ICN Photonics, Ltd. v. Cynosure, Inc.

Citation: 73 F. App'x 425Docket: No. 02-1582

Court: Court of Appeals for the Federal Circuit; July 16, 2003; Federal Appellate Court

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ICN Photonics, Ltd. appeals the U.S. District Court for the District of Massachusetts' summary judgment declaring its U.S. Patent 5,983,900 invalid. The patent pertains to a method for removing skin wrinkles through irradiation, targeting the dermal layer while preserving the epidermis and basal layers. The patent addresses shortcomings of prior techniques that involved damaging the skin by burning through layers to reach collagen. ICN's invention aims to deliver radiation that selectively heats collagen without affecting blood vessels in the basal and dermal layers, thus avoiding damage and maintaining the skin's protective barrier. The independent claim of the patent specifies a method that includes irradiating the dermal layer while ensuring that blood coagulation in the underlying layers does not occur. During the patent's prosecution, ICN amended the claim to distinguish it from U.S. Patent 5,755,751 by emphasizing these "without coagulating" limitations, which were necessary to overcome a rejection based on prior art. The court's decision is reversed due to the presence of genuine issues of material fact regarding the patent's validity.

Eckhouse’s patent briefly notes that skin rejuvenation should be effective, leading the examiner to reject ICN’s original claim 1. In response, ICN characterized Eckhouse’s focus as the removal of skin blemishes through blood vessel coagulation, while asserting that their amended claim aimed at wrinkle removal via heat application without coagulation. The examiner ultimately allowed the claims, resulting in the issuance of the ’900 patent. ICN subsequently sued Cynosure, Inc. for infringement, but Cynosure’s motion for summary judgment was granted, declaring the claims invalid for not meeting the written description requirement under 35 U.S.C. § 112, 1. Cynosure argued that the added “without coagulation” limitation was not described in the original application. ICN acknowledged the absence of exact language but presented a declaration from Dr. Jeffrey Rapaport, who claimed that a skilled artisan would understand these limitations to be inherent in the original specification. However, the court found Dr. Rapaport’s testimony insufficient, lacking a proper explanation of “inherent” and a factual basis. Consequently, summary judgment was granted in favor of Cynosure. ICN is appealing this decision, with jurisdiction established under 28 U.S.C. § 1295(a)(1). The appellate review will apply a de novo standard, considering whether there are genuine issues of material fact as per summary judgment criteria. The written description requirement is a factual question, with patents presumed valid, necessitating clear and convincing evidence for claims of invalidity.

ICN contends on appeal that the court improperly favored Cynosure's attorney arguments over Rapaport's testimony, which, if deemed credible, would demonstrate that the "without coagulating" limitations were present in the originally filed ’900 patent. ICN asserts that the court failed to apply the clear and convincing evidentiary burden, particularly given the PTO's lack of objection to the claim amendment as introducing new matter. In response, Cynosure argues the court properly assessed the evidence, including the ’900 patent as the best evidence of written description, concluding that no reasonable fact-finder could find the written description adequate to support the claims. Cynosure emphasizes the strict standard requiring limitations to be "necessarily present" and "unambiguously described" for one skilled in the art, asserting that the ’900 patent's written description falls short. Cynosure criticizes Rapaport's declaration as lacking factual basis and contending it did not establish that the disputed limitation was necessarily present. Furthermore, Cynosure argues that the prosecution history indicates that the limitations are not inherent in the statement regarding the basal layer, and if ICN's inherency argument holds, the claims would be anticipated by Eckhouse. Cynosure also highlights that a generic expression does not provide a written description for all variants, referencing 35 U.S.C. § 112, 1, which mandates that the specification includes a written description of the invention to prevent the introduction of new matter through amendments. The requirement aims to ensure that any added limitations have support from the originally filed application, which can be expressed in different language as long as it conveys the same meaning.

The key issue is whether the limitations added by amendment were inherently contained in the original patent application. The standard for determining this involves assessing if a skilled individual, upon reading the original disclosure, would recognize the limitation as necessarily present. A disclosure must reasonably convey to such individuals that the inventor possessed the subject matter in question. The document emphasizes that the presumption of compliance with the written description requirement is not automatically established by the PTO’s failure to reject new matter, and this presumption is case-specific rather than determinative. 

In this instance, Dr. Rapaport's affidavit suggests that the limitations regarding "without coagulating" were inherent in the original ’900 patent. Although the district court found some faults in Rapaport’s affidavit, these do not undermine its significance as they do not constitute fatal flaws. The court's criticisms regarding the conclusory nature of his opinion relate to the weight of the testimony rather than its admissibility. Unlike previous cases where expert testimonies were deemed inadequate, Rapaport's affidavit is properly focused on the written description requirement and cites specific passages from the '900 patent, indicating what a dermatologist would have understood at the time of filing. This establishes a genuine issue of material fact that necessitates further examination as the case proceeds.

Cynosure's argument that the prosecution history indicates the "without coagulating" limitations were not inherent in the ’900 patent application is unconvincing at this stage. Cynosure asserts that by amending the claims to include these limitations, ICN effectively admitted that the original phrase "the basal layer remains intact" did not imply the absence of coagulation. ICN argues that the amendment merely clarified what was already implicit. The court recognizes that if ICN succeeds on the written description issue, it may be because the original phrase, in conjunction with the specification, inherently suggests that blood is not coagulated in the relevant skin layers. This determination is a factual question unsuitable for summary judgment.

Cynosure also claims that if ICN's inherency argument is accepted, then Eckhouse inherently discloses similar limitations, potentially anticipating the claims. While Cynosure posits that Eckhouse’s teaching of non-damaging irradiation implies a lack of blood coagulation, the record does not sufficiently support this claim at present. Eckhouse discusses coagulation in deeper tissue, not in the basal or dermal layers, and ICN may have mischaracterized Eckhouse during prosecution. 

The court does not rule in favor of Cynosure on the written description issue, rejecting the argument that lack of coagulation is inadequately supported by the specification. Although broad genus disclosures do not guarantee support for all species, the genus in this case is not extensive. The testimony implies that absence of skin damage from irradiation suggests absence of blood coagulation, as coagulation is a recognized form of damage. ICN has raised a genuine issue of material fact regarding the inherent support for the added limitations, leading to the reversal of the summary judgment of invalidity and remanding for further proceedings.