L Oréal USA Inc v. University Of Massachusetts

1. Case Identification

• Case #: IPR2018-00778
• Patent #: 6,423,327
• Filed: March 15, 2018
• Petitioner(s): L'Oréal USA, Inc. and L'Oréal S.A.
• Patent Owner(s): University of Massachusetts Medical School and Carmel Laboratories, LLC
• Challenged Claims: 1-7 and 9

2. Patent Overview

• Title: Treatment of Skin with Adenosine or Adenosine Analog
• Brief Description: The ’327 patent discloses methods for cosmetically enhancing the condition of unbroken, non-diseased skin by topically applying a composition containing adenosine. The method specifically aims to reduce signs of skin aging, such as wrinkling, roughness, and dryness, by using a concentration of adenosine that is effective without increasing dermal cell proliferation.

3. Grounds for Unpatentability

Ground 1: Anticipation by Inherency - Claims 1, 3, 5-7, and 9 are anticipated by DE ‘107 under 35 U.S.C. §102(b).

• Prior Art Relied Upon: DE ‘107 (German Application # DE 19545107).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that DE ‘107 expressly discloses every element of the challenged claims except for the negative limitation "without increasing dermal cell proliferation." DE ‘107 teaches topical cosmetic compositions containing adenosine for treating skin aging, including wrinkling and dryness, and discloses a concentration range of 0.001% to 10% by weight. This range overlaps with the claimed range of 10⁻⁴ M to 10⁻⁷ M (approximately 0.00265% to 0.00000265%).
  • Key Aspects: The core of the argument rested on inherency. During the ’327 patent’s prosecution, the applicant overcame a rejection over DE ‘107 by submitting a declaration showing that adenosine at a 0.001% concentration—a level taught by DE ‘107 and within the patented range—did not increase 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 satisfies the "without increasing dermal cell proliferation" limitation. Therefore, DE ‘107 anticipates the claims because it discloses a method that necessarily functions according to the claimed limitation, even if that property was not explicitly recognized.

Ground 2: Obviousness over DE ‘107 - Claims 1, 3-7, and 9 are obvious over DE ‘107.

• Prior Art Relied Upon: DE ‘107 (German Application # DE 19545107).
• 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 the use of adenosine in topical compositions to treat the same skin conditions targeted by the ’327 patent.
  • Motivation to Modify: A person of ordinary skill in the art (POSITA) reviewing DE ‘107’s broad concentration range would have been motivated to optimize the amount of adenosine to find the lowest effective concentration. This routine optimization is driven by desires to reduce cost, minimize potential side effects, and increase formula stability.
  • Expectation of Success: A POSITA would have a high expectation of success because DE ‘107 identifies adenosine as the active agent for treating aging skin, making concentration a result-effective variable that a skilled formulator would routinely optimize to arrive at the claimed range.

Ground 3: Obviousness over JP ‘153 and DE ‘107 - Claims 1-7 and 9 are obvious over JP ‘153 in view of DE ‘107.

• Prior Art Relied Upon: JP ‘153 (Japanese Application # JP-H-09-157153) and DE ‘107.
• Core Argument for this Ground:
  • Prior Art Mapping: JP ‘153 discloses topical compositions containing adenosine to prevent and treat skin aging and wrinkling, teaching every claimed element except the specific concentration range. JP ‘153 teaches a range of about 0.01% to 10% adenosine. DE ‘107 teaches using adenosine for the identical purpose but discloses a lower-end concentration of 0.001%, which overlaps the claimed range.
  • Motivation to Combine: A POSITA would combine the teachings of JP ‘153 and DE ‘107 because both references address the identical problem (skin aging) using the same active ingredient (adenosine). A POSITA would look to DE ‘107’s teachings on effective concentrations to optimize the formulations described in JP ‘153, and would have been motivated to explore the lower, effective concentrations taught by DE ‘107.
  • Expectation of Success: The combination would yield predictable results because the references are directed to the same technical field, purpose, and active ingredient. Modifying the adenosine concentration in JP ‘153 based on the teachings of DE ‘107 would be a routine step with a high expectation of successfully treating skin aging.

4. Key Claim Construction Positions

• Petitioner argued that the claim phrase “wherein the adenosine concentration applied to the dermal cells is 10⁻⁴ M to 10⁻⁷ M” must be construed to mean the concentration of adenosine in the composition that is topically applied to the outer, epidermal layer of the skin.
• This construction was asserted as critical to the invalidity arguments. Petitioner contended that any alternative interpretation—such as the concentration that ultimately reaches the dermal cells after penetrating the epidermis—would be inconsistent with the prosecution history, where the applicant distinguished prior art based on the concentration in the topical formulations themselves. Furthermore, Petitioner argued an alternative construction would render the claims invalid under 35 U.S.C. §112 because the ’327 patent provides no method for measuring or ensuring a specific concentration at the dermal layer.

5. Relief Requested

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