating that the company had not “met its burden in this case,” which, for a writ of mandamus, required Star to establish that there had been a “clear abuse of discretion or that the District Court has ‘obstinately refuse[d]’ to adjudicate the matter” (citing Will v. Calvert Fire Ins. Co., 437 U.S. 655, 666-67 (1978)).
Ironically, the same day the Federal Circuit issued its Order denying Star’s petition, the Maryland District Court issued its decision on enforceability, effectively mooting Star’s petition to the CAFC. The District Court found Star’s patents to be unenforceable on the basis of inequitable conduct by Star’s attorneys during prosecution of Star’s patents before the U.S. Patent & Trademark Office. Star responded forcefully to the decision. In a June 27, 2007, press statement, it stated:
“The company is disappointed and frankly outraged by the U.S. District Court's ruling yesterday…. The Court's conclusion that highly respected and experienced senior attorneys at four national law firms were involved in an alleged plot to deceive the Patent Office is stunning and totally without support in the record. The opinion ignores significant portions of the record, distorts others, and spins a tale that is unrecognizable to those who attended the trial. … We welcome the opportunity to present the record in this case to objective decision-makers on the Federal Circuit.”
Comments and Notes:
- Star’s frustration over a two-year delay in receiving a decision regarding enforceability of its patents is understandable. However, bifurcated trials nearly always take longer to reach finality.
- It remains to be seen what effect Star’s press statement will have on its case-in-chief if the Federal Circuit remands the case back to the same Judge whose decision, in Star's view, ignored portions of the record, distorted portion of the record, and spun an unrecognizable tale.
- This case underscores one of the many pre-filing decisions Plaintiffs must evaluate before bringing a lawsuit: the speed with which a court adjudicates patent matters.
