L'OReal USA Inc v. BRightex Bio Photonics LLC

1. Case Identification

• Case #: IPR2025-00971
• Patent #: 9,542,595
• Filed: May 12, 2025
• Petitioner(s): L'Oreal USA, Inc.
• Patent Owner(s): BRIGHTEX BIO-PHOTONICS, LLC
• Challenged Claims: 1-15

2. Patent Overview

• Title: Systems and Methods for Recommending Cosmetic Products for Users with Mobile Devices
• Brief Description: The ’595 patent discloses a client-server system for analyzing a user's skin via a digital image captured by a mobile device. The system identifies skin pixels, determines color space values, and recommends a cosmetic product based on this analysis.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bandic - Claims 5, 6, and 11 are obvious over Bandic.

• Prior Art Relied Upon: Bandic (Application # 2011/0301441).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bandic discloses all limitations of independent claim 5. Bandic teaches a system for skin analysis and cosmetic recommendation using a "host hardware" (e.g., an iPhone) and a "host system" (e.g., a server) that could be integrated into a single electronic device. Bandic's system captures a facial image ("first digital image"), calibrates its colors by converting device-dependent RGB values to standard sRGB values, and displays the image. Petitioner asserted Bandic's "simulation tool" teaches dividing the display to show an original face on one half and a simulated cosmetic application on the other. Finally, Bandic's system analyzes skin pixels using RGB color analysis to determine a "skin state" and then recommends a cosmetic product, thereby transferring cosmetic product information based on the color space values. The arguments for device claim 6 and computer-readable medium claim 11 were asserted to follow the same logic as for method claim 5.

Ground 2: Obviousness over Rubinstenn103 and Bandic - Claims 5, 6, and 11 are obvious over Rubinstenn103 in view of Bandic.

• Prior Art Relied Upon: Rubinstenn103 (Patent 7,634,103) and Bandic (Application # 2011/0301441).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Rubinstenn103 teaches a method for simulating cosmetic use on a facial image. It discloses capturing a facial image, displaying it, and allowing a user to simulate cosmetic application, including side-by-side or split-screen views. However, Rubinstenn103's color calibration relies on the user's subjective perception to match the displayed image color to their actual skin tone, a process prone to error. Bandic was argued to supply the missing objective, automated analysis.
  • Motivation to Combine: A POSITA would combine Rubinstenn103 with Bandic to improve the unreliable, user-perception-based calibration of Rubinstenn103. Bandic teaches an objective calibration method by analyzing skin pixels and converting their device-dependent color values to a standard, device-independent color space. This combination would replace the subjective user input in Rubinstenn103 with the automated, pixel-based color analysis of Bandic to more accurately identify and recommend a suitable cosmetic product.
  • Expectation of Success: A POSITA would expect success because implementing Bandic's known image processing and color analysis algorithms on the user access devices described in Rubinstenn103 was a straightforward application of conventional technologies to improve a known system.

Ground 3: Obviousness over Rubinstenn103, Rubinstenn300, and Bandic - Claims 1, 2, 3, and 4 are obvious over Rubinstenn103 in view of Rubinstenn300 and Bandic.

• Prior Art Relied Upon: Rubinstenn103 (Patent 7,634,103), Rubinstenn300 (Application # 2003/0063300), and Bandic.

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets claims requiring calibration based on a "second digital image of one or more color standards." Petitioner argued that Rubinstenn103, as in Ground 2, provides the basic framework for cosmetic simulation but lacks an objective calibration method. Rubinstenn300 was asserted to remedy this deficiency by teaching calibration using a reference image containing known color standards (e.g., a color bar). This corresponds directly to the "second digital image" limitation. Bandic was argued to provide the specific pixel-level analysis for identifying skin pixels and determining their color space values.
  • Motivation to Combine: A POSITA, recognizing the user-error problem with Rubinstenn103's calibration, would be motivated to incorporate a more robust and objective calibration method. Rubinstenn300 explicitly teaches such a method by using an image of a known color standard to calibrate a captured image of a user's skin. A POSITA would further integrate Bandic's pixel-by-pixel color analysis to implement the color correlation between the skin pixels and the color standard taught by the Rubinstenn103/Rubinstenn300 combination.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining these systems involves applying a known, objective calibration technique (Rubinstenn300) to an existing cosmetic simulation system (Rubinstenn103) and using standard image processing algorithms (Bandic) to perform the analysis.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Ground 4) against dependent claims 7-10 and 12-15, relying on the same Rubinstenn103, Rubinstenn300, and Bandic combination to meet the further limitations of those claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors is unwarranted. It asserted that it would seek a stay of the co-pending district court litigation if the IPR is instituted. The petition was filed at an early stage of the litigation, before significant resources have been expended.
• Petitioner further argued that it has filed a stipulation agreeing not to pursue in district court any invalidity ground raised or that reasonably could have been raised in the IPR, which weighs heavily in favor of institution.
• Regarding §325(d), Petitioner argued that the prior art references and combinations presented in the petition are new, were not considered during prosecution, and present distinct invalidity challenges that show fatal defects in the challenged claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of Patent 9,542,595 as unpatentable.