L'Oreal USA, Inc. v. Olaplex, Inc. ( 2021 )

Case: 19-2410 Document: 62 Page: 1 Filed: 01/28/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
L’ORÉAL USA, INC.,
Appellant
v.
OLAPLEX, INC.,
Cross-Appellant
______________________
2019-2410, 2020-1014
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2018-
00025.
______________________
Decided: January 28, 2021
______________________
MICHELLE E. O'BRIEN, The Marbury Law Group,
PLLC, Reston, VA, argued for appellant. Also represented
by TIMOTHY JAMES MURPHY.
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for cross-appellant.
Also represented by JOSEPH M. PAUNOVICH, Los Angeles,
CA; MATTHEW BLACKBURN, Diamond McCarthy LLP, San
Francisco, CA.
______________________
Case: 19-2410 Document: 62 Page: 2 Filed: 01/28/2021
2 L’ORÉAL USA, INC. v. OLAPLEX, INC.
Before DYK, REYNA, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
L’Oréal USA, Inc. filed a petition for post-grant review
under 35 U.S.C. §§ 321–29 of all claims of U.S. Patent No.
9,668,954, a patent then owned by Liqwd, Inc. that claims
methods of treating hair using a product that includes ma-
leic acid. As relevant here, L’Oréal urged unpatentability
for obviousness under 35 U.S.C. § 103 based on the combi-
nation of U.S. Patent Publication No. 2012/0024309 (Pratt)
and U.S. Patent No. 6,358,502 (Tanabe). After institution
of the requested review, and Liqwd’s disclaimer of claim 17,
the Patent Trial and Appeal Board determined that claims
14–16, 18, and 24–28 (the breakage claims) were not
proved unpatentable but that claims 1–13, 19–23, and 29–
30 were proved unpatentable. L’Oréal appeals the Board’s
determination regarding the breakage claims. Liqwd
cross-appeals the Board’s determination regarding claims
1–13, 19–23, and 29–30. We affirm.
As an initial matter, we grant Liqwd’s motion to sub-
stitute Olaplex, Inc. for Liqwd under Federal Rule of Ap-
pellate Procedure 43, based on Liqwd’s transfer of its
interest in the ’954 patent to Olaplex after the parties filed
notices of appeal and cross-appeal. The caption, originally
listing Liqwd, now lists Olaplex instead. Except when dis-
cussing the substitution issue, we will generally use
“Olaplex” to refer to both Liqwd and Olaplex.
We affirm the Board’s determination that claims 1–13,
19–23, and 29–30 are unpatentable for obviousness based
on the combined teachings of Pratt and Tanabe. Olaplex
challenges only the Board’s findings on motivation to com-
bine, reasonable expectation of success, and the objective
indicium of copying. We conclude that substantial evidence
supports the Board’s findings that a relevant artisan would
have a motivation to combine Pratt and Tanabe with a rea-
sonable expectation of success. As to copying, we assume
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L’ORÉAL USA, INC. v. OLAPLEX, INC. 3
that, by virtue of issue preclusion based on our decision in-
volving a related Olaplex patent several months after the
Board decision in this matter, we must accept that “L’Oréal
would not have developed products using maleic acid with-
out having access to Liqwd’s confidential information.”
Liqwd, Inc. v. L’Oréal USA, Inc., 941 F.3d 1133, 1136 (Fed.
Cir. 2019) (’419 Decision); id. at 1138–39 (affirming Board
finding that “L’Oréal used maleic acid because of L’Oréal’s
access to Liqwd’s non-public information, rather than be-
cause of L’Oréal’s independent development” (cleaned up)).
We conclude, however, that substantial evidence supports
the additional nexus-related facts that the Board in this
matter found regarding copying, and given those facts, we
further conclude, in conducting the ultimate legal analysis
of obviousness based on all supported facts, that claims 1–
13, 19–23, and 29–30 are unpatentable for obviousness.
We also affirm the Board’s determination that the
breakage claims were not proved unpatentable. We hold
that the breakage-decrease requirements added by the
breakage claims limit the invention claimed for purposes of
patentability analysis. And we hold that substantial evi-
dence supports the Board’s finding that L’Oréal failed to
establish, as it asserted, that meeting the breakage claims’
requirements is inherent in the combined teachings of
Pratt and Tanabe.
I
The ’954 patent “generally relates to formulations and
methods for treating keratin in hair, skin, or nails, and in
particular for strengthening and/or repairing hair during
or after” a coloring, a bleaching, or a permanent-wave
treatment. ’954 patent, col. 1, lines 19–22; see also id., col.
7, lines 7–14. The patent describes a method of using a
formulation with an “active agent” (a polyfunctional com-
pound) that “rebuild[s] the disulfide bonds in keratin found
in hair” during bleaching (also called lightening). Id., Ab-
stract; id., col. 7, lines 16–17; id., col. 7, lines 42–46. The
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4 L’ORÉAL USA, INC. v. OLAPLEX, INC.
formulation with the active agent may be applied “at the
same time as” or after the coloring, bleaching, or perma-
nent-wave treatment, id., col. 3, lines 28–31, and the “ac-
tive agents are washed from the individual’s hair on the
same day that they are applied to the hair,” id., col. 3, lines
14–17. The patent describes several examples with the ac-
tive agent being “maleic acid.” See, e.g., id., col. 21, lines
26–67 (“Example 1”); col. 22, lines 1–36 (“Example 2”).
The ’954 patent’s claims all require maleic acid as the
active agent. For this appeal, claim 1, which is the only
independent claim in the patent, is representative of claims
2–13, 19–23, and 29–30. Claim 1 recites:
1. A method for bleaching hair comprising:
(a) mixing a bleach powder and a developer to
form a bleaching formulation;
(b) mixing an active agent formulation com-
prising an active agent with the bleaching formu-
lation to form a mixture, wherein the active agent
is maleic acid; and
(c) 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.
Id., col. 25, lines 58–67.
Claims 14–16, 18, and 24–28, each of which simply
adds a specific requirement of a level of decrease in hair
breakage, have been labeled the “breakage claims” in this
matter. Claim 24, which is illustrative, recites:
24. The method of claim 1, wherein following step
(c) breakage of the hair is decreased by at least 5%
compared to hair bleached with the bleaching for-
mulation in the absence of the active agent.
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L’ORÉAL USA, INC. v. OLAPLEX, INC. 5
Id., col. 27, lines 7–10. The language of claims 25–28 mir-
rors claim 24 but covers different percentages of decreased
breakage: “at least 10%” (claim 25); “at least 20%” (claim
26); “at least 40%” (claim 27); “at least 50%” (claim 28). Id.,col. 27, lines 11–26. Claims 14–16 and 18 are relevantly
similar, but they depend on claim 13, which depends on
claim 12—which depends on claim 1 and adds a require-
ment for a second maleic-acid-based active agent—and
adds that “the second active agent formulation further
comprises a conditioning agent.” Id., col. 26, lines 34–47,
52–55.
