United States Court of Appeals
for the Federal Circuit
______________________
LIQWD, INC.,
Appellant
v.
L'OREAL USA, INC.,
Appellee
______________________
2018-2152
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2017-
00012.
______________________
SEALED OPINION ISSUED: OCTOBER 17, 2019
PUBLIC OPINION ISSUED: OCTOBER 30, 2019 *
______________________
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for appellant. Also
represented by JOSEPH M. PAUNOVICH, Los Angeles, CA;
MATTHEW KEMP BLACKBURN, Diamond McCarthy LLP,
San Francisco, CA; RIVKA D. MONHEIT, Pabst Patent
Group, LLP, Atlanta, GA.
* This opinion was originally filed under seal and has
been unsealed in full.
2 LIQWD, INC. v. L’OREAL USA, INC.
MICHELLE E. O'BRIEN, The Marbury Law Group, PLLC,
Reston, VA, argued for appellee. Also represented by
TIMOTHY JAMES MURPHY.
______________________
Before REYNA, HUGHES, and STOLL, Circuit Judges.
REYNA, Circuit Judge.
Liqwd, Inc., appeals from a decision by the Patent Trial
and Appeal Board that certain claims in its patent on for-
mulations and methods of keratin treatment are unpatent-
able as obvious. In its obviousness analysis, based on
evidence presented by Liqwd, the Board found that L’Oreal
USA, Inc., used Liqwd’s confidential information and cop-
ied Liqwd’s patented method. But the Board disregarded
its factual finding when concluding that the copying in-
volved was legally irrelevant. Because that conclusion was
error, we vacate the Board’s obviousness determination
and remand. We agree with the other appealed aspects of
the Board’s final written decision.
BACKGROUND
I.
Liqwd, Inc. owns
U.S. Patent No. 9,498,419 (“the ’419
patent”), titled “Keratin Treatment Formulations and
Methods.” The ’419 patent relates to formulations and
methods of treating hair, skin, or nails by mixing com-
pounds with a coloring or bleaching formulation to achieve
a repairing or strengthening effect. The described formu-
lations contain polyfunctional compounds referred to as
“active agents” that may be maleic acid, salts thereof, or
other compounds. See ’419 patent col. 7 l. 15–col. 11 l. 18,
col. 21 l. 12–col. 25 l. 40.
Claim 1 is the only independent claim subject to dis-
pute in this case:
LIQWD, INC. v. L’OREAL USA, INC. 3
1. A method for bleaching hair comprising:
(a) mixing a formulation comprising an active
agent with a bleaching formulation, wherein the
active agent has the formula:
or salts thereof;
and
(b) applying the mixture to the hair;
wherein the active agent in the mixture is at a
concentration ranging from about 0.1% by weight
to about 50% by weight; and
wherein the mixture does not contain a hair col-
oring agent.
’419 patent col. 25 l. 42–col. 26 l. 5.
Relevant to this appeal, the application that led to the
’419 patent was a continuation of U.S. Patent Application
No. 14/713,885 (“the ’885 application”). The ’885 applica-
tion was filed on May 15, 2015.
II.
On January 31, 2017, L’Oreal USA, Inc., filed a petition
with the Patent Trial and Appeal Board (“Board”) for post-
grant review. L’Oreal asserted that claims 1–6, 8, and 10
of the ’419 patent were anticipated under
35 U.S.C. § 102
by
U.S. Patent No. 7,044,986 (“Ogawa”). L’Oreal also as-
serted that claims 1–8 and 10 were obvious under
35 U.S.C.
§ 103 in light of Ogawa or U.S. Patent Publication No.
2002/0189034 (“Kitabata”) in combination with German
Patent Publication DE 1,220,969 (“Berkemer”) and Korean
4 LIQWD, INC. v. L’OREAL USA, INC.
Patent Publication KR2006-0059564 (“KR ’564”). J.A. 18–
19. The Board instituted review on July 19, 2017.
In its final written decision, the Board found that Og-
awa did not anticipate the challenged claims of the ’419 pa-
tent. According to the Board, Ogawa disclosed all the
limitations of the challenged claims of the ’419 patent but
not as arranged in the claims as required for anticipation.
J.A. 25–26. The Board’s finding of no anticipation is not at
issue on appeal.
As to obviousness, the Board found claims 1–8 and 10
invalid as obvious in view of the prior art. The Board de-
termined that Ogawa, Berkemer, and KR ’564 provided a
person of ordinary skill a reason to choose maleic acid as
the “chelating agent” over Ogawa’s other options in its
bleaching treatment. J.A. 33–39. The Board also found
that the combination of Kitabata, Berkemer, and KR ’564
taught or suggested all of the limitations of claims 1–8 and
10 and that a person of ordinary skill would have had a
reason to combine the teachings of the references by choos-
ing maleic acid over other compounds disclosed in
Kitabata. J.A. 47–55.
