Perricone v. Medicis Pharmaceutical Corp.

• Decision Date: 16 June 2003
• Docket Number: No. CIV.A.3:99 CV 1820 C.,CIV.A.3:99 CV 1820 C.
• Citation: 267 F.Supp.2d 229
• Parties: Nicholas V. PERRICONE, M.D., Plaintiff v. MEDICIS PHARMACEUTICAL CORP., Defendant
• Court: U.S. District Court — District of Connecticut

267 F.Supp.2d 229

Nicholas V. PERRICONE, M.D., Plaintiff v. MEDICIS PHARMACEUTICAL CORP., Defendant

No. CIV.A.3:99 CV 1820 C.

United States District Court, D. Connecticut.

June 16, 2003.

COPYRIGHT MATERIAL OMITTED

David R. Schaefer, Carolyn W. Kone, Brian P. Daniels, Rowena Amanda Moffett, Brenner, Saltzman & Wallman, New Haven, CT, Stephen P. McNamara, St. Onge, Steward, Johnston & Reens, Stamford, CT, Mary C. Chapin, Raphael V. Lupo, Jennifer C. Chen, David A. Spenard, Laura E. Eversole, McDermott, Will & Emery, Washington, DC, for Plaintiff.

Christopher J. Coxon, Brian P. Henry, Danaher, Tedford, Lagnese & Neal, Hartford, CT, Maryellen Feehery, Andrea Rea, William J. McNichol, Jr., Ira Lefton, Tracy Z. Frisch, Christopher K. Walters, Reed Smith Shaw & McClay, Philadelphia, PA, R. Cornelius Danaher, Jr., Danaher, Tedford, Lagnese & Neal, Hartford, CT, for Defendant.

RULING ON MOTIONS FOR SUMMARY JUDGMENT

DRONEY, District Judge.

The plaintiff, Nicholas V. Perricone, M.D., filed this action against the defendant, Medicis Pharmaceutical Corp., alleging infringement of U.S. Patent No. 5,409,693, entitled "Method for Treating and Preventing Sunburn and Sunburn Damage to the Skin" and U.S. Patent No. 5,574,063, entitled "Method and Compositions for Topical Application of Ascorbic Acid Fatty Acid Esters for Treatment and/or Prevention of Skin Damage." The plaintiff has filed a Motion for Summary Judgment of Infringement [Doc. # 215] and a Motion for Summary Judgment of Validity of U.S. Patent No. 5,409,693 and U.S. Patent No. 5,574,063 [Doc. # 216]. The defendant has filed a Motion for Partial Summary Judgment of Invalidity of Certain Claims of Plaintiffs U.S. Patent No. 5,574,063 and 5,409,693 on the Grounds of Double Patenting and Anticipation [Doc. #221] and a Motion for Partial Summary Judgment of Non-Infringement of Plaintiffs U.S. Patent No. 5,409,693 [Doc. # 226].

I. Background¹

A. Subject Matter of the Patents

The two patents which are the subject of this lawsuit, both owned by the plaintiff, Nicholas V. Perricone, M.D. ("Perricone"), concern methods for treating and preventing certain skin conditions by applying to the skin compositions containing a chemical compound known as a fatty acid ester of ascorbic acid. A fatty acid ester of ascorbic acid is formed by combining Vitamin C with a fatty acid. A fatty acid ester of ascorbic acid is sometimes referred to as an "ascorbyl fatty acid ester." Ascorbyl palmitate, ascorbyl laurate, ascorbyl myristate and ascorbyl stearate are examples of fatty acid esters of ascorbic acid.

When an appropriate amount of a fatty acid ester of ascorbic acid is applied to the skin, it is capable of neutralizing highly reactive, oxygen-containing chemical entities known as "free radicals" that are created when ultraviolet radiation from the sun strikes the skin. Free radicals cause a number of harmful chemical reactions in the skin which can result in damage to collagen and other skin structures and an inflammation of the skin that is generally referred to as sunburn. Chemical compounds or substances such as fatty acid esters of ascorbic acid that have the ability to neutralize free radicals are known as "antioxidants."

Both U.S. Patent No. 5,409,693 and U.S. Patent No. 5,574,063 are method patents² that concern the use of ascorbyl fatty acid ester compositions. Generally, U.S. Patent No. 5,409,693 concerns a method for treating and preventing sunburn, and U.S. Patent No. 5,574,063 concerns a method for treating a range of skin conditions, including psoriasis and the effects of aging.

