DCT
2:04-cv-01660
L'Oreal SA v. ESTEE Lauder Companies Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: L'Oreal SA. (France) and L'Oreal USA, Inc. (Delaware)
- Defendant: ESTEE Lauder Companies, Inc. (Delaware), ESTEE Lauder, Inc. (Delaware), and Origins Natural Resources, Inc. (Delaware)
- Plaintiff’s Counsel: Gibbons, Del Deo, Dolan, Griffinger & Vecchione
- Case Identification: 2:04-cv-01660, D.N.J., 04/07/2004
- Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in the District of New Jersey, have caused injury to Plaintiffs in the district, and have committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendants’ mascara products, and the methods of making and using them, infringe a patent related to mascara formulations containing a specific heteropolymer to improve pigment dispersion and gloss.
- Technical Context: The technology concerns cosmetic chemistry, specifically mascara formulations designed to overcome the dulling, matte effect of traditional waxes by using a polyamide polymer to achieve both intense color and high gloss.
- Key Procedural History: The complaint notes that during prosecution of the patent-in-suit, the U.S. Patent and Trademark Office (PTO) issued an Office Action deleting an individual as a named co-inventor, but this correction was erroneously omitted from the printed patent. Plaintiff seeks a judicial correction of inventorship in this action.
Case Timeline
| Date | Event |
|---|---|
| 2001-10-05 | '420 Patent Priority Date (Application Filing Date) |
| 2003-08-11 | PTO Office Action correcting inventorship of '420 Patent |
| 2004-04-06 | U.S. Patent No. 6,716,420 Issues |
| 2004-04-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,716,420 - Methods of Use and of Making a Mascara Comprising at Least One Coloring Agent and at Least One Heteropolymer
- Patent Identification: U.S. Patent No. 6,716,420 ("the '420 Patent"), Methods of Use and of Making a Mascara Comprising at Least One Coloring Agent and at Least One Heteropolymer, issued April 6, 2004.
The Invention Explained
- Problem Addressed: The patent describes a problem in cosmetics where traditional mascara formulations rely on waxes and fillers for structure. These ingredients, however, can make the final product appear matte and dull the color of the pigments, which is undesirable for consumers seeking an intense, glossy look. ('420 Patent, col. 1:21-34).
- The Patented Solution: The invention introduces a "heteropolymer," specifically a polyamide polymer, into the mascara composition. This heteropolymer is described as being surprisingly effective at dispersing the coloring agent (pigment), which allows the mascara to produce a deposit with both intense color and high gloss, overcoming the drawbacks of traditional wax-based formulas. ('420 Patent, col. 1:41-52).
- Technical Importance: The invention provided a potential solution to the trade-off between achieving a stable, structured mascara and delivering a high-impact, glossy color finish, a persistent challenge in cosmetic formulation. ('420 Patent, col. 1:29-34).
Key Claims at a Glance
- The complaint asserts infringement of "at least one claim." ('420 Patent, Compl. ¶20, 22). The independent claims are Claims 1 and 3.
- Independent Claim 1 (Method of Use): A method for making-up eyelashes comprising:
- applying to said eyelashes a mascara comprising:
- (i) at least one coloring agent;
- (ii) at least one polyamide polymer chosen from ethylenediamine/stearyl dimer tallate copolymer;
- (iii) at least one preservative;
- (iv) water;
- (v) PVP;
- (vi) neutralized stearic acid; and
- (vii) glyceryl stearate.
- Independent Claim 3 (Method of Making): A method for making a mascara comprising:
- including in said mascara:
- (i) at least one coloring agent;
- (ii) at least one polyamide polymer chosen from ethylenediamine/stearyl dimer tallate copolymer;
- (iii) at least one preservative;
- (iv) water;
- (v) PVP;
- (vi) neutralized stearic acid; and
- (vii) glyceryl stearate.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- "Pure Drama MagnaScopic Maximum Volume Mascara" and "Full Story Lush-lash Mascara" (collectively "the Accused Products"). (Compl. ¶18).
Functionality and Market Context
- The Accused Products are commercially sold mascaras. The complaint alleges that the products' functionality and composition are detailed on their ingredient labeling. (Compl. ¶19).
- The complaint attaches as exhibits photographs of the packaging for the Accused Products, which display their respective ingredient lists. (Compl. Exs. B, C). For example, Exhibit B shows the ingredient list for the "MagnaScopic" mascara. (Compl. Ex. B).
- The complaint does not provide specific details on market positioning beyond stating that Defendants are engaged in the business of selling cosmetic products. (Compl. ¶8).
