Univ. of Mass. v. L'Oréal S.A.

36 F.4th 1374

UNIVERSITY OF MASSACHUSETTS, Carmel Laboratories, LLC, Plaintiffs-Appellants

v.L'ORÉAL S.A., L'Oréal USA, Inc., Defendants-Appellees

2021-1969

United States Court of Appeals, Federal Circuit.

Decided: June 13, 2022

Jeffrey A. Lamken, MoloLamken LLP, Washington, DC, argued for plaintiffs-appellants. Also represented by Caleb Hayes-Deats ; Lauren F. Dayton, New York, NY; Beatrice Franklin, Tamar Lusztig, Susman Godfrey LLP, New York, NY; Justin Adatto Nelson, Houston, TX.

Eric William Dittmann, Paul Hastings LLP, New York, NY, argued for defendants-appellees. Also represented by Isaac S. Ashkenazi, Karthik Ram Kasaraneni, Bruce M. Wexler ; Stephen Blake Kinnaird, Naveen Modi, Washington, DC; Katherine Frenck Murray, Ellis George Cipollone O'Brien Annaguey LLP, Los Angeles, CA.

Before Prost, Mayer, and Taranto, Circuit Judges.

Taranto, Circuit Judge.

This appeal is from a judgment in a patent-infringement action involving U.S. Patent Nos. 6,423,327 and 6,645,513, which are related as parent and child and which are owned by University of Massachusetts and exclusively licensed to Carmel Laboratories, LLC (hereinafter referred to together as UMass). UMass filed the action in the District of Delaware against L'Oréal S.A. and its American subsidiary, L'Oréal USA, Inc. (hereinafter referred to together as L'Oréal unless otherwise noted), alleging that they were infringing the two patents. When L'Oréal S.A., which is based in France, moved to dismiss the action against it on the ground that the Delaware forum lacked personal jurisdiction over it, the district court granted the motion without permitting UMass to conduct jurisdictional discovery. See Memorandum Order, University of Massachusetts v. L'Oréal S.A. , No. 1:17-cv-00868 (D. Del. May 17, 2019), ECF No. 36 (Personal Jurisdiction Order ); Report and Recommendation, University of Massachusetts v. L'Oréal S.A. , No. 1:17-cv-00868 (D. Del. Nov. 13, 2018), ECF No. 31 (Personal Jurisdiction Report and Recommendation ). With the case then proceeding only against L'Oréal USA, the district court ruled on a dispute about the proper construction of one limitation of the claim that is representative for present purposes. See J.A. 3719–21 (Hearing Tr. at 56:22–58:16); see also Claim Construction Order, University of Massachusetts v. L'Oréal USA, Inc. , No. 1:17-cv-00868 (D. Del. Apr. 9, 2020), ECF No. 114 (Claim Construction Order ). Relying on that construction, the district court subsequently held another limitation of the claim indefinite. University of Massachusetts v. L'Oréal USA, Inc. , 534 F. Supp. 3d 349 (D. Del. 2021) ( Summary Judgment Opinion ). On that basis, the court entered a final judgment of invalidity against UMass.

UMass challenges both the indefiniteness and personal-jurisdiction rulings. On UMass's first challenge, we address the claim construction on which the indefiniteness ruling depends, and we reject the district court's construction as understood by both parties on appeal. This conclusion justifies our vacating the indefiniteness ruling and remanding for further proceedings. On UMass's second challenge, we conclude that UMass was entitled to jurisdictional discovery, and we therefore vacate the dismissal of L'Oréal S.A.

I

According to the specification of the '327 patent (and the materially identical specification of the '513 patent ), human skin includes a surface layer called the epidermis and a deeper layer called the dermis. '327 patent, col. 1, lines 20–21. The dermis includes a variety of dermal cell types, as well as proteins such as collagen and elastin. Id. , col. 1, lines 24–34; J.A. 2871–72. The '327 patent and the related '513 patent, both titled "Treatment of Skin with Adenosine or Adenosine Analog," describe methods for enhancing the condition of non-diseased skin by topical application of compositions containing a naturally occurring nucleoside called adenosine. '327 patent, col. 1, lines 37–47; J.A. 2877. Independent claim 1 of the '327 patent is representative for our purposes and recites:

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.

Id. , col. 10, lines 18–26 (emphases added). "M" refers to the common measure of concentration, molar concentration, i.e. , moles per liter. L'Oréal Response Br. 22; see also J.A. 2882 n.2. Claim 1 of the '513 patent is identical except that its wherein clause recites a range of 10^-3 M to 10^-7 M—in other words, it allows a higher adenosine concentration. '513 patent, col. 10, lines 18–26.

