United States District Court, D. Delaware
UNIVERSITY OF MASSACHUSETTS MEDICAL SCHOOL and CARMEL LABORATORIES, LLC, Plaintiffs,
L'OREAL S.A. and L'OREAL USA, INC. Defendants.
REPORT AND RECOMMENDATION
R. FALLONUNITED STATES MAGISTRATE JUDGE
before the court in this patent infringement action are the
following motions: (1) the motion to dismiss the complaint
pursuant to Rule 12(b)(6) of the Federal Rules of Civil
Procedure, filed by defendant L'Oreal USA, Inc.
("L'Oreal USA") (D.I. 15); and (2) the motion
to dismiss the complaint pursuant to Rules 12(b)(2) and
12(b)(6), filed by defendant L'Oreal S.A. (together with
L'Oreal USA, "L'Oreal" or
"defendants") (D.I. 23). For the following reasons,
I recommend that the court deny the Rule 12(b)(6) motions to
dismiss of L'Oreal USA and L'Oreal S.A., and grant
L'Oreal S.A.'s Rule 12(b)(2) motion to dismiss.
23, 2002, the United States Patent and Trademark Office
issued United States Patent No. 6, 423, 327 ("the
'327 patent"), entitled "Treatment of Skin with
Adenosine or Adenosine Analog." The '327 patent was
filed on September 28, 2000 and is a continuation of
Application No. 09/179, 006, which was filed on October 26,
1998 and is now abandoned. The patent lists as inventors
James G. Dobson, Jr. and Michael F. Ethier
("inventors"), and identifies University of
Massachusetts as the assignee. Carmel Laboratories, LLC
("Carmel Labs") is the exclusive licensee of the
'327 patent. (D.I. 13 at ¶ 36) The '327 patent
describes methods for improving the condition of unbroken,
mammalian skin by applying 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"4 M to
10"7 M." ('327 patent, col. 10:18-26)
States Patent No. 6, 645, 513 ("the '513
patent") (together with the '327 patent, the
"patents-in-suit") was filed on June 28, 2002 and
issued on November 11, 2003. The '513 patent is a
continuation of the '327 patent. The '513 and
'327 patents share the same title, abstract, inventors,
specification, assignee, and exclusive licensee.
1 and 9 of the '513 and '327 patents ("the
asserted claims") are also identical except for the
claimed concentrations of adenosine applied to the dermal
cells. Specifically, the '327 patent claims an adenosine
concentration of 10-4 M to 10-7 M,
('327 patent, col. 10:25-26), and the '513 patent
claims a concentration of 10-3 M to
10-7 M, ('513 patent, col. 10:25-26).
of Massachusetts Medical School is a public institution of
higher education in Massachusetts. (D.I. 13 at ¶ 1).
University of Massachusetts is identified as the assignee of
the patents-in-suit. ('327 patent, Assignee; '513
Labs (together with University of Massachusetts Medical
School, "plaintiffs") is a for-profit Massachusetts
limited liability company founded and wholly-owned by
Teresian Carmelites, Inc. ("Teresian Carmelites").
(D.I. 13 at ¶ 3) Teresian Carmelites is a Massachusetts
non-profit religious organization dedicated to prayer and
service to the poor and marginalized. (Id. at
¶¶ 2, 14) Carmel Labs' profits financially
sustain Teresian Carmelites and fund its charitable
endeavors. (Id. at ¶ 15) Carmel Labs is
purportedly the exclusive licensee of the patents-in-suit for
all cosmetic applications, and has been since 2008.
(Id. at ¶ 15) Using the patented adenosine
technology, Carmel Labs developed "Easeamine," an
anti-aging face cream that it released for sale in 2009.
(Id. at ¶ 16)
USA is a wholly-owned subsidiary of L'Oreal S.A., a
French corporation headquartered in France. (Id. at
¶¶ 5, 7) L'Oreal USA is Delaware corporation
with its principal place of business in New York, New York.