II
A
The Board relied on several alternative combinations
of prior-art references for its unpatentability determina-
tions, but the only combination we must address on appeal
is the combination of Pratt and Tanabe.
Pratt: “Bleaching/Highlighting Composition.” Pratt
states that its “objective . . . is reducing the damaging effect
of commonly used bleaching agents.” Pratt, ¶ 3. It notes
that the inventors “surprisingly found” that “when a
bleaching composition is added [to] at least one cationic . . .
and/or cationizable compound, [the] damaging effect of
bleaching composition on hair is noticeably reduced.” Id.,
¶ 5. Pratt describes a “composition for bleaching hair com-
prising three parts” that are “mixed prior to application
onto hair.” Id., ¶ 6; see also id., ¶¶ 8, 10. The three parts
are: (1) “a substantially anhydrous composition comprising
at least one compound with bleaching effect”; (2) “an aque-
ous composition comprising at least one oxidizing agent”;
and (3) “a composition comprising at least one cationic
and/or cationizable compound.” Id., ¶ 6; see also id., ¶¶ 8,
10. Pratt explains that the “third composition preferably
comprises additionally at least one hair conditioning com-
pound.” Id., ¶ 53. It also states that the pH of the third
composition is “most preferably” between 3 and 6 “and in
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6 L’ORÉAL USA, INC. v. OLAPLEX, INC.
particular” between 3 and 5. Id., ¶ 94. In one embodiment,
Pratt notes, “maleic acid” is used to “adjust[]” the pH of the
composition. Id. The patent says that the preferred “mix-
ing ratio” of the three parts forming the overall composition
is “4:4:0.2 to 4:4:0.75.” Id., ¶ 95.
Pratt also reports its results for various examples. In
one example, the inventors compared hair bleached with-
out the third composition to one with the third composition.
Id., ¶¶ 99–108. The patent observes that the hair treated
with the third composition was “bleached more effectively”
and that the “damaging effect of [the] inventive composi-
tion is lower compared to the comparative composition.”
Id., ¶ 108. For other similar examples, the inventors “ob-
served that bleaching effects were excellent” and that the
hair “were easier to comb, felt soft and natural upon touch-
ing and had improved shine.” Id., ¶ 138.
Tanabe: “Hair Cosmetic Compositions Containing Gly-
cine and Alanine.” Tanabe describes “a hair cosmetic com-
position excellent in the effect of improving optical or
mechanical properties of hair such [as] luster, softness,
body and the like.” Tanabe, col. 1, lines 34–39. The hair-
cosmetic composition, Tanabe explains, includes at least
three components: first, “glycine or alanine”; second, an
acid; third, “a cationic surfactant.” Id., col. 1, lines 40–45.
For the acid, “maleic acid” and two others are “particularly
preferred.” Id., col. 2, lines 4–5. For each component,
Tanabe specifies various preferred concentration propor-
tions. Id., col. 1, line 52, through col. 2, line 12; id., col. 2,
lines 45–50. Tanabe also suggests that the composition’s
pH “may range . . . from 2 to 6” but a pH from “2.5 to 3.5”
is “particularly preferred.” Id., col. 3, lines 26–30. Like
Pratt and the ’954 patent, Tanabe includes numerous ex-
amples reporting results of experiments. One such experi-
ment involved use of a hair-cosmetic composition with
maleic acid on bleached hair samples. See id., col. 3, line
36, through col. 4, line 54.
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L’ORÉAL USA, INC. v. OLAPLEX, INC. 7
B
On August 10, 2018, the Board instituted a post-grant
review of all claims of the ’954 patent based on L’Oréal’s
petition. L’Oréal USA, Inc. v. Liqwd, Inc., PGR2018-
00025, 2018 WL 3934314 (P.T.A.B. Aug. 10, 2018) (Institu-
tion Decision). Although the Board explained that many of
the claims were likely unpatentable, id. at *15, the Board
noted its skepticism that L’Oréal had established that the
breakage claims were likely unpatentable, id. at *11 (“Pe-
titioner’s argument and evidence in support of the obvious-
ness of these claims is lacking.”). The Board highlighted
Olaplex’s observation that L’Oréal’s unpatentability argu-
ment on the breakage claims “relies on inherency” and
stated: “There is insufficient evidence cited in the record
that combining Pratt and Tanabe necessarily produces the
reduced breakage as recited in any of claims 14–16, 18, or
24–28.” Id. “Some (possibly even all) of the breakage lim-
itations in these claims might be met by combining the art,”
the Board continued, “and there is some overlap with the
claimed maleic acid concentrations. But [L’Oréal] has not
shown that any—much less all—of the breakage limita-
tions are satisfied if the art is combined and modified as
proposed.” Id. Still, the Board “institute[d] post-grant re-
view of all claims.” Id. at *15 (citing SAS Inst., Inc. v.
Iancu, 138 S. Ct. 1348 (2018)).
On July 30, 2019, the Board issued its final written de-
cision. The Board determined that claims 1–13, 19–23, and
29–30 were proved unpatentable for obviousness based on
the combination of Pratt and Tanabe but that the breakage
claims were not proved unpatentable.
Claims 1–13, 19–23, and 29–30. The Board found that
when the “maleic-acid containing conditioner as suggested
in Tanabe is used for the ‘third composition’ of Pratt’s mix-
ture and method,” all limitations of claim 1 were met. J.A.
39. Specifically as to the concentration-range limitation,
the Board found that Pratt and Tanabe taught “0.049 wt%
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8 L’ORÉAL USA, INC. v. OLAPLEX, INC.
to 0.171 wt%, and 0.122 wt% to 0.429 wt%”—within the
ranges claimed in the ’954 patent’s claims at issue. J.A.
40–41.
Next, the Board found that a relevant artisan would
have a motivation to combine the teachings with a reason-
able expectation of success. On motivation to combine, the
Board explained: “Given the substantial overlap in suitable
ingredients for Tanabe’s conditioners and Pratt’s” third
composition, a relevant artisan “would have understood
that Tanabe’s compositions are suitable for use as Pratt’s”
third composition. J.A. 43 (internal quotation marks and
citation omitted). The Board found credible the explana-
tion by L’Oréal’s expert, Dr. Wickett, that a relevant arti-
san “would have understood that the compositions of
Tanabe would effectively function as Pratt’s” third compo-
sition and “would have made and expected such a combina-
tion to provide a further conditioning benefit (e.g., luster,
manageability) for the hair as suggested by Tanabe.” Id.;
see also J.A. 44–47. On reasonable expectation of success,
the Board rejected Olaplex’s “argument that Tanabe’s con-
ditioners would not be expected to provide a benefit in an
alkaline environment.” J.A. 47. The Board found that
“Pratt itself suggests that acidic conditioners (e.g., with pH
values as low as 2 or preferably 3) can be added to a high
pH bleaching composition.” J.A. 46–47; see also id. at 48
(“Pratt suggests that acidic conditioners may favorably be
included in a bleaching mixture and an alkaline bleaching
environment.”). The Board credited Dr. Wickett’s testi-
mony that a relevant artisan “would have thought and in-
ferred that Tanabe’s low pH conditioners would, at
minimum, provide ‘conditioning benefits’ when combined
with Pratt.” J.A. 46.
