Rader and Bryson spar over anticipation of method of use claims

PerriconeIIPerricone v. Medicis Pharmaceutical (Fed. Cir. 2005)

This case involved two patents (the ‘693 and the ‘063) on treating skin damage or disorders–particularly sunburn–by the application of ascorbyl fatty acid ester (vitamin C in a fat soluble form). On summary judgment, the district court determined that the asserted claims of both patents were invalid due to anticipation and double-patenting. On appeal, the CAFC affirmed the district court’s decisions in all respects but one: according to the majority, the district court erred when it determined that four claims to methods of treating “skin sunburn” by the application of ascorbyl fatty acid ester were anticipated by a prior art patent (“Pereira”) disclosing ascorbyl fatty acid ester as “suitable for topical application to the skin or hair.” Judge Rader wrote the opinion for the court, which Judge Linn joined, while Judge Bryson dissented.

Claim 1 of the ‘693 patent is representative of the “skin sunburn” claims at issue:

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.

Pereira disclosed cosmetic compositions for topical application, including the recited ascorbic acid composition, and identified the compositions as “suitable for topical application to the skin or hair.” The district court determined that Pereira anticipated Perricone because “Pereira will inherently function in [the claimed beneficial manner] when topically applied to the skin.”

According to Judge Rader, however, “The issue is not, as the dissent and the 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.” Judge Rader continued: “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.”

Judge Rader’s majority opinion distinguished claim 8 of the ‘693 patent, directed to a method for “preventing sunburn damage,” from claim 1, finding it anticipated by Pereira. According to Judge Rader, claim 8 “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.”

Judge Bryson dissented, writing, “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.” Judge Bryson explained: “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.”

The key point, according to Judge Bryson, was that the mechanism underlying both the prevention and treatment of sunburn by ascorbyl fatty acid ester is the same. According to Judge Bryson, “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.” Accordingly, in Judge Bryson’s view, “[t]o hold that 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.”

NOTE: This case review was written by a patent attorney (not me) who wishes to remain anonymous.


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