Perricone, M.D. v. Medicis Pharmaceutical Corp. ( 2005 )

United States Court of Appeals for the Federal Circuit
05-1022, -1023
NICHOLAS V. PERRICONE, M.D.,
Plaintiff-Appellant,
v.
MEDICIS PHARMACEUTICAL CORPORATION,
Defendant-Cross Appellant.
Raphael V. Lupo, McDermott Will & Emery, of Washington, DC, argued for
plaintiff-appellant. With him on the brief were Charles R. Work, Mark G. Davis and
David A. Spenard. Of counsel were Mary C. Chapin and Evan Parke.
William J. McNichol, Jr., Reed Smith LLP, of Philadelphia, Pennsylvania, argued
for defendant-cross appellant. With him on the brief were Tracy Zurzolo Frisch,
Maryellen Feehery and Heather A. Ritch. Of counsel was Charles L. Becker.
Appealed from: United States District Court for the District of Connecticut
Judge Christopher F. Droney
United States Court of Appeals for the Federal Circuit
05-1022, -1023
NICHOLAS V. PERRICONE, M.D.,
Plaintiff-Appellant,
v.
MEDICIS PHARMACEUTICAL CORPORATION,
Defendant-Cross Appellant.
___________________________
DECIDED: December 20, 2005
___________________________
Before RADER, BRYSON, and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge RADER. Concurring in part and dissenting in
part opinion filed by Circuit Judge BRYSON.
RADER, Circuit Judge.
On summary judgment, the United States District Court for the District of
Connecticut, No. 3:99-CV-01820, determined that all of the asserted claims of Dr.
Nicholas V. Perricone’s U.S. Patent Nos. 5,409,693 (the ’693 patent) and 5,574,063
(the ’063 patent) are invalid and, as to the ’693 patent, not infringed. Perricone v.
Medicis Pharm. Corp., 267 F. Supp. 2d 229 (D. Conn. 2003). Dr. Perricone seeks
reversal of those judgments while Medicis Pharmaceutical Corporation cross-appeals
the district court’s refusal to declare the case exceptional under 35 U.S.C. § 285 and to
award Medicis its attorney fees. Because the district court erred in its anticipation
analysis with respect to claims 1-4 and 7 of the ’693 patent, this court reverses and
remands the judgments on those claims of the ’693 patent. This court otherwise affirms
the trial court’s decisions of anticipation based on inherency for the remaining claims of
the ’693 and ’063 patents and its double-patenting analysis with respect to claims 9, 11-
13, 16, 18, and 19 of the ’063 patent. Finally, this court affirms the district court’s denial
of Medicis’ motion under § 285.
I.
Dr. Perricone’s patents claim methods of treating or preventing sunburns (the
’693 patent) and methods of treating skin damage or disorders (the ’063 patent). The
’693 patent issued in 1995, tracing priority back to a filing in 1989. The ’063 patent
issued in 1996, with priority back to the application that resulted in the ’693 patent. The
information added in that continuation-in-part application does not affect this case.
Thus, both patents disclose essentially the same subject matter: treatment or prevention
of various forms of skin damage through the topical application of ascorbic acid (Vitamin
C) in a fat soluble form. See ’693 patent, col. 2, ll. 26-34; ’063 patent, col. 2, ll. 30-36.
Specifically, the patents disclose the topical application of ascorbyl fatty acid ester (e.g.,
ascorbyl palmitate, ascorbyl laurate, ascorbyl myristate, ascorbyl stearate) with a
dermatologically acceptable carrier. See ’693 patent, col. 2, ll. 26-34; ’063 patent, col.
2, ll. 30-36. Because the carrier, as well as the ascorbyl fatty acid ester, is fat soluble, it
can “effectively penetrate skin layers and deliver the active ascorbyl fatty acid ester to
the lipid-rich layers of the skin.” ’693 patent, col. 4, ll. 4-6; ’063 patent, col. 4, ll. 10-12.
Upon reaching the lipid-rich layers of skin, the ascorbyl fatty acid ester produces a
number of beneficial effects ranging from the acceleration of collagen synthesis to the
scavenging of oxygen-containing radicals caused by exposure to damaging ultraviolet
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radiation. See ’693 patent, col. 5, ll. 30-35, col. 6, ll. 35-50; ’063 patent, col. 6, ll. 3-15,
col. 7, ll. 30-45.
In 1999, Dr. Perricone sued Medicis, alleging that Medicis infringed both the ’693
and ’063 patents with its LUSTRA® line of prescription skin depigmenters. Perricone,
267 F. Supp. 2d at 232-33. LUSTRA® is a cream that, with hydroquinone as its active
ingredient, reduces the production of melanin, i.e., the pigment in skin. LUSTRA® also
includes, inter alia, ascorbyl palmitate. Before the district court, Dr. Perricone filed
motions for summary judgment of validity and infringement, and Medicis filed a motion
for partial summary judgment of invalidity of claims 9, 11-13, 16, 18, and 19 of the ’063
patent on the basis of double patenting, and of claims 1-19 of the ’063 patent and
claims 1-4, 7-9, and 13 of the ’693 patent on the basis of anticipation. Id. at 233.
Medicis also filed motions for partial summary judgment of non-infringement, premised
on the invalidity of Dr. Perricone’s asserted claims, and for attorney fees under 35
U.S.C. § 285. Aside from the rejected attorney fees request, the district court granted
Medicis’ motions and denied Dr. Perricone’s. Id. at 249.
The district court’s opinion and the parties’ briefs before this court do not disclose
the disposition of each claim of the ’693 and ’063 patents. The district court’s opinion
appears to invalidate all of the asserted claims of both patents, yet grants summary
judgment of non-infringement only for the ’693 patent. See id. Dr. Perricone’s opening
brief suggests that the district court’s non-infringement ruling applies to the asserted
claims of both patents. Dr. Perricone’s opening brief at 1. Nevertheless, this court need
not determine the correct status of each claim. Rather, this court confines its rulings to
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reversal of a clearly identifiable subset of the’693 claims and trusts the parties to resolve
any uncertainty on remand.
II.
This court reviews a district court’s grant of summary judgment without deference
and a denial of summary judgment for an abuse of discretion, Electromotive Div. of
Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1209 (Fed.