B. History of the Patent Applications

Perricone filed U.S. Patent Application No. 07/420287 (the "Parent Application")³ on October 12, 1989. Claim 1 of the Parent Application was directed to "a method for the treatment of skin disorders which are directly caused or mediated by collagen deficiency, and/or oxygen-containing free radicals and/or oxidative generation of biologically active metabolites, said treatment comprising topically applying to the affected skin areas an effective amount of a fat-soluble fatty acid ester of ascorbic acid." Parent Application at 14. During prosecution of the Parent Application, the United States Patent and Trademark Office ("PTO") rejected claim 1. The Parent Application was continued as U.S. Patent Application No. 08/024890.

On March 1, 1993, Perricone filed a Pre-Examination Amendment to U.S. Patent Application No. 08/024890 (the "Amendment"). In the Amendment, Perricone revised claim 1 of the Parent Application to direct it to "a method for treating skin sunburn comprising topically applying to the skin sunburn a fatty acid ester of ascorbic acid 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." Amendment at 2. On April 25, 1995, U.S. Patent No. 5,409,693 (the "'693 patent") issued to Perricone.

On March 17, 1995, Perricone filed U.S. Patent Application No. 08/407413. That application resulted in the issuance to Perricone of U.S. Patent No. 5,574,063 (the "'063 patent") on November 12, 1996.

On September 15, 1999, Perricone filed the instant suit, claiming direct and induced infringement⁴ of the '693 and '063 patents by the defendant, Medicis Pharmaceutical Corporation ("Medicis"), in connection with Medicis' "LUSTRA" lines of prescription skin depigmenters, or skin whiteners.

Perricone has filed motions for summary judgment of validity and infringement of the '693 and '063 patents. Medicis has 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,⁵ and of claims 1-4, 7-9, and 13 of the '693 patent and claims 1-19 of the '063 patent on the basis of anticipation by the prior art.⁶ In its answer, Medicis also asserted defenses of obviousness, vagueness, noncompliance with applicable patent regulations, and failure to comply with certain requirements for seeking patent-related damages. These defenses do not appear to be addressed in the motion for partial summary judgment of invalidity, however.

II. Summary Judgment Standard

The general standard for summary judgment applies in a patent case. See Brown v. 3M, 265 F.3d 1349, 1350 (Fed. Cir.2001) (general summary judgment standard applies to invalidity); Tech-Search, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed.Cir.2002) (same summary judgment standard applied to non-infringement). Accordingly, as to each motion for summary judgment, the burden is on the moving party to establish that there are no genuine issues of material fact in dispute and that it is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A court must grant summary judgment "`if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact ....'" Miner v. Glens Falls, 999 F.2d 655, 661 (2d Cir.1993) (citation omitted). A dispute regarding a material fact is genuine "`if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'" Aldrich v. Randolph Cent. Sch. Dist., 963 F.2d 520, 523 (2d Cir.) (quoting Anderson, 477 U.S. at 248, 106 S.Ct. 2505), cert, denied, 506 U.S. 965, 113 S.Ct. 440, 121 L.Ed.2d 359 (1992). After discovery, if the nonmoving party "has failed to make a sufficient showing on an essential element of [its] case with respect to which [it] has the burden of proof," then summary judgment is appropriate. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

The Court resolves "all ambiguities and draw[s] all inferences in favor of the nonmoving party in order to determine how a reasonable jury would decide." Aldrich, 963 F.2d at 523. "Only when reasonable minds could not differ as to the import of the evidence is summary judgment proper." Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir.), cert, denied, 502 U.S. 849, 112 S.Ct. 152, 116 L.Ed.2d 117 (1991); see also Suburban Propane v. Proctor Gas, Inc., 953 F.2d 780, 788 (2d Cir.1992).

III. Claim Construction

The first step in analyzing the validity and infringement issues raised by the motions for summary judgment is claim construction, that is, the determination of the ordinary and customary meaning that would be attributed to the claim terms by those skilled in the art. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc) (Markman I), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (Markman II). In construing a claim, a court initially looks to intrinsic evidence, which includes "the patent itself, including the claims, the specification, and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996). In examining the intrinsic evidence, the court first considers "the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention." Id. These words are to be given their ordinary and customary meaning, which is presumed to be correct unless a different meaning is clearly and deliberately set forth in the intrinsic materials or unless the ordinary and accustomed meaning would deprive the claim of clarity. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362-63 (Fed.Cir.1999).

The court also may reference other intrinsic evidence, including the specification and prosecution history. Prosecution history contains the record of proceedings before the Patent and Trademark Office and the prior art cited therein. See id; Vitronics, 90 F.3d at 1583; Markman I, 52 F.3d at 980. While an analysis of the intrinsic evidence generally will resolve ambiguity in a disputed term, the court may look to extrinsic evidence when this is not the case. See Vitronics ...