On June 30, 2017, UMass filed a complaint in the United States District Court for the District of Delaware against L'Oréal S.A. and L'Oréal USA for infringement of the '327 and '513 patents. J.A. 49–62; see also J.A. 228–40 (First Amended Complaint). A few months later, L'Oréal S.A. filed a motion under Federal Rule of Civil Procedure 12(b)(2) asking that it be dismissed from the case on the ground that the forum lacked personal jurisdiction over it, attaching a declaration from an employee of L'Oréal USA. J.A. 521; J.A. 551–54. UMass opposed the motion, arguing, among other things, that it should be granted discovery related to personal jurisdiction. J.A. 557–78.

In March 2018, before the magistrate judge to whom the matter was assigned ruled on the Rule 12(b)(2) motion, L'Oréal USA filed petitions for inter partes reviews of the '327 and '513 patents under 35 U.S.C. §§ 311 – 19 with the Patent and Trademark Office's Patent Trial and Appeal Board. In September 2018, however, the Board denied institution. See J.A. 2798–817 ( '327 patent); J.A. 2819–37 ( '513 patent); see also J.A. 2839–46 (decision denying rehearing for '327 patent ). In denying review, the Board construed the wherein clause of the above-quoted claim, which requires that "the adenosine concentration applied to the dermal cells" have a molar concentration within a specified range. Applying the district-court claim-construction standard, J.A. 2803; J.A. 2824, the Board rejected L'Oréal USA's argument that the recited concentration range is the adenosine concentration in the composition that is topically applied to the skin surface (epidermis), and instead adopted UMass's construction that the recited concentration range is the adenosine concentration applied to the dermal cells in the dermis below the epidermis. See J.A. 2805–12; J.A. 2825–32. The Board did not further specify the meaning of the concentration "applied to the dermal cells"; in particular, the Board did not specify what is measured for the liter volume that defines the denominator of the moles/liter ratio, M. The Board did not require further definition for its non-institution ruling because it concluded that L'Oréal USA had not pointed to any measurement of concentrations beneath the skin surface in the prior art invoked against the patents. See J.A. 2812–16; J.A. 2833–36. Because the Board denied institution, those preliminary determinations were "final and nonappealable" under 35 U.S.C. § 314(d).

Back in the district court, on November 13, 2018, the magistrate judge recommended granting L'Oréal S.A.'s Rule 12(b)(2) motion without allowing discovery. Personal Jurisdiction Report and Recommendation at 17–26. Over UMass's objection, J.A. 1251–56, the district court adopted the magistrate judge's recommendations, dismissing L'Oréal S.A. from the suit, Personal Jurisdiction Order at 1–4. Thereafter, L'Oréal USA asked the district court to construe the wherein clause. The district court reached the same conclusion as the Board: The recited concentration range refers to "the concentration as it is applied to the dermal cells," not the concentration of adenosine in the composition that is applied to the epidermis. J.A. 3719–21 (Hearing Tr. at 56:1–58:16). Like the Board, the district court did not further specify the meaning of "the adenosine concentration applied to the dermal cells." Indeed, the district court entered an order stating that the wherein clause "has its plain and ordinary meaning without the need for further construction." Claim Construction Order at 1.

In September 2020, L'Oréal USA moved for summary judgment on multiple grounds. In one motion, L'Oréal USA focused on the claim language preceding the wherein clause (the so-called skin-enhancement clause)—requiring "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." L'Oréal USA argued that the language would be indefinite if the court (1) maintained its earlier ruling on the wherein clause and (2) further concluded that the recited concentration range in the wherein clause does not establish the adenosine concentration in the composition topically applied to the skin in the skin-enhancement clause. See J.A. 11794–812; J.A. 18823–34.

In April 2021, the district court granted L'Oréal USA's summary-judgment motion on that ground, relying on the earlier claim-construction ruling that the concentration recited in the wherein clause concerns application to the subsurface dermal cells and emphasizing the distinctness of that concentration and the concentration recited in the skin-enhancement clause. Summary Judgment Opinion , 534 F. Supp. 3d at 353–57. The district court then entered its final judgment of invalidity of the asserted claims. UMass timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II

On appeal, UMass first challenges the district court's indefiniteness determination.

UMass's argument and the district court's ruling...