Cir. 2005), drawing all reasonable inferences in favor of the nonmovant. This court
gives due weight to a patent’s presumed validity under 35 U.S.C. § 282 (2000),
requiring an accused infringer to prove invalidity by clear and convincing evidence.
Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1377 (Fed. Cir. 2003).
This court reviews double patenting without deference. Georgia-Pacific Corp. v. U.S.
Gypsum Co., 195 F.3d 1322, 1326 (Fed. Cir. 1999).
Double Patenting
The double patenting doctrine generally prevents a patentee from receiving two
patents for the same invention. Thus, this doctrine polices the proper application of the
patent term for each invention. The proscription against double patenting takes two
forms: statutory and non-statutory. Statutory, or “same invention,” double patenting is
based on the language in § 101 of the Patent Act mandating “a patent” for any new and
useful invention. 35 U.S.C. § 101 (2000); In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir.
1993) (“If the claimed inventions are identical in scope, the proper rejection is under 35
U.S.C. § 101 because an inventor is entitled to a single patent for an invention.”)
(citations omitted). Non-statutory, or “obviousness-type,” double patenting is a judicially
created doctrine adopted to prevent claims in separate applications or patents that do
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not recite the “same” invention, but nonetheless claim inventions so alike that granting
both exclusive rights would effectively extend the life of patent protection. Gerber
Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 686 (Fed. Cir. 1990) (citing In re
Thorington, 418 F.2d 528, 534 (CCPA 1969)). This case involves double patenting in
this latter category.
Claim 1 of the ’693 patent recites:
1. A method for treating skin sunburn comprising
topically applying to the skin sunburn a fatty acid ester of
ascorbic acid effective to solubilize in the lipid-rich layers of
the skin an amount effective to scavenge therefrom free
radicals present as a result of transfer of energy to the skin
from the ultraviolet radiation which produced said sunburn.
’693 patent, col. 7. Meanwhile, claim 9 of the ’063 patent recites:
9. A method for the treatment of skin damaged or
aged by oxygen-containing free radicals or oxidative
generation of biologically active metabolites which comprises
topically applying to affected skin areas a composition
containing an effective amount of an ascorbyl fatty acid ester
in a dermatologically acceptable, fat-penetrating carrier such
that the ester is percutaneously delivered to lipid-rich layers
of the skin.
’063 patent, cols. 8-9. The district court found claim 9 of the ’063 patent invalid under
the non-statutory double patenting doctrine in view of claim 1 of the ’693 patent. In
reaching that conclusion, the district court first identified differences between the two
claims:
(1) claim 9 of the '063 patent teaches a method for treatment
of certain skin disorders, while claim 1 of the ’693 patent
teaches a method for treatment of sunburn; (2) claim 9 of the
’063 patent recites the use of “an effective amount of an
ascorbyl fatty acid ester . . . ,” while claim 1 of the '693
patent teaches applying an ascorbyl fatty acid ester
“effective to solubilize in the lipid-rich layers of the skin an
amount effective to scavenge free radicals present as a
result of the transfer of energy to the skin from the ultraviolet
radiation which produced [the] sunburn”; and (3) claim 9 of
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the ’063 patent recites the use of “a dermatologically
acceptable, fat-penetrating carrier such that the ester is
percutaneously delivered to lipid-rich layers of the skin,”
while the ’693 patent does not explicitly recite the use of a
carrier.
Perricone, 267 F. Supp. 2d at 240. The district court analyzed those distinctions. In the
first place, the district court noted that “sunburn is a species of the genus of skin
disorders” covered by the ’063 patent. Id. Next, consulting the specifications of both
patents, the district court concluded that the claimed effective amount in the ’063 patent
falls within the ranges of effective amounts in the ’693 patent. Finally, the district court
construed the “effective to solubilize” language in claim 1 of the ’693 patent to mean the
same thing as the language in claim 9 of the ’063 patent requiring “a dermatologically
acceptable, fat-penetrating carrier such that the ester is percutaneously delivered to
lipid-rich layers of the skin.” Accordingly, the district court found claim 9 of the ’063
patent invalid for obviousness-type double patenting in view of claim 1 of the ’693
patent.
Claims 11-13 of the ’063 patent all depend from independent claim 9. Thus, the
district court’s analysis of claim 9 applies equally to claims 11-13. Claim 11 includes an
additional limitation specifying a particular range of concentration of the ester. Because
that range substantially overlaps the range in claim 5 of the ’693 patent (dependent on
claim 1 of the ’693 patent), the district court determined that claim 11 of the ’063 patent
is also obvious in view of claim 5 of the ’693 patent. Id. at 242. For claims 12 and 13 of
the ’063 patent, the district court determined that those claims added the same
limitations to independent claim 9 as claims 3 and 4 added to claim 1 of the ’693 patent.
Thus, the district court determined that dependent claims 11-13 fall with claim 9 of the
’063 patent for the above reasons. Id. at 241.
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Independent claim 16 of the ’063 patent includes limitations analogous to those
in independent claim 9. Accordingly, the district court applied the same reasoning for its
double patenting determination of claim 16. Id. at 241-42. The district court paid
special attention to the additional recitation in claim 16 of specific “tocotrienols,” but
determined that those tocotrienols are not patentably distinct from the Vitamin E of claim
7 of the ’693 patent. Finally, the district court determined that claims 18 and 19 of the
’063 patent, which both depend from claim 16 of that patent, are not patentably distinct
from claims 4 and 7.
This court first examines the contention that the claims of the ’063 patent contain
“material differences” from those in the ’693 patent. This “material differences”
argument does not show that the district court erred in its double patenting analysis.
Rather, the district court’s analysis specifically addresses differences between the
claims of the ’693 and ’063 patents. For instance, the district court discussed the
difference between the recitation in the ’063 patent’s claim 9 of “a dermatologically
acceptable fat-penetrating carrier” and claim 1’s recitation of no carrier at all. Thus, the
district court cogently reasoned that, based on the specification, the “effective to
solubilize” language in claim 1 of the ’693 patent means the same thing as the “carrier”
language in claim 9. Thus, the difference disappears.
