Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in University of Massachusetts et al. v. L’Oréal, S.A., No. 2021-1969 (June 13, 2022). The Court reversed-in-part, vacated-in-part, and remanded a decision by the United States District Court for the District of Delaware holding it lacked personal jurisdiction over L’Oréal S.A. and that the asserted patent claims were invalid for indefiniteness.
The University of Massachusetts and Carmel Laboratories (collectively “UMass”) filed a patent infringement action in the District of Delaware against L’Oréal S.A. and its American subsidiary, L’Oréal USA, Inc., asserting two patents claiming methods for enhancing skin by topically applying compositions containing adenosine. Without permitting UMass to conduct jurisdictional discovery, the district court granted a motion by L’Oréal S.A. to dismiss the action against it for lack of personal jurisdiction. With L’Oréal USA, Inc. as sole defendant, the district court adopted UMass’s proposed construction of one claim term and concluded that another limitation of the claims was indefinite, thus rendering the claims invalid. UMass appealed.
On appeal, the Federal Circuit first considered UMass’s challenge to the district court’s indefiniteness determination. The Court held that the district court incorrectly construed the claims’ wherein clause (“wherein the adenosine concentration applied to the dermal cells is 10-4M to 10-7M”) to refer to the concentration of adenosine applied to the dermal cells in the dermis—an inner layer of skin below the epidermis. The Court held that the language of the wherein clause is correctly understood “to refer to the concentration of adenosine in the composition applied to the skin’s surface.” In reaching this conclusion, the Court relied heavily on the consistent references in the specification and prosecution history to support its construction. In view of the new claim construction, the Court vacated and remanded the district court’s indefiniteness ruling.
The Court also vacated and remanded the district court’s personal jurisdiction ruling. Specifically, the Court explained that, because UMass “made more than clearly frivolous, bare allegations” in its complaint, the district court abused its discretion in denying UMass an opportunity to conduct jurisdictional discovery before dismissing L’Oréal S.A.
Coauthored by Karen Beckman and Kristen Lewis.