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Liqwd, Inc. v. L'Oreal USA, Inc.

United States District Court, D. Delaware

January 8, 2019

LIQWD, INC. and OLAPLEX LLC, Plaintiffs,
v.
L'OREAL USA, INC., L'OREAL USA PRODUCTS, INC., L'OREAL USA S/D, INC., and REDKEN 5th AVENUE NYC, L.L.C., Defendants.

          REPORT AND RECOMMENDATION

          SHERRY R. FALLON UNITED STATES MAGISTRATE JUDGE.

         I. INTRODUCTION

         In this patent infringement action filed by plaintiffs Liqwd, Inc. and Olaplex LLC (together, "Olaplex") against defendants L'Oreal USA, Inc., L'Oreal USA Products, Inc., L'Oreal USA S/D, Inc., and Redken 5th Avenue NYC, LLC (collectively, "L'Oreal"), Olaplex alleges infringement of United States Patent Nos. 9, 498, 419 ("the '419 patent") and 9, 668, 954 ("the '954 patent"). (D.I. 262 at ¶¶ 90-138) Presently before the court is the matter of claim construction. This decision sets forth the court's recommendations of constructions for the disputed claim terms discussed in the briefing and at the Markman hearing held on November 8, 2018.

         II. BACKGROUND

         On November 22, 2016, the United States Patent and Trademark Office (the "USPTO") issued the '419 patent, entitled "Keratin Treatment Formulations and Methods." The '419 patent was filed on March 31, 2016 on a fast track, and claims priority to United States Provisional Application No. 61/994, 709, which was filed on May 16, 2014. The '419 patent is a continuation of parent application no. 14/713, 885, which was filed on May 15, 2015, published on November 19, 2015, and issued as U.S. Patent No. 9, 326, 926 on May 3, 2016. The '419 patent lists as inventors Eric D. Pressly and Craig J. Hawker ("the inventors"), and identifies Liqwd, Inc. as the assignee. The '419 patent describes "[f]ormulations, kits, and methods for rebuilding the disulfide bonds in keratin" to be applied in conjunction with a hair coloring treatment. ('419 patent, Abstract)

         United States Patent No. 9, 668, 954 ("the '954 patent") (together with the '419 patent, the "patents-in-suit") was filed on January 25, 2017 and issued on June 6, 2017. On April 26, 2017, the USPTO issued a notice of allowance for the claims in the '954 patent. (D.I. 143, Ex. B) The '954 patent is a continuation of United States Patent Application No. 15/290, 593, which is a continuation of the '419 patent. The '954 patent has the same title, inventors, and specification as the '419 patent. The active agent element of claim 1 of the '954 patent requires application of a bleaching mixture containing an active agent of maleic acid to the hair. ('954 patent, col. 25:58-67)

         III. LEGAL STANDARD

         Construing the claims of a patent presents a question of law, although subsidiary fact finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837-38 (2015) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 388-90 (1996)). "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324. Instead, the court may attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

         The words of the claims "are generally given their ordinary and customary meaning," which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted); see also Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016). Claim terms are typically used consistently throughout the patent, and "usage of a term in one claim can often illuminate the meaning of the same term in other claims." Phillips, 415 F.3d at 1314 (observing that "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment. . . [b]ecause claim terms are normally used consistently throughout the patent ...").

         It is likewise true that "[differences among claims can also be a useful guide .... For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003) (citing Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1375 (Fed. Cir. 2002).

         Other intrinsic evidence, including the patent specification, "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007). The specification "is not a substitute for, nor can it be used to rewrite, the chosen claim language." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is also "intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.

         A court also may rely on "extrinsic evidence," which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. ("[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court."). Overall, while extrinsic evidence may be useful to the court, it is less reliable than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19.

         Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).

