Thursday, January 28, 2021

Secondary considerations in L'Oreal case

From the decision:

The Board then considered, at length, Olaplex’s submissions concerning objective indicia of nonobviousness, addressing commercial success, long-felt and unmet need, unexpected results, industry praise, and copying. J.A. 48– 76. For commercial success, long-felt need, and unexpected results, the Board “g[a]ve little weight” to Olaplex’s evidence. J.A. 61, 68, 71, 73. For industry praise, the Board did “not find that the record here demonstrates industry praise for the subject matter claimed in the ’954 patent.” J.A. 76 (emphasis added). And for copying, the Board did “not give substantial weight to” the copying evidence. J.A. 59. While stating that “one plausible takeaway is that” L’Oréal copied information in a then-confidential Olaplex patent application disclosing maleic acid in a bleaching mixture, J.A. 54, the Board found that the evidence (including a laboratory notebook) showed that L’Oréal had independently described “its own maleic-acid additive for a bleaching composition before receiving” the Olaplex patent application, J.A. 56. In the end, the Board concluded, the objective indicia did “not outweigh the evidence that claim 1 is unpatentable” based on Pratt and Tanabe. J.A. 76. Claims 2–13, 19– 23, and 29–30 fell with claim 1. J.A. 76–77, 84.

HOWEVER, there was a matter of issue preclusion:

we must accept that “L’Oréal would not have developed products using maleic acid without having access to Liqwd’s confidential information.” Liqwd, Inc. v. L’Oréal USA, Inc., 941 F.3d 1133, 1136 (Fed. Cir. 2019) (’419 Decision); id. at 1138–39 (affirming Board finding that “L’Oréal used maleic acid because of L’Oréal’s access to Liqwd’s non-public information, rather than because of L’Oréal’s independent development” (cleaned up)). We conclude, however, that substantial evidence supports the additional nexus-related facts that the Board in this matter found regarding copying, and given those facts, we further conclude, in conducting the ultimate legal analysis of obviousness based on all supported facts, that claims 1– 13, 19–23, and 29–30 are unpatentable for obviousness.

As a review, "issue preclusion," prohibits relitigation of factual or legal issues that have been "actually and necessarily decided" in earlier litigation. Although one does not know the CAFC's meaning of the text cleaned up, it might appear that collateral estoppel (issue preclusion) was not applied here, so that the text "we must accept" is a bit problematic.

Can the presence of additional nexus-related facts trump an earlier factual finding actually and necessarily decided?


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