DCT

1:22-cv-09948

Allustra Tech LLC v. Clarins USA Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-09948, S.D.N.Y., 11/22/2022
  • Venue Allegations: Venue is alleged in the Southern District of New York on the basis that Defendant resides in the district, has committed acts of infringement there, and maintains a regular and established place of business.
  • Core Dispute: Plaintiff alleges that Defendant’s cosmetic product lines infringe seven patents related to topical skin compositions and methods of treatment using various chemical and plant-based formulations.
  • Technical Context: The patents-in-suit relate to the field of cosmetic chemistry and dermatology, specifically formulations designed to achieve anti-aging effects, sun protection, and treatment of skin conditions like hyperpigmentation.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the '845 and '594 patents because its own U.S. Patent Application (No. 15/567,205) was rejected for obviousness in view of U.S. Patent No. 9,220,675, which is the parent patent to both the '845 and '594 patents. This allegation may be significant for Plaintiff's claims of willful infringement.

Case Timeline

Date Event
1999-07-20 ’799 Patent Priority Date
2009-08-26 ’810 Patent Priority Date
2009-08-28 ’082 Patent Priority Date
2010-09-09 ’845 & ’594 Patents Priority Date
2012-05-22 ’799 Patent Issue Date
2014-11-25 ’082 Patent Issue Date
2014-12-04 ’699 & ’218 Patents Priority Date
2018-09-20 ’845 Patent Application Publication Date
2020-05-26 ’845 Patent Issue Date
2020-08-06 ’594 Patent Application Publication Date
2021-01-05 ’699 Patent Issue Date
2022-03-08 ’594 Patent Issue Date
2022-08-23 ’810 Patent Issue Date
2022-09-20 ’218 Patent Issue Date
2022-11-22 Complaint Filing Date

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

U.S. Patent No. 8,182,799 - "Treatment and Composition for Achieving Skin Anti-Aging Benefits by Corneum Protease Activation"

The Invention Explained

  • Problem Addressed: The patent's background section describes the undesirable visual and physiological effects of skin aging, while noting that common treatments like hydroxy acids and retinoids can cause skin irritation and involve a "chronic injury" to the skin. (Compl. Ex. 1, ’799 Patent, col. 1:39-44; col. 2:8-12).
  • The Patented Solution: The invention proposes to increase the skin's natural exfoliation (stratum corneum turnover) rate not by injury, but by activating the skin's own "endogenous corneum protease enzymes." (’799 Patent, col. 4:1-9). This is achieved through a "chemically compatible combination" of specific surfactants and a chelating agent, which provides a "chronic, low level stimulation" to remodel the skin without the irritation associated with prior art methods. (’799 Patent, col. 4:26-34; col. 4:51-67).
  • Technical Importance: This approach suggests a method for achieving anti-aging skin benefits by working with the skin's natural biological processes rather than by inducing a controlled injury, potentially offering similar efficacy with less irritation.

Key Claims at a Glance

  • The complaint asserts independent Claim 5. (Compl. ¶11).
  • Essential elements of Claim 5:
    • A topical skin composition comprising:
    • (i) a chemically compatible combination of one or more surfactants and at least one chelating agent; and
    • (ii) a combination of UVA and UVB absorbing agents,
    • wherein said composition is formulated as an oil-in-water emulsion.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,895,082 - "Skin Care Formulations"

The Invention Explained

  • Problem Addressed: The patent addresses the common cosmetic problem of visible signs of skin aging, such as the appearance of fine lines, wrinkles, and loss of skin firmness. (’082 Patent, Abstract).
  • The Patented Solution: The invention is a method for treating these signs of aging by topically applying a specific composition. The core active ingredient is "palmitoyl tetrapeptide 7", delivered in a "dermatologically acceptable vehicle" that includes a specific combination of glycols (butylene and propylene), glycerin, water, and a chelating agent. (’082 Patent, Claim 1). The claims explicitly state the composition is "not a sunless tanning composition," which may serve to distinguish it from prior art in the tanning field. (’082 Patent, col. 36:50-55).
  • Technical Importance: The invention isolates a specific peptide and combines it with a particular vehicle formulation to target the reduction of wrinkles and improvement of skin firmness.