The Board also considered arguments and evidence re-
lated to objective indicia of non-obviousness—in particular,
long-felt need and copying. The Board found “insufficient
evidence that the ’419 patent satisfied a long-felt and un-
met need for a way to protect hair from damage during
bleaching treatments.” J.A. 43. As to copying, the Board
weighed the evidence presented and found that L’Oreal
would not have developed products using maleic acid with-
out having access to Liqwd’s confidential information. De-
spite that factual finding, the Board determined the
evidence of copying was irrelevant as a matter of law be-
cause Liqwd had not shown that L’Oreal copied a specific
product. J.A. 45–46 (citing Iron Grip Barbell Co. v. USA
Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004)).
LIQWD, INC. v. L’OREAL USA, INC. 5
The Board concluded that L’Oreal had shown by a pre-
ponderance of the evidence that claims 1–8 and 10 are un-
patentable as obvious in view of the combination of either
Ogawa, Berkemer, and KR ’564 or in view of the combina-
tion of Kitabata, Berkemer, and KR ’564. J.A. 63–64.
Liqwd appeals. We have jurisdiction under
28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s factual determinations for sub-
stantial evidence and its legal determinations de novo. No-
vartis AG v. Noven Pharms. Inc.,
853 F.3d 1289, 1291 (Fed.
Cir. 2017). Obviousness is a question of law that we review
de novo, but the Board’s underlying findings of fact are re-
viewed for substantial evidence. Merck & Cie v. Gnosis
S.P.A.,
808 F.3d 829, 833 (Fed. Cir. 2015). Substantial ev-
idence “means such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Consol.
Edison Co. v. NLRB,
305 U.S. 197, 229 (1938).
I.
Liqwd argues that the Board erred by ruling that
L’Oreal’s copying of Liqwd’s unpublished ’885 patent appli-
cation “did not qualify as an objective indicium of nonobvi-
ousness” despite the Board’s factual finding that “[L’Oreal]
used maleic acid because of [L’Oreal’s] access to [Liqwd’s]
non-public information, rather than because of
[L’Oreal’s] . . . independent development.” Appellant
Br. 27 (quoting J.A. 45). L’Oreal responds and relies on
Iron Grip Barbell in arguing that Liqwd did not show rep-
lication of any specific product embodying the claimed in-
vention, so there is no evidence of copying by L’Oreal.
Appellee Br. 37–40. We therefore review whether the
Board erred in determining that L’Oreal’s “development of
its products due to access to non-public information about
[Liqwd’s] patent application” was not “copying of the type
that is relevant to the question of obviousness of the
6 LIQWD, INC. v. L’OREAL USA, INC.
challenged claims of the ’419 patent” on the basis that the
evidence did not show L’Oreal copied a specific product.
J.A. 45–46. We conclude this was error.
This court has consistently held that objective indicia
“‘may often be the most probative and cogent evidence’ of
nonobviousness.” Advanced Display Sys., Inc. v. Kent State
Univ.,
212 F.3d 1272, 1285 (Fed. Cir. 2000) (quoting
Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538
(Fed. Cir. 1983)). Objective indicia are essential safe-
guards that protect against hindsight bias. In re Cycloben-
zaprine Hydrochloride Extended-Release Capsule Patent
Litig.,
676 F.3d 1063, 1079 (Fed. Cir. 2012). The objective
indicia analysis is, therefore, a fundamental part of the
overall § 103 obviousness inquiry. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc.,
721 F.2d 1540, 1555 (Fed. Cir. 1983).
As a result, the Board must consider all such evidence of
objective indicia and determine the weight to give it “en
route to a determination of obviousness.” Stratoflex, Inc.
713 F.2d at 1538.
It is well established that copying by a competitor is a
relevant consideration in the objective indicia analysis.
Iron Grip Barbell, 392 F.3d at 1325. Such copying may be
evidence that the patented invention is nonobvious. Van-
denberg v. Dairy Equip. Co.,
740 F.2d 1560, 1567 (Fed. Cir.
1984). “Copying requires duplication of features of the pa-
tentee’s work based on access to that work, lest all infringe-
ment be mistakenly treated as copying.” Institut Pasteur
& Universite Pierre Et Marie Curie v. Focarino,
738 F.3d
1337, 1347–48 (Fed. Cir. 2013). Evidence of copying may
include internal documents, direct evidence such as photos
of patented features or disassembly of products, or access
and similarity to a patented product. Iron Grip Barbell,
392 F.3d at 1325.
In Iron Grip Barbell, we stated that “copying requires
the replication of a specific product.” Id. (emphasis added).
