Last Week in the Federal Circuit (June 13-17): A Concentration Claim Build | Morrison & Foerster LLP – Federal Circuits


It’s officially the start of summer, but the Federal Circuit is still hard at work: Last week, the Court issued a few precedent opinions, several landmark rulings, and a handful of no-notice assertions from the Court. June Court oral argument. Below we provide our usual weekly stats and a detailed discussion of our Case of the Week – our highly subjective selection based on the case that piqued our interest.

Previous reviews: 2

Unprecedented notice: 6

Rule 36: 5

Longest pending case since argument: Military-Veterans Advocacy Inc. v. Secretary of Veterans Affairsno. 20-2086 (190 days)

Shortest pending case (excluding rule 36) from argument: Shelter Forest International Acquisition, Inc. v. United Statesno. 21-2281 (41 days)

Case of the week: University of Massachusetts vs. L’Oreal SANo. 21-1969

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

You should read this case if: you have a question involving building claims (especially drug concentrations) or personal jurisdiction

If you’ve been waiting for an opinion from the Federal Circuit combining your interest in patent law with your skincare routine, our Case of the Week this week is for you. The University of Massachusetts (UMass) holds patents on methods of treating the skin by topical application of compositions containing a compound called adenosine. As relevant herein, the claimed claims required “the topical application to the skin of a composition comprising a concentration of adenosine”. . . wherein the concentration of adenosine applied to the dermal cells is 10-4 M [or 10-3 M] at 10-seven M.” M is a unit of concentration referring to a number of particles (in moles) per unit volume (in liters).

UMass sued L’Oréal SA and its US subsidiary, L’Oréal USA, Inc., for alleged infringement of these patents. The district court dismissed L’Oréal SA for lack of personal jurisdiction without allowing UMass to make jurisdictional discovery. Since the case was brought against L’Oréal USA only, the district court interpreted the claimed concentration range to refer to the concentration of adenosine that enters the dermal cells below the surface of the skin. The district court then found the claimed claims invalid as indefinite in part because, according to the court’s interpretation, the claims did not specify the concentration of adenosine required in the composition applied topically to the skin.

The Federal Circuit reversed the interpretation of the district court’s request and reversed the judgment of invalidity and the denial of personal jurisdiction. When interpreting the claim, the Court held that the claimed concentration range referred to the concentration of adenosine in the composition applied to the surface of the skin, not the concentration that reaches the dermal cells beneath the skin. surface. She began by noting that the wording of the claim was “not obvious at first sight” because, among other reasons, the word “applied” could cover either direct application to the surface or indirect application to the underground layer.

The Court therefore looked at the specifications and prosecution history of the patents to remove this ambiguity. The specifications discussed several embodiments which described the concentration of adenosine in the composition applied to the surface of the skin. And the track record of prosecutions has also supported the building of the federal circuit. In the original applications, the adenosine concentration range was included in a dependent claim. This statement did not mention dermal cells and therefore “apparently referred only to concentrations of adenosine applied to the skin”. To overcome a prior art rejection, applicants imported the concentration requirement into the independent claim and added the reference to skin cells. Importantly, the plaintiffs suggested that the modification did not change where the concentration of adenosine should be measured. Because the construction of the claim was “an important premise of the determination of indefinite duration,” the Court overturned the district court’s decision regarding indefinite duration and remanded the claim for retrial.

With respect to personal jurisdiction, the Federal Circuit applied Third Circuit law, under which a court should allow a finding of jurisdiction if the plaintiff “presents factual allegations that suggest . . . the possible existence of the necessary contacts. According to the Federal Circuit, UMass crossed that bar: it had “made more than patently frivolous and naked allegations that L’Oréal SA was subject to personal jurisdiction.” For example, UMass presented evidence that L’Oréal SA may have researched and developed the addition of adenosine to skin care products, and that L’Oréal SA may have licensed this technology to L ‘Oreal USA. The Federal Circuit therefore concluded that the district court should have allowed UMass to conduct jurisdictional discovery before deciding personal jurisdiction.

[View source.]

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