## 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 Philad elphia, Pennsylvania, argued for defendant-cross appellant. Wi th 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 No s. 5,409,693 (the ’693 patent) and 5,574,063 (the ’063 patent) are invalid and, as to th e ’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 Medici s Pharmaceutical Corp oration 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 t he district court err ed in its anticipation analysis with respect to claims 1-4 and 7 of the ’693 patent, this court reverses andremands the judgments on those cl aims 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 anal ysis with respect to claims 9, 11- 13, 16, 18, and 19 of the ’063 pat ent. Finally, this court affirms the district court’s denia l of Medicis’ motion under § 285.
I. Dr. Perricone’s patent s claim methods of treating or preventing sunburns (the ’693 patent) and methods of treating skin dam age or disorders (the ’0 63 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 applic ation that resulted in the ’693 patent. The information added in that conti nuation-in- part applic ation does not affect this case. Thus, both patents dis c lose ess e ntially the s a me subject matter: treatment or prevention of various forms of skin damage through the topica l application of asco rbic acid (Vitamin C) in a fat solub l e form. See ’693 patent, col. 2, ll. 26-34; ’063 patent, col. 2, ll. 30-36. Specifically , the patents disclose t he topical application of ascorb yl fatty acid ester (e.g., ascorbyl palmitate, ascorbyl laurate, asco rbyl myristate, ascorbyl stearate) with a dermatologically acceptable c a rrier. See ’693 patent, col. 2, ll. 26 -34; ’063 patent, col. 2, ll. 30-36. Because the carrier , as well as t he ascorby l fatty acid ester, is fat solu ble, it can “effectively penetrate skin layers and deliver the a c tive ascorbyl fatty acid ester to the lipid-rich layers of the skin.” ’693 patent, co l. 4, ll. 4-6; ’063 paten t, col. 4, ll. 10-12. Upon reac hing the lipid-rich lay e rs of skin, the ascorbyl fatty acid ester produces a number of beneficial effects r anging from the acceler a tion of collagen synt hesis to the scavenging of oxygen-containing radicals c aused by exposu re to damaging ultraviolet

05-1022,-1023 2radiation. 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, allegi ng that Medicis infringed both the ’693 and ’063 patents with its LUST RA® line of prescription ski n depigmenters. Perricone , 267 F. Supp. 2d at 232-33. LUSTRA® is a cream that, with hy droquinone as its activ e ingredient, reduces the production of melanin, i.e., the pigm ent in skin. LUSTRA® als o inclu des, inter alia , ascorbyl palmitate. Before t he district court, Dr. Perricone file d motions for summary judgment of validity an d infringem ent, 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 als o filed motions for partial su mmary judgment of non-infringement, premised on the invalidity of Dr. Perri cone’s asserted claims, and for attorney fees under 35 U.S.C. § 285. Aside from t he rejected attorney fees reques t, 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 pat ents. The district court’s opinion appears to invalidate all of t he asserted claims of both patents, yet grants summary judgment of non-infringement onl y for the ’693 patent. See id . Dr. Perricone’s ope ning 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 3reversal of a clearly identifiabl e s ubset of the’693 c l aim s and trusts the parties to resolve any uncertainty on remand. II. This court reviews a district court’s gr ant of s u mmary judgment wit hout deference and a denial of summary judgment for an abus e 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 r easonable inferenc es in favor of the nonmovant. This court gives due weight to a pat ent’s presumed validity under 35 U.S.C. § 282 (2000), requiring an accused infringer to prove inva lidity by clear and convincing evidence

. Geneva Pharm., Inc. v. GlaxoSmithKline PLC , 349 F.3d 1373, 1377 (Fed. Cir. 2003). This c ourt reviews double patent ing without def erence. Georgia- Pacific Cor p . v. U.S. Gypsum Co. , 195 F.3d 1322, 1326 (Fed. Cir. 1999). Double Pat enting The double patenting doctri ne generally prevents a patentee from receiving t w o patents for the same invention. Thus, this doctrine polices the pr oper applic ation of the patent term for each invention. The pros cription against double patenting takes two forms: statutory and non-statutory. Statutory, or “same in v ention,” double patenting is based on t he language in § 101 of the Patent Act mandating “a patent” for any new and useful inv e ntion. 35 U.S. C. § 101 (2000); In re Goodman , 11 F.3d 1046, 1 052 (Fed. Cir. 1993) (“If the claimed inventions are identical in scope, the proper rejection is under 35 U.S.C. § 101 becaus e an inv e ntor is entitled to a single patent for an invention.”) (citations omitted). Non-stat utory, or “obviousness-type,” double patenting is a judicially created doctrine adopted to prev ent claims in separate applicat ions or patents that do