         IV. CONSTRUCTION OF DISPUTED TERMS

         A. "active agent in the mixture is at a concentration" ('419 patent, claim 1 and asserted dependent claims; '954 patent, claim 1 and asserted dependent claims)

Olaplex

L'Oreal

Court

weight of active agent added into the active agent formulation relative to the total weight of the mixture with the bleaching formulation

The phrase identified by Olaplex should be construed in context of the entire "wherein" clause as identified below in Defendants' proposed construction. Thus, the phrase identified by Olaplex in the context of the wherein clause ("wherein the active agent in the mixture is at a concentration ranging from about 0.1% by weight to about 50% by weight") should be construed as:

wherein the active agent is present in the mixture that is applied to the hair at a concentration ranging from about 0.1 % by weight to about 50% by weight

weight of active agent added into the active agent formulation relative to the total weight of the mixture with the bleaching formulation

         I recommend that the court adopt Olaplex's proposed construction, which is consistent with the intrinsic and extrinsic record. The parties do not dispute the meaning of the term "active agent," which is defined in the specification as the formula for maleic acid or salts thereof. ('419 patent, col. 9:6-20, 25:44-53; '954 patent, col. 25:63) Moreover, the parties do not challenge the meaning of "mixture" or "concentration" as they are used in the disputed phrase. Instead, the parties' dispute focuses on whether the concentration of the active agent is measured before or after being added to the final bleaching solution. Specifically, Olaplex contends that the active agent concentration must be relative to the total weight of the mixture of active agent formulation and bleaching formulation before it is added to the solution. (D.I. 423 at 6) In contrast, L'Oreal alleges that the active agent must be in the mixture when the concentration is calculated. (D.I. 420 at 8)

         Claim 1 of the '419 patent recites "a formulation comprising an active agent" mixed with a bleaching formulation, the resulting mixture having an "active agent... at a concentration ranging from about 0.1% by weight to about 50% by weight." ('419 patent, col. 25:43-26:3) In the context of the specification, this claim language supports Olaplex's proposed construction. (Id., col. 22:20-23:2) In Example 3, the specification explains that "[t]he active agent formulation ... contained maleic acid at concentrations of 2.0 g in 10 g total solution (water)." (Id., col. 22:28-30) Example 3 further states that one ounce of developer was mixed with one ounce of powder bleach to form a bleaching formulation weighing about 56 g, which was subsequently mixed with nine milliliters of the active agent formulation weighing about 9 grams to form a total mixture weighing 65 grams, with an overall active agent concentration of approximately 3 wt %. (Id., col. 22:35-42; 11/8/18 Tr. at 34:14-37:10) This falls within the range of claim 1 of the '419 patent. Under L'Oreal's proposed construction, this embodiment would be excluded from the scope of the claims.

         Moreover, the PTAB decision denying institution of post-grant review ("PGR") proceedings on the '954 patent supports Olaplex's position because the PTAB expressly rejected the construction proposed by L'Oreal, finding L'Oreal's proposal to be a "highly unusual construction requiring examination of ionic species present in the dynamic and ever-changing final bleaching mixture" without offering any examples of where such an analysis was made. (D.I. 426, Ex. 20 at 12-13) The PTAB noted that Olaplex's proposed construction was "consistent with the '954 patent and with the manner of calculating active agent concentrations that even [L'Oreal's] experts apparently advanced in related post-grant proceedings." (Id. at 13)

         Olaplex's expert witness, Dr. Edward T. Borish, also instructs that a person of ordinary skill in the art would evaluate the concentration of the active agent in the active agent formulation relative to the total weight of the final mixture. (D.I. 288 at ¶¶ 66-67) (opining that "a POSITA would have understood the language of claim 1 of the '419 patent as describing the concentration range in terms of (1) the weight of active agent added into the active agent formulation relative to (2) the total weight of the final mixture."). For these reasons, I recommend that the court adopt Olaplex's proposed construction.

         B. "bleaching formulation" ('419 patent, claim 1 and asserted dependent claims; '954 patent, claim 1 and asserted dependent claims)

Olaplex

L'Oreal

Court

an oxidizing formulation with a sufficiently alkaline pH to lighten hair

No separate claim construction required, but if construction is required, the plain meaning should control

an oxidizing formulation with a sufficiently alkaline pH to lighten hair

         I recommend that the court adopt Olaplex's proposal, which is supported by the evidence of record and is consistent with the PTAB's decision denying institution of PGR proceedings on the '954 patent. The parties' dispute centers on whether the term "bleaching formulation," as used in the '419 and '954 patents, requires an alkaline pH. Although the patents do not include an express requirement for "a sufficiently alkaline pH," it is likewise true that the intrinsic record contains no ...


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