Key Claims at a Glance

  • The complaint asserts independent Claim 1. (Compl. ¶23).
  • Essential elements of Claim 1:
    • A method of firming skin or reducing the appearance of fine lines or wrinkles comprising topically applying, to skin in need thereof, a composition comprising:
    • (a) palmitoyl tetrapeptide 7; and
    • (b) a dermatologically acceptable vehicle comprising: (i) water; (ii) glycerin; (iii) butylene glycol; (iv) propylene glycol; and (v) a chelating agent,
    • wherein topical application of the composition to the skin firms the skin or reduces the appearance of fine lines or wrinkles, and
    • wherein the composition is not a sunless tanning composition.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsule: U.S. Patent No. 10,660,845

  • Patent Identification: U.S. Patent No. 10,660,845, "Topical Skin Care Formulations Comprising Plant Extracts", Issued May 26, 2020.
  • Technology Synopsis: The patent describes a method for treating fine lines or wrinkles by topically applying a composition that includes an aqueous, alcoholic, or aqueous-alcoholic extract of Diospyros mespiliformis leaf. The patent suggests this plant extract can increase collagen production in the skin. (’845 Patent, Abstract; col. 9:11-23).
  • Asserted Claims: Independent Claim 1. (Compl. ¶37).
  • Accused Features: The complaint alleges that Defendant's "Extra-Firming" product line infringes by including an extract of Diospyros Mespiliformis Leaf for the purpose of treating fine lines and wrinkles. (Compl. ¶¶36, 38-39).

Multi-Patent Capsule: U.S. Patent No. 11,266,594

  • Patent Identification: U.S. Patent No. 11,266,594, "Topical Skin Care Formulations Comprising Plant Extracts", Issued March 8, 2022.
  • Technology Synopsis: The patent describes a method for treating skin conditions that result from exposure to pollution or free radicals. The solution involves topically applying a composition containing an extract of Diospyros mespiliformis leaf to reduce oxidative damage. (’594 Patent, Abstract).
  • Asserted Claims: Independent Claim 1. (Compl. ¶51).
  • Accused Features: The complaint alleges that Defendant's "Extra-Firming" product line infringes by including an extract of Diospyros Mespiliformis Leaf and marketing the product as having an "Anti-Pollution Complex" to minimize damage from environmental pollution. (Compl. ¶¶50, 52-53).

Multi-Patent Capsule: U.S. Patent No. 10,881,699

  • Patent Identification: U.S. Patent No. 10,881,699, "Cosmetic Compositions", Issued January 5, 2021.
  • Technology Synopsis: The patent describes a method for reducing the appearance of hyperpigmented skin. The method involves topically applying a composition containing a specific concentration (0.001 wt. % to 0.5 wt. %) of an aqueous and/or glycerin extract of Rhododendron ferrugineum leaf to reduce melanocyte pigmentation. (’699 Patent, Abstract; col. 31:4-10).
  • Asserted Claims: Independent Claim 1. (Compl. ¶64).
  • Accused Features: The complaint alleges that Defendant's "My Clarins RE-BOOST" product line infringes by containing an extract of Rhododendron Ferrugineum and being marketed as a product that "visibly brighten[s] the complexion." (Compl. ¶¶63, 65, 67).

Multi-Patent Capsule: U.S. Patent No. 11,446,218

  • Patent Identification: U.S. Patent No. 11,446,218, "Cosmetic Compositions", Issued September 20, 2022.
  • Technology Synopsis: The patent describes a method for reducing the appearance of hyperpigmented skin, specifically defining it as "a dark spot on the skin associated with aging or skin having uneven skin tone." The method uses a composition with an effective amount of an aqueous and/or glycerin extract of Rhododendron ferrugineum leaf. (’218 Patent, Abstract; col. 32:1-7).
  • Asserted Claims: Independent Claim 1. (Compl. ¶74).
  • Accused Features: The complaint alleges that the "My Clarins RE-BOOST" product line infringes by including Rhododendron Ferrugineum extract and being marketed to "visibly brighten[s] the complexion" and "smoothes [sic] skin texture," allegedly addressing uneven skin tone. (Compl. ¶¶73, 75-76).

