Brightex Bio Photonics LLC v. L'Oreal USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Brightex Bio-Photonics, LLC (California)
  • Defendant: L'Oreal USA, Inc. (Delaware)
  • Plaintiff’s Counsel: Buether Joe & Counselors, LLC; Hemingway & Hansen, LLP; Futterman Dupree Dodd Croley Maier LLP
• Case Identification: 5:24-cv-07919, N.D. Cal., 11/12/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of California based on Defendant's operation of physical facilities, including a "tech incubator" in San Francisco and a headquarters in El Segundo, and partnerships with entities like UC Berkeley's Bakar Labs, all allegedly related to the development, testing, and marketing of the accused technologies.
• Core Dispute: Plaintiff alleges that Defendant’s virtual skin analysis and cosmetic try-on applications infringe patents related to computerized facial analysis and product recommendation.
• Technical Context: The technology at issue involves using computer vision and data analysis to provide personalized skin care and cosmetic recommendations, a growing area of innovation in the beauty industry.
• Key Procedural History: The complaint details an extensive pre-suit relationship from 2007 to 2014, during which Plaintiff alleges it disclosed its proprietary technology to Defendant under multiple non-disclosure agreements for joint development purposes. Plaintiff also alleges it provided Defendant with a pre-suit notice letter in May 2022 identifying the patents-in-suit and accused products. The complaint notes that both asserted patents overcame rejections during prosecution, including §101 (patent eligibility) rejections for the '358' Patent.

Case Timeline

Date	Event
2005-01-01	Plaintiff BTBP is founded
2007-01-01	L'Oreal begins testing BTBP's "Clarity Pro" system
2009-04-01	Parties enter a Mutual Non-Disclosure Agreement
2012-06-19	Priority Date for U.S. Patent No. 9,842,358
2013-03-25	Priority Date for U.S. Patent No. 9,542,595
2013-11-21	Parties enter "E-Diagnostic Platform Agreement" for joint development
2014-06-01	L'Oreal launches its "Makeup Genius" application
2017-01-10	U.S. Patent No. 9,542,595 issues
2017-12-12	U.S. Patent No. 9,842,358 issues
2022-05-23	Plaintiff sends pre-suit notice letter to Defendant
2024-11-12	Complaint for Patent Infringement filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,842,358 - “Method for Providing Personalized Recommendations”, issued December 12, 2017

The Invention Explained

• Problem Addressed: The patent addresses the need to move beyond subjective, inconsistent visual assessments of skin conditions, a process the complaint characterizes as "blind dermatology," which lacked the accuracy needed to prove product efficacy (Compl. ¶13).
• The Patented Solution: The invention is a computerized method for providing personalized and prioritized recommendations. It involves analyzing a user's facial image to measure specific characteristics (e.g., wrinkles, age spots), comparing those measurements against statistical data from a relevant population (specifically using a mean and standard deviation), calculating a "severity rating" based on that comparison, and then recommending treatments for the characteristics with the highest severity ('358 Patent, col. 9:4-10:2; Compl. ¶48). The method requires the use of a "photo guide" to help the user properly position their face for the image capture ('358 Patent, col. 10:13-18).
• Technical Importance: This technology represents a shift from qualitative to quantitative skin analysis, enabling automated, data-driven, and prioritized product recommendations tailored to an individual's specific needs relative to a peer group (Compl. ¶¶14, 58).

Key Claims at a Glance

• The complaint asserts independent claim 16 and dependent claim 18 (Compl. ¶83).
• Independent Claim 16 recites a computerized method comprising the key elements of:
  • Receiving image data of a user's face from an electronic device that presents a "photo guide" for positioning.
  • Transforming the image data into measurements to identify at least two skin characteristics.
  • Calculating a "severity rating" for each characteristic by accessing stored population information (comprising a "mean value and a standard deviation value"), comparing the user's measurements to the population data, and determining how much each measurement "deviates from the mean value and the standard deviation value."
  • Assigning a higher severity rating to the characteristic that deviates furthest.
  • For a subset of characteristics with the highest severity rating, selecting one or more skin treatment recommendations from a stored database.
  • Providing the selected recommendations to the electronic device.
• The complaint does not explicitly reserve the right to assert other claims but focuses its allegations on claims 16 and 18.

U.S. Patent No. 9,542,595 - “Systems and Methods for Recommending Cosmetic Products for Users with Mobile Devices”, issued January 10, 2017

The Invention Explained

• Problem Addressed: The patent addresses the "frustrating and cumbersome" process consumers face when trying to find a cosmetic product that works well for them, which often involves a "hit or miss" process of physical trials (Compl. ¶71; '595' Patent, col. 1:37-44).
• The Patented Solution: The invention provides a system and method for a virtual cosmetic try-on. The core process involves calibrating the colors of a user's digital facial image, displaying that image, and then dividing the display to show a side-by-side comparison of the face with and without a simulated application of a cosmetic product ('595 Patent, Abstract). The system identifies skin pixels and their color space values to identify and realistically simulate the appropriate cosmetic product on the user's face ('595 Patent, col. 10:55-65).
• Technical Importance: The technology is intended to improve the speed, accuracy, and consistency of selecting cosmetic products by allowing consumers to virtually visualize the effect of a product on their own face before purchase (Compl. ¶72).

