DCT
1:17-cv-00868
University Of Massachusetts v. L'Oreal USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: University of Massachusetts Medical School (Massachusetts) and Carmel Laboratories, LLC (Massachusetts)
- Defendant: L'Oreal SA. (France) and L'Oreal USA, Inc. (Delaware)
- Plaintiff’s Counsel: Farnan LLP; Susman Godfrey L.L.P.; Foley & Lardner LLP
- Case Identification: 1:17-cv-00868, D. Del., 08/18/2017
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant L'Oreal USA, Inc. is a Delaware corporation with a registered agent in Wilmington, Delaware.
- Core Dispute: Plaintiffs allege that Defendants' topical skincare products containing the ingredient adenosine infringe two patents directed to methods for improving skin condition by applying adenosine within specific concentration ranges.
- Technical Context: The technology concerns the use of adenosine, a naturally occurring nucleoside, in cosmetic formulations to achieve anti-aging effects by stimulating dermal fibroblast activity without causing unwanted cell proliferation.
- Key Procedural History: The complaint alleges a long history of Defendants' awareness of the patents-in-suit, beginning as early as 2002. This history includes Defendants' own patent application, which cited and was allegedly rejected as obvious over one of the patents-in-suit; direct contact between Defendants' agent and the inventor; and a formal notice letter sent in 2015.
Case Timeline
| Date | Event |
|---|---|
| 1998-10-26 | Earliest Priority Date for ’327 and ’513 Patents |
| 2002-07-23 | U.S. Patent No. 6,423,327 Issued |
| 2002-12-12 | L'Oréal files provisional application referencing ’327 Patent |
| 2003-Fall | L'Oréal agent allegedly contacts inventor to discuss patents |
| 2003-11-11 | U.S. Patent No. 6,645,513 Issued |
| 2008 | Carmel Labs becomes exclusive licensee for cosmetic applications |
| 2009 | Plaintiff Carmel Labs launches "Easeamine" product |
| 2010-10-15 | Defendants announce "Youth Code" product line containing adenosine |
| 2010-11-01 | Plaintiff Carmel Labs launches expanded "Easeamine" product line |
| 2015-03 | Plaintiffs send infringement notice letter to L'Oréal CEO |
| 2017-08-18 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,423,327, “Treatment of Skin with Adenosine or Adenosine Analog” (Issued Jul. 23, 2002)
The Invention Explained
- Problem Addressed: The patent describes that as human skin ages or is exposed to environmental factors like UV light, the underlying dermis becomes thinner and the number and function of skin fibroblasts decline, leading to wrinkles and damaged skin (’327 Patent, col. 1:21-34).
- The Patented Solution: The invention is a method for enhancing the condition of skin by topically applying a composition containing adenosine. The inventors discovered that adenosine stimulates DNA synthesis and increases protein synthesis and cell size in human skin fibroblasts, thereby improving the skin's condition, but does so without causing an increase in dermal cell proliferation (’327 Patent, Abstract; col. 1:35-41).
- Technical Importance: The claimed method provided a way to improve skin appearance by targeting the cellular mechanisms of the dermis, rather than merely providing a surface effect, while avoiding the potential negative consequence of unwanted cell growth (’327 Patent, col. 2:27-29, col. 8:19-27).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 9 (Compl. ¶37).
- Independent Claim 1 requires:
- A method for enhancing the condition of unbroken skin of a mammal by reducing wrinkling, roughness, dryness, or laxity, without increasing dermal cell proliferation;
- The method comprises topically applying a composition with adenosine in an amount effective to enhance skin condition without increasing dermal cell proliferation;
- The adenosine concentration "applied to the dermal cells" is specified as 10⁻⁴ M to 10⁻⁷ M.
