Printed Publication (HW 3-23) (RCTA)

MEHL/Biophile International Corp. v. Milgraum

• United States Court of Appeals, Federal Circuit
• Plaintiffs-Appellants: MEHL/Biophile International Corp., Selvac Acquisitions Corp. and Nardo Zaias, M.D.
• Defendants-Appellees: Sandy Milgraum, M.D., Palomar Medical Technologies, Inc., and Spectrum Medical Technologies, Inc.
• Date: Sept. 30, 1999 (Rehearing denied Oct. 27, 1999)

Holding

1. Patent was not anticipated by instruction manual for laser used to remove tattoos (instruction manual for Spectrum RD-1200 laser)
2. Patent was anticipated by prior art article ("Melanosomes Are a Primary Target of Q-Switched Ruby Laser Irradiation in Guinea Pig Skin" by Dr. Luigi Polla et al, published in the 1987 Journal of Investigative Dermatology)

Summary

MEHL/Biophile sued Dr. Sandy Milgraum for infringing U.S. patent No. 5,059,192 ('192 patent), a method for removing hair using a laser. Milgraum asserted that the patent claims were invalid because they had been anticipated in the prior art. The Court held that to "anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." Milgraum presented two sources, arguing that both anticipated '192 patent and rendered it invalid under 35 USC 102. The first was a manual for a laser used to remove tattoos. The second was an article relating a study of "tissue damage induced by laser pulses on epilated backs of guinea pigs." The district court concluded that the manual anticipated the '192 patent and granted a summary judgment of invalidity. However, the CAFC concluded that the manual was not an anticipation because it does not teach the Claim 1 limitation of "aligning a laser light applicator substantially vertically over a hair follicle opening." That is, someone following the manual could use the laser without aligning it in the configuration required by the claim. In contrast, the natural result of following the teaching of the Polla article would be alignment of the laser over the hair follicle. In holding the laser perpendicular to the skin and pulsing the laser, the conductors of the study necessarily held the laser "substantially vertically" and damaged hair follicles. In fact, the article repeatedly mentions the effect that the laser treatment had upon hair follicles, so the natural result was the function in question. The CAFC held the patent invalid by reason of anticipation in the prior art in the Polla article.