Likewise, the district court properly resolved the apparent difference between
treatment of various types of skin damage in claims 9 and 16 of the ’063 patent and
treatment of sunburn in claim 1. Sunburn is a species of skin damage. As such, this
court perceives no error in the district court’s determination that the earlier species
renders the later genus claims invalid under non-statutory double patenting. See Eli
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Lilly & Co. v. Barr Labs., Inc. 251 F.3d 955, 971 (Fed. Cir. 2001) (“[This court’s] case
law firmly establishes that a later genus claim limitation is anticipated by, and therefore
not patentably distinct from, an earlier species claim.”) (citations omitted).
Finally, the district court did not misconstrue the genus-species relationship
between claim 16 of the ’063 patent and claim 7 of the ’693 patent. The district court
interpreted the language of claim 16 reciting various tocotrienols, and concluded that it
“refers to certain forms of tocopherols, or Vitamin E.” Perricone, 267 F. Supp. 2d at
238. Thus, the district court did not improperly conclude that a species was obvious in
light of an earlier claim to a genus but correctly concluded that there was no patentable
distinction between the language of claim 16 of the ’063 patent and claim 7 of the ’693
patent. This court finds no error in that analysis.
The district court also considered and correctly rejected the suggestion that
procedures of the United States Patent and Trademark Office (PTO) militate against
double patenting. Specifically, if Dr. Perricone had presented all the claims of the ’693
and ’063 patents to the PTO in a single application, the PTO might have made a
restriction requirement. In other words, the PTO might have separated the claimed
subject matter into different classifications and different inventions. If the PTO had
entered a restriction requirement under that hypothetical situation, 35 U.S.C. § 121would have barred a double patenting rejection. Yes, and if the court had a brother, he
might like buttermilk. In other words, this tortured hypothetical does not correspond to
the record in this case. The various claims were not filed together nor restricted by the
PTO. Thus, in simple terms, 35 U.S.C. § 121 does not rescue Dr. Perricone’s
voluntarily filed continuation-in-part application.
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Finally, and contrary to the suggestion by the district court, the Patent Act and
PTO rules support the filing of a terminal disclaimer even after issuance of the second
patent. See 35 U.S.C. § 253 (2000) (“[A]ny patentee . . . may disclaim or dedicate to
the public the entire term, or any terminal part of the term, of the patent granted . . . .”);
37 CFR § 1.321(a) (incorporating the language of § 253). The district court’s focus on
In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993) (explaining that a terminal
disclaimer can overcome a double patenting “rejection”) seems to have led to its
conclusion that a terminal disclaimer cannot be filed for an issued patent to overcome
invalidity based on double patenting. The commentary from In re Goodman arose in the
context of ex parte prosecution, a setting not applicable to this case. An applicant must
always overcome every rejection to gain issuance of a patent. Accordingly, the pre-
issuance timing requirement of a terminal disclaimer to overcome a double patenting
rejection does not dictate a prohibition on post-issuance terminal disclaimers. A
terminal disclaimer can indeed supplant a finding of invalidity for double patenting. See
Applied Materials, Inv. v. Semiconductor Materials Am., Inc., 98 F.3d 1563, 1577 (Fed.
Cir. 1996) (“For obviousness-type double patenting, [the improper extension of the
statutory term] problem can sometimes be avoided for co-owned patents . . . through
the use of a terminal disclaimer.”). This record, however, does not include any evidence
of a disclaimer even though the district court invalidated the claims over two years ago.
Thus, while Dr. Perricone might still file a terminal disclaimer to overcome prospectively
the double patenting basis for invalidity, this court makes no determination about the
retrospective effect of such a terminal disclaimer.
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Anticipation
A single prior art reference that discloses, either expressly or inherently, each
limitation of a claim invalidates that claim by anticipation. Minn. Mining & Mfg. Co. v.
Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992). Thus, a
prior art reference without express reference to a claim limitation may nonetheless
anticipate by inherency. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002). “Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claims limitations, it anticipates.” Id. (quoting
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
Moreover, “[i]hherency is not necessarily coterminous with knowledge of those of
ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent
characteristics or functioning of the prior art.” Id.; see also Schering Corp. v. Geneva
Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (rejecting the contention that inherent
anticipation requires recognition in the prior art) (citing In re Cruciferous Sprout Litig.,
301 F.3d at 1351; MEHL/Biophile, 192 F.3d at 1366).
The district court determined that U.S. Patent No. 4,981,845 (Pereira) anticipates
claims 1-4, 7-9, and 13 of the ’693 patent, and claims 1-19 of the ’063 patent.
Perricone, 267 F. Supp. at 243. Pereira teaches a cosmetic composition for topical
application and discloses various ingredients in that composition, including skin benefit
ingredients, emollients, emulsifiers, and thickeners. See Pereira, cols. 1-2. In addition
to listing examples, Pereira discloses eight distinct example compositions with specific
concentrations of ingredients. Id. at cols. 8-12. Pereira identifies the disclosed
compositions only briefly, identifying them as “suitable for topical application to the skin
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or hair.” Pereira, col. 1, ll. 6-8. The district court concluded that Pereira’s disclosed use
anticipates Dr. Perricone’s claims because Pereira’s disclosed compositions include all
the various ingredients in the concentrations claimed by Dr. Perricone. Thus, according
to the district court, the topical application of Pereira’s compositions would necessarily
yield Dr. Perricone’s claimed skin benefits. On appeal, Dr. Perricone argues that: (1)
Pereira’s disclosed skin benefit ingredients include ascorbyl palmitate among many
others, and so Pereira’s disclosure does not anticipate the specific claimed use of
ascorbyl palmitate; (2) Pereira’s disclosed range of concentration of its skin benefit
ingredient only partially overlaps with Dr. Perricone’s claimed range; and (3) Pereira
does not disclose any benefit directed to skin sunburn, or any of the other specific skin
disorders, as claimed by Dr. Perricone.
