When A Win May Not Really Be A Win

• Published date: 18 July 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Yicong (Eve) Du, Leon Lin, Adriana Burgy, Kathleen Hanley, Stacy Lewis and Thomas Irving

Holding

In Univ. of Mass v. L'Oréal USA, Inc., No. 21-1969 (Fed. Cir. June 13, 2022), the Court of Appeals for the Federal Circuit ("Federal Circuit") rejected the district court's claim constructions, vacated the indefiniteness ruling, and remanded the case for further proceedings.

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"). Representative claim 1 of the '327 patent 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 10^-4M to 10^-7M.

The district court adopted UMass's construction of the wherein clause (underlined above) that the recited concentration range is "the concentration as it is applied to the dermal cells," not the concentration of adenosine that is applied to the epidermis (the skin surface). Id. at *5 (emphasis added). Relying on this construction, the district court subsequently held the skin-enhancement clause (in bold above) indefinite, and thus entered its final judgment of invalidity of the asserted claims. Id. at *6. For a more detailed discussion of district court's ruling, see https://www.finnegan.com/en/insights/blogs/prosecution-first/subjective-terms-require-objective-definition.html.

Federal Circuit

The Federal Circuit, however, rejected the district court's construction of the wherein clause, reasoning that the claim language is not plain on its face and that the proper interpretation is determined by the specification and the prosecution history. Id. at *8.

The Federal Circuit reasoned that the difference in the objects used after "apply" ("to the dermal cells" compared to "to the skin") may not necessarily mean different things, because the verb "apply" can cover both direct application (i.e., to the skin surface) and indirect application (i.e., to the sub-surface layer). Id. The Federal Circuit further found that the wherein clause refers to "the adenosine concentration applied to the dermal cells," which is the language for invoking an antecedent, thereby supporting construing the claim to involve one concentration...