Patent Case Summaries June 23, 2022

Patent Case Summaries | Week Ending June 17, 2022

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

University of Massachusetts, et al. v. L’Oréal S.A., et al., No. 2021-1969 (Fed. Cir. (D. Del.) June 13, 2022). Opinion by Taranto, joined by Prost and Mayer. 

University of Massachusetts (UMass) filed a complaint against L’Oréal S.A. and L’Oréal USA, Inc. for infringement of two patents covering methods for enhancing skin condition by applying compositions containing adenosine. L’Oréal S.A. filed a motion to dismiss for lack of personal jurisdiction. The district court granted the motion without allowing UMass any jurisdictional discovery, and thus dismissed L’Oréal S.A. from the case.

The district court also addressed claim construction. The court construed a “wherein” clause that requires an “adenosine concentration applied to the dermal cells” to have a molar concentration within a specified range. The court did not further construe the meaning of the “adenosine concentration applied to the dermal cells,” stating instead that the wherein clause has its plain and ordinary meaning. Applying that construction, the district court granted summary judgment of indefiniteness. In doing so, the court distinguished the concentration recited in the wherein clause and a concentration recited in another clause relating to skin enhancement.

On appeal, UMass challenged both the indefiniteness ruling and the personal-jurisdiction ruling.

Regarding indefiniteness, the Federal Circuit rejected the district court’s claim construction. The Federal Circuit explained that the claim language “is not plain on its face,” but both the specification and the prosecution history “show that the wherein clause should be read to refer to the concentration of adenosine in the composition applied to the skin’s surface.” Because of that new construction, the Federal Circuit vacated and remanded the indefiniteness ruling.

Regarding personal jurisdiction, the Federal Circuit vacated because “at the very least jurisdictional discovery was appropriate.” Under the applicable law of the regional circuit, “if the plaintiff presents factual allegations that suggest with reasonable particularity the possible existence of the requisite contacts … , the plaintiff’s right to conduct jurisdictional discovery should be sustained.” Thus, the Federal Circuit ruled that the district court abused its discretion in not allowing jurisdictional discovery. UMass had made more than bare bones allegations that L’Oréal S.A. was subject to personal jurisdiction.

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