 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




05-1022,-1023                                  2
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




05-1022,-1023                                  3
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




05-1022,-1023                                4
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


05-1022,-1023                                5
              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.


05-1022,-1023                                6
       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




05-1022,-1023                                7
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. § 121

would 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.




05-1022,-1023                                  8
       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.




05-1022,-1023                                 9
                                       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




05-1022,-1023                               10
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)).




05-1022,-1023                                11
       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




05-1022,-1023                               12
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




05-1022,-1023                                13
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.


05-1022,-1023                                  14
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




05-1022,-1023                                15
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