The Board then considered, at length, Olaplex’s sub-
missions concerning objective indicia of nonobviousness,
addressing commercial success, long-felt and unmet need,
unexpected results, industry praise, and copying. J.A. 48–
76. For commercial success, long-felt need, and unexpected
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L’ORÉAL USA, INC. v. OLAPLEX, INC. 9
results, the Board “g[a]ve little weight” to Olaplex’s evi-
dence. J.A. 61, 68, 71, 73. For industry praise, the Board
did “not find that the record here demonstrates industry
praise for the subject matter claimed in the ’954 patent.”
J.A. 76 (emphasis added). And for copying, the Board did
“not give substantial weight to” the copying evidence. J.A.
59. While stating that “one plausible takeaway is that”
L’Oréal copied information in a then-confidential Olaplex
patent application disclosing maleic acid in a bleaching
mixture, J.A. 54, the Board found that the evidence (includ-
ing a laboratory notebook) showed that L’Oréal had inde-
pendently described “its own maleic-acid additive for a
bleaching composition before receiving” the Olaplex patent
application, J.A. 56.
In the end, the Board concluded, the objective indicia
did “not outweigh the evidence that claim 1 is unpatenta-
ble” based on Pratt and Tanabe. J.A. 76. Claims 2–13, 19–
23, and 29–30 fell with claim 1. J.A. 76–77, 84.
The Breakage Claims. The Board rejected L’Oréal’s
challenge to the breakage claims, elaborating on its state-
ments in the Institution Decision that L’Oréal’s inherency
arguments were “unpersuasive.” J.A. 78. The Board reit-
erated that “some of the breakage limitations in these
claims might be met by combining the art, and there is
some overlap with the claimed maleic acid concentrations.
But such possibilities are insufficient to demonstrate that
any—much less all—of the recited breakage limitations
would be inherently satisfied in the Pratt/Tanabe combina-
tion.” J.A. 79 (citation omitted).
In so finding, the Board noted that L’Oréal’s new argu-
ments and evidence in its reply violated 37 C.F.R.
§ 42.23(b) and could be struck, but the Board considered
the arguments and evidence anyway. J.A. 82–83. It re-
jected L’Oréal’s argument that because the combined
teachings of Pratt and Tanabe had conditioners, a relevant
artisan would have expected a decrease in hair breakage of
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10 L’ORÉAL USA, INC. v. OLAPLEX, INC.
“greater than 50%.” J.A. 80. The evidence showed that
“not all conditioners necessarily convey the same benefits,”
the Board found, and did not show that “the results ob-
served with that product under [certain] conditions would
necessarily and inherently inure to Tanabe’s particular con-
ditioner when combined with Pratt’s bleaching mixture.”
J.A. 82–83. The Board concluded that L’Oréal had not
shown the breakage claims to be unpatentable.
L’Oréal timely appealed the patentability of the break-
age claims. Olaplex timely cross-appealed the unpatenta-
bility of claims 1–13, 19–23, and 29–30. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
III
We begin with Liqwd’s motion to substitute Olaplex for
itself under Federal Rule of Appellate Procedure 43. That
rule provides the procedural vehicle for a substitution of a
new party for an existing one when authorized by law,
whether the basis for substitution is a party’s death (Fed.
R. App. P. 43(a)) or another reason (Fed. R. App. P. 43(b)).
The Board issued its final written decision on July 30,
2019. L’Oréal filed a notice of appeal on September 12,
2019, and Liqwd filed a notice of its cross-appeal on Sep-
tember 26, 2019. Our jurisdiction attached when those no-
tices were filed, see Gilda Indus., Inc. v. United States, 511
F.3d 1348, 1350 (Fed. Cir. 2008), and at that time, Liqwd
still owned the ’954 patent and undisputedly had a concrete
stake in both the cross-appeal and the appeal before this
court. Accordingly, this matter does not involve a lack of
standing or some other jurisdictional defect at the start of
an Article III case. See Schreiber Foods, Inc. v. Beatrice
Cheese, Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005) (noting
that such at-commencement defects present distinct prob-
lems, while finding no jurisdictional problem in the case
before the court); Grupo Dataflux v. Atlas Glob. Group,
L.P., 541 U.S. 567 (2004) (concluding that a post-filing
change to citizenship may not cure lack of subject-matter
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L’ORÉAL USA, INC. v. OLAPLEX, INC. 11
jurisdiction that existed when the action premised on di-
versity of citizenship was filed).
On January 8, 2020, while the appeals were before us,
Liqwd transferred its interest in the ’954 patent to Olaplex.
Three months later, L’Oréal, in its merits briefing, argued
that the transfer stripped Liqwd of the concrete stake re-
quired for an Article III court’s adjudication of Liqwd’s
cross-appeal. Appellant Response and Reply Br. at 51–53.
On May 4, 2020, Liqwd simultaneously responded to that
argument in its reply brief and filed a motion to join or to
substitute Olaplex. Cross-Appellant Reply Br. at 19–21;
L’Oréal USA, Inc. v. Olaplex Inc., No. 19-2410, ECF No. 32
(Fed. Cir. May 4, 2020).
L’Oréal does not question that Olaplex has the re-
quired personal stake needed to maintain the cross-appeal;
and L’Oréal does not question the justiciability of its own
appeal, whether or not Olaplex is substituted for Liqwd.
See Appellant Response and Reply Br. at 51–53; L’Oréal
USA, Inc. v. Olaplex Inc., No. 19-2410, ECF No. 36 (Fed.
Cir. May 14, 2020). For good reason: As the current owner
of the ’954 patent, Olaplex has a concrete stake in the pa-
tentability of the claims of the ’954 patent. The parties
thus properly agree that if we join or substitute Olaplex for
Liqwd, no case-or-controversy problem exists.
We conclude that substitution is warranted in these
circumstances; we do not consider joinder. Cf. Mullaney v.
