Preview:

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND SOUTHERN DIVISION STAR SCIENTIFIC, INC., Plaintiff, v. Civil Action No. AW-01-1504 R.J. REYNOLDS TOBACCO COMPANY Defendant.

MEMORANDUM OPINION Several motions are pending before the Court: (1) Defendant R.J. Reynolds Tobacco Company's Motion to Dismiss Complaint [8-1]; (2) Plaintiff Star Scientific's Motion for Leave to File Supplemented Complaint [9-1]; (3) Defendant R.J. Reynolds Tobacco Company's Motion to Strike Allegations from Plaintiff's Complaint [7-1]; and (4) Plaintiff Star Scientific's Motion to Compel Rule 26(f) Conference [211]. Both the Plaintiff and the Defendant have filed Requests for Hearing [24-1; 26-1] on the various pending motions. The Court has carefully reviewed the pleadings and applicable law, and has determined that no hearing is necessary. See D. Md. R. 105(6). As explained below, the Court finds that it has subject matter jurisdiction over this case. Thus, the Court denies Defendant's Motion to Dismiss, and grants Plaintiff's Motion for Leave to File Supplemented Complaint. In addition, the Court denies Defendant's Motion to Strike Allegations, and grants Plaintiff's Motion to Compel a Rule 26(f) Conference. BACKGROUND Plaintiff Star Scientific ("Star") is a Delaware corporation with offices and various facilities in Maryland and Virginia. Plaintiff Star is the exclusive licensee of United States Patent No. 6,202,649 ("the 1

`649 Patent"), which was issued on March 20, 2001, to Mr. Jonnie R. Williams, as inventor, and Regent Court Technologies, as assignee. Regent Court Technologies has granted to Star an exclusive license of all rights in the `649 patent, including the right to bring legal action to enforce the patent. Defendant R.J. Reynolds Tobacco Company ("RJRT") is a New Jersey corporation with its principal place of business in North Carolina. RJRT manufactures, distributes, and sells tobacco products throughout the United States. Tobacco farmers grow and cure tobacco and then sell the cured tobacco to RJRT for various commercial purposes. As relates to the `649 Patent, Star's invention controls tobacco curing conditions in order to substantially prevent the formation of tobacco-specific nitrosamines ("TSNAs") during the tobacco curing process. TSNAs are believed to be among the most active cancer-causing agents in tobacco. Star's patented processes result in cured tobacco that contains very low and often undetectable levels of TSNAs. Star alleges that on December 2, 1999, upon learning of the potential breakthrough offered by the `649 Patent, RJRT announced that it would begin contracting directly with tobacco growers for the purchase of "low-TSNA" tobacco during the 2000 tobacco growing season. Star next alleges that RJRT entered into long-term contracts with a number of tobacco growers for the purchase of "low-TSNA" tobacco, and that the contracts required growers to retrofit their curing barns with what RJRT termed "heat exchanger" technology. Star further alleges that the "heat exchanger" process implemented in the field practiced Star's proprietary process and infringed the `649 Patent. Finally, Star alleges that after learning that the `649 Patent was issued, RJRT continued to encourage and require its farmers and others associated with tobacco growers to use and adopt the "heat exchanger" technology, thereby infringing on Star's `649 Patent. Star has brought suit against RJRT based on three patent infringement claims. First, under 35 2

U.S.C.

Download Star Scientific, Inc. v. R.J. Reynolds Tobacco Company.pdf

Maryland Law