Key Claims at a Glance

• The complaint asserts independent claim 5 (Compl. ¶105).
• Independent Claim 5 recites a method performed at an electronic device, comprising the key elements of:
  • Calibrating colors of a first digital image depicting a portion of a subject's face.
  • Displaying the first digital image.
  • Dividing the display of the first digital image into two sides, one displayed with no cosmetic product applied and one displayed with a simulated application of a cosmetic product.
  • Transferring the first digital image.
  • Transferring information of a cosmetic product, wherein skin pixels are identified, color space values are identified from the skin pixels, and the cosmetic product is identified at least based on the color space values.
• The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

The complaint accuses two main categories of L'Oreal's digital tools. For the '358 Patent, the primary accused instrumentalities are skin analysis tools, including the "L'Oreal Skin Genius Application" and "Vichy SkinConsult AI" (Compl. ¶¶85, 90). For the '595 Patent, the accused instrumentalities are virtual makeup try-on tools, including those on the Maybelline, Lancome, and NYX websites (Compl. ¶¶107, 111, 119).

Functionality and Market Context

• The accused skin analysis tools (e.g., Skin Genius) instruct a user to take a selfie, which is then analyzed to measure skin characteristics like "Wrinkles, Radiance, Firmness, Pigmentation (even tone), and Pores" (Compl. ¶¶90, 92). The complaint includes a screenshot from the Skin Genius app showing instructions for taking a well-lit photo (Compl. p. 28). The tool then presents results and identifies "Skin Challenges," which are the two characteristics with the "highest severity" (Compl. ¶92). Based on this analysis, it recommends a "routine" of specific L'Oreal products (Compl. ¶98). The complaint alleges these tools are used to encourage sales of L'Oreal products (Compl. ¶84).
• The accused virtual try-on tools (e.g., Maybelline Virtual Try-on) allow a user to use a live camera or upload a photo to see a simulated application of makeup products (Compl. ¶111). A screenshot from the Maybelline application shows a user's face with a vertical slider, displaying the face without makeup on one side and with a simulated application of lipstick on the other (Compl. p. 38). This functionality is offered across numerous L'Oreal brands to allow consumers to "instantly try hundreds of... makeup products on yourself" (Compl. p. 35).

IV. Analysis of Infringement Allegations

'358 Patent Infringement Allegations

Claim Element (from Independent Claim 16)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
receiving from an electronic device image data of a user's face... wherein said electronic device presents on the display a photo guide indicating how the user's face should be positioned	The L'Oreal Skin Genius Application receives an image from a user's device and displays a guide with instructions such as "Pull your hair back" and "Stay in well-lit, natural light." A screenshot depicts these instructions.	¶90; p. 28	col. 10:13-18
transforming via a computer said image data via image processing into measurements in order to identify at least two skin characteristics of the user	The Accused Instrumentality processes the user's facial image using AI and machine learning to generate measurements for skin characteristics such as "Wrinkles, Radiance, Firmness, Pigmentation (even tone), and Pores."	¶92	col. 10:20-24
calculating a severity rating for each of the at least two user skin characteristics by: accessing stored population information... wherein each of the measurements... comprises a mean value and a standard deviation value... [and] determining by how much [the user's measurement] deviates	The complaint alleges that L'Oreal's Skin Genius is "developed using a database of more than 10,000 clinically graded images" and that a user's results are "compared against [these] images." It further alleges this process involves calculating deviation from a mean and standard deviation.	¶¶94-96	col. 10:25-43
assigning higher severity rating to the user skin characteristic which deviates furthest	The Skin Genius application identifies the two measurements with the highest severity as "Skin Challenges."	¶92	col. 10:44-48
for a subset of the user skin characteristics with the highest severity rating, selecting... one or more skin treatment recommendations from stored skin treatment recommendations	The "my routine" tab of the application recommends specific L'Oreal products to address the user's skin characteristics with the highest severity (the "skin challenges"). A screenshot shows product recommendations like "0.3% Pure Retinol Serum."	¶98; p. 31	col. 10:49-56
providing to the electronic device the selected one or more skin treatment recommendations.	The application displays the selected product recommendations on the user's device.	¶99	col. 10:57-59

'595 Patent Infringement Allegations

Claim Element (from Independent Claim 5)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
calibrating colors of a first digital image, wherein the first digital image depicts at least a portion of a face of the subject	The complaint alleges that L'Oreal's server calibrates the colors of the user's image to account for different complexions and to identify where to apply virtual makeup, and that this processing "inherently includes the calibrating of colors."	¶¶113-115	col. 13:12-19
displaying the first digital image	The Maybelline virtual try-on tool displays the user's captured or uploaded facial image on the screen of the user's electronic device. A screenshot shows this display.	¶117; p. 38	col. 13:54-55
dividing the display of the first digital image into two sides, wherein one side... is displayed with no cosmetic product applied, and one side... with a simulated application	The Maybelline tool displays a split-screen view of the user's face, with a slider separating the "before" (no makeup) and "after" (simulated makeup) views. A screenshot directly illustrates this functionality.	¶¶119-120; p. 38	col. 13:56-62
transferring the first digital image	The user's image is transferred from the user's device to L'Oreal's servers for processing and transferred back to the user for display.	¶121	col. 13:63-64
transferring information of a cosmetic product, wherein skin pixels... are identified, color space values are identified... and the cosmetic product is identified at least based on the color space values	The system transfers information about makeup shades for virtual try-on, identifying the parts of the customer image (e.g., lips) that should change color based on the skin's color space values to realistically simulate the product.	¶122	col. 13:65-col. 14:4