05-1022,-1023 4not recite the “same” inventio n, but nonetheless claim inventi ons so alike that granting both exclusive rights would effectively extend the life of patent protection. Gerber Garment T e ch., Inc. v

. Lectra Sy s., 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 pat ent recites: 1. A method for treating skin sunburn c o mprising topically applying to the skin s unburn a f a tty acid ester of ascorbic a c id effective to solub i lize in the lipid-rich lay e rs 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 radiati on whic h produced said sunburn. ’693 patent , col. 7. Meanwhile, c l aim 9 of the ’063 patent recites: 9. A method for the tr eatment of skin damaged or aged by oxygen-c ontaining free radicals or oxidative generation of biologically active m e tabolites which com p rises topically applying to affect ed skin areas a composition containing an effective amount of an ascorbyl fatty acid ester in a dermatologically acceptabl e, fat-penetrating carrier such that the ester is percutaneously delivered t o lipid-rich layer s of the skin. ’063 patent, cols. 8-9. The district court fo und claim 9 of the ’063 patent inv a lid under the non-statutory double patent ing doctrine in view of claim 1 of the ’693 patent. In reaching that conclusion, the district court first identifie d 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 appl ying an ascorbyl f a tty acid ester “effective to solubilize in the lipi d-rich layer s of the skin a n amount effective to scavenge fr ee radicals present as a result of the transfer of energy to the skin from the ultraviole t radiation which produced [the] sunburn”; and (3) claim 9 of

05-1022,-1023 5the ’063 patent recites the us e of “a dermatologically acceptable, fat-penetrating carrier such that the ester is percutaneously deliv ered to lipi d-rich layers of the skin,” while the ’693 patent does not exp lic itly recite the use of a carrier. Perricone , 267 F. Supp. 2d at 240. The dist rict court analyzed those distinct ions. 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 conc luded that the claimed effect ive amount in the ’063 patent falls within the ranges of effe ctive 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 t he ’063 pat ent requiring “a dermatologically acceptable, fat-penetrating carrier such that the ester is percutaneous ly delivered to lipid-rich layers of the skin.” Ac cordingly, t he district court found claim 9 of the ’063 patent inv a lid for obviousness-type double pat enting in view of claim 1 of the ’693 patent. Claims 11-13 of the ’063 pat ent all depend from independent claim 9. Thus, the district court’s analysis of claim 9 applies equal ly to claims 11-13. Claim 11 includes an additional limitation specifying a particular r ange of concentration of the ester. Because that range substantially over laps the range in claim 5 of the ’693 patent (dependent on claim 1 of the ’693 pat ent), t he district court determined t hat 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 c l aim 9 of the ’063 patent for the above reasons. Id. at 241.

05-1022,-1023 6Independent claim 16 of the ’063 patent includes limit ations analogous to t h ose in independent claim 9. Accord ingly, the district court applied the same reasoning for its double patenting det ermination of claim 16. Id. at 241-42. The distric t court paid special attention to the additional recitation in c l aim 16 of spec ific “tocotrienols,” but determined that those tocotri enols are not patentably distinct from the Vitamin E of claim 7 of the ’693 patent. Fi nally, the district c ourt determined that claims 18 and 19 of t h e ’063 patent, which bot h depend f r om claim 16 of that patent, are not patent ably distinc t from claims 4 and 7. This court first examines the cont ention t hat the claims of t he ’063 patent contain “material differences” from those in the ’693 patent. This “material differences” argument does not s how that t he district court erred in it s double patenting analysis. Rather, the district court’s analysis s p ecifically addre sses differences between t h e claims of t he ’693 and ’063 pa tents. For instanc e, the dist rict 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 reci t a tion of no carrier at all. Thus, the district court cogently reasoned that, based on the specification, the “effective to solub iliz e” languag e in claim 1 of the ’693 pa t ent means the same thing as the “carrier” language in claim 9. Thus, t he difference disappears.
Li kewi se, the di stri ct court prop erl y resol v ed the apparent di ff erence betw een treatment of various types of sk in damage in c l aims 9 and 16 of the ’063 patent and treatment of sunburn in c l aim 1. Sunburn is a spec ies of skin damage. As such, this court perceives no error in the district co urt’s determination that the earlier specie s renders the later genus claims invalid und er non-statutory doubl e patenting. See Eli

