DC indefiniteness conclusion vacated for incorrect claim construction, grant of SJ regarding jurisdiction vacated

Univ. of Massachusetts, Carmel Labs., LLC v. L’Oreal S.A. and L’Oreal USA, Inc.

Docket No. 2020-1969 (https://cafc.uscourts.gov/opinions-orders/21-1969.OPINION.6-13-2022_1964183.pdf)


June 13, 2022

Brief Summary:   DC indefiniteness finding vacated due to improper claim construction and grant of SJ for lack of jurisdiction over Loreal S.A. reversed.

Summary:  UMass appealed DC finding of invalidity for indefiniteness of US 6,423,327 and US 6,645,513 (parent and child) directed to methods for “topically applying to the skin a composition comprising a composition 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 10-4M to 10-7M (‘327) or 10-3M to 10-7M (‘513).  UMass also appealed the DC’s dismissal of the action against L’Oreal S.A. (based in France) for lack of personal jurisdiction in Delaware without allowing UMass to conduct discovery regarding that point.  In related IPRs filed by L’Oreal, the Board adopted “UMass’s construction that the recited concentration range is the adenosine concentration applied to the dermal cells in the dermis below the epidermis” and did not institute the IPRs without further definition as “L’Oréal USA had not pointed to any measurement of concentrations beneath the skin surface in the prior art”.  The DC agreed with the Board’s definition, “stating that the wherein clause ‘has its plain and ordinary meaning without the need for further construction.’”  The DC granted L’Oreal USA’s motion for summary judgment (SJ) on indefiniteness based on construction of the “wherein” clause as it “does not establish the adenosine concentration in the composition topically applied to the skin in the skin-enhancement clause” preceding the wherein clause.  The FC panel considered the claim construction de novo as it “rests only on intrinsic evidence” (Intel, FC 2021), explaining that it considers the “ordinary meaning in the context of the claim and the whole patent document” (World Class Tech., FC 2014, Phillips, FC 2005; Thorner, FC 2012) and that “[t]he prosecution history, in particular, ‘may be critical in interpreting disputed claim terms’…even where ‘prosecution history statements do not rise to the level of unmistakable disavowal” (Personalized Media, US 2020; Sunovion, FC 2013; Shire, FC 2015; Medrad, FC 2005).  The FC panel first found “that the relevant claim language, especially when viewed in the context of the whole claim, is not plain on its face, much less plain in supporting UMass’s interpretation of it” (IGT, FC 2011) as the “wherein” clause relates to application to dermal cells while the previous clause refers to the “skin” which is “suggestive of a difference” (“The word ‘applied’ is capable of covering both direct application (to the skin surface) and indirect application (to the sub-surface layer)… The same thing can be applied directly to one object and indirectly to the other.”; citing Hamilton Beach, FC 2018).  The FC panel therefore held that “the claim language is not plain”.  It also concluded that “that the specification and the prosecution history [“even more strongly”] show that the wherein clause should be read to refer to the concentration of adenosine in the composition applied to the skin’s surface” (Phillips; VirnetX, FC 2014; Netcraft, FC 2008; e.g., “wherein” clause amendments made to avoid prior art, allowance indicates “the method comprises administering…to the skin” which UMass did not clarify during prosecution (Biogen, FC 2003)).  The FC panel also reversed the jurisdictional issue as the DC did not allow UMass any discovery.

This entry was posted in Claim Construction, Claim Differentiation, Infringement, Inter Parties Review (IPR), IPR, Prosecution History Estoppel, Wherein, Written description. Bookmark the permalink.

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