With respect to its skin benefit ingredient, Pereira discloses “from 0.01 to 20% by
weight of a skin benefit ingredient chosen from: . . . Ascorbyl palmitate [and] Tocopherol
[i.e., Vitamin E] . . . .” Pereira, col. 1, ll. 55-68. In addition to those two identified
ingredients, Pereira lists an additional twelve ingredients. See id. In total, Pereira
teaches a total of fourteen skin benefit ingredients. This court rejects the notion that
one of these ingredients cannot anticipate because it appears without special emphasis
in a longer list. To the contrary, the disclosure is prior art to the extent of its enabling
disclosure. See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6
(Fed. Cir. 2003) (“The anticipation analysis asks solely whether the prior art reference
discloses and enables the claimed invention, and not how the prior art characterizes
that disclosure or whether alternatives are also disclosed.”) (citing Celeritas Techs. v.
Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)).
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In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994), is not inconsistent with this
anticipation analysis. In the first place, In re Baird involved obviousness, not
anticipation. Baird observes that “disclosure of millions of compounds does not render
obvious a claim to three compounds.” 16 F.3d at 383 (emphasis added). Baird’s
reasoning, relevant to obviousness, does not apply to Pereira’s disclosure of a handful
of different compositions, the use of one of which anticipates Dr. Perricone’s claims.
While other opinions state that disclosure of a broad genus does not necessarily
specifically disclose a species within that genus, see, e.g., Corning Glass Works v.
Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1262 (Fed. Cir. 1989), this axiomatic
proposition also does not rescue Dr. Perricone’s claims. In this case, the prior art does
not merely disclose a genus of skin benefit ingredients without disclosing the particular
claimed ingredient. Rather Pereira specifically discloses ascorbyl palmitate. That
specific disclosure, even in a list, makes this case different from cases involving
disclosure of a broad genus without reference to the potentially anticipating species.
Thus, these cases do not alter the district court’s correct anticipation reasoning.
Pereira’s disclosed range of concentration also does not exactly correspond to
Dr. Perricone’s claimed range. Pereira’s disclosure nonetheless discloses and
anticipates Dr. Perricone’s particular claimed “effective amount” ranges. Dr. Perricone’s
claims recite a number of different ranges associated with the fatty acid ester. Those
claimed ranges vary in breadth from an “effective” amount in claim 1 to particular
specific ranges in other claims (e.g., “up to 10% by weight,” ’063 patent, claim 2; “from
about 0.025% to about 5% by weight,” ’063 patent, claim 3; “from about 0.025% to
about 10% by weight,” ’063 patent, claim 22). Pereira discloses a range of
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concentration “from 0.01 to 20% by weight.” Pereira, col. 1, ll. 55-68. As the district
court correctly noted, Pereira’s range entirely encompasses, and does not significantly
deviate from, Dr. Perricone’s claimed ranges. Thus, this court sustains the district
court’s reading of Pereira’s effective amount disclosure. See Atlas Powder Co. v. Ireco
Inc., 190 F.3d at 1342, 1346 (Fed. Cir. 1999) (“[W]hen a patent claims a chemical
composition in terms of ranges of elements, any single prior art reference that falls
within each of the ranges anticipates the claim.”) (citing Titanium Metals Corp. v.
Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)).
With respect to the particular claimed skin benefits, the district court reasoned
that “Pereira will inherently function in [the claimed beneficial manner] when topically
applied to the skin.” Perricone, 267 F. Supp. 2d at 248. Thus, the district court
ultimately based its anticipation analysis on inherency. “In general, a limitation or the
entire invention is inherent and in the public domain if it is the ‘natural result flowing
from’ the explicit disclosure of the prior art.” Schering, 339 F.3d at 1379 (citing Eli Lilly
& Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir. 2001); In re Kratz, 562 F.2d
1169, 1174 (CCPA 1979)). In some cases, the inherent property corresponds to a
claimed new benefit or characteristic of an invention otherwise in the prior art. In those
cases, the new realization alone does not render the old invention patentable. See
Atlas Powder, 190 F.3d at 1347 (“[T]he discovery of a previously unappreciated
property of a prior art composition, or of a scientific explanation for the prior art’s
function, does not render the old composition patentably new to the discoverer.”);
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir.
2001) (explaining that newly discovered results of known processes are not patentable
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because those results are inherent in the known processes). Thus, when considering a
prior art method, the anticipation doctrine examines the natural and inherent results in
that method without regard to the full recognition of those benefits or characteristics
within the art field at the time of the prior art disclosure.
Dr. Perricone’s five asserted independent claims recite:
[Claim 1, ’693 patent] A method for treating skin
sunburn comprising topically applying to the skin sunburn a
fatty acid ester of ascorbic acid . . . .
[Claim 8, ’693 patent] A method for preventing
sunburn damage to exposed skin surfaces, comprising
topically applying to said skin surfaces . . . .
[Claim 1, ’063 patent] A method for the treatment of
skin disorders which arise because of depleted or inhibited
collagen synthesis which comprises topically applying to
affected skin areas . . . .
[Claim 9, ’063 patent] A method for the treatment of
skin damaged or aged by . . . which comprises topically
applying to affected skin areas a composition containing
....
[Claim 16, ’063 patent] A method for the treatment of
damaged or aging skin and epithelial tissue disorders . . .
said treatment comprising topically applying to affected
tissue areas the combination of . . . .
Thus, Dr. Perricone’s independent claims recite particular skin benefits together with
methods of achieving those benefits (i.e., topically applying a particular compound).* If
*
This court notes that while the various claimed beneficial uses appear to
be recited in the preambles of Dr. Perricone’s claims, the district court construed those
claims as being limited by their preambles, see Perricone, 267 F. Supp. 2d at 237(determining the scope of various preamble terms), and neither party seems to have
challenged that construction. This court agrees that the district court’s construction was
correct.
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Pereira discloses the very same methods, then the particular benefits must naturally
flow from those methods even if not recognized as benefits at the time of Pereira’s
disclosure. Thus, Pereira anticipates if its disclosure of “topical application” satisfies the
application step in Dr. Perricone’s various asserted claims.
