On August 18, 2011, ALJ E. James Gildea issued Order No. 15, denying Respondents Delfortgroup A.G., Dr. Franz Feurstein GmbH, Papierfabrik Wattens GmbH & Co KG, Astra Tobacco Corporation, and Dosal Tobacco Corporation’s (collectively, “Respondents”) motion for summary determination of invalidity of claims 36, 43, and 45 of asserted U.S. Patent No. 6,725,867 (the ’867 patent) in Certain Reduced Ignition Proclivity Cigarette Paper Wrappers and Products Containing Same (Inv. No. 337-TA-756).
According to the Order, Respondents argued that independent claim 36 and dependent claims 43 and 45 of the ‘867 patent are indefinite under 35 U.S.C. § 112 because it is not possible to determine the scope of the lower limit of the claimed permeability range “about 60 Coresta to about 110 Coresta,” (a measure of the cigarette paper’s air permeability).
Complainant Schweitzer-Mauduit International, Inc. (“SWM”), supported by the Commission Investigative Staff (“OUII”), opposed Respondents’ motion, arguing that genuine issues of material fact existed, variability is expected in the permeability of cigarette paper, and that one of ordinary skill would understand the term “about 60 Coresta” to include an expected range of values above and below 60. OUII argued that based on the prosecution history and industry standards, “about 60 Coresta” means “at least 60 Coresta.”
ALJ Gildea determined that since Respondents only take issue with the lower limit of the range, and not the upper limit of the range which uses a similar term “about 110 Coresta,” if the upper limit is discernable, the lower limit should also be discernable. ALJ Gildea also determined that the specification and prosecution history, including the Notice of Allowability, suggest that “about 60 Coresta” may mean “at least 60 Coresta” and the parties themselves recognize the variability in the permeability of the paper. ALJ Gildea further determined that based on the record before him, he was not persuaded that the limitation was indefinite, and the resolution of the issue may come down to expert testimony, and a holding of a hearing on the merits would be beneficial. Accordingly, ALJ Gildea denied Respondents’ motion.