05-1022,-1023 7Lilly & Co. v. Barr Labs., Inc. 251 F.3d 955, 971 (Fed. Cir. 2001) (“[This court’s] case law firmly establishes that a later genus c l ai m limitation is antic ipated by, and therefore not patentably distinct from, an earlier spec ies claim.”) (citati ons omitted). Finally, the district court did not misc onstrue the genus-species relationship between c l aim 16 of t he ’063 patent and claim 7 of the ’693 pat ent. The district court interpreted the language of claim 16 reciting various tocotrienols, and conc luded that it “refers to c e rtain forms of tocop herols, or Vitamin E.” Perricone , 267 F. Supp. 2d at 238. T h us, the district court did not impr operly conclude that a s pecies was obvious in light of an earlier c l aim to a genus but correct ly concluded that t here 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 distric t court also consider ed and correctly rejected the suggestion that procedures of the United Stat es Patent and Trademark Offi ce (PTO) militate against double pat enting. Specifically, if Dr. Perricone had pr esented all the claims of the ’693 and ’063 patents to the PTO in a single application, t he PT O might have made a restriction requirement. In other words, the PTO might have s e parated the claimed subject matter into different classifications and different in ventions. If the PTO had entered a restriction requireme nt 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 sim p le terms, 35 U.S.C. § 121 does not rescue Dr. Perricone’s voluntarily filed continua tion-in-par t application.

05-1022,-1023 8Finally, and contrary to the suggestion by the district court, the Patent Act and PTO rules support the filing of a terminal di sclaimer e v en after issuance of t he secon d 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 CF R § 1.321(a) (incor porating the language of § 253). The district court’s focus o n In re Goodman , 11 F.3d 1046, 1052 (Fed. Cir. 1993) (explaining that a terminal disclaimer can overc o me a double patenting “rejection”) seem s to have led to its conclus i on that a terminal disclaimer cannot be filed for an issued patent to overcome invalidity based on double patenting. The c o mmentary from In re Goodman arose in the context of ex parte prosecuti on, a setting not applicable to this case. An applicant must always overcome every rejection to gain is suance of a patent. Accordingly, the preissuance timing requirement of a terminal disclaimer to overcome a double patenting rejection does not dictate a prohibition on post-issuance terminal disc laimers. A terminal disclaimer can indeed s upplant a findi ng of invalidity for doubl e pat enting. Se e Applied Materials, Inv. v. Semiconductor Materials Am., Inc. , 98 F.3d 1563, 1577 (Fed. Cir. 1996) (“For obviousness-type double patent ing, [the improper exten s ion of the statutory term] problem can sometimes be avoided for co-owned patents . . . through the use of a terminal disclaime r.”). This record, howev er, does not include any evidenc e of a disclaimer even though the di strict court invalidat ed the cl aims over two years ago. Thus, while Dr. Perricone might still file a te rminal disclaimer to overcome prospectively the double patenting basis for invalidity, th is court makes no determination about the retrospective effect of such a terminal disc laimer.

05-1022,-1023 9Anticipation A single prior art referenc e that disclos es, either ex pr essly or inherently, each limitation of a claim invalidates that claim by anticipation. Minn. Mining & Mfg. Co. v. Johnson & Johnson O r thopaedic s , Inc. , 976 F.2d 1559, 1565 (Fed. Cir. 1992). Thus, a prior art reference without express refere nce to a claim limitation may nonetheles s anticipate by inherency. See In re Crucifer ous Sprout Litig. , 301 F.3d 1343, 1349 (Fed. Cir. 2002). “Under the principles of inherency, if the prior art necessarily functions in accordanc e with, or includes, the claim s limitations, it anticipates.” Id. (quoting MEHL/Biop h ile 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. Ar tisans of ordinary skill may not recogniz e the inhere n t characteristics or functioni ng of the prior art.” Id. ; see also Schering Corp. v. Geneva Pharms. , 339 F.3d 1373, 1377 ( F ed. Cir. 2003) (reje cting the contenti on that inherent anticipation requires recognition in the prior ar t) (citing In re Cruciferous Spr out 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 pat ent, and c l aims 1-19 of the ’063 patent. Perricone , 267 F. Supp. at 243. Pe reira teaches a cosmetic composition for topical application and discloses various ingredients in that composition, including skin benefit ingredients, emollie nts, emulsi fie r s, and thickeners. See Pereira, cols. 1-2. In addition to listing examples, Pereira di scloses eight distinct exampl e compositions wit h specific concentrations of ingredients. Id. at cols. 8-12. Pereir a identifies the disclos ed compositions only briefly, ident if ying them as “suitable for topical app lic ation to the skin