Claim 1 of the ’693 patent, from which claims 2-4 and 7 ultimately depend,
specifically recites application of the fatty acid ester to “skin sunburn.” This claim term
raises a different problem. The issue is not, as the dissent and district court imply,
whether Pereira’s lotion if applied to skin sunburn would inherently treat that damage,
but whether Pereira discloses the application of its composition to skin sunburn. It does
not. This court explained in Catalina Marketing International, Inc. v. Cool Savings.com,
Inc. that a patent to an apparatus does not necessarily prevent a subsequent inventor
from obtaining a patent on a new method of using the apparatus. 289 F.3d 801, 809
(Fed. Cir. 2002). New uses of old products or processes are indeed patentable subject
matter. See 35 U.S.C. § 101 (2000) (identifying as patentable “any new and useful
improvements” of a process, machine, manufacture, etc.); In re King, 801 F.2d 1324,
1326 (Fed. Cir. 1986) (principles of inherency do not prohibit a process patent for a new
use of an old structure). That principle governs in this case as well.
Claim 1 of the ’693 patent recites a new use of the composition disclosed by
Pereira, i.e., the treatment of skin sunburn. The district court’s inherent anticipation
analysis for this claim contains a flaw. The disclosed use of Pereira’s lotion, i.e., topical
application, does not suggest application of Pereira’s lotion to skin sunburn. In other
words, the district court’s inherency analysis goes astray because it assumes what
Pereira neither disclosed nor rendered inherent. Because Pereira does not disclose
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topical application to skin sunburn, this court reverses the district court’s holding that
Pereira anticipates claims 1-4 and 7 of the ’693 patent.
Like the district court, the dissent seems to ignore, or at least dismiss as “not
substantial[],” the distinction between Dr. Perricone’s claimed method and Pereira’s
disclosed method. Thus, the dissent characterizes both methods the same way:
“Pereira describes not only the same product that is claimed in the sunburn patent, but
also the same method of using it, i.e., topically applying it to the skin in an amount
necessary to have beneficial effects on the skin.” Unfortunately, the dissent can make
that statement only by dismissing the explicit language of Dr. Perricone’s claimed
method: “applying to the skin sunburn.” ’693 patent, claim 1. Skin sunburn is not
analogous to skin surfaces generally. Thus, there is an important distinction between
topical application to skin for the purpose of avoiding sunburn, and the much narrower
topical application to skin sunburn. That distinction highlights the flaw in the dissent’s
knee brace hypothetical, which suggests that a particular prevention method necessarily
anticipates a treatment method. To use a more apt analogy, the disclosure that a
sunburn can be prevented by wearing a hat clearly does not anticipate a claim to the
discovery that one can treat an existing sunburn by putting on a hat. The dissent
attempts to bolster its analogy by comparing the mechanism underlying its knee brace
analogy to Dr. Perricone’s invention. With that comparison, the dissent drifts even
farther from the facts of this case. The alleged anticipating reference here is Pereira,
not Dr. Perricone’s own teachings. Pereira is silent about any sunburn prevention or
treatment benefits, not to mention the mechanisms underlying such uses. If Pereira did
teach sunburn prevention, as well as the mechanism behind that prevention, those
05-1022,-1023 16
teachings might suggest that Dr. Perricone’s sunburn treatment claims would have been
obvious. However, those unrealized possibilities do not alter the analysis in this case
where Pereira does not disclose topical application to skin sunburn.
Unlike claim 1, claim 8 of the ’693 patent, from which claims 9 and 13 ultimately
depend, merely requires application of the composition to exposed skin surfaces.
Because all skin surfaces are susceptible to sunburn damage, and because one can
only realistically apply a composition to a skin surface when that surface is exposed,
Pereira’s “topical application” encompasses the application step of claim 8. Thus, the
district court correctly determined that Pereira’s disclosure of the topical application of
the same composition necessarily anticipates claims 8, 9, and 13 of the ’693 patent.
Claim 1 of the ’063 patent, from which claims 2-8 of that patent ultimately
depend, recites application to “affected skin areas.” That claim further recites that those
skin areas suffer from “depleted or inhibited collagen synthesis.” ’063 patent, claim 1.
The specification of the ’063 patent, meanwhile, explains that such damage results
from, inter alia, “the natural aging process.” ’063 patent, col. 1, ll. 46-50. Because all
skin is a victim of that process, claim 1 of the ’063 patent ultimately claims merely the
topical application of the recited composition. Likewise, claim 9 of the ’063 patent, from
which claims 10-15 of that patent ultimately depend, recites application of the
composition to “affected skin areas” where those areas are further identified as being
“aged.” As such, because all skin ages, the application step of claim 9 merely requires
application of the composition to skin. Similarly, the “affected tissue areas” of claim 16
of the ’063 patent, from which claims 17-25 ultimately depend, are identified in that
claim as “aging skin.” Thus, as with claims 1 and 9 of the ’063 patent, claim 16 claims
05-1022,-1023 17
merely the topical application of the recited composition. Because Pereira discloses the
very same composition and teaches its topical application, the district court correctly
applied the inherency doctrine. Using the same composition claimed by Dr. Perricone
in the same manner claimed by Dr. Perricone naturally results in the same claimed skin
benefits.
In an effort to support the district court’s invalidity ruling on other grounds,
Medicis has directed this court’s attention to a number of other references that Medicis
argues anticipates Dr. Perricone’s claims. This court declines to consider grounds for
invalidity not relied on by, and not appealed from, the district court.
Infringement
Recognizing that invalidity is an affirmative defense to infringement, the district
court granted Medicis’ motion for summary judgment of non-infringement of the ’693
patent. Perricone, 267 F. Supp. 2d at 248-49. The district court likewise denied Dr.
Perricone’s motion for summary judgment of infringement. Because it reverses the
district court’s grant of summary judgment on claims 1-4 and 7 of the ’693 patent, this
court also vacates the district court’s summary judgment of non-infringement on those
claims.
Attorney Fees
In the cross-appeal, Medicis challenges the district court’s denial of its motion for
attorney fees under § 285. Medicis asks this court either to remand on the exceptional
case question or to “declare the case exceptional without further proceedings.” Medicis’
opening brief at 64. This court declines that invitation.
05-1022,-1023 18
An award of attorney fees under 35 U.S.C. § 285 involves a two-part
determination. First, a district court must determine whether the prevailing party has
proven an exceptional case by clear and convincing evidence. Forest Labs., Inc. v.