U.S. Patent No. 6,645,513, “Treatment of Skin with Adenosine or Adenosine Analog” (Issued Nov. 11, 2003)
The Invention Explained
- Problem Addressed: The patent, which is a continuation of the application that led to the ’327 Patent, addresses the same technical problem: functional and morphological changes in aging or damaged skin, such as wrinkling, resulting from a decline in the function of dermal fibroblasts (’513 Patent, col. 1:24-38).
- The Patented Solution: The solution is substantively identical to that of the ’327 Patent, involving the topical application of adenosine to stimulate fibroblast activity and improve skin condition without causing dermal cell proliferation (’513 Patent, Abstract; col. 1:39-44).
- Technical Importance: As with the parent patent, this invention provided a method for addressing cosmetic skin aging at a cellular level, distinguishing it from purely superficial treatments (’513 Patent, col. 2:45-56).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 9 (Compl. ¶47).
- Independent Claim 1 is nearly identical to claim 1 of the ’327 Patent, but claims a different and broader concentration range. It requires:
- A method for enhancing the condition of unbroken skin of a mammal by reducing wrinkling, roughness, dryness, or laxity, without increasing dermal cell proliferation;
- The method comprises topically applying a composition with adenosine in an amount effective to enhance skin condition without increasing dermal cell proliferation;
- The adenosine concentration "applied to the dermal cells" is specified as 10⁻³ M to 10⁻⁷ M.
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentalities as the "Accused Adenosine Products," a "vast array of topical skincare products" that contain adenosine and are sold under numerous L'Oréal-owned brands, including L'Oréal Paris, Lancôme, Kiehl's, and Giorgio Armani (Compl. ¶31). It specifically names L'Oréal Paris' RevitaLift Triple Power Deep-Acting Moisturizer as an exemplary product (Compl. ¶34).
Functionality and Market Context
The accused products are topical creams and serums marketed for anti-aging skin benefits, such as to "Repair Wrinkles" and "Refirm Contours" (Compl. ¶34). The complaint quotes Defendants' marketing, which states that adenosine is a molecule that "acts at the dermis level to produce collagen" and that its use provides "significant improvements in the visible signs of aging" (Compl. ¶25-26). The complaint references product instructions that direct users to apply the moisturizer topically until it is absorbed (Compl. ¶34). The complaint includes a quote from product marketing describing how to use the L'Oréal Paris RevitaLift product (Compl. ¶34, citing Exhibit 11).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,423,327 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| 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... | Use of the Accused Adenosine Products is alleged to be a method for anti-aging benefits, including repairing wrinkles, refirming contours, and improving skin smoothness. The complaint alleges infringement of the full claim, which includes the negative limitation. | ¶34, ¶38 | col. 8:19-27 |
| ...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... | The Accused Adenosine Products contain adenosine and are sold with instructions for topical application to the skin to achieve anti-aging effects. | ¶31, ¶34 | col. 4:46-48 |
| ...wherein the adenosine concentration applied to the dermal cells is 10⁻⁴ M to 10⁻⁷ M. | The complaint alleges on information and belief that use of the products involves applying a composition meeting this claimed concentration range. | ¶38 | col. 8:25-27 |
U.S. Patent No. 6,645,513 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| 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... | Use of the Accused Adenosine Products is alleged to be a method for anti-aging benefits, including repairing wrinkles, refirming contours, and improving skin smoothness. The complaint alleges infringement of the full claim, which includes the negative limitation. | ¶34, ¶48 | col. 5:45-56 |
| ...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... | The Accused Adenosine Products contain adenosine and are sold with instructions for topical application to the skin to achieve anti-aging effects. | ¶31, ¶34 | col. 5:45-50 |
| ...wherein the adenosine concentration applied to the dermal cells is 10⁻³ M to 10⁻⁷ M. | The complaint alleges on information and belief that use of the products involves applying a composition meeting this claimed concentration range. | ¶48 | col. 10:25-27 |
- Identified Points of Contention:
- Technical Question: The complaint does not allege a specific concentration of adenosine in any accused product. A central factual dispute will be whether the accused products, when used as directed, result in a concentration of adenosine "applied to the dermal cells" that falls within the ranges recited in the claims. This will likely require discovery into product formulations and expert analysis of transdermal delivery.
