Looking Below The Surface For Claim Construction

• Published date: 28 June 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Foley & Lardner
• Author: Ms Courtenay Brinckerhoff

In University of Massachusetts v. L'Oréal S.A., the Federal Circuit reversed the district court's claim construction that underlay its finding of indefiniteness, which was vacated. The district court's claim construction had been advanced by the patent owner and adopted by the USPTO Patent Trial and Appeal Board during Inter Partes Review (IPR) proceedings, and helped the patents avoid IPR review. Thus, although the Federal Circuit's adoption of a different claim construction may spare the patents from indefiniteness, it may leave them vulnerable to challenge on other grounds.

This decision also is interesting because the Federal Circuit found that the claim language at issue was ambiguous, and so relied on the prosecution history for its claim construction without requiring the prosecution history to reveal "clear and unmistakable disclaimer" of a plain meaning,

The Patents At Issue

The patents at issue were U.S. Patent No. 6,423,327 and U.S. Patent No. 6,645,513, owned by U. Mass. The patents are related as parent and child, and are directed to "methods for enhancing the condition of non-diseased skin by topical application of ... adenosine."

The Federal Circuit treated claim 1 of the '327 patent as representative:

1, A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising topically applying to the skin a composition comprising a concentration of 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.

The Claim Construction At Issue

The patents describe human skin as including "a surface layer called the epidermis and a deeper layer called the dermis." Thus, on its face, claim 1 of the '327 patent recites topically applying a composition to skin (i.e., to a skin surface) and also that a certain concentration is applied to dermal cells (i.e., cells in a layer below the surface). The claim construction issue was focused on the meaning of the last clause, while the indefiniteness issue focused on the "applying" clause.

In the IPR proceedings, L'Oréal argued that the concentration in the last clause is the "adenosine concentration in the composition that is topically applied to the skin surface," while U. Mass argued that it is "the adenosine concentration...