Abbott Labs., 339 F.3d 1324, 1327 (Fed. Cir. 2003) (citing Ruiz v. A.B. Chance Co., 234
F.3d 654, 669 (Fed. Cir. 2000)). This court reviews an exceptional case finding for clear
error. Id. at 1328. Second, if the district court finds the case exceptional, it must then
determine whether an award of attorney fees is appropriate. Id. This court reviews that
determination for an abuse of discretion. Id. (citing Cybor Corp. v. FAS Techs., 138
F.3d 1448, 1460 (Fed. Cir. 1998) (en banc)). As this court explained in Frank’s Casing
Crew v. Weatherford International, trial judges enjoy discretion to award attorney fees
for good reason. 389 F.3d 1370, 1379 (Fed. Cir. 2004). “After presiding over the
preparation and trial of the case, the trial judge can best weigh the relevant
considerations, such as the closeness of the case, the tactics of counsel, the flagrant or
good faith character of the parties’ conduct, and any other factors contributing to
imposition of punitive sanctions or to fair allocation of the burdens of litigation.” Id.(citing Modine Mfg. Co. f. Allen Group Inc., 917 F.2d 538, 543 (Fed. Cir. 1990); S.C.
Johnson & Son, Inc. v. Carter-Wallace, Inc., 781 F.2d 198, 201 (Fed. Cir. 1986)). This
case exhibits those considerations.
Medicis’ arguments appear to focus on the timing and content of various expert
reports proffered by Dr. Perricone, the propriety of various responses by Dr. Perricone
to Medicis’ requests for admissions, and demands made by Dr. Perricone during
settlement negotiations. While the timing and content of some of those documents
might be questionable, Medicis points to nothing establishing that the district court
05-1022,-1023 19
committed clear error regarding whether this case is exceptional. Moreover, even if this
court determined that this case should have been declared exceptional, the district
court’s failure to award attorney fees would not rise to an abuse of discretion given that
court’s familiarity with the various relevant details of Dr. Perricone’s conduct in this
case.
CONCLUSION
This court affirms the district court’s summary judgment of invalidity of claims 1-
19 of the ’063 patent and claims 8, 9, and 13 of the ’693 patent. However, because the
district erred in its anticipation analysis of claims 1-4 and 7 of the ’693 patent, this court
reverses the district court’s summary judgment of invalidity as to those claims.
Moreover, this court vacates the district court’s summary judgment of non-infringement
of claims 1-4 and 7 of the ’693 patent, but affirms that summary judgment as to the
remaining claims in that patent. Finally, this court affirms the district court’s denials of
Medicis’ motion for attorney fees under 35 U.S.C. § 285. This court remands for further
proceedings.
COSTS
Each party shall bear its own costs.
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART and REMANDED
05-1022,-1023 20
United States Court of Appeals for the Federal Circuit
05-1022,-1023
NICHOLAS V. PERRICONE, M.D.,
Plaintiff-Appellant,
v.
MEDICIS PHARMACEUTICAL CORPORATION,
Defendant-Cross Appellant.
BRYSON, Circuit Judge, concurring in part and dissenting in part.
I concur in most aspects of the court’s opinion, including the portions upholding
the district court’s ruling that claims 1-19 of the “skin disorder” patent, U.S. Patent No.
5,574,063, and claims 8, 9, and 13 of the “sunburn” patent, U.S. Patent No. 5,409,693,are anticipated by U.S. Patent No. 4,981,845 (“the Pereira patent”). I dissent, however,
from the portion of the judgment holding that the Pereira patent does not anticipate
claims 1-4 and 7 of the sunburn patent. In my view, the differences between the claims
that the court invalidates and those that it holds not to be invalid do not justify a
difference in outcome. The written description of the sunburn patent is identical to the
pertinent portions of the written description of the skin disorder patent in all material
respects. The only significant difference between the two patents for present purposes
is that the sunburn patent claims methods for treating and preventing sunburn
comprising the topical application of the composition described in the specification,
while the skin disorder patent claims a method for treating skin disorders comprising the
topical application of the same composition. Moreover, the only difference between the
claims of the sunburn patent that this court invalidates and those that it upholds is that
the former recite methods for preventing sunburn while the latter recite methods for
treating sunburn. The differences between the sunburn and the skin disorder patents,
and among the claims of the sunburn patent, simply highlight inherent features of the
compositions that are disclosed both in the common written description of the two
patents in suit and in the Pereira patent. Under our precedents, those differences do
not suffice to avoid anticipation.
Claim 1 of the sunburn patent recites:
A method for treating skin sunburn comprising topically applying to
the skin sunburn a fatty acid ester of ascorbic acid effective to solubilize in
the lipid-rich layers of the skin an amount effective to scavenge therefrom
free radicals present as a result of transfer of energy to the skin from the
ultraviolet radiation which produced said sunburn.
Dependent claims 2-4 and 7 recite a method for treating skin sunburn in which
the fatty acid ester of ascorbic acid is topically applied to the skin in the form of a
composition including a dermatologically acceptable carrier (claim 2), in which the fatty
acid ester of ascorbic acid is selected from a group including ascorbyl palmitate (claim
3), in which the fatty acid ester of ascorbic acid is ascorbyl palmitate (claim 4), and in
which the composition includes Vitamin E (claim 7). Independent claim 8 and
dependent claims 9 and 13 are similar to claims 1, 2, and 7, except that they recite a
method for preventing sunburn damage to exposed skin.
In explaining the effectiveness of the claimed method, the sunburn patent states:
The effectiveness of the ascorbyl fatty acid esters in the treatment
of . . . radiation-induced skin damage . . . can be postulated as resulting
from the anti-oxidant properties of ascorbic acid per se, which properties
are retained to a high degree in the ascorbyl fatty acid ester form, together
05-1022,-1023 2
with the fact that the ascorbyl fatty acid ester form is capable of being
delivered in an effective manner.
Sunburn patent, col. 6, ll. 35-43. The patent further explains that “when solubilized in
the lipid-rich layers of the skin, the fatty acid ester form of ascorbic acid is capable of
scavenging free oxygen-containing radicals, neutralizing other reactive oxidants
released extracellularly and intracellularly, and either interfering with or minimizing
oxidative generation of metabolites . . . .” Id. col. 6, ll. 43-47. The patent describes the
invention as one
which involves the topical application of fat-soluble fatty acid esters of
ascorbic acid . . . . By virtue of the fat-solubility of these fatty acid esters
and the further enhancement of this solubility via admixture with fat-
penetrating carriers, the active ascorbic acid can be effectively
percutaneously delivered to lipid layers so as to bring about these effects
and actions . . . .
