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Star Scientific’s Settlement with R. J. Reynolds Leaves Star Free to Enforce Tobacco Curing Patents

Star Scientific and R. J. Reynolds have settled their long-running litigation over Star’s patents covering a curing process that prevents the formation of some cancer-causing chemicals in tobacco. The settlement leaves in place a federal appeals court decision that Star’s patents are not invalid and so removes a potential cloud over the validity of the patents. Star thus can now seek to enforce the patent against other tobacco manufacturers whom it believes are using its patented curing process.

The Star patents address the environment in tobacco barns during the curing process. The heating systems used in many tobacco barns creates an anaerobic, or oxygen-free, environment that can lead to the formation of certain carcinogens known as TSNAs. The Star patents claim a curing method that sustains oxygen in the curing environment and so prevents the formation of TSNAs.

Star had agreements with Brown & Williamson to cure low-TSNA tobacco using Star’s patented method. R.J. Reynolds terminated those contracts when it acquired Brown & Williamson and instead used its own process, which involved retro-fitting curing barns with heat exchangers that reduced the amount of exhaust gases in the curing environment. Star sued Reynolds in 2001 alleging that the Reynolds process infringed its patents. After several years of litigation, the case was finally tried to a jury in 2009, which found that Reynolds did not infringe the patents and that the patents were invalid. In 2011, though, the appeals court reversed the finding of invalidity but upheld the ruling that Reynolds did not infringe the patents.

The settlement between Star and Reynolds occurred while the case was on appeal to the U.S. Supreme Court. While the details of the settlement are unknown, it presumably allows Reynolds to continue to use its curing process without fear of future infringement suits by Star. By ending the appeal, the settlement also leaves in place the appeals court decision rejecting Reynolds’ claims that the patents were invalid and so unenforceable. Star can now assert its patents against other tobacco manufacturers in the U.S., and it may be difficult for those manufacturers to challenge the patents’ validity.

Contributors: Dabney Carr and Robert Angle, Troutman Sanders Intellectual Property Practice

For questions and/or comments, please contact Bryan Haynes, at 804.697.1420 or by email.

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