In that case, however, we emphasized that a “competing
LIQWD, INC. v. L’OREAL USA, INC. 7
product that arguably fa[l]ls within the scope of a patent”
is not necessarily evidence of copying. Id. This is to avoid
collapsing the separate infringement and copying inquiries
into a single analysis. See id. (“Otherwise every infringe-
ment suit would automatically confirm the nonobviousness
of the patent.”). As such, we held that if the only evidence
of copying was a competitor’s abandonment of one product
design and subsequent adoption of a design similar to that
of a patented product after issuance of the patent, that did
“not establish that [the competitor] engaged in copying.”
Id. In other words, more is needed than merely showing
that similarity exists between the patent and the competi-
tor’s accused product.
Other cases following Iron Grip Barbell have also em-
phasized that similarities between an issued patent and an
accused product do not, on their own, establish copying. In
Wyers v. Master Lock Co., we held that the patent owner
failed to establish copying despite its argument that “com-
petitors’ copying and marketing of convertible shank hitch
pin locks shortly after the invention’s existence became
known supports a finding of nonobviousness.”
616 F.3d
1231, 1245–46 (Fed. Cir. 2010) (citing Iron Grip Barbell,
392 F.3d at 1325). We again distinguished between in-
fringement and copying, reasoning that “[n]ot every com-
peting product that arguably falls within the scope of a
patent is evidence of copying; otherwise, ‘every infringe-
ment suit would automatically confirm the nonobviousness
of the patent.’” Id. at 1246 (quoting Iron Grip Barbell, 392
F.3d at 1325). In Tokai Corp. v. Easton Enterprises, Inc.,
although we restated that “[c]opying requires evidence of
efforts to replicate a specific product,” we emphasized the
vital difference between infringement and copying.
632
F.3d 1358, 1370 (Fed. Cir. 2011) (quoting Wyers,
616 F.3d
at 1246). The Tokai court firmly rejected the patent
owner’s argument that a stipulation of infringement was
8 LIQWD, INC. v. L’OREAL USA, INC.
by itself probative of copying. 1
Id. In each case, the ques-
tion of legal relevancy was determined by whether there
was actual evidence of copying efforts as opposed to mere
allegations regarding similarities between the accused
product and a patent; the focus was not whether the copy-
ing efforts involved a “specific product.”
Indeed, we have held that even in cases involving
claims directed to a product, access to an issued patent cou-
pled with circumstantial evidence regarding changes to a
competitor’s design is sufficient to support copying. See
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567
F.3d 1314, 1328–29 (Fed. Cir. 2009). In DePuy Spine, the
defendant’s engineering design team had settled on one de-
sign and “suddenly changed direction” to adopt a feature
disclosed in the patent as soon as it issued.
Id. at 1328. We
held that the defendant’s initial attempts at one design to-
gether with the “prompt adoption of the claimed feature
soon after the patent issued, are relevant indicia of nonob-
viousness.”
Id. at 1329 (citing Graham v. John Deere Co.
of Kansas City,
383 U.S. 1, 17–18 (1966) (recognizing that
objective indicia may “give light to the circumstances sur-
rounding the origin of the subject matter sought to be pa-
tented”)).
We have also recognized that access to published arti-
cles about a patented method are relevant to the analysis
of objective indicia and copying. See Institut Pasteur, 738
F.3d at 1347–48. In Institut Pasteur, the patent owner pub-
lished an article describing the patented method and,
1 But see id. at 1379 (Newman, J., dissenting) (“De-
spite the district court’s recognition that Tokai had demon-
strated copying, my colleagues find Tokai’s evidence of
copying ‘unpersuasive,’ stating that copying ‘requires evi-
dence of efforts to replicate a specific product.’ Defendants’
internal documentation of its unsuccessful attempts to de-
sign around the Saito invention is such evidence.”).
LIQWD, INC. v. L’OREAL USA, INC. 9
during reexamination, presented to the Board more than
twenty later-published articles demonstrating that other
scientists had adopted the patented method. Id. There was
no dispute that the publications’ authors did not copy a
“specific product.” See id. We nevertheless faulted the
Board for stopping its analysis of copying “prematurely.”
Id. The Board discounted the patent owner’s copying evi-
dence without analyzing whether the patent owner’s show-
ing of similarities between its method and the later-
published articles indicated that the publications’ authors
accessed and borrowed from the patent owner’s sources.
