Patent Claims for New Use of Existing Product in Treating Sunburn Were Valid

Case: Perricone v. Medicis Pharmaceutical Corp., No. 05-1022, 05-1023 (Fed Cir. 12/20/05)

The One Sentence Summary: Patent claims for a skin cream were anticipated by a prior art reference showing the use of the ingredients, but claims for a new use of the cream in treating sunburn were valid and not anticipated.


What They Were Fighting About: The district court granted summary judgment for defendant in a patent infringement dispute involving methods of treating sunburn or skin damage with creams containing Vitamin C in fat soluble form.

Federal Circuit Holdings:

• The district court properly held that claims of one of the two patents at issue were invalid due to non-statutory or obviousness-type double patenting because the inventions were so alike that granting both patents would extend the life of the patents.
• While it was possible that plaintiff could have avoided the double patenting invalidity by filing a terminal disclaimer, plaintiff had not done so in the time after the district court held the patent was invalid due to double patenting.
• Disclosure of ascorbyl palmitate as an ingredient in a list in a prior art reference was anticipating. There was no need for the prior art to discuss the benefits or advantages over other items in the list.
• The prior art's disclosure of a range of concentrations that entirely included the patent's claim anticipated the claim.
• The panel reversed the finding of anticipation as to claims calling for application of the cream to treat skin sunburn. This specific use of the cream was not disclosed by prior art discussing application to skin, and was a patentable new use of an existing product.
• The district court did not err in denying attorneys' fees to defendants by finding that the case was not exceptional.