Identified Points of Contention

• Technical Questions: For the '358 Patent, a central question may be whether L'Oreal's AI-driven system, trained on a database of "clinically graded images" (Compl. ¶94), performs the specific statistical analysis required by claim 16—namely, a comparison to a population's "mean value and a standard deviation value." The complaint asserts this occurs but provides limited direct evidence of this specific calculation method (Compl. ¶96).
• Scope Questions: For the '595 Patent, the scope of the term "calibrating colors" may be a key point of contention. The complaint alleges this step "inherently" occurs during server-side processing (Compl. ¶115), but the patent specification also describes calibration in the context of using objective color standards ('595 Patent, col. 12:7-12). The dispute may focus on whether the general image processing performed by L'Oreal meets the specific meaning of "calibrating" as used in the patent.

V. Key Claim Terms for Construction

For the '358 Patent

• The Term: "calculating a severity rating by... determining by how much each of the measurements of the at least two user skin characteristics deviates from the mean value and the standard deviation value of the same type population skin characteristic" (Claim 16).
• Context and Importance: This term is the core of the patented method for quantifying and prioritizing skin conditions. Infringement will depend on whether the accused AI system performs this specific statistical operation. Practitioners may focus on this term because the patentee distinguished the invention from prior art during prosecution precisely on its specific method of calculating a severity rating (Compl. ¶¶66-68).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent's summary describes the invention more generally as comparing a user profile to "previously-stored reference data" to provide recommendations ('358 Patent, col. 1:24-30), which a party could argue supports a less rigid interpretation than the claim language itself.
  • Evidence for a Narrower Interpretation: The claim language is highly specific, reciting a multi-step calculation involving "mean value" and "standard deviation value." The patentee's arguments during prosecution, which distinguished the prior art reference Hillebrand for failing to disclose this specific calculation (Compl. ¶67), may be used to argue for a narrow construction limited to this explicit statistical method.

For the '595 Patent

• The Term: "calibrating colors of a first digital image" (Claim 5).
• Context and Importance: This is the initial step of the claimed method, and its meaning is critical because it is not an explicit feature advertised to the user. The complaint alleges it happens "inherently" (Compl. ¶115). The case may turn on whether L'Oreal's server-side image processing constitutes "calibrating."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discusses the general goal of overcoming issues with different lighting conditions and skin tones, which might support interpreting "calibrating" to include any automated color correction or white-balancing process ('595 Patent, col. 12:13-24). Asserted claim 5 does not itself require an external color standard.
  • Evidence for a Narrower Interpretation: The patent specification and other, non-asserted claims describe using a "second digital image of one or more color standards" to perform calibration ('595 Patent, Claim 1; col. 12:7-12). A party may argue that this context implies "calibrating" is a term of art that requires a comparison to a known, objective color reference, not just general image adjustment.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that L'Oreal induces infringement by providing its websites and applications to consumers and instructing them on how to use the infringing features (Compl. ¶¶87, 109). It also pleads contributory infringement in the alternative, should a third party be found to operate the platforms for L'Oreal's benefit (Compl. ¶¶88, 110).
• Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It cites a detailed letter sent on May 23, 2022, from Plaintiff's CEO to a L'Oreal Global Vice President, which allegedly identified the '358 and '595 patents and specifically named L'Oreal's "Skin Genius" software as an infringing product (Compl. ¶¶81-82). The complaint also details an extensive pre-suit business relationship under multiple NDAs, which it alleges gave L'Oreal knowledge of the underlying technology years before the suit was filed (Compl. ¶¶22-32).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of technical implementation versus claim language: For the '358 patent, does L'Oreal's AI-powered analysis, which compares a user's photo to a proprietary database of "clinically graded images," perform the specific statistical operation required by claim 16—calculating deviation from a population's "mean value and a standard deviation value"—or does it use a technically distinct machine-learning method that falls outside the claim's scope?
• A second central dispute will likely be one of claim construction: For the '595 patent, what is the scope of "calibrating colors"? The resolution will determine whether the term requires a rigorous comparison to an objective color standard, as described elsewhere in the patent, or if it can be read more broadly to cover the general-purpose, server-side image adjustments the complaint alleges are "inherently" performed by the accused virtual try-on tools.
• Finally, a key factor will be the impact of the parties' prior relationship: How will the extensive history of collaboration and alleged technology disclosure under NDA, coupled with the explicit 2022 notice letter, affect the analysis of willfulness and potentially influence the court's understanding of the technology and the equities between the parties?