General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., No. 17-1012 (Fed. Cir. 2018)Annotate this Case
The claims relate to methods of removing hair using nanoparticles to damage hair follicles. GHC is the named applicant on the 575 application. Sienna owns the 941 patent. In 2015, at GHC’s suggestion, the Board declared an interference and identified claim 1 of the 941 patent as the sole count. Claim 1 is directed to a method of localizing thermal damage to a hair follicle by applying a composition comprising a plurality of unassembled plasmonic nanoparticles to a skin surface. The Board identified claims 65–67 of the 575 application and claims 1–20 of the 941 patent as corresponding to that count. Sienna argued that claims of the 575 application were unpatentable for failure to meet the written description requirement. The Board found claims 65–67 lack written description support and are unpatentable under 35 U.S.C. 112 and denied GHC’s motion to add new claim 74, determining that GHC did not show interference-in-fact with Sienna claim or correspondence to Count 1, and failed to provide supporting evidence that this claim was patentable. The Federal Circuit vacated. Substantial evidence supports a finding of a lack of sufficient of written description but the Board erred in denying the motion to amend; its determination that GHC had not established claim 74 interferes with any of Sienna’s claims was not in accordance with controlling precedent.