Anderson, 342 U.S. 415, 416–17 (1952) (allowing joinder
and thereby avoiding potential standing problem without
joined party). We have approved substitution of a succes-
sor in interest caused by a transfer of a patent under Fed-
eral Rule of Appellate Procedure 43(b). See, e.g., Orexigen
Therapeutics, Inc. v. Actavis Labs. FL, Inc., No. 18-1221,
ECF No. 32 at 2 (Fed. Cir. Sept. 19, 2018) (noting that “this
court has previously granted motions to substitute under
Rule 43(b) when a party has acquired the patents during
an appeal”); Beghin-Say Int’l, Inc. v. Ole-Bendt Rasmussen,
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12 L’ORÉAL USA, INC. v. OLAPLEX, INC.
733 F.2d 1568, 1569 (Fed. Cir. 1984). More recently, in
Uniloc USA, Inc. v. ADP, LLC, we permitted joinder of a
party to whom the plaintiffs had “transferred all their
rights in and to the patents-in-suit.” 772 F. App’x 890, 893
(Fed. Cir. 2019). We explained: “When [the plaintiffs] filed
the notices of appeal that set our jurisdiction in these cases,
they were indisputably the owners of the patents-in-suit.
The transfer of the patent rights to [the non-party] did not
divest this court of jurisdiction or the ability to substitute
or join a successor-in-interest.” Id.The trial-court counterpart to Federal Rule of Appel-
late Procedure 43 is Federal Rule of Civil Procedure 25.
That rule specifically contemplates substitution in the case
of a “transfer of interest.” Fed. R. Civ. P. 25(c) (“If an in-
terest is transferred, the action may be continued by or
against the original party unless the court, on motion, or-
ders the transferee to be substituted in the action or joined
with the original party.”). The authority to substitute
based on a transfer of a specific litigation interest is well
recognized. See Horphag Research Ltd. v. Consac Indus.,
Inc., 116 F.3d 1450, 1453 (Fed. Cir. 1997); Minn. Mining &
Mfg. v. Eco Chem, Inc., 757 F.2d 1256, 1263–64 (Fed. Cir.
1985); Trout v. Garmin Int’l, Inc., 413 F. App’x 288, 288
(Fed. Cir. 2011) (district-court substitution, while case was
on appeal, upon transfer of patent); 6 James W. Moore,
Moore’s Federal Practice § 25.31 (2020) (“Courts have ap-
plied the rule broadly to include transfers by either a plain-
tiff or defendant of various kinds of property interests that
may be involved in a lawsuit,” including assignment of le-
gal rights.) (citing cases). That body of law reinforces the
availability of substitution in similar circumstances under
the appellate rule.
We see no persuasive reason to deny substitution in the
present matter, and there is good reason to grant substitu-
tion. L’Oréal has suffered no genuine prejudice from
Liqwd’s several-month delay in filing its motion to either
join or substitute Olaplex. L’Oréal was well aware of the
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L’ORÉAL USA, INC. v. OLAPLEX, INC. 13
transfer and has not identified how the arguments before
this court would have changed had Liqwd filed its motion
earlier. On the other hand, there are substantial public,
private, and judicial-efficiency interests in resolving the
patentability issues decided by the Board in this matter.
Finally, substitution of a successor in interest resulting
from a simple transfer of the transferor’s personal legal
right does not raise the concern expressed by the Ninth Cir-
cuit in denying joinder in a non-successorship situation in
Bain v. California Teachers Ass’n, namely, that joinder of
a new plaintiff with its own legal claim that was merely
parallel to the one lost by the original plaintiffs would
threaten to “render[] obsolete” the mootness doctrine “in
many if not most cases.” 891 F.3d 1206, 1216–17 (9th Cir.
2018). Substitution here does not pose such a threat.
IV
On the merits, we first address Olaplex’s cross-appeal,
which challenges the Board’s determination of obvious-
ness, based on Pratt and Tanabe, of most of the claims at
issue in the post-grant review. Claim 1 is representative,
for these purposes, of all the claims held unpatentable. We
affirm the Board’s determination.
Obviousness under 35 U.S.C. § 103 is a matter of law
based on findings of underlying facts. Ariosa Diagnostics
v. Verinata Health, Inc., 805 F.3d 1359, 1364 (Fed. Cir.
2015). The underlying factual findings include “the scope
and content of the prior art, the differences between the
prior art and the claimed invention, the level of ordinary
skill in the art, the presence or absence of a motivation to
combine or modify with a reasonable expectation of suc-
cess, and objective indicia of nonobviousness.” Id. We re-
view the Board’s ultimate obviousness conclusion de novo
and its underlying factual findings for substantial-evidence
support. In re Varma, 816 F.3d 1352, 1359 (Fed. Cir. 2016).
In reviewing a factual finding for substantial evidence, we
ask “whether a reasonable fact finder could have arrived at
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14 L’ORÉAL USA, INC. v. OLAPLEX, INC.
the” finding, “taking into account evidence that both justi-
fies and detracts from” the finding. Personal Web Techs.,
LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir. 2017)
(cleaned up). L’Oréal had “the burden of proving a propo-
sition of unpatentability by a preponderance of the evi-
dence.” 35 U.S.C. § 326(e).
A
Olaplex does not contest the Board’s finding that there
are no differences between the combined teachings of Pratt
and Tanabe and the claimed invention. Specifically,
Olaplex accepts that using the Tanabe-taught conditioner
containing maleic acid as the third component in Pratt’s
three-part formulation results in the mixture required by
claim 1 of the ’954 patent. See J.A. 39–41. Instead, Olaplex
challenges the Board’s finding that a relevant artisan
would have had a motivation to combine the teachings of
Pratt and Tanabe with a reasonable expectation of success.
Cross-Appellant Opening Br. at 58–63; Cross-Appellant
Reply Br. at 17–19. We reject that challenge.
Motivation to Combine. Substantial evidence supports
the Board’s finding that a relevant artisan would have been
motivated by “further conditioning benefits (e.g., luster,
manageability)” to combine the teachings of Pratt and
Tanabe in a way that turns out to meet claim 1’s limita-
tions. J.A. 43. The Board relied on testimony by L’Oréal’s
expert, Dr. Wickett, that a relevant artisan “would have
understood that the compositions of Tanabe would effec-
tively function as Pratt’s [third] composition” and “would
have made and expected such a combination to provide a
further conditioning benefit (e.g., luster, manageability) for
the hair as suggested by Tanabe.” Id. The Board also
found that “adding conditioners to bleaching mixtures was
a known technique to combat bleach damage.” J.A. 45.
Those findings are a reasonable reading of the record.
