Subjective Terms Require Objective Definition

• Published date: 15 June 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Yicong (Eve) Du, Leon Lin, Stacy Lewis, Thomas Irving and Kathleen Hanley'

Holding

In Univ. of Mass v. L'Oréal USA, Inc., No. 17-cv-0868 (D. Del. April 20, 2021), the district court judge granted L'Oréal's motion for summary judgment of invalidity for indefiniteness.

Background

UMass sued L'Oréal for infringement of U.S. Pat. No. 6,423,327 ('the '327 patent') and 6,645,513 ('the '513 patent'). Claim 1 in each read:

[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 [a recited concentration range].

According to L'Oréal, the 'skin enhancement limitation' in italics above was indefinite.

UMass argued that the skin enhancement limitation should be construed to mean the concentration ranges recited in the "wherein" clause of the asserted claims. UMass, at 5. L'Oréal challenged UMass' proposed construction but did not offer one of its own. Id. at 9.

District Court

The district court disagreed with UMass' proposed construction, finding that such construction would 'collapse the skin enhancement limitation into the recited concentration range limitation.' Id. at 6. Instead 'the plain and unambiguous language of the asserted claims makes clear that the skin enhancement limitation is distinct from and independent of the recited concentration range limitation.' Id. The district court explained that the skin enhancement limitation referred to the concentration of the adenosine composition applied topically in an amount effective to enhance the skin's condition. By comparison, the range limitation requires the concentration of the adenosine composition applied to the dermal cells lie within the recited ranges. Id. at 6-7.

The court found that during the earlier claim construction of the range limitation, UMass expressly noted the distinction between the two limitations by arguing that the composition applied topically was not restricted to the recited ranges, and that by contrasting 'the skin' and 'the dermal cells,' the patent drafter indicated the amount of adenosine applied was not identical.

Therefore, the district court concluded that the skin enhancement limitation should not be construed as restricted to the recited...