Monday, June 13, 2022

Appellant wins in L'Oreal case

Of prosecution history

We hold that this prosecution history requires that the wherein clause’s reference to the recited concentrations being “applied to the dermal cells” be read as referring to concentrations of the composition applied to the skin’s surface. The amendments and comments clearly convey 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. UMass’s proposed construction now cannot fairly be squared with the understanding that both it and the examiner expressed during prosecution, and on which skilled artisans are entitled to rely. UMass makes various counterarguments concerning the prosecution history, but all are unavailing. As an initial, legal matter, we reiterate that this is not a case where the prosecution history must meet the standard of clear and unmistakable disclaimer for overcoming an otherwiseplain meaning, contrary to UMass, the Board, and the district court’s framings. See UMass Reply Br. 27; J.A. 2808– 10; J.A. 3721 (Hearing Tr. at 58:4–7). We need not decide whether that standard is met here. Because the meaning of the relevant claim language is not plain, but rather ambiguous for the reasons described in Section II.A, we can look to the prosecution history to “inform[] the meaning of the disputed claim phrase and address[] an ambiguity otherwise left unresolved.” Personalized Media Communications, 952 F.3d at 1345; see also SoundView Innovations, LLC v. Hulu, LLC, 33 F.4th 1326, 1332–35 (Fed. Cir. 2022).


As a result of our new construction, the district court’s subsequent indefiniteness ruling must be vacated, and we remand for the district court to conduct any further proceedings that are necessary. Although L’Oréal proposes that, if we reverse the claim construction of the wherein clause, we could directly enter a judgment of non-infringement, we leave it to the district court to determine how to proceed under the new construction. See L’Oréal Response Br. 45–46 & n.24 (contending that UMass conceded noninfringement); UMass Reply Br. 21 (disputing concession); Oral Arg. at 18:45–19:10, 48:13–49:16 (also discussing existence of invalidity counterclaims).

Of abuse of discretion

Here, the district court abused its discretion in not allowing jurisdictional discovery on the record before it. In front of the magistrate judge, 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. See Plaintiffs’ Memorandum of Law in Opposition to Defendant L’Oréal S.A.’s Motion to Dismiss at 1–17, University of Massachusetts v. L’Oreal S.A., No. 1:17-cv-00868 (D. Del. Dec. 8, 2017), ECF No. 27. For example, as potentially relevant to both theories, UMass put forward evidence buttressing the possibility that L’Oréal S.A. researched and developed the addition of adenosine to skin-care products, J.A. 263–69; J.A. 1070; J.A. 1073–77, and L’Oréal S.A.’s own submitted declaration indicated that L’Oréal S.A. may have licensed that technology to L’Oréal USA, J.A. 553–54 (Rabinowitz Decl. ¶ 6) (“From time to time, L’Oréal S.A. and L’Oréal USA engage in the sale of goods or services between the two companies.”). For its part, L’Oréal S.A. did not specifically deny allegations that it developed and licensed the relevant technology to L’Oréal USA, stating only that “L’Oréal S.A. does not directly develop, sell, market, or advertise to consumers in Delaware any of the products at issue in this action,” without making it clear what it meant by “directly develop.” J.A. 553–54 (Rabinowitz Decl. ¶ 6).2

Because this evidence raises the possibility that discovery might have uncovered the requisite contacts under our precedent, see, e.g., Nuance Communications, Inc. v. Abbyy Software House, 626 F.3d 1222, 1233–34 (Fed. Cir. 2010); Celgard, LLC v. SK Innovation Co., 792 F.3d 1373, 1379– 82 (Fed. Cir. 2015), we vacate the jurisdictional determinations. UMass is entitled to jurisdictional discovery before any jurisdictional determination, if one remains necessary, is made.


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