05-1022,-1023 10or hair.” P e reira, col. 1, ll. 6-8. The district court conc luded that Pereira’s dis c losed us e anticipates Dr. Perricone’s c l aim s because Pe reira’s disclosed compositions include all the various ingredients in the concentrations claimed by Dr. Perricone. Thus, according to the district court, the topi cal applic ation of Pe reira’s compositions would necessarily yield Dr. Perricone’s claimed sk in benefits. On appeal, Dr. Perricone argues that: (1) Pereira’s disclosed skin benefit ingredients include ascorbyl palmitate among many others, and so Pereira’s disc losure does not anticipate the s pecif ic c l aimed use of ascorbyl palmitate; (2) Pereira’s disclosed range of concentration of its skin benefit ingredient only partially over laps with Dr. Perricone’s claimed range; and (3) Pereira does not disclose any benefit dir e cted to skin s unburn, or any of the other s pecific skin disorders, as claimed by Dr. Perri cone. With respect to its skin benefit ingredien t, Pereira discloses “from 0.01 to 20% by weight of a skin benefit ingredi ent chosen from: . . . Ascorb yl palmitate [and] Tocopher o l [i.e., Vitamin E] . . . .” Pereira, col. 1, ll. 55-68. In addition to those two identified ingredients, Pereira lists an additi onal twelve ingredients. See id. In to tal, Pereira teaches a total of fourteen ski n benefit ingredients. T h is court rejects the notion that one of thes e ingredients cannot anticipate be cause it appears without special emphas is in a longer list. To the contra ry, the disc losure is prior art to the extent of its enabling disclos ure. See Hewlett-Packard Co. v. Mustek Sys., Inc. , 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003) (“The anticipati on analys is asks solely whether the prior art reference disclos es and enables the claimed invention, and not how the prior art characterizes that disclosure or whether alte rnatives are also disclosed.”) (citi ng Celerita s Techs. v. Rockwe ll In t’l Corp. , 150 F.3d 1354, 1361 (Fed. Cir. 1998)).

05-1022,-1023 11In re Baird , 16 F.3d 380, 383 (Fed. Cir. 1994), is not inconsistent with this anticipation analys is. In the first place, In re Baird involved obvious ness, not anticipation. Baird observes that “disclosur e of m illions of compounds does not render obvious a claim to three compounds.” 16 F.3d at 383 (emphasis added). Baird ’s reasoning, relevant to obvious nes s, does not apply to Pereira’s dis c losure of a handf ul of different compositions, t he use of one of which antic ipat es Dr. Perricone’s claims. While other opinions s t ate t hat disclosure of a broad g enus does not necess a rily specifically disclose a specie s within that genus, see, e.g. , Co rning 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 c l aims . In this c a se, the prior art does not merely disclos e a genus of s k in benefit ingredients without discl osing the particular claimed ingredient. Rather Pe reira specifically d i scloses ascorbyl palmit a te. That specific disclosure, even in a list, makes th is case different from cases involvin g disclos ure of a broad genus without reference to the potentially anticipating species. Thus, these cases do not alter the district co urt’s correct anticipatio n reasoning. Pereira’s disclosed range of concentrati on also does not exactly correspond t o Dr. Perricone’s c l aimed range. Pereir a’s disclos ure nonet heless dis c loses a n d anticipates Dr. Perricone’s partic u lar claime d “effective amount” range s. Dr. Perricone’s claims recite a number of different ranges a ssociated with the fatty acid ester. Those claimed ranges vary in breadt h from an “e ffective” amount in cl aim 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 2 2 ). Pereira disclos es a range of