Multi-Patent Capsule: U.S. Patent No. 11,419,810

  • Patent Identification: U.S. Patent No. 11,419,810, "Topical Skin Care Formulations Comprising Plant Extracts", Issued August 23, 2022.
  • Technology Synopsis: The patent describes a method of topically applying a composition to skin that includes an aqueous, alcoholic, aqueous-alcoholic, or oil-soluble extract from Condurango. (’810 Patent, Abstract). The specification notes that Condurango extract can reduce oxidation and TNF-α activity. (’810 Patent, col. 41:15-20).
  • Asserted Claims: Independent Claim 1. (Compl. ¶83).
  • Accused Features: The complaint alleges that Defendant's "Hand and Nail Treatment Cream" infringes by including Marsdenia Condurango Bark Extract. (Compl. ¶¶82, 84).

III. The Accused Instrumentality

Product Identification

  • The complaint accuses multiple product lines, grouped by the patent(s) they allegedly infringe:
    • ’799 Patent: UV PLUS Anti-Pollution Broad Spectrum SPF 50 product line. (Compl. ¶10).
    • ’082 Patent: Super Restorative Day Cream and Night Cream product lines. (Compl. ¶22).
    • ’845 and ’594 Patents: Extra-Firming and Multi-Active product lines. (Compl. ¶¶36, 50).
    • ’699 and ’218 Patents: My Clarins RE-BOOST product line, including various creams, masks, and toners. (Compl. ¶¶63, 73).
    • ’810 Patent: Hand and Nail Treatment Cream product. (Compl. ¶82).

Functionality and Market Context

  • The accused instrumentalities are commercially available topical cosmetic products sold as creams, lotions, and sunscreens. The complaint identifies the specific ingredients in each product line that allegedly map to the elements of the asserted patent claims. (Compl. ¶¶12, 24, 38, 52, 65, 75, 84). The complaint also cites Defendant's own marketing statements regarding the products' functions, such as reducing wrinkles, firming skin, and protecting against pollution, to support its infringement allegations. (Compl. ¶¶27, 39, 53, 67, 76).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,182,799 Infringement Allegations

Claim Element (from Independent Claim 5) Alleged Infringing Functionality Complaint Citation Patent Citation
A topical skin composition comprising: (i) a chemically compatible combination of one or more surfactants and at least one chelating agent; The accused products are topical skin compositions that allegedly contain surfactants (e.g., "hydroxypropyltrimonium malodextrin cross polymer" and "sodium lauryl sulfate") and a chelating agent ("disodium EDTA"). ¶13 col. 4:24-30
and (ii) a combination of UVA and UVB absorbing agents, The accused products' active ingredients allegedly include a combination of UVA/UVB absorbing agents: "Homosalate", "Octocrylene", "Oxybenzone", and "Titanium Dioxide". ¶14 col. 4:16-22
wherein said composition is formulated as an oil-in-water emulsion. The complaint alleges that the composition of the accused products' ingredients is formulated as an oil-in-water emulsion. ¶15 col. 3:30-31

U.S. Patent No. 8,895,082 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of firming skin or reducing the appearance of fine lines or wrinkles comprising topically applying, to skin in need thereof, a composition comprising: The complaint alleges customers are instructed to topically apply the accused product to firm skin and reduce wrinkles. The complaint provides a visual guide showing a three-step process for warming, applying, and draining the cream on the face and neck. (Compl. p. 7). ¶¶27, 29 col. 36:50-55
(a) palmitoyl tetrapeptide 7; The accused product allegedly contains "Palmitoyl Tetrapeptide-7". ¶24 col. 36:15-16
and (b) a dermatologically acceptable vehicle comprising: (i) water; The accused product allegedly contains "Aqua/Water/Eau". ¶24 col. 4:44-45
(ii) glycerin; The accused product allegedly contains "Glycerin". ¶24 col. 4:44-45
(iii) butylene glycol; The accused product allegedly contains "Butylene Glycol". ¶24 col. 4:44-45
(iv) propylene glycol; The accused product allegedly contains "Propanediol", which the complaint asserts is another term for propylene glycol. ¶¶24, 25 col. 4:44-45
and (v) a chelating agent, The accused product allegedly contains a chelating agent ("disodium EDTA"). ¶¶24, 26 col. 4:45-47
wherein the composition is not a sunless tanning composition. The complaint alleges the accused product is not a sunless tanning composition. ¶28 col. 36:53-55
  • Identified Points of Contention:
    • Scope Questions: For the ’082 Patent, a central question may be one of chemical scope: does "Propanediol", the ingredient in the accused product, fall within the plain and ordinary meaning of the claim term "propylene glycol"? The complaint makes a conclusory assertion to this effect (Compl. ¶25), but this may be a point of technical and legal dispute.
    • Technical Questions: For the ’799 Patent, a potential point of contention could be the meaning of a "chemically compatible combination." The analysis may explore whether this requires only that the ingredients do not degrade each other, or if it implies a specific functional interaction necessary for the claimed protease activation, which is the focus of the patent's specification. For the method claims across all patents, an evidentiary question will be whether the topical application of the products actually performs the claimed function (e.g., "firming the skin" or "reducing oxidative damage").

