Further refining the doctrines of obviousness-type double patenting and anticipation by inherency, the U.S. Court of Appeals for the Federal Circuit reversed a district court ruling that held that a first patent owned by the plaintiff was inherently anticipated while affirming the plaintiff's second patent was invalid due to obviousness-type double patenting. Perricone v. Medicis Pharm. Corp., Case Nos. 05-1022, -1023 (Fed. Circ. Dec. 20, 2005) (Rader, J.) (Bryson, J., concurring in part and dissenting in part).
Dr. Perricone’s first patent related in part to a method of treating skin sunburn. The asserted prior art (Pereira) disclosed formulas for extending the shelf-life of lotions. Though Pereira was silent on the issue of sunburn treatment, the district court had ruled it inherently anticipated because "treating and preventing sunburn is inherent in the normal use" of the lotions disclosed. Perricone appealed
In reversing the district court, the Federal Circuit made clear that new uses of existing products "are indeed patentable subject matter." The Court then explained that the question was "not 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." (emphasis in original). Concluding that Pereira did not, the Federal Circuit reversed the district court.
Although the Court affirmed the district court’s finding that Dr. Perricone’s second patent was invalid due to obviousness-type double patenting, it emphasized that there is "[no] prohibition on post-issuance terminal disclaimers." The Court noted that terminal disclaimers may be filed even after a patent has been issued. The Court further stated that although a terminal disclaimer "can indeed supplant a finding of invalidity for double patenting," the Court left for another day the question whether a terminal disclaimer if now filed by Perricone would have a retroactive effect.
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