05-1022,-1023 12concentration “from 0.01 to 20% by weight. ” Pere ira, col. 1, ll. 55-68. As t he district court correctly noted, Pereira’s r ange entirel y encompasses, and does not signific antly deviate from, Dr. Perricone’s claimed ranges. Thus, this court sustains the district court’s reading of Per e ira’s effe c t ive amount disclosure. See Atla s Powder Co. v. Ireco Inc. , 190 F.3d at 1342, 1346 (Fed. Cir. 1999) (“[ W]hen a pat ent claims a chemic al composition in terms of ranges of elements, any single pr ior art reference that falls within eac h of the ranges antic ipates the claim.”) (citing Titanium Metals Corp. v. Banner , 778 F.2d 775, 781 (Fed. Cir. 1985)). With respect to the particular claim ed skin benefits, the dist rict court reasoned that “Pereira will inher ently f unction in [the claimed be nefic ia l manner] when topically applied to the skin.” Perricone , 267 F. Supp. 2d at 248. Thus, the district court ultimately based its anticipatio n analys is on inherency. “In gener al, a limitation or the entire inv e ntion is inherent and in the public domain if it is the ‘natural res u lt flowing from’ the explic it disclosure of the prior art.” Schering , 339 F.3d at 1379 (c it ing 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 cas e s, the inherent property corresponds to a claimed new benefit or characteristic of an invention ot herwise in the prior art. In those cases, the new realization alone does not render the old invention patentable. See Atlas Po wder , 190 F.3d at 1347 (“[T]he discover y of a previous ly unappreciat ed property of a prior art composition, or of a scientific explanatio n for the prior art’s function, does not render the old composit ion 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 disc overed res u lts of known proces ses are not patentable

05-1022,-1023 13because those results are inherent in the kn own processes). Thus , when considering a prior art method, the anticipat ion doctrine examines the nat ural and inherent results in that method without regard to t he full rec ognition 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 app lying 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 me thod for the treatment of skin disorders which arise becau se of depleted or inhibited collagen s y nthesis which compri ses topic a lly applying t o affected skin areas . . . .
[Claim 9, ’063 patent] A me thod for the treatment of skin damaged or aged by

. . . which comprises topically apply i ng to affected skin areas a composition containing

. . . . [Claim 16, ’063 patent] A me thod for the treatment of damaged or aging s k in and epithelial tiss ue disorders . . . said treatment comprising topically applying to affected tissue areas the combination of . . . . Thus, Dr. Perricone’s independent claims re cite particular skin benefits together wit h methods of achieving those benefits (i.e., topically applying a pa rticular compound). * I f

* This court notes that while the v a ri ous c l aimed beneficial uses appear to be recited in the preambles of Dr. Perricone’ s claims, the district court construed those claims as being limit ed by their preambles, see Per r icone , 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 wa s correct.
05-1022,-1023 14Pereira dis c loses the very same methods, then the particular benefits must naturally flow from those methods even if not recogn ized as benefits at the time of Pereira’s disclos ure. Thus, Pereira anticip ates if its disclosure of “topi cal application” satisfies the application step in Dr. Perricone’ s various asserted claims. Claim 1 of the ’693 paten t, from which c l aims 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 no t, as the dissent and di strict court imply, whether Pereira’s lotion if applied to skin s unburn would inhere n t ly treat that damage, but whether Pereira discloses the application of its composition to skin sunburn. It does not. This c ourt explained in Cat a lina Marketi ng 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 apparat us. 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 patentabl e “any new and usefu l improvements” of a process, machine, manufacture, etc.); In re King , 801 F.2d 1324, 1326 (Fed. Cir. 1986) (principles of inherenc y do not prohibit a process paten t for a new use of an old structure). That principle gov erns in this case as well. Claim 1 of the ’693 patent recites a new use of th e composition disclos ed b y Pereira, i.e., the treatment of skin sunburn. The district court’s inherent anticipation analys is for this claim contains a flaw. The disclos ed use of Pereira’s lotion, i.e., topic a l application, does not suggest app lication of Pereira’s lotion to skin sunburn. In other words, the district court’s inherency analy s is goes a s tray because it assumes what Pereira neither disclosed nor rendered inher ent. Because Pereira does not disclos e