(Id. at ¶ 6) L'Oreal USA develops and
manufactures hair care, skin care, cosmetics, and fragrances
distributed globally. (Id. at ¶ 18) Plaintiffs
accuse eighteen L'Oreal brands of selling infringing
products, including but not limited to the following brands
with products containing adenosine: Biotherm; The Body Shop;
Carita; Decleor; Gamier; Giorgio Armani; Helena Rubinstein;
IT Cosmetics; Kiehl's; L'Oreal Paris; La Roche-Posay;
Lancome; Maybelline; Roger & Gallet; Sanoflore; Shu
Uemura; Vichy; and Yves Saint Laurent (the "Unnamed
Accused Products"). (Id. at ¶ 31) However,
the only product identified by name in the First Amended
Complaint is L'Oreal Paris' RevitaLift Triple Power
Deep-Acting Moisturizer (together with the Unnamed Accused
Products, the "Accused Products"). (Id. at
James G. Dobson, Jr., the former Chairman of the Department
of Physiology at University of Massachusetts Medical School,
and his colleague, Dr. Michael Ethier, discovered that
topical application of adenosine to dermal cells in specified
concentrations can enhance the condition of the skin without
increasing dermal cell proliferation. (Id. at ¶
10) Their discoveries are embodied in the '327 and
'513 patents. (Id. at ¶ 11) Drs. Dobson and
Ethier assigned their intellectual property rights to
University of Massachusetts. (Id. at ¶ 4)
Carmelites learned of the adenosine technology Drs. Dobson
and Ethier developed through its relationship with Dr.
Dobson, and negotiated a license for the technology.
(Id. at ¶ 15) Since 2008, Carmel Labs has been
the exclusive licensee of the patents-in-suit for all
cosmetic applications. (Id.) After securing a
license to the patents-in-suit, Carmel Labs used the patented
adenosine technology to develop an anti-aging face cream
called "Easeamine," which was released for sale in
2009. (Id. at ¶¶ 15-16)
has cited to the '327 and '513 patents in several of
its own issued patents and at least one now-abandoned
application. (Id. at ¶¶ 20-22, Exs. 7-10)
In fall of 2003, an agent of L'Oreal contacted Dr. Dobson
to discuss the patents-in-suit, but failed to obtain a
license. (Id. at ¶ 23) Following this
conversation, L'Oreal began creating, marketing, and
selling the Accused Products. (Id. at ¶ 24) On
October 15, 2010, L'Oreal publicly announced the upcoming
launch of its new Youth Code line of skin care containing
adenosine. (Id. at ¶ 25; Ex. 5) In March 2015,
the president of Teresian Carmelites and Carmel Labs sent a
letter to L'Oreal's CEO stating his belief that
L'Oreal's products infringe the patents-in-suit, and
affirming that Carmel Labs is the exclusive licensee of the
patents-in-suit. (Id. at ¶ 30)
30, 2017, University of Massachusetts Medical School and
Carmel Labs filed the present action against L'Oreal
U.S.A and L'Oreal S.A., asserting causes of action for
the alleged infringement of the '327 and '513
patents. (D.I. 1) On August 4, 2017, L'Oreal U.S.A filed
its motion to dismiss plaintiffs' complaint, pursuant to
Rules 8(a)(2) and 12(b)(6). (D.I. 7) Plaintiffs subsequently
filed their First Amended Complaint ("FAC") on
August 18, 2017. (D.I. 13) In response, L'Oreal USA filed
its motion to dismiss the FAC on August 23, 2017, alleging
that the causes of action failed to state a claim under Rule
12(b)(6). (D.I. 15) L'Oreal S.A. followed suit on October
16, 2017, filing a motion to dismiss for lack of personal
jurisdiction and failure to state a claim upon which relief
can be granted. (D.I. 23)
Failure to State a Claim
12(b)(6) permits a party to move to dismiss a complaint for
failure to state a claim upon which relief can be granted.
Fed.R.Civ.P. 12(b)(6). When considering a Rule 12(b)(6)
motion to dismiss, the court must accept as true all factual
allegations in the complaint and view them in the light most
favorable to the plaintiff. Umland v. Planco Fin.