Id. col. 6, ll. 50-63.
The Pereira patent discloses a composition containing each of the components
recited in the sunburn patent, and in amounts falling within the same range. In
addition, the Pereira patent discloses that the emulsion of the invention comprises “a
selected skin benefit ingredient, a special emulsifier and an emollient oil,” which is
effective for delivering the skin benefit agent “to subcutaneous regions of the skin.”
Pereira patent, col. 1, ll. 14-15; id. col. 2, ll. 13-14. Among the skin benefit ingredients
listed in the Pereira patent is ascorbyl palmitate. Pereira further discloses a number of
substances for use as the emollient ingredient, including lethicin. Id. col. 4, ll. 67-68.
The evidence before the district court established that the Pereira patent
discloses topical application of the same substance that is claimed in the sunburn
patent, with the same results. Thus, the evidence showed that certain of the skin
05-1022,-1023 3
benefit ingredients of Pereira, including ascorbyl palmitate, operate to benefit the skin
by scavenging free radicals. In addition, the evidence showed that lecithin is a
dermatologically acceptable carrier that is able to “solubilize the lipid-rich layers of the
skin,” as required by the sunburn patent. And the concentration levels of the skin
benefit ingredients of Pereira encompass the levels that the sunburn patent asserts are
effective in treating and preventing sunburn.
To be sure, Pereira does not expressly refer to the use of the disclosed
composition to treat or prevent sunburn. As the district court noted, however, those
benefits are inherent in the topical application of the composition claimed in Pereira.
The fact that Pereira does not assert that the emulsion is effective in preventing or
treating sunburned skin does not avoid anticipation of the sunburn patent, as long as
those benefits are the natural result of the normal use of the Pereira emulsion. See
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999) (prior art
article anticipates because it describes a process that necessarily performs the claimed
process; “where . . . the result is a necessary consequence of what was deliberately
intended, it is of no consequence that the article’s authors did not appreciate the
results”); Atlas Powder Co. v. Ireco, 190 F.3d 1342, 1347 (Fed. Cir. 1999) (“Under the
principles of inherency, if the prior art necessarily functions in accordance with, or
includes, the claimed limitations, it anticipates.”); In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986), quoting In re Ackenbach, 45 F.2d 437, 439 (CCPA 1930) (“if a previously
patented device, in its normal and usual operation, will perform the function which an
appellant claims in a subsequent application for process patent, then such application
for process patent will be considered to have been anticipated by the former patented
05-1022,-1023 4
device”). Although Dr. Perricone may have discovered that among the skin benefits of
the composition disclosed by Pereira are the prevention and treatment of sunburn, the
discovery of a new property of the Pereira composition, when used in accordance with
its normal application, is not a sufficient basis for avoiding anticipation. See In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1350-51 (Fed. Cir. 2002) (“Brassica has done
nothing more than recognize properties inherent in certain prior art sprouts . . . . While
Brassica may have recognized something quite interesting about those sprouts, it
simply has not invented anything new.”); EMI Group, N. Am., Inc. v. Cypress
Semiconductor Corp., 268 F.3d 1342, 1349 (Fed. Cir. 2001) (“The discovery of a
previously unappreciated property of a prior art composition . . . does not render the old
composition patentably new to the discoverer.”); Atlas Powder, 190 F.3d at 1349(“discovery of an inherent property of the prior art [does] not [constitute] the addition of a
novel element” and therefore does not serve as patentable subject matter).
This is not a case in which the patentee is claiming a method that consists of a
new way of using a previously known product in order to achieve a new result. The
Supreme Court long ago explained that “if an old device or process be put to a new use
which is not analogous to the old one, and the adaptation of such process to the new
use is of such a character as to require the exercise of inventive skill to produce it, such
new use will not be denied the merit of patentability.” Ansonia Brass & Copper Co. v.
Elec. Supply Co., 144 U.S. 11, 18 (1892). Importantly, however, the Court qualified that
rule by adding that “the application of an old process or machine to a similar or
analogous subject, with no change in the manner of application and no result
substantially distinct in its nature, will not sustain a patent even if the new form of result
05-1022,-1023 5
had not before been contemplated.” Id.; see also Brown v. Piper, 91 U.S. 37, 41 (1875)
(prior art patent for a “corpse preserver” anticipated method for preserving fish and
meats that used the same steps; Court held that the new method “was simply the
application by the patentee of an old process to a new subject . . . . The thing was
within the circle of what was well known before, and belonged to the public. No one
could lawfully appropriate it to himself, and exclude others from using it in any usual
way for any purpose to which it may be desired to apply it.”).
The majority accurately describes that governing principle of law when it states:
“If Pereira discloses the very same methods, then the particular benefits must naturally
flow from those methods even if not recognized as benefits at the time of Pereira’s
disclosure.” That principle, however, leads me to a conclusion different from the one
reached by the majority, at least as to the sunburn treatment claims. In my view, the
method of using the composition recited in the sunburn patent is not substantially
different from the “skin benefit” use described by Pereira. The prevention and treatment
of sunburn therefore do not qualify as “new uses” of the composition so as to avoid
anticipation. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809-
10 (Fed. Cir. 2002) (stating, for illustration, that a claimed use of shoe polish to repel
water on shoes does not constitute a “new use” of the prior art polish, although a
claimed use of the shoe polish to grow hair would so qualify).
Pereira describes not only the same product that is claimed in the sunburn
patent, but also the same method of using it, i.e., topically applying it to the skin in an
amount necessary to have beneficial effects on the skin. Dr. Perricone’s contribution is
simply to recognize that among those skin benefits is the prevention and treatment of
05-1022,-1023 6
sunburn. That identification of a new subset of a previously known property is not
entitled to patent protection.