05-1022,-1023 15topical application to skin sunburn , this court reverse s the di strict court’s holding that Pereira anticipates claims 1- 4 and 7 of the ’693 patent. Like the district court, the diss ent seems to ignore, or at l east dismiss as “not substantial[ ],” the disti n ction between Dr . Perricone’s claimed method and Pereira’s disclos ed method. Thus, the dissent char acterizes both methods the same way: “Pereira describes not only the s a me product that is claimed in the sunburn patent, but also the s a me method of us ing it, i.e., topica lly applying it to t he skin in an amount necessary to have beneficial effects on the ski n.” Unfortunately, the dissent can make that statement only by dism is sing the explic it language of Dr. Perricone’s claimed method: “applying to the skin sunburn.” ’ 693 patent, claim 1. Skin sunburn is not analogous to skin s u rfaces gener ally. Thus, there is an important distinction between topical application to skin for the purpose of avoiding sunburn, and the muc h narrower topical application to skin sunburn. That di st inction highlights the fl aw in the dissent’s knee brace hypothetic al, which s uggests that a particular prevention method necessarily anticipates a treatment method. To use a more apt analogy, the disclos ure that a sunburn can be prevented by we aring a hat clearly does not anticipate a c l aim to the discovery that one can treat an existing s unburn by putting on a hat. The dissent attempts to bolster its analogy by compar ing the mechanism under lying its knee brace analogy to Dr. Perricone’s inv e ntion. With that comparison, the dissent drifts even farther from the facts of this case. The alleged antici pating reference here is Pereira, not Dr. Perricone’s own teachings. Pereir a is silent about any sunburn prevention or treatment benefits, not to m ention the mechanisms underlying s u c h uses. If Pereira did teach sunburn prevention, as well as the mechanism behind that prevention, those

05-1022,-1023 16teachings might suggest that Dr. Perricone’s sunburn t r eatment claims would have been obvious. Howev e r, those unrealized poss i biliti es do not alter the analysis in this case where Pereira does not disclose t opical application to skin sunburn. Unlike claim 1, claim 8 of the ’693 patent, from which claims 9 and 13 ultim a tely depend, merely requires applic ation of the composition to exposed skin surfaces. Because all skin surfaces are susceptib le t o sunburn damage, and becaus e one can only realist i cally apply a compos ition to a s k in surface when that surface is exposed, Pereira’s “topical application” encompasses t he application step of claim 8. Thus, the district court correctly determi ned that Pereira’s disclosure of the topica l application of the same composition necessar ily anticipates claims 8, 9, and 13 of the ’693 pa tent. Claim 1 of the ’063 patent, from which c l aims 2-8 of that patent ultimately depend, recites applic ation to “aff ected skin areas.” That clai m further recites that those skin areas suffer from “depleted or inhibited collagen s y nthesis.” ’063 patent, claim 1. The specification of the ’063 patent, mean while, explains that such damage results from, inter alia , “the natural aging process.” ’063 pat ent, col. 1, ll. 46-50. B e cause al l skin is a victim of that process, c l aim 1 of t he ’063 patent ultimately c l aims merely the topical application of the recit ed composition. Likewis e, cl aim 9 of the ’063 patent, from which c l aims 10-15 of that patent ultima tely depend, recites application of the composition to “affected skin areas” where t hose areas are further identified as being “aged.” As such, because all skin ages, the app lic ation step of claim 9 merely require s application of the composition to skin. Similarly, the “affe cted tissue areas” of claim 16 of the ’063 patent, from which claims 17-25 ultimately depend, are identified in that claim as “aging sk in.” Thus, as with claims 1 and 9 of the ’063 patent, claim 16 claim s

05-1022,-1023 17merely the topical application of the recited compos ition. Becaus e Pereira d i scloses the very same composition and teaches its topical applic ation, the dist rict court correctly applied the inherency doctrine. Using the same composition c l aimed 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 refe rences that Medicis argues anticipates Dr. Perricone’s claims. Th is court declines to consider grounds for invalidity not relied on by, and not appealed from, the di strict court. Infringement Recognizing that invalidity is an affirma tive defense to infrin gement, 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 di strict 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 c ourt’s su mmary judgment of non-infringement on thos e claims. Attorney Fees In the cross-appeal, Medicis challenges the district cour t’s denial of its motion for attorney fe es under § 285. Medicis asks this court eith er to re mand on the exceptional case question or to “declare the case except ional without further pr oceedings .” Medicis’ opening brief at 64. This court declines that invitation.