Olaplex disputes those findings in three ways. First,
Olaplex essentially argues that Pratt requires a high pH
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L’ORÉAL USA, INC. v. OLAPLEX, INC. 15
mixture and that Tanabe teaches away from using its (ma-
leic acid) conditioner in a high pH mixture. Cross-Appel-
lant Opening Br. at 60–61; Cross-Appellant Reply Br. at
18. “[A] showing that a prior art reference teaches away
from a given combination is evidence that one of skill in the
art would not have been motivated to make that combina-
tion to arrive at the claimed invention.” Rembrandt Wire-
less Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1379
(Fed. Cir. 2017); see also KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). “A reference may be said to teach
away when a person of ordinary skill, upon reading the ref-
erence, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” In re Ur-
banski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (cleaned up).
The Board reasonably rejected Olaplex’s argument.
Olaplex relies on Tanabe’s statement that the pH of its
hair-cosmetic composition “may range specifically from 2 to
6, with pH 2.5 to 3.5 being particularly preferred,” Tanabe,
col. 3, lines 26–30—which are acidic ranges, lower than
above-7.0 alkaline ranges. But Tanabe uses the language
of “may” and “preferred,” which are not words that the
Board had to find would discourage alternatives, and, in
any event, the Board also reasonably found that Pratt itself
“teaches [that] low pH conditioners, similar to those de-
scribed in Tanabe, may be included in its high pH bleach-
ing mixture, thus providing a reason to have selected and
combined Tanabe’s low pH cationic conditioners.” J.A. 45
(citing Pratt, ¶¶ 94, 103).
Second, Olaplex asserts that a relevant artisan “would
not have had reason to search” for the teachings in Tanabe
because Pratt already taught reducing damage to bleached
hair. Cross-Appellant Opening Br. at 62. But the conclu-
sion does not follow from the premise: That a particular
piece of prior art achieves a desirable goal to some extent
hardly means that relevant artisans would have lacked a
motivation to achieve the goal to a greater extent. See
Case: 19-2410 Document: 62 Page: 16 Filed: 01/28/2021
16 L’ORÉAL USA, INC. v. OLAPLEX, INC.
Huawei Techs. Co. v. Iancu, 813 F. App’x 505, 510 (Fed. Cir.
2020). Here, reducing bleach damage is a concrete benefit
and is a matter of degree, not all or nothing.
Third, Olaplex contends that the relevant artisan
would not have been motivated to use maleic acid over
other compounds disclosed in both Pratt and Tanabe.
Cross-Appellant Opening Br. at 62. But as the Board indi-
cated, J.A. 45, Tanabe itself provides the motivation to fo-
cus on a small subset of possibilities that includes maleic
acid. It teaches that “malic acid, succinic acid and maleic
acid are particularly preferred.” Tanabe, col. 2, lines 4–5
(emphasis added).
In sum, substantial evidence supports the Board’s find-
ing that a relevant artisan “would have had reason to at-
tempt to . . . carry out the claimed process.” PharmaStem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360
(Fed. Cir. 2007).
Reasonable Expectation of Success. The Board found
that a relevant artisan would have had a reasonable expec-
tation of success in combining the teachings of Pratt and
Tanabe. J.A. 43–48. In briefly challenging this finding,
Olaplex, as in its challenge to the Board’s motivation find-
ing, focuses on pH levels. Specifically, Olaplex contends
that a relevant artisan “would have understood the hair
damage-reducing effects of a mild acid like maleic acid
would have been literally and chemically neutralized once
mixed with a bleaching formulation like Pratt.” Cross-Ap-
pellant Reply Br. at 18.
The Board reasonably found otherwise. As the Board
noted, there is “substantial overlap in suitable ingredients
for Tanabe’s conditioners and” the relevant part of Pratt’s
composition, J.A. 43, so “Tanabe’s conditioner would also
have been thought to serve as a substitute (and at least
equivalent to)” the relevant part of Pratt’s composition,
J.A. 44. The Board also noted that “Pratt itself suggests
that acidic conditioners . . . can be added to a high pH
Case: 19-2410 Document: 62 Page: 17 Filed: 01/28/2021
L’ORÉAL USA, INC. v. OLAPLEX, INC. 17
bleaching composition.” J.A. 46–47; see also J.A. 48 (“Also,
Pratt suggests that acidic conditioners may favorably be
included in a bleaching mixture and an alkaline bleaching
environment”). In addition, the Board credited the testi-
mony of Dr. Wickett that a relevant artisan “would have
thought and inferred that Tanabe’s low pH conditioners
would, at minimum, provide ‘conditioning benefits’ when
combined with Pratt.” J.A. 46. Olaplex has not shown that
its evidence undermines the Board’s finding that, consider-
ing all relevant factors, a relevant artisan would have had
a reasonable expectation of success of combining Tanabe’s
teaching of a conditioner containing maleic acid with
Pratt’s composition. See Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1364, 1367–68 (Fed. Cir. 2007) (A relevant arti-
san’s “expectation of success need only be reasonable, not
absolute.”); Acorda Therapeutics, Inc. v. Roxane Labs., Inc.,
903 F.3d 1310, 1333 (Fed. Cir. 2018). We conclude that
substantial evidence supports the Board’s finding.
B
“Objective indicia of nonobviousness must be consid-
ered in every case where present.” Apple Inc. v. Samsung
Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc).
They “include: commercial success enjoyed by devices prac-
ticing the patented invention, industry praise for the pa-
tented invention, copying by others, and the existence of a
long-felt but unsatisfied need for the invention.” Id. at
1052. The Board considered at length Olaplex’s evidence
of objective indicia and made findings that left that evi-
dence, even taken as a whole, with little if any weight in
the overall obviousness analysis. J.A. 48–76.
On appeal, Olaplex challenges only the Board’s deter-
mination involving copying. Olaplex relies on our October
2019 decision in ’419 Decision, 941 F.3d 1133, which in-
volved a post-grant review of U.S. Patent No. 9,498,419—a
grandparent of the ’954 patent (sharing a specification).
There, we upheld a specific Board finding on copying—as
Case: 19-2410 Document: 62 Page: 18 Filed: 01/28/2021
18 L’ORÉAL USA, INC. v. OLAPLEX, INC.
quoted above, that L’Oréal relied on confidential Olaplex
information in deciding to develop a product using maleic
acid—and, without deciding the ultimate obviousness
question for ourselves, we remanded to the Board for fur-
ther proceedings, because the Board had not explored
nexus-related facts but instead had erroneously deemed
copying to be legally immaterial unless a product was cop-
ied. ’419 Decision, 941 F.3d at 1136, 1138–39 (reviewing
the Board decision at Liqwd, Inc. v. L’Oréal USA, Inc., No.
18-2152, ECF No. 47 at 16–67 (Fed. Cir. Dec. 12, 2018)
(’419 Board Decision)). Olaplex argues that issue preclu-
sion requires the same copying-related finding in this mat-
ter—which the Board here did not make—and seeks a
remand for reassessment of the role of copying in the over-
all obviousness analysis. Cross-Appellant Opening Br. at
43, 52; Cross-Appellant Reply Br. at 3.
