United States District Court, D. Delaware
LIQWD, INC. and OLAPLEX LLC, Plaintiffs,
L'OREAL USA, INC., L'OREAL USA PRODUCTS, INC., L'OREAL USA S/D, INC., and REDKEN 5th AVENUE NYC, L.L.C., Defendants.
R. FALLON UNITED STATES MAGISTRATE JUDGE
Wilmington this 30th day of August,
2018, the court having considered the parties'
discovery dispute submissions and the arguments presented
during the August 1, 2018 discovery dispute hearing (D.I.
347; D.I. 349; D.I. 358; D.I. 368; D.I. 369; D.I. 370; D.I.
371; D.I. 374; D.I. 380; D.I. 381; D.I. 384; 8/1/18 Tr.;
8/29/18 Tr.), IT IS HEREBY ORDERED THAT the relief requested
by defendants L'Oreal USA, Inc., L'Oreal USA
Products, Inc., L'Oreal USA S/D, Inc., and Redken
5th Avenue NYC, L.L.C. (collectively,
"L'Oreal") is DENIED without prejudice for the
reasons set forth below.
Liqwd, Inc. and Olaplex LLC ("Olaplex") brought
this civil action for patent infringement on January 5, 2017.
(D.I. 2) Olaplex alleges causes of action for infringement of
United States Patent Nos. 9, 498, 419 ("the '419
patent") and 9, 668, 954 ("the '954
patent") (together, the "patents-in-suit").
(D.I. 262 at ¶¶ 90-138) The patents-in-suit are
directed to formulations, kits, and methods of applying a
bleaching mixture containing an active agent of maleic acid
to the hair during treatments to rebuild disulfide bonds.
(Id., Ex. A at Abstract; Ex. B at Abstract)
of its letter submissions, L'Oreal requests the entry of
an order barring Olaplex's outside counsel, Mr. Matthew
Blackburn, from further participation in the post-grant
review ("PGR") proceedings relating to the
patents-in-suit in accordance with the terms of the
protective order. (D.I. 358 at 2-4) In addition, L'Oreal
seeks a modification to the existing protective order to
preclude Olaplex's in-house counsel, Ms. Tiffany Walden,
from continued access to L'Oreal's highly
confidential information. (Id. at 4-5) For the
following reasons, L'Oreal's requested relief on both
grounds is denied.
Mr. Blackburn's participation in PGR
the filing of Olaplex's motion for leave to amend its
complaint to add a cause of action for infringement of the
'954 patent in June 2017, L'Oreal filed three PGR
petitions challenging the patentability of all claims of the
'954 patent. (D.I. 354 at 5) On May 18, 2018,
Olaplex's outside patent prosecution counsel, Rivka
Monheit, filed a statutory disclaimer with the United States
Patent and Trademark Office ("PTO") pursuant to 35
U.S.C. § 253, disclaiming claim 17 of the '954
patent. (D.I. 358, Ex. B; D.I. 370 at¶ 5)
On August 10, 2018, the PTAB instituted PGR proceedings
regarding the '954 patent based on one of
L'Oreal's three PGR petitions. (D.I. 366, Ex. A)
However, the Patent Trial and Appeal Board ("PTAB")
excluded claim 17 from the institution of PGR proceedings on
the '954 patent in light of the statutory disclaimer.
(Id., Ex. A at 3 n.l) The PTAB declined to institute
proceedings based on L'Oreal's two remaining
petitions challenging the validity of the '954 patent.
(D.I. 366, Exs. B-C)
The parties' dispute centers on whether the statutory
disclaimer of claim 17 falls within the scope of the
protective order's prohibition against "amendment or
change to any claim" in PGR proceedings. (D.I. 54 at
¶ 12(c)) The protective order provides that "no
person on behalf of Plaintiffs . . . shall, for a period
commencing upon receipt of such information and ending one
year following final disposition of this case engage in any
Post Grant Activity ... on behalf of any Party other than the
Producing Party." (D.I. 54 at ¶ 12(b)) Pursuant to
paragraph 12(c) of the protective order, "post grant
any activity related to directly or indirectly providing any
advice, counseling. preparing, prosecuting, editing, amending
and/or drafting of any claim for any post grant proceeding
involving the patent-in-suit patent or other patent or patent
application claiming priority to or otherwise related to the
patent-in-suit (including, but not limited to . . . post
grant review . . .) before any domestic or foreign patent
office or agency. The restrictions set forth in paragraphs
12(b-c) shall apply immediately upon a good faith belief that
an amendment or change to any claim of the patent-in-suit. .
. would be made or any new claims would be added in such a
post grant proceeding.
(D.I. 54 at ¶ 12(c))
L'Oreal has failed to establish that Mr. Blackburn's
PGR activities violate paragraph 12 of the protective order.
The filing of the statutory disclaimer occurred outside the
PGR proceeding because it was filed and recorded with the
PTO. (D.I. 358, Ex. B) Consequently, when the PTAB issued its
decisions regarding whether to institute proceedings on the
'954 patent, claim 17 of the '954 patent did not
factor into the analysis because Federal Circuit precedent
dictates that the PTAB must treat statutorily disclaimed
claims as though they never existed. (D.I. 366, Ex. A at 3
n.l; Ex. B at 24; Ex. C at 17) (quoting In re Yamazaki,702 F.3d 1327, 1332 (Fed. Cir. 2012)). In this context, the
statutory disclaimer of claim 17 of the '954 patent does
not constitute an "amendment or change" under the
terms of the protective order. This is consistent with
guidance from the Manual of Patent Examining Procedure