While the majority applies that principle to the sunburn prevention and skin
disorder claims, it does not apply the same principle to the sunburn treatment claims,
even though those claims recite the same composition and process as are disclosed in
Pereira and recited in Dr. Perricone’s other claims. Yet, to use the majority’s language,
the treatment of sunburned skin is every bit as much a “particular benefit[ ] that must
naturally flow from [Pereira’s] methods” as the prevention of sunburn and the treatment
of skin disorders. Under the majority’s test, the sunburn treatment claims should
therefore be anticipated by Pereira just as much as the sunburn prevention claims and
the skin disorder treatment claims.
The majority distinguishes the prevention claims of the sunburn patent from the
treatment claims of that patent by stating that because “all skin surfaces are susceptible
to sunburn damage, and because one can only realistically apply a composition to a
skin surface when that surface is exposed, Pereira’s ‘topical application’ encompasses
the application step of claim 8” of the sunburn patent. But precisely the same reasoning
applies to the sunburn treatment claims. The majority seems to attach significance to
the notion that topical application of Pereira’s emulsion always prevents sunburn,
because all skin is subject to sunburn, but that it does not always treat sunburn,
because not all skin is sunburned and in need of treatment. That distinction, however,
does not stand up: the fact that the sunburn treatment function is pertinent to only a
subset of users of the Pereira method (i.e., those already suffering from sunburn) does
not mean that Pereira does not anticipate the treatment claims.
05-1022,-1023 7
Topical application of the Pereira emulsion results in scavenging oxygen-
containing free radicals and neutralizing reactive oxidants, whether the skin is
sunburned or not. Thus, the effect that underlies both the prevention and treatment of
sunburn is present in all cases of topical application of the Pereira composition. For that
reason, Pereira anticipates not only the skin disorder and sunburn prevention claims,
but also the sunburn treatment claims, which are based on the same underlying
chemical processes. To illustrate the point, if it were discovered that using a particular
kind of knee brace that was long worn by athletes to provide stability and thus minimize
the effect of ligament injuries would also facilitate the treatment of cartilage damage and
protect against further cartilage damage, that subsequent discovery would not give rise
to a patentable invention. Moreover, it surely would not be the case that the use of the
brace to prevent cartilage damage would be anticipated, but the use of the brace to
treat cartilage damage would not, on the ground that all knees are subject to cartilage
damage, but only some knees already have it.
The majority illustrates its distinction between sunburn treatment and sunburn
prevention with its own analogy, arguing that the prior use of a hat to prevent sunburn
would not anticipate the use of a hat to treat sunburn. Yet this analogy is inapt because
a hat prevents sunburn by a mechanism, i.e., shade, that does not treat sunburn. In
contrast, the mechanism by which a knee brace minimizes the effects of ligament injury,
i.e., enhanced stability, is the same mechanism that facilitates treatment of cartilage
damage and also prevents further cartilage damage. The same is true here, where the
same chemical process treats and prevents sunburned skin.
05-1022,-1023 8
Furthermore, the majority’s distinction between the sunburn prevention claims,
which the majority invalidates, and the sunburn treatment claims, which the majority
upholds, is inconsistent with its invalidation of all the asserted claims of the skin disorder
patent. The majority distinguishes the sunburn treatment claims by focusing on the
applicability of the skin damage patent to aging skin, and suggests that “all skin is a
victim of [the natural aging process].” The skin damage patent, however, addresses “[a]
wide variety of skin diseases and skin conditions in which the skin has undergone some
form of accelerated aging.” Skin damage patent, col.1, ll. 26-28. Like sunburn, those
diseases and conditions are not found in all persons. The majority’s distinction appears
to rest upon its assertion that “[s]kin sunburn is not analogous to skin surfaces
generally.” However, there appears to be no greater specificity in topical application to
skin that is sunburned than there is in topical application to skin that is diseased or skin
that has suffered from accelerated aging. Accordingly, I submit that the majority’s
distinction between the treatment claims and the prevention claims is not a satisfactory
ground for decision in this case.
This court’s decisions in Rapoport v. Dement, 254 F.3d 1053 (Fed. Cir. 2001),
and MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362 (Fed. Cir. 1999), are
not at odds with the district court’s conclusion in this case. Each of those cases
involved a prior art method that was directed at an objective different from the objective
of the claimed invention. In Rapoport, the prior art was a method for treating anxiety by
administering a certain dosage of a particular drug three times a day, while the invention
was a method for treating sleep apnea by administering a larger dosage of the same
drug at the time of sleep. In MEHL/Biophile, the prior art was a method of using a laser
05-1022,-1023 9
to remove tattoos by aligning the laser over the pigmented skin, while the claimed
invention was a method of using a laser to remove hair by aligning the laser over hair
follicles. Although in each case practicing the prior art method might sometimes have
the effect that was the objective of the claimed invention, the court held in each case
that practicing the prior art method would not inherently have that effect. Thus, even if
the prior art method for tattoo removal were used on skin having hair, it would not
anticipate the claimed method in MEHL/Biophile because the prior art method did not
dictate that the laser be aligned with hair follicles. And even if the prior art treatment of
anxiety were used on patients suffering from sleep apnea, it would not anticipate the
claimed method in Rapoport because the timing of drug administration and the dosages
employed in the two treatments were different.
In this case, by contrast, topical application of the Pereira composition to normal
skin inherently produces the same chemical processes that underlie the sunburn
prevention claims, including scavenging free-oxygen-containing radicals and
neutralizing other reactive oxidants. Topical application of the Pereira composition to
sunburned skin inherently produces the same processes, which also underlie the
sunburn treatment claims. Because the chemical processes that have the effect of
treating and preventing sunburn are inherent consequences of the normal use of the
Pereira composition, Pereira anticipates all the claims of the sunburn patent, just as it
anticipates all the claims of the skin disorder patent.
In substance, the sunburn patent simply selects particular ingredients from
among the small class of ingredients identified in Pereira and identifies specific benefits
falling within the broader characterization of benefits identified in Pereira. To hold that
05-1022,-1023 10
the treatment claims of the sunburn patent are not anticipated by Pereira is to permit an
inventor to secure patent rights to an existing invention merely upon identifying an
inherent benefit of the prior art that had not previously been specifically identified, but
that falls within a broader class of benefits already identified in the prior art. Because
that result is contrary to the law of inherent anticipation as I understand it, I respectfully
dissent from the portion of the court’s judgment relating to the treatment claims of the
sunburn patent.
05-1022,-1023 11