Perricone v. Medicis Pharmaceutical Corp.

• Decision Date: 20 December 2005
• Docket Number: No. 05-1023.,No. 05-1022.,05-1022.,05-1023.
• Citation: 432 F.3d 1368
• Parties: Nicholas V. PERRICONE, M.D., Plaintiff-Appellant, v. MEDICIS PHARMACEUTICAL CORPORATION, Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

432 F.3d 1368

Nicholas V. PERRICONE, M.D., Plaintiff-Appellant, v. MEDICIS PHARMACEUTICAL CORPORATION, Defendant-Cross Appellant.

No. 05-1022.

No. 05-1023.

United States Court of Appeals, Federal Circuit.

December 20, 2005.

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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.

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 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 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 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, 57 C.C.P.A. 759, 418 F.2d 528, 534 (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 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 ...