PTAB

IPR2018-00778

L’Oréal USA, Inc. v. University of Massachusetts

Patent #: 6,423,327
Filed: March 15, 2018
Petitioner(s): L'Oréal USA, Inc.
Patent Owner(s): University of Massachusetts Medical School and Carmel Laboratories, LLC
Challenged Claims: 1-7 and 9

Title: Treatment of Skin with Adenosine or Adenosine Analog
Brief Description: The ’327 patent relates to methods for enhancing the condition of non-diseased, unbroken skin by reducing signs of aging such as wrinkling or dryness. The method involves topically applying a composition containing adenosine at a specific low concentration that is effective without increasing dermal cell proliferation.

Prior Art Relied Upon: DE ’107 (German Published Unexamined Application No. DE 198459107).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that DE ’107 discloses every element of the challenged claims, either expressly or inherently. DE ’107 teaches using cosmetic compositions containing adenosine to treat skin aging, including wrinkling and dryness, on what would be understood as unbroken human skin. The reference discloses a broad adenosine concentration range of 0.001% to 10% by weight, which Petitioner asserted overlaps with the claimed range of 10⁻⁴ M to 10⁻⁷ M (0.00265% to 0.00000265%). DE ’107 also discloses conditioning agents (softening/moisture-retaining substances) and transdermal delivery agents (alcohols, polyols).
- Key Aspects: The central argument for this ground rested on inherency for the negative limitation "without increasing dermal cell proliferation." During prosecution of the ’327 patent, the applicant submitted a declaration to overcome a rejection over DE ’107, arguing that the low concentrations taught by DE ’107 (e.g., 0.001%) do not cause dermal cell proliferation. Petitioner contended that this declaration serves as an admission that the method of DE ’107, when practiced at its disclosed lower concentrations, inherently possesses the claimed property of not increasing dermal cell proliferation, thereby anticipating the claims.

Prior Art Relied Upon: DE ’107 (German Published Unexamined Application No. DE 198459107).
Core Argument for this Ground:
- Prior Art Mapping: As an alternative to anticipation, Petitioner asserted that DE ’107 renders the claims obvious. DE ’107 discloses all elements for treating skin aging with adenosine compositions, including a broad, overlapping concentration range.
- Motivation to Combine (for §103 grounds): Petitioner argued that a person of ordinary skill in the art (POSITA) would have been motivated to optimize the concentration of adenosine, the known active agent in DE ’107, to find a workable range for treating wrinkling and dryness. This routine optimization to balance efficacy, cost, and potential side effects would have led a POSITA to arrive at the specific concentrations recited in the challenged claims, as the disclosed range in DE '107 provides a clear starting point.
- Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because DE ’107 expressly teaches that adenosine compositions are effective for treating the same conditions, making the optimization of its concentration a predictable endeavor.

Prior Art Relied Upon: JP ’153 (Japanese Unexamined Publication JP-H-09-157153) and DE ’107 (German Published Unexamined Application No. DE 198459107).
Core Argument for this Ground:
- Prior Art Mapping: JP ’153 discloses topical compositions with adenosine for preventing skin aging and wrinkles, thus teaching the core method. It discloses a concentration range of 0.01%-10%, which is close to but does not overlap the claimed range. JP ’153 also teaches conditioning agents (cetyl alcohol) and transdermal delivery agents (propylene glycol). DE ’107, which addresses the same problem with the same active ingredient, provides an overlapping concentration range starting at 0.001%.
- Motivation to Combine (for §103 grounds): A POSITA seeking to formulate an anti-aging product would combine the teachings of these two highly relevant references. Petitioner asserted a POSITA would modify the formulation of JP ’153 by using a lower concentration of adenosine as taught by DE ’107 to optimize the composition. The combination of JP '153's method with DE '107's teachings on effective concentrations would result in the claimed invention.
- Expectation of Success (for §103 grounds): Given that both references use adenosine for the same purpose—treating skin aging—a POSITA would reasonably expect that incorporating the concentration parameters from DE ’107 into the methods of JP ’153 would yield a predictable and effective result.

Petitioner argued that the claim phrase “wherein the adenosine concentration applied to the dermal cells is 10⁻⁴ M to 10⁻⁷ M” should be construed to mean the concentration of adenosine in the composition that is topically applied to the skin.
This construction was asserted to be critical because it aligns with the prosecution history, where the applicant distinguished prior art based on the concentrations in the prior art compositions, not the unknown amount that might penetrate the epidermis to reach the dermal cells. Petitioner contended that an alternative construction—referring to the concentration that actually reaches the dermis—would render the claims indefinite under §112, as the specification provides no method to measure or even predict this value.

Petitioner requests institution of an inter partes review and cancellation of claims 1-7 and 9 of Patent 6,423,327 as unpatentable.