Last Week In The Federal Circuit (June 13-17): A Concentration Claim Construction

It’s officially the start of summer, but the Federal Circuit is still hard at work:  last week the Court issued a few precedential opinions, several non-precedential decisions, and a handful of affirmances without opinion from the Court’s June argument sitting.  Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions:  2

Non-precedential opinions:  6

Rule 36:  5

Longest pending case from argument:  Military-Veterans Advocacy Inc. v. Secretary of Veterans Affairs, No. 20-2086 (190 days)

Shortest (non-Rule 36) pending case from argument:  Shelter Forest International Acquisition, Inc. v. United States, No. 21-2281 (41 days)

Case of the week:  University of Massachusetts v. L’Oreal S.A., No. 21-1969

Panel:  Judges Prost, Mayer, and Taranto, with Judge Taranto writing the opinion

You should read this case if:  you have a matter involving claim construction (particularly drug concentrations) or personal jurisdiction

If you’ve been waiting for a Federal Circuit opinion combining your interest in patent law with your skin-care routine, our case of the week this week is for you.  The University of Massachusetts (UMass) owns patents on methods for treating skin by topically applying compositions containing a compound called adenosine.  As relevant here, the asserted claims required “topically applying to the skin a composition comprising a concentration of adenosine . . . wherein the adenosine concentration applied to the dermal cells is 10-4 M [or 10-3 M] to 10-7 M.”  M is a unit of concentration referring to a number of particles (in moles) per unit of volume (in liters).

UMass sued L’Oreal S.A. and its American subsidiary, L’Oreal USA, Inc., for alleged infringement of those patents.  The district court dismissed L’Oreal S.A. for lack of personal jurisdiction without permitting UMass to conduct jurisdictional discovery.  With the case proceeding against only L’Oreal USA, the district court construed the claimed concentration range to refer to the concentration of adenosine that permeates to the dermal cells beneath the skin’s surface.  The district court then held the asserted claims invalid as indefinite in part because, as construed by the court, the claims did not specify the required adenosine concentration in the composition topically applied to the skin.

The Federal Circuit reversed the district court’s claim construction and vacated the invalidity judgment and personal-jurisdiction dismissal.  On claim construction, the Court held that the claimed concentration range refers to the adenosine concentration in the composition applied to the skin’s surface, not the concentration that reaches the dermal cells below the surface.  It began by noting that the claim language was “not plain on its face” because, among other reasons, the word “applied” could cover either direct application to the surface or indirect application to the sub-surface layer.

The Court thus looked to the patents’ specifications and prosecution histories to resolve this ambiguity.  The specifications discussed several embodiments that described the adenosine concentration in the composition applied to the surface of the skin.  And the prosecution histories further supported the Federal Circuit’s construction.  In the original applications, the adenosine concentration range was found in a dependent claim.  That claim did not mention dermal cells and thus “seemingly referred only to adenosine concentrations applied to the skin.”  To overcome a prior-art rejection, the applicants imported the concentration requirement into the independent claim and added the reference to dermal cells.  Critically, however, the applicants suggested that the amendment did not change where the adenosine concentration was to be measured.  Because the claim construction was “an important premise of the indefiniteness determination,” the Court vacated the district court’s indefiniteness ruling and remanded for further proceedings.

On personal jurisdiction, the Federal Circuit applied Third Circuit law, under which a court should permit jurisdictional discovery if the plaintiff “presents factual allegations that suggest . . . the possible existence of the requisite contacts.”  According to the Federal Circuit, UMass cleared that bar:  it had “made more than clearly frivolous, bare allegations that L’Oreal S.A. was subject to personal jurisdiction.”  For instance, UMass introduced evidence that L’Oreal S.A. may have researched and developed the addition of adenosine to skin-care products, and that L’Oreal S.A. may have licensed that technology to L’Oreal USA.  The Federal Circuit thus concluded that the district court should have permitted UMass to conduct jurisdictional discovery before deciding personal jurisdiction.