IV. Analysis of Infringement Allegations
'420 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| applying to said eyelashes a mascara comprising | Consumers apply the Accused Products to their eyelashes in the intended manner. | ¶22 | col. 20:8-10 |
| (i) at least one coloring agent | The ingredient labels for the Accused Products list coloring agents, such as IRON OXIDES and TITANIUM DIOXIDE. | ¶19, Ex. B, C | col. 20:11 |
| (ii) at least one polyamide polymer chosen from ethylenediamine/stearyl dimer tallate copolymer | The ingredient labels for the Accused Products explicitly list "ETHYLENEDIAMINE/STEARYL DIMER TALLATE COPOLYMER." | ¶19, Ex. B, C | col. 20:12-13 |
| (iii) at least one preservative | The ingredient labels for the Accused Products list preservatives, such as METHYLPARABEN and SORBIC ACID. | ¶19, Ex. B, C | col. 20:14 |
| (iv) water | The ingredient labels for the Accused Products list "WATER (AQUA PURIFICATA) PURIFIED." | ¶19, Ex. B, C | col. 20:15 |
| (v) PVP | The ingredient labels for the Accused Products list "PVP." | ¶19, Ex. B, C | col. 20:16 |
| (vi) neutralized stearic acid | The ingredient labels for the Accused Products list "STEARIC ACID" and "AMINOMETHYL PROPANEDIOL," an amine compound used for neutralization. | ¶19, Ex. B, C | col. 20:17 |
| (vii) glyceryl stearate | The ingredient labels for the Accused Products list "GLYCERYL STEARATE." | ¶19, Ex. B, C | col. 20:18 |
- Identified Points of Contention:
- Scope Questions: The claims are "comprising" claims, which are open-ended. A potential question is whether the presence of additional ingredients in the Accused Products, particularly traditional waxes that the '420 Patent sought to improve upon, alters the function of the claimed composition in a way that could support a non-infringement argument.
- Technical Questions: The complaint's infringement theory relies entirely on the product ingredient labels. A central question will be whether the chemical compounds present in the final, manufactured Accused Products are identical to those recited in the claims. For example, does the listing of "Stearic Acid" and a neutralizer ("Aminomethyl Propanediol") separately on the label meet the claim limitation of "neutralized stearic acid," or does that limitation require a pre-neutralized salt to be used as an ingredient?
V. Key Claim Terms for Construction
- The Term: "neutralized stearic acid"
- Context and Importance: This term is critical because the infringement allegation relies on identifying two separate ingredients on the accused product labels (stearic acid and a neutralizing agent) to meet this single claim limitation. The defense may argue that forming the neutralized compound in situ during manufacture is different from including "neutralized stearic acid" as a component, as recited in the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not define the term or specify whether the neutralization must occur before the component is added to the mixture. A party could argue that the ordinary meaning encompasses stearic acid that becomes neutralized at any point during the creation of the final mascara product.
- Evidence for a Narrower Interpretation: The claim lists "neutralized stearic acid" as a discrete ingredient alongside others like "PVP" and "water." A party could argue this structure implies it is a distinct starting component, not a reaction product formed during the process. The patent provides no examples that clarify this point.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement under 35 U.S.C. § 271(b), stating that Defendants' advertising, marketing, and packaging "cause, urge, encourage, and/or aid consumers" to use the products in an infringing manner (i.e., applying them to eyelashes). (Compl. ¶23). It also alleges contributory infringement under § 271(c), asserting the Accused Products are a material part of the invention, are not staple articles of commerce, and are especially made or adapted for infringement. (Compl. ¶24).
- Willful Infringement: The complaint does not contain a specific count for willful infringement. It alleges that Defendants "know or should know" that their actions infringe (Compl. ¶23), which supports the knowledge element of indirect infringement. Given the complaint was filed one day after the patent issued, any willfulness claim would likely depend on establishing knowledge and continued infringement post-filing.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: While the ingredient lists on the Accused Products provide strong facial evidence for infringement, the case may turn on whether the chemical composition of the final products as sold literally meets every limitation of the asserted method claims, particularly the "neutralized stearic acid" element.
- A second central question will concern patent validity: Given the directness of the infringement allegations based on the product labels, the litigation will likely focus on Defendants' efforts to invalidate the '420 patent claims, potentially arguing that the claimed combination of well-known cosmetic ingredients would have been obvious to a person of ordinary skill in the art at the time of the invention.
- A procedural but potentially dispositive question is the correction of inventorship: The complaint seeks to correct what it describes as a clerical error by the PTO in failing to remove a co-inventor from the face of the patent. (Compl. ¶15). Should Defendants challenge this, the determination of proper inventorship under 35 U.S.C. § 256 could become a significant issue in the case.