- Scope Questions: The claims contain the negative limitation "without increasing dermal cell proliferation." The case may raise the question of how this is to be proven. The plaintiff bears the burden of proving that the accused method meets this limitation, which could present a significant evidentiary hurdle. Further, the term "increasing" may itself be subject to dispute (e.g., whether it means any statistically significant increase).
V. Key Claim Terms for Construction
The Term: "adenosine concentration applied to the dermal cells"
- Context and Importance: The infringement analysis for both patents hinges on this phrase. Its definition will determine whether the concentration is measured in the cosmetic product itself or the concentration that actually reaches the target cells in the dermis after penetrating the outer skin layers. Practitioners may focus on this term because the latter would be a much smaller number and far more difficult for the plaintiff to prove.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term refers to the concentration within the topical formulation that is being applied. The patent specification's experimental examples, which form the basis of the invention, describe adding adenosine in specific molar concentrations directly to cultures of skin fibroblasts (’327 Patent, col. 6:41-43, col. 7:49-54). This could support an interpretation that the claimed concentration is the one directly experienced by the target cells, analogous to the experiments.
- Evidence for a Narrower Interpretation: A party could argue the term must account for the barrier function of the skin (epidermis). Since the method is for "topically applying," only a fraction of the adenosine in the cream would be "applied to the dermal cells" beneath the epidermis. The patent itself distinguishes between applying a composition "to the skin" and the resulting concentration "applied to the dermal cells," suggesting these are two different concepts (’327 Patent, cl. 1).
The Term: "without increasing dermal cell proliferation"
- Context and Importance: This negative limitation is a critical differentiator for the invention. A core question for the court will be what level of cellular activity, if any, constitutes "increasing" proliferation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that in preferred embodiments, "the adenosine or an adenosine analog does not promote skin cell proliferation" (’327 Patent, col. 2:27-29). This suggests that any measurable promotion of proliferation would place a method outside the scope of the claim.
- Evidence for a Narrower Interpretation: The patent does not provide a quantitative threshold for what constitutes an "increase." A party might argue that a de minimis, transient, or statistically insignificant increase in cell division does not meet the claim limitation. The patent's focus is on stimulating DNA and protein synthesis (’327 Patent, Abstract), which relates to cell health and size, not necessarily cell division.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b). The basis for this allegation is that Defendants market the accused products for infringing uses and provide instructions on product packaging and websites that direct customers to apply the products in a manner that allegedly practices the patented methods (Compl. ¶34, 42, 52). Contributory infringement is also alleged, based on the assertion that the products have no substantial non-infringing use (Compl. ¶43, 53).
- Willful Infringement: The complaint alleges willful infringement based on extensive pre-suit knowledge. Specific allegations include that Defendants knew of the patents-in-suit as early as 2002; cited the ’327 Patent in their own patent application, which was then rejected as obvious over the ’327 Patent; contacted the inventor in 2003 to discuss the patents; and received a formal notice letter in 2015 before the suit was filed (Compl. ¶19-23, 30, 57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and evidence: will the phrase "adenosine concentration applied to the dermal cells" be interpreted as the concentration in the bottle, or the concentration that actually reaches the dermis in vivo? The answer will dictate the type of evidence required, and the plaintiff's ability to prove this element, which is not specifically detailed in the complaint, will be critical.
- The case will also turn on a key evidentiary challenge: can the plaintiff meet its burden to prove the negative limitation that the accused method operates "without increasing dermal cell proliferation"? The viability of the infringement claim depends on demonstrating not only what the accused products do, but also what they do not do.
- A third significant question will surround willfulness: given the detailed allegations of Defendants’ long-standing knowledge of the patents, including a patent office rejection of its own application over the asserted art, a key focus will be on whether Defendants' continued sales were objectively reckless, potentially exposing them to enhanced damages.