Latest Federal Court Cases - June 2022 #2

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University of Massachusetts v. L’Oréal S.A., Appeal No. 2021-1969 (Fed. Cir. June 13, 2022)

In an appeal from the U.S. District Court for the District of Delaware, the Federal Circuit addressed (1) whether the district court relied on the proper claim construction to arrive at its indefiniteness conclusion; and (2) whether UMass was entitled to jurisdictional discovery before the district court granted a motion to dismiss based on lack of personal jurisdiction.  The Federal Circuit overruled the district court on both rulings, vacating the indefiniteness ruling and the dismissal without jurisdictional discovery.  

UMass’s patents at issue, both titled “Treatment of Skin with Adenosine or Adenosine Analog,” describe methods for enhancing the condition of non-diseased skin by topical application of compositions containing a naturally occurring nucleoside called adenosine.  The particular claim at issue states: 

A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising topically applying to the skin a composition comprising a concentration of adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, wherein the adenosine concentration applied to the dermal cells is 10-4 M to 10-7 M.

UMass filed a complaint in the district court against L’Oréal S.A. (a French company) and L’Oréal USA for infringement of the patents at issue.  L’Oréal S.A. filed a motion to dismiss contending that the district court lacked personal jurisdiction.  UMass opposed the motion, arguing it should be granted discovery related to personal jurisdiction.  The district court dismissed L’Oréal S.A. without providing UMass an opportunity to conduct discovery related to personal jurisdiction.  Thereafter, L’Oréal USA asked the district court to construe the wherein clause (emphasized above).  The district court concluded the recited concentration range referred to the concentration as it is applied to the dermal cells in the dermis below the surface layer of the skin, not the concentration of adenosine applied to the epidermis (the skin surface).  The district court did not further specify the meaning of “the adenosine concentration applied to the dermal cells.”  The district court entered an order stating that the wherein clause has its plain and ordinary meaning without the need for further construction.

L’Oréal USA moved for summary judgment, focusing on the claim language preceding the wherein clause (the so-called skin-enhancement clause)—requiring “topically applying to the skin a composition comprising a concentration of adenosine in an amount effective to enhance the condition of the skin, without increasing dermal cell proliferation.”  L’Oréal USA argued that the language was indefinite if the district court (1) maintained its earlier ruling on the wherein clause; and (2) further concluded that the recited concentration range in the wherein clause did not establish the adenosine concentration in the composition topically applied to the skin in the skin-enhancement clause.  The district court granted L’Oréal USA’s summary judgment motion, relying on the earlier claim-construction ruling that the concentration recited in the wherein clause concerned application to the subsurface dermal cells and emphasizing the distinctness of that concentration and the concentration recited in the skin-enhancement clause. 

On appeal, UMass argued that the district court’s ruling on indefiniteness relied on resolution of a dispute about claim construction, specifically about the proper understanding of the wherein clause and how it relates to the skin-enhancement clause.  UMass insisted that the “concentration” in the wherein clause was the concentration of adenosine in the dermis after it has entered the dermis.  The Federal Circuit rejected UMass’s view, but nonetheless vacated the district court’s indefiniteness ruling, concluding that the claim language was not plain in the respect at issue and that the proper interpretation was determined by the specification and, most pointedly, by the prosecution history.

In particular, the Federal Circuit reasoned that the prosecution history required that the wherein clause’s reference to the recited concentrations “applied to the dermal cells” be read as referring to concentrations of the composition applied to the skin’s surface.  This is because the amendments and comments clearly conveyed that UMass was continuing the pre-amendment reliance on the concentration in the composition before application to the skin, rather than introducing a materially different, unexplained notion of concentration no longer assessed before contact with the object of application.  And because the prosecution history informed the meaning of the disputed claim phrase and addressed any ambiguity, the district court’s indefiniteness ruling was improper. 

Turning to the personal jurisdiction argument, the Federal Circuit emphasized that jurisdictional discovery should have been allowed unless UMass was attempting to undertake a fishing expedition based only on bare allegations or its claim was clearly frivolous.  Under this standard, the Federal Circuit held that the district court abused its discretion in not allowing jurisdictional discovery on the record before it, reasoning that UMass made more than clearly frivolous, bare allegations that L’Oréal S.A. was subject to personal jurisdiction, either because L’Oréal S.A. introduced the accused products into the stream of commerce or because L’Oréal USA operated as L’Oréal S.A.’s agent in certain potentially relevant respects. 

The opinion can be found here.

By Mario Delegato

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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