We assume, without deciding, that the particular find-
ing upheld in 2019 should be given issue-preclusive effect.
But we reject the request for a remand. Here, unlike in the
Board decision addressed in our 2019 opinion, the Board
made all the needed nexus findings. Given those findings,
which we see no basis for disturbing, no new factual find-
ings are needed. We therefore consider all the facts and
draw the legal conclusion of obviousness.
1
In the ’419 Decision, we characterized the Board’s find-
ing we were affirming as follows: “L’Oréal would not have
developed products using maleic acid without having ac-
cess to Liqwd’s confidential information.” 941 F.3d at 1136;
see also id. at 1138–39 (affirming the Board’s finding that
“L’Oréal used maleic acid because of L’Oréal’s access to
Liqwd’s non-public information, rather than because of
L’Oréal’s independent development” (cleaned up)). It was
that specific finding—which concerns L’Oréal’s choice to
actually develop a commercial product using maleic acid,
i.e., to “launch[] its products,” as the Board said, ’419 Board
Case: 19-2410 Document: 62 Page: 19 Filed: 01/28/2021
L’ORÉAL USA, INC. v. OLAPLEX, INC. 19
Decision at 44–45—which this court affirmed when refer-
ring to “copying,” see ’419 Decision, 941 F.3d at 1139 (“[W]e
affirm the Board’s factual finding that L’Oréal used maleic
acid because of L’Oréal’s access to Liqwd’s confidential in-
formation.” (emphasis added)); id. at 1134–35 (“[T]he
Board found that L’Oréal USA, Inc., used Liqwd’s confiden-
tial information and copied Liqwd’s patented method.”).
The Board in its findings and this court in affirming the
Board’s findings did not determine what L’Oréal had al-
ready done in its laboratory even before seeing the Olaplex
confidential information. See ’419 Board Decision at 45
(noting lack of clarity of laboratory notebooks and not de-
ciding what they meant, focusing instead on L’Oréal’s prod-
uct development).
We did not affirm or reverse the Board’s ultimate obvi-
ousness ruling. Instead, we explained that, even though
the Board had found that L’Oréal relied on confidential
Olaplex information, the Board had “disregard[ed] its find-
ing” based on the premise that any copying is legally im-
material unless it was a product that was copied—and we
rejected that premise. ’419 Decision, 941 F.3d at 1136–39.
Then, having noted that a patent owner that relies on cop-
ying as evidence of nonobviousness “must show that a
nexus exists between the evidence and the claimed fea-
tures of the invention,” id. at 1138, we remanded to the
Board “for further analysis” of the weight to be given to the
copying fact in the overall obviousness analysis, id. at 1139,
which would require findings about nexus that had not
been made by the Board in the matter.
2
We assume, without deciding, that issue preclusion re-
quires that the assessment of unpatentability in the pre-
sent matter must take as a given the factual finding about
copying made in the earlier matter between the same two
parties. Here, unlike in the earlier matter, the Board has
already made the required nexus-related factual
Case: 19-2410 Document: 62 Page: 20 Filed: 01/28/2021
20 L’ORÉAL USA, INC. v. OLAPLEX, INC.
determinations, and we have not been shown any persua-
sive reason to disturb those determinations. In light of
those findings, the specific copying fact that we take as a
given deserves little weight in the overall legal analysis of
obviousness, and the facts as a whole lead us to conclude,
as the Board did, that claim 1 is unpatentable for obvious-
ness.
First, the claims at issue here differ from the claims of
the ’419 patent in that they recite the use of a bleach pow-
der (claims 1–16, 18–30), do not cover the use of active-
agent salts (claims 1–16, 18–30), and are not limited to
mixtures that do not contain a hair-coloring agent (claims
1–16, 18–29). Compare ’954 patent, col. 25, line 57,
through col. 27, line 30, with ’419 patent, col. 25, line 41,
through col. 26, line 53 (J.A. 3530); see also L’Oréal USA,
Inc. v. Liqwd, Inc., PGR2017-00012, Paper 94 at 8 n.6
(P.T.A.B. Dec. 9, 2020) (Final Written Decision on Remand)
(Board, in the ’419 matter, explaining that the present
post-grant review “involved a different (albeit related) pa-
tent, different claims, and different prior art combina-
tions”). There is no finding in the ’419 proceeding that
L’Oréal copied the specific features of the ’419 patent’s
claims, let alone the specific features of the claims at issue
here. Nor is there any evidence in this proceeding of such
copying.
Second, quite apart from the difference in the claims,
there is another independent reason that copying does not
require a finding of nonobviousness here. We have said
that “more than the mere fact of copying by an accused in-
fringer is needed to make that action significant to a deter-
mination of the obviousness issue.” Cable Elec. Prods., Inc.
v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985); see
also In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)
(same). We have looked for other facts to illuminate
whether copying in a particular context actually indicates
nonobviousness of the merits of the invention, typically the
presence of significant other objective indicia already
Case: 19-2410 Document: 62 Page: 21 Filed: 01/28/2021
L’ORÉAL USA, INC. v. OLAPLEX, INC. 21
having such a nexus. See Ecolochem, Inc. v. S. Cal. Edison
Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000) (“We note, how-
ever, that a showing of copying is only equivocal evidence
of non-obviousness in the absence of more compelling ob-
jective indicia of other secondary considerations.”). For ex-
ample, where industry praise for the claimed technology is
present, we have noted that “[c]opying may indeed be an-
other form of flattering praise for inventive features.”
Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1311
(Fed. Cir. 2010). And we have said that “[c]opying by the
accused infringer . . . has limited probative value in the ab-
sence of evidence of failed development efforts by the in-
fringer, or of more compelling objective indicia of other
secondary considerations.” Friskit, Inc. v. Real Networks,
Inc., 306 F. App’x 610, 617 (Fed. Cir. 2009) (cleaned up); see
also Dow Chem. Co. v. American Cyanamid Co., 816 F.2d
617, 622 (Fed. Cir. 1987) (finding significant that “Cyana-
mid tried but failed to develop the claimed invention and
copied it instead”); Vandenberg v. Dairy Equip. Co., 740
F.2d 1560, 1567 (Fed. Cir. 1984) (“The copying of an inven-
tion may constitute evidence that the invention is not an
obvious one. This would be particularly true where the cop-
yist had itself attempted for a substantial length of time to
design a similar device, and had failed.” (citation omitted)).
Here, there are no other objective indicia sufficiently
tending to suggest that nonobviousness of claim 1’s subject
matter was the reason for the (now assumed) fact that
L’Oréal chose to launch a product using maleic acid as a
result of seeing Olaplex’s confidential information. The
Board soundly rejected Olaplex’s evidence of industry
praise because, while there was praise of Olaplex’s product,
that product does not in fact use maleic acid (as required
by claim 1), and so “there is an inadequate nexus between
those laudatory statements . . . and the invention claimed.”