Servs., 542 F.3d 59, 64 (3d Cir. 2008).
state a claim upon which relief can be granted pursuant to
Rule 12(b)(6), a complaint must contain a "short and
plain statement of the claim showing that the pleader is
entitled to relief." Fed.R.Civ.P. 8(a)(2). Although
detailed factual allegations are not required, the complaint
must set forth sufficient factual matter, accepted as true,
to "state a claim to relief that is plausible on its
face." Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570 (2007); see also Ashcroft v. Iqbal, 556
U.S. 662, 663 (2009). A claim is facially plausible when the
factual allegations allow the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged. Iqbal, 556 U.S. at 663; Twombly,
550 U.S. at 555-56.
determining whether dismissal is appropriate, the court must
take three steps. See Santiago v. Warminster Twp.,
629 F.3d 121, 130 (3d Cir. 2010). First, the court must
identify the elements of the claim. Iqbal, 556 U.S.
at 675. Second, the court must identify and reject conclusory
allegations. Id. at 678. Third, the court should
assume the veracity of the well-pleaded factual allegations
identified under the first prong of the analysis, and
determine whether they are sufficiently alleged to state a
claim for relief. Id.; see also Malleus v.
George, 641 F.3d 560, 563 (3d Cir. 2011). The third
prong presents a context-specific inquiry that "draw[s]
on [the court's] experience and common sense."
Id. at 663-64; see also Fowler v. UPMC
Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). As the
Supreme Court instructed in Iqbal, "where the
well-pleaded facts do not permit the court to infer more than
the mere possibility of misconduct, the complaint has alleged
- but it has not 'show[n]' - 'that the pleader is
entitled to relief.'" Iqbal, 556 U.S. at
679 (quoting Fed.R.Civ.P. 8(a)(2)).
court's determination is not whether the non-moving party
"will ultimately prevail," but whether that party
is "entitled to offer evidence to support the
claims." United States ex rel. Wilkins v. United
Health Grp., Inc., 659 F.3d 295, 302 (3d Cir. 2011).
This "does not impose a probability requirement at the
pleading stage," but instead "simply calls for
enough facts to raise a reasonable expectation that discovery
will reveal evidence of [the necessary element]."
Phillips, 515 F.3d at 234 (quoting Twombly,
550 U.S. at 556). The court's analysis is a
context-specific task requiring the court "to draw on
its judicial experience and common sense."
Iqbal, 556 U.S. at 663-64.
12(b)(2) directs the court to dismiss a case when the court
lacks personal jurisdiction over the defendant. Fed.R.Civ.P.
12(b)(2). When reviewing a motion to dismiss pursuant to Rule
12(b)(2), a court must accept as true all allegations of
jurisdictional fact made by the plaintiff and resolve all
factual disputes in the plaintiffs favor. Traynor v.
Liu, 495 F.Supp.2d 444, 448 (D. Del. 2007). Once a
jurisdictional defense has been raised, the plaintiff bears
the burden of establishing, with reasonable particularity,
that sufficient minimum contacts have occurred between the
defendant and the forum to support jurisdiction. See
Provident Nat 7 Bank v. Cal. Fed. Sav. & Loan
Ass % 819 F.2d 434, 437 (3d Cir. 1987). To meet this
burden, the plaintiff must produce "sworn affidavits or
other competent evidence," since a Rule 12(b)(2) motion
"requires resolution of factual issues outside the
pleadings." Time Share Vacation Club v. Atlantic
Resorts, Ltd., 735 F.2d 61, 67 n.9 (3d Cir. 1984).
establish personal jurisdiction, a plaintiff must demonstrate
facts sufficient to satisfy both a statutory and a
constitutional requirement. With respect to the statutory
analysis, the court analyzes the long-arm statute of the
state in which the court is located. See IMO Indus., Inc.
v. Kiekert AG,155 F.3d 254, 259 (3d Cir. 1998). Next,
the court must determine whether exercising jurisdiction over
the moving defendant in this state comports with the due
process clause of the United States Constitution. See
id.; Autogenomics, Inc. v. Oxford Gene Tech. Ltd., ...