V. Key Claim Terms for Construction

The Term: "propylene glycol" (’082 Patent, Claim 1)

  • Context and Importance: This term's construction is critical because the accused product contains "Propanediol", and infringement hinges on whether this ingredient meets the "propylene glycol" limitation. The complaint alleges they are synonymous. (Compl. ¶25). Practitioners may focus on this term because the chemical distinction between propylene glycol (1,2-propanediol) and other forms of propanediol (e.g., 1,3-propanediol) could be dispositive.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification lists propylene glycol as an example ingredient in a list of glycols that can be used in the compositions. (’082 Patent, col. 4:44-45). A party might argue this exemplary usage does not exclude other similar glycols known in the art.
    • Evidence for a Narrower Interpretation: The patent repeatedly and specifically lists "propylene glycol" in its exemplary formulations and claims without mentioning "Propanediol" or other isomers. (’082 Patent, col. 4:45; col. 33:43-44). A party could argue that this consistent and specific naming reflects an intentional choice to limit the claim to that specific chemical structure.

The Term: "surfactants" (’799 Patent, Claim 5)

  • Context and Importance: The claim requires "one or more surfactants." The infringement allegation depends on classifying ingredients like "hydroxypropyltrimonium malodextrin cross polymer" as a surfactant. The definition will determine whether the accused products meet this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides a list of suitable cationic, anionic, zwitterionic, and non-ionic surfactants, indicating a broad class of compounds is contemplated. (’799 Patent, col. 6:6-42).
    • Evidence for a Narrower Interpretation: The core of the invention is the activation of corneum protease, which the specification links to a specific combination of surfactants (e.g., one cationic and one anionic). (’799 Patent, col. 4:1-9). A party might argue that the term "surfactants" should be construed in light of this disclosed function, potentially limiting it to compounds capable of performing this specific biological activation rather than any compound that merely reduces surface tension.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges induced infringement for all six asserted method patents (’082, ’845, ’594, ’699, ’218, and ’810). The allegations are based on Defendant providing its customers with products and "directing instructions for the use" of those products in a manner that allegedly constitutes direct infringement of the claimed methods. (Compl. ¶¶20, 29, 32, 40, 46, 55, 61, 68, 71, 77, 80, 86). The complaint includes screenshots of these instructions from Defendant's website. (Compl. pp. 7, 11, 15, 19, 22, 24).

Willful Infringement

  • Willfulness is alleged for the ’845 and ’594 patents based on alleged pre-suit knowledge stemming from Defendant's own patent prosecution, where its application was allegedly rejected over the parent patent of the asserted patents. (Compl. ¶¶33-34, 41, 47-48, 56). For the remaining five patents, the basis for willfulness is alleged continued infringement after having knowledge of the patents and infringing acts "since at least the service date of this Complaint." (Compl. ¶¶20, 61, 71, 80).

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

  • A core issue will be one of chemical and terminological scope: can ingredients listed in the accused products, such as "Propanediol" and "hydroxypropyltrimonium malodextrin cross polymer," be construed to meet the claim limitations of "propylene glycol" and "surfactants" respectively, as those terms are defined within the context of the patent specifications?
  • A key evidentiary question will be one of functional performance: for the six asserted method patents, what evidence will be presented to establish that customers who topically apply the accused products according to instructions actually achieve the claimed functional results, such as "firming skin," "reducing oxidative damage," or "reducing melanocyte pigmentation"?
  • A central question regarding damages will be the defendant's state of mind: do the allegations concerning Defendant's own patent prosecution history provide sufficient evidence to establish pre-suit knowledge of the '845 and '594 patent families, thereby supporting the claims for willful infringement and potential enhanced damages?