05-1022,-1023 18An award of attorney fees under 35 U.S.C. § 285 invo lv es a two-part determination. First, a district court must determine whether the prevailing party has proven an exceptional case by c l ear and c onvinc i ng evid enc e. Forest Labs., Inc. v. Abbott Labs. , 339 F.3d 1324, 1327 (Fed. Cir. 2003) (citing Ruiz v. A.B. Chanc e Co. , 234 F.3d 654, 669 (Fed. Cir. 2000)). This court revi ews an exceptional case finding for clear error. Id. at 1328. Second, if the district court fi nds the case exc eptiona l, it must then determine whether an award of atto rney fees is appropriate. Id. This court reviews that determination for an abuse of discretion. Id. (citing Cybor Corp. v. FAS Techs. , 13 8 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc)). As this court explained in Frank’s Cas i ng Crew v. W eatherford International , trial judges enjoy discreti on t o award at torney fees for good reason. 389 F.3d 1370, 1379 (Fed. Cir. 2004). “After presidin g over the preparation and trial of the case, the tria l judge can best weigh the relevant considerations, such as the clos eness of the ca se, the tactics of counsel, the flagrant or good faith character of the parties’ cond uct, and any other factors contributing t o imposition of punitive sanctions or to fair alloc a tion of the burdens of litigation.” Id. (citing Modine Mfg. Co. f. Allen Group Inc. , 917 F.2d 538, 543 ( F ed. 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’ ar guments appear to focus on the timing and content of various e x pert reports proffered by Dr. Perricone, the proprie ty 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 nothi ng es tablishing that the district court

05-1022,-1023 19committed clear error regarding whet her this case is exceptiona l. Moreover, even if this court determined that this case should have been declared exceptio nal, 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 cond u c t in this