J.A. 75. Olaplex also did not prove that L’Oréal tried to
make a product solving the problem that claim 1 addressed
but failed until it saw the confidential patent application.
Case: 19-2410 Document: 62 Page: 22 Filed: 01/28/2021
22 L’ORÉAL USA, INC. v. OLAPLEX, INC.
In fact, the Board found, with ample evidentiary support,
that “at least one month before the May 19, 2015[] meeting
and receipt by [L’Oréal] of then-confidential patent appli-
cation, [L’Oréal] had described a maleic-acid containing
bleaching mixture in its own highly confidential lab note-
book.” J.A. 54. 1 And the Board considered evidence of com-
mercial success, long-felt and unmet need, and unexpected
results, but it determined that each warranted “little
weight,” considering, e.g., the need to tie objective indicia
to the invention itself, the success of Olaplex’s own compet-
ing product (which is not covered by claim 1), the existence
of prior-art references meeting the asserted need before the
’954 patent, and the inadequacies of the unexpected-results
evidence, including its limited scope and the unavailability
for deposition of the key proponent of the evidence (one of
two named inventors on the ’954 patent). J.A. 59–61
1 Olaplex argues that when the Board admitted the
laboratory notebook and related evidence establishing that
fact, it violated 37 C.F.R. § 42.65(b), which requires an ex-
planatory affidavit in certain circumstances—specifically,
when a party “relies on a technical test or data from such a
test.” See Cross-Appellant Opening Br. at 52–58. The
Board rejected Olaplex’s evidentiary objection. J.A. 112. It
explained that no affidavit was required to indicate why
the lab notebook and related evidence was being used—to
show simply that L’Oréal “was already working on and had
already described maleic-acid bleaching additives in its in-
ternal documents before receiving the information about
the use of maleic acid in bleaching mixtures from” Olaplex.
Id. That limited use was relevant to Olaplex’s copying con-
tention and did not depend on the results of a technical test
or data, making an affidavit under the regulation unneces-
sary. Id. We see no abuse of discretion in that admissibil-
ity ruling. See VidStream LLC v. Twitter, Inc., 981 F.3d
1060, 1064 (Fed. Cir. 2020) (stating the standard of review
for Board admissibility rulings).
Case: 19-2410 Document: 62 Page: 23 Filed: 01/28/2021
L’ORÉAL USA, INC. v. OLAPLEX, INC. 23
(commercial success), 62–68 (long-felt and unmet need),
68–73 (unexpected results), 76. Olaplex does not contest
those determinations. On this record of Board findings, we
do not see the particular copying we assume as a given as
having a significant bearing on the obviousness determina-
tion.
More generally, the case is ripe for drawing a conclu-
sion about the ultimate legal issue of obviousness—taking
as a given the one assumed copying-related fact and a full
set of findings about nexus and about the asserted objective
indicia. Considering all the evidence, we conclude that
claim 1 would have been obvious to a relevant artisan: The
supported prior-art findings are strong in suggesting obvi-
ousness and the objective indicia do not meaningfully sug-
gest otherwise. Substantial evidence supports the Board’s
finding that “adding conditioners to bleaching mixtures
was a known technique to combat bleach damage” and that
a relevant artisan would have been motivated to make the
asserted combination and expected success. J.A. 45 (em-
phasis added). In another case, we observed: “[W]here a
claimed invention represents no more than the predictable
use of prior art elements according to established func-
tions, as here, evidence of secondary indicia are frequently
deemed inadequate to establish non-obviousness.” Ohio
Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1344 (Fed.
Cir. 2013). This case fits that pattern: We conclude that
claim 1 (and the claims of which it is representative) would
have been obvious to a relevant artisan.
V
L’Oréal’s appeal challenges the Board’s rejection of its
contention that the breakage claims are unpatentable.
L’Oréal makes three arguments. The first involves forfei-
ture. The second involves claim construction. The third
involves inherency. We reject all three arguments.
Case: 19-2410 Document: 62 Page: 24 Filed: 01/28/2021
24 L’ORÉAL USA, INC. v. OLAPLEX, INC.
A
L’Oréal contends that the Board improperly reached
the patentability of the breakage claims. That is so, says
L’Oréal, because, after Olaplex argued against unpatenta-
bility of these claims in its preliminary patent-owner re-
sponse, J.A. 535–37, and after the Board stated in its
institution decision that L’Oréal’s petition had not likely
shown unpatentability of those claims, Institution Deci-
sion, 2018 WL 3934314, at *10–11, Olaplex made no sepa-
rate argument about those claims in its post-institution
patent-owner response. Appellant Opening Br. at 47–48;
Appellant Response and Reply Br. at 23–25. We reject this
contention.
The Board, which did not address this forfeiture con-
tention when ruling on L’Oréal’s challenge to the breakage
claims, did not err in considering the challenge on its mer-
its. J.A. 77–84. L’Oréal did not present this contention in
its reply before the Board, see J.A. 935–36, but only during
a subsequent conference call about Olaplex’s challenge to
L’Oréal’s presentation of new evidence in its reply, J.A.
989, and during oral argument, J.A. 1229–30. The Board
could properly consider the contention forfeited as too late.
Cf. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756-
01, 48,768 (Aug. 14, 2012) (“No new evidence or arguments
may be presented at the oral argument.”); Dell Inc. v. Ac-
celeron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018). And
given that it was L’Oréal’s burden to show unpatentability,
the Board was at least permitted, if not required, to decide
on the merits whether L’Oréal had met its burden. Nor do
we see an abuse of discretion in the Board considering
Olaplex’s arguments in the authorized surreply on the
breakage-claims issue, J.A. 82–83, even if the Board is un-
derstood to have effectively altered its Scheduling Order
statement that “[t]he patent owner is cautioned that any
arguments for patentability not raised in the [post-institu-
tion] response will be deemed waived,” J.A. 599. L’Oréal
Case: 19-2410 Document: 62 Page: 25 Filed: 01/28/2021
L’ORÉAL USA, INC. v. OLAPLEX, INC. 25
has not identified authority that precludes such an adjudi-
cation-management decision.
B
L’Oréal argues that the limitations stated in the break-
age claims are of no legal effect, but mere statements of
intended result, and hence cannot create patentability if
the claims on which they depend are unpatentable. Appel-
lant Opening Br. at 27; Appellant Response and Reply Br.
at 11–14. The breakage claims are all dependent claims,
and the sole limitations they add—either to independent
claim 1 (on which claims 24–28 depend) or to dependent
claim 13 (on which claims 14–16 and 18 depend)—are spe-
cific amounts of reduction in breakage compared to hair
bleached with the bleaching formulation without the active
agent. We reject L’Oréal’s argument about the meaning
and character of the limitations added by the breakage
claims.
