Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)

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Assignment due 3/22/11 to read and describe a case involving a similar issue to that discussed In re Hall involving prior description in printed publication.

Chosen Case: MEHL/Biophile Intern. Corp. v. Milgraum

The Case

This case was decided by the CAFC in 1999 on appeal from the District Court for the District of New Jersey which found a patent granted for a method of hair removal using a laser invalid. MEHL/Biophile sued Milgraum for infringement of the patent and Milgraum contended that all of the patent claims were anticipated by an instruction manual for a specific laser and a journal article (Polla article). The manual Milgraum cited described the use of the RD-1200 laser for tattoo removal. MEHL/Biophile argued in response that the manual was not an anticipating reference because it did not teach use of the laser for hair removal and it did not include specific claim limitations, such as holding the laser "substantially vertically." Citing court precedents, the CAFC stated that "a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it." With regards to the RD-1200 manual, the court held that it did not anticipate because it did not teach all of the claimed limitations and they were not inherent in the use of the laser in accordance with the manual. The Polla article, however, does inherently include the limitations of the claimed invention in its description of the effect of using such lasers on guinea pigs. Since nothing in the claims limited the method to human skin, Biophile's argument that the article was irrelevant because it focused on guinea pigs was found to be invalid. Based on this finding, the court ruled the patent invalid in light of the Polla article as an anticipation of the invention.