Id. We recognized that “copying requires duplication of
features of the patentee’s work based on access to that
work, lest all infringement be mistakenly treated as copy-
ing” and that the relevant inquiry was whether there was
evidence of copying efforts. Id. (citing Iron Grip Barbell,
392 F.3d at 1325).
Our primary concern in each of these cases has been to
avoid treating mere infringement as copying simply be-
cause the claims of a patent arguably read on a competitor
product. E.g. Wyers,
616 F.3d at 1246; Institut Pasteur, 738
F.3d at 1347–48. Of course, the proponent of objective evi-
dence offered to show nonobviousness, such as copying,
must show that a nexus exists between the evidence and
the claimed features of the invention. See Apple Inc. v.
Samsung Elecs. Co.,
839 F.3d 1034, 1082 (Fed. Cir. 2016).
But where there is evidence of actual copying efforts, that
evidence is always relevant.
II.
Here, Liqwd presented evidence of L’Oreal’s copying ef-
forts. The Board weighed the evidence and made a factual
finding that “the preponderance of the evidence suggests
that [L’Oreal] used maleic acid because of [L’Oreal’s] access
to [Liqwd’s] non-public information, rather than because of
[L’Oreal’s] independent development,” i.e., that L’Oreal
copied the method disclosed in the confidential
10 LIQWD, INC. v. L’OREAL USA, INC.
’885 application. J.A. 44–45. We agree based on our deter-
mination that substantial evidence supports the Board’s
finding that L’Oreal copied Liqwd’s patented method of us-
ing maleic acid.
The evidence presented by Liqwd and cited by the
Board included a L’Oreal email referring to a non-disclo-
sure agreement and a planned May 2015 meeting with
Liqwd’s founder Dean Christal and others involved with
the project, including the ’419 patent’s co-inventor, Dr. Eric
Pressley.
Id. (citing J.A. 2895). The Board also cited to
declarations from Dr. Pressley and Mr. Cristal that dis-
cussed details of the May 2015 meeting, providing L’Oreal
with a copy of the then-confidential ’885 application that
disclosed the patented method of using maleic acid in ker-
atin treatment, L’Oreal’s receipt and review of the ’885 ap-
plication, and L’Oreal’s subsequent loss of interest in
purchasing Liqwd’s technology.
Id. (citing J.A. 3001–13).
The Board also considered a lab notebook, which L’Oreal
contended showed that L’Oreal independently developed
its own products.
Id. (citing J.A. 2397–573). The Board
rejected L’Oreal’s contention.
Id. Accordingly, we affirm
the Board’s factual finding that L’Oreal used maleic acid
because of L’Oreal’s access to Liqwd’s confidential infor-
mation.
The Board, however, disregarded its finding that
L’Oreal copied Liqwd’s patented method, determining that
the evidence of L’Oreal’s copying efforts was irrelevant be-
cause Liqwd had not shown that L’Oreal “copied a patented
product.”
Id. The evidence presented by Liqwd shows
more than merely a “competing product that arguably falls
within the scope of a patent.” Wyers,
616 F.3d at 1245–46.
Determining that this evidence is relevant does not impli-
cate our concern with avoiding every infringement suit
turning into a confirmation of the nonobviousness of a pa-
tent. See Iron Grip Barbell, 392 F.3d at 1325. Because this
evidence of actual copying efforts is relevant, the Board
erred by disregarding its finding.
LIQWD, INC. v. L’OREAL USA, INC. 11
We therefore vacate the Board’s obviousness determi-
nation and remand the case for the Board to consider this
evidence in its obviousness analysis. See Knoll Pharm. Co.
v. Teva Pharms. USA, Inc.,
367 F.3d 1381, 1385 (Fed. Cir.
2004) (“The so-called ‘objective’ criteria must always be
considered and given whatever weight is warranted by the
evidence presented.” (internal citation omitted));
Stratoflex, Inc.
713 F.2d 1530, 1539 (Fed. Cir. 1983) (the
obviousness analysis requires that “all pieces of evidence
on that issue have been fully considered and each has been
given its appropriate weight”).
CONCLUSION
We have considered Liqwd’s other arguments and find
them unpersuasive. Although we agree with the other ap-
pealed aspects of the Board’s final written decision, be-
cause the Board erred by disregarding its finding that
L’Oreal copied Liqwd’s patented method, the Board’s obvi-
ousness determination is vacated, and this matter is re-
manded to the Board for further analysis. We instruct
that, on remand, the Board should consider this finding
and weigh it appropriately in its obviousness analysis.
VACATED AND REMANDED
COSTS
Each party shall bear its own costs.