case. CONCLUS ION This court affirms the district court’s su mmary 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 anticipat ion analysis of claims 1-4 and 7 of the ’693 paten t, this cour t reverses the district court’s summary judgm ent 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 a ffirms that summary ju dgment as to the remaining claims in t hat patent. Finally, this court affi rms the district court’s denia l s 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 cour t’s opinion, including the portions upholding the district court’s ruling that claims 1-19 of the “skin disorder” pat ent, 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. Pat ent No. 4,981,845 (“the Pereira patent”). I dissent, however, from the portion of the judgm ent holding that the Pereir a 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 descripti on of the sunburn patent is identical to the pertinent portions of the writt en description of the skin disord er patent in all material respects. The only significant difference between the two patents fo r present purposes is that the sunburn patent claims methods for treating and preventing sunburn comprising the topical application of the co mposition described in the specification, while the skin disorder patent claims a method for treating skin disorders comprising the05-1022,-1023 2 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 fo r preventing sunburn while the latter recite methods for treating sunburn. The diffe rences between the sunburn and the skin disorder patents, and among the claims of the s unburn patent, simply highlight inherent features of the compositions that are disclosed both in t he common written description of the two patents in suit and in the Pereira patent. Under our precedents, t hose differences do not suffice to avoid anticipation. Claim 1 of the sunburn patent recites: A method for treating skin sunburn co mprising 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 accept able carrier (claim 2), in which the fatty acid ester of ascorbic acid is selected fr om 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 cl aimed method, the sunburn patent states: The effectiveness of the ascorbyl fa tty acid esters in the treatment of . . . radiation-induced skin damage . . . can be postulated as resulting from the anti-oxidant proper ties of ascorbic acid per se, which properties are retained to a high degree in the ascorbyl fatty acid ester form, together05-1022,-1023 3 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 explai ns 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 fatpenetrating carriers, the active a scorbic 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 compos ition 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 t he 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 palmi tate. 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 cour t established that the Pereira patent discloses topical application of the same s ubstance that is clai med in the sunburn patent, with the same results. Thus, the evidence showed that certain of the skin05-1022,-1023 4 benefit ingredients of Pereira, including asco rbyl palmitate, operate to benefit the skin by scavenging free radicals. In addition, the evidence showed that lecithin is a dermatologically acceptable carrier that is abl e 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 enc ompass 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 com position 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 re sult 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 proc ess that necessarily performs the claimed process; “where . . . the result is a nec essary consequence of what was deliberately intended, it is of no consequenc e 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 nec essarily 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 oper ation, will perform the function which an appellant claims in a subsequent application for process patent, then such application for process patent will be cons idered to have been anticipated by the former patented05-1022,-1023 5 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 proper ties inherent in certain prior art sprouts . . . . While Brassica may have recognized something qui te 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 ar t composition . . . does not render the old composition patentably new to t he discoverer.”); Atlas Powder , 190 F.3d at 1349 (“discovery of an inherent property of the prio r 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 ol d 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 me rit 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 ol d 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 result05-1022,-1023 6 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 hel d 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 gov erning principle of la w when it states: “If Pereira discloses the very same methods , then the particular benefits must naturally flow from those methods even if not recogni zed 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 composit ion recited in the sunburn pat ent 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 t he 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, t hat 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 pr oduct that is claimed in the sunburn patent, but also the same met hod of using it, i.e., topically applying it to the skin in an amount necessary to have beneficia l effects on the skin. Dr. Perricone’s contribution is simply to recognize that among those skin benefits is the prevent ion and treatment of05-1022,-1023 7 sunburn. That identification of a new subset of a previ ously known property is not entitled to patent protection. While the majority applies that princi ple to the sunburn prevention and skin disorder claims, it does not apply the same principle to the sunbur n treatment claims, even though those claims recite the same co mposition and process as are disclosed in Pereira and recited in Dr. Perricone’s other clai ms. Yet, to use the majority’s language, the treatment of sunbur ned skin is every bit as much a “particular benefit[ ] that must naturally flow from [Pereira’s] methods” as the prevention of s unburn and the treatment of skin disorders. Under the majority’s test, the sunburn treatment claims should therefore be anticipated by Pere ira 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 r ealistically 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 sunbur n patent. But precisely the same reasoning applies to the sunburn treatment claims. The majority seems to attach significance to the notion that topical app lication of Pereira’s emul sion 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 fu nction is pertinent to only a subset of users of the Pere ira method (i.e., those already suffering from sunburn) does not mean that Pereira does not ant icipate the treatment claims.05-1022,-1023 8 Topical application of the Pereira em ulsion results in scavenging oxygencontaining free radicals and neutralizing r eactive oxidants, whether the skin is sunburned or not. Thus, the effect that underlies both the prevent ion and treatment of sunburn is present in all cases of topical applic ation 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 l ong worn by athletes to prov ide stability and thus minimize the effect of ligament injuri es 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 dam age would be anticipated, but the use of the brace to treat cartilage damage would not, on the ground t hat all knees are subject to cartilage damage, but only some knees already have it. The majority illustrates its distinct ion between sunburn tr eatment and sunburn prevention with its own analogy, arguing that t he 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 brac e minimizes the effects of ligament injury, i.e., enhanced stability, is the same mechanism that facilitates treat ment 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 9 Furthermore, the majority’s distincti on between the sunburn prevention claims, which the majority invalidates, and the sunbur n 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 s unburn treatment claims by focusing on the applicability of the skin damage patent to agi ng 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 paten t, col.1, ll. 26-28. Like sunburn, those diseases and conditions are not found in all per sons. 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 great er specificity in t opical application to skin that is sunburned than there is in topical application to skin that is diseased or skin that has suffered from accele rated aging. Accordingly, I submit that the majority’s distinction between the treatment claims and the prevention clai ms 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 conclu sion 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 inv ention. 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 sl eep apnea by administering a larger dosage of the same drug at the time of sl eep. In MEHL/Biophile , the prior art was a method of using a laser05-1022,-1023 10 to remove tattoos by aligning the laser over the pigmented skin, while the claimed invention was a method of using a laser to re move 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 clai med invention, the court held in each case that practicing the prior art me thod would not inherently have that effect. Thus, even if the prior art method for tattoo removal we re 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 adm inistration and the dosages employed in the two treatments were different. In this case, by contrast, topical applicat ion of the Pereira co mposition to normal skin inherently produces the same chemic al processes that underlie the sunburn prevention claims, including scavenging free-oxygen-containing radicals and neutralizing other reactive oxi dants. Topical application of the Pereira composition to sunburned skin inherently produces the same processes, which also underlie the sunburn treatment claims. Be cause the chemical processes that have the effect of treating and preventing sunburn are inherent consequences of the normal use of the Pereira composition, Pereira ant icipates 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 ingr edients identified in Pereira and identifies specific benefits falling within the broader characte rization of benefits identified in Pereira. To hold that05-1022,-1023 11 the treatment claims of the sunburn patent are not anticipated by Pereira is to permit an inventor to secure patent rights to an ex isting invention merely upon identifying an inherent benefit of the prior ar t that had not previously been s pecifically identified, but that falls within a broader cla ss 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 t he court’s judgment relating to the treatment claims of the sunburn patent.