In several cases, we have determined that certain
claim language was properly understood as “only a state-
ment of purpose and intended result” and not calling for “a
manipulative difference in the steps of the claim.” Bristol-
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368,
1376 (Fed. Cir. 2001); see also Minton v. Nat’l Ass’n of Se-
curities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003);
Teva Pharms. USA, Inc. v. Sandoz Inc., 906 F.3d 1013,
1023 (Fed. Cir. 2018). In each case, the court made a claim-
specific judgment of the intended effect of the language;
and in each case, the language at issue identified a prop-
erty in only very general terms and appeared in the very
same claim that stated the other more concrete require-
ments. See Bristol-Myers, 246 F.3d at 1374–75 (“an
antineoplastically effective amount” after specific dosage
amounts); Minton, 336 F.3d at 1381 (“efficiently” after
identifying trading steps); Teva, 906 F.3d at 1023 (the ad-
dition of “‘the regimen being sufficient to’ be therapeuti-
cally effective is superfluous” after claim requirement of “‘a
Case: 19-2410 Document: 62 Page: 26 Filed: 01/28/2021
26 L’ORÉAL USA, INC. v. OLAPLEX, INC.
therapeutically effective regimen’”). It was in those cir-
cumstances that we determined that certain language “es-
sentially duplicates the dosage amounts recited in the
claims,” Bristol-Myers, 246 F.3d at 1375, did not “inform
the mechanics of how the [method] is executed,” Minton,
336 F.3d at 1381, or “d[id] not change the claimed method
or require any additional required structure or condition
for the claims,” Teva, 906 F.3d at 1023.
The claim limitations at issue here are relevantly dif-
ferent, for at least two reasons taken together. First, in
requiring specific decreases (e.g., 5%, 10%, 20%, 40%, 50%)
in hair breakage, they “state specific requirements rather
than a general purpose or aspirational result for the
claimed method.” Allergan Sales, LLC v. Sandoz, Inc., 935
F.3d 1370, 1379 (Fed. Cir. 2019) (Prost, C.J., concurring).
Second, that is all they do, and they are dependent claims,
so to treat the limitations as of no legal effect would be to
interpret each of these dependent claims as entirely a nul-
lity. The fairer understanding of these claims is that they
limit the options covered by the subject matter defined by
the claims on which they depend to options that produce
the concretely specified results—thus making a difference
in the manipulative steps.
L’Oréal contends that we should hold the language not
limiting because of enablement concerns. Appellant Open-
ing Br. at 37, 39; Appellant Response and Reply Br. at 4–
10, 13, 21. But while an enablement challenge is within
the grounds authorized under 35 U.S.C. § 321(b), L’Oréal
did not press an enablement challenge, even in the alter-
native, in its petition for post-grant review. See J.A. 319
(stating that “Petitioner does not concede that the ’954
specification provides sufficient details as to how or why
the recited amounts of breakage reduction are allegedly
achieved” but not arguing enablement). For at least that
reason, and given the above reasons for reading the break-
age claims as limiting, we see no basis for concluding oth-
erwise based on the narrow claim-construction canon that
Case: 19-2410 Document: 62 Page: 27 Filed: 01/28/2021
L’ORÉAL USA, INC. v. OLAPLEX, INC. 27
ambiguous claims be read to maintain their validity. See
Ruckus Wireless, Inc. v. Innovative Wireless Solutions,
LLC, 824 F.3d 999, 1004 (Fed. Cir. 2016); Phillips v. AWH
Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc).
C
Finally, we reject L’Oréal’s challenge to the Board’s
finding that L’Oréal did not support its inherency assertion
in arguing the obviousness of the breakage claims. Inher-
ency is a fact issue, and for each breakage claim, L’Oréal
had to prove that “the limitation at issue necessarily [was]
present, or the natural result of the combination of ele-
ments explicitly disclosed by the prior art.” PAR Pharm.,
Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed.
Cir. 2014). We conclude that substantial evidence supports
the Board’s finding that L’Oréal did not prove that the
breakage-decrease percentages in the breakage claims are
necessarily present in or the natural result of the combined
teachings of the prior art.
The Board found that the Pratt/Tanabe combination at
issue taught “0.049 wt% to 0.171 wt%, and 0.122 wt% to
0.429 wt%,” of maleic acid, a small portion of the range
stated in claim 1, on which the breakage claims directly or
indirectly depend. J.A. 40–41. The Board also found that,
while “it may be the case that Pratt/Tanabe combination
would reduce hair breakage by some amount, possibly
meeting some of the breakage claims,” L’Oréal had not
“demonstrate[d] that is necessarily so for any or all of the
breakage claims.” J.A. 83. L’Oréal has not shown error in
that finding.
L’Oréal does not point to evidence showing the neces-
sarily present or natural-result breakage properties of the
particular Pratt/Tanabe combination. Instead, it argues
that the ’954 patent’s specification establishes inherency.
Appellant Opening Br. at 32–34. Specifically, it relies on a
passage in column 18, lines 23–30, which states:
Case: 19-2410 Document: 62 Page: 28 Filed: 01/28/2021
28 L’ORÉAL USA, INC. v. OLAPLEX, INC.
The formulation described herein improves hair
quality, such as appearance (e.g., sheen) and feel,
and decreases hair breakage when the hair is sub-
jected to treatments, such as coloring or permanent
waving.
In some embodiments, hair breakage decreases by
5, 10, 15, 20, 25, 30, 35, 40, 45, or 50% or higher
after treatment with the active agent compared to
untreated hair from the same individual.
’954 patent, col. 18, lines 23–30. But this statement does
not make L’Oréal’s case. The statements “[t]he formula-
tion described . . . decreases hair breakage” and that “some
embodiments” will have certain “hair breakage decreases”
do not establish that the particular Pratt/Tanabe combina-
tion will show the specifically claimed breakage decreases
or, as L’Oréal has urged, that every formulation meeting
the broad claim 1 concentration range will do so.
L’Oréal also relies on Alcon Research, Ltd. v. Apotex
Inc., 687 F.3d 1362 (Fed. Cir. 2012), for the idea that “an
overlapping concentration range establishes the inherency
of a property across the entire claimed concentration when
the patent itself teaches that the property is inherent
across the entire concentration and the claims require the
same.” Appellant Opening Br. at 38. We disagree. In that
case, the court concluded, as a matter of claim construction,
that an independent claim’s limitation requiring “stabiliz-
ing conjunctival mast cells” by administering olopatadine
was necessarily a property of the specific concentration
ranges of olopatadine required by the dependent claims.
Alcon, 687 F.3d at 1369. The claims here are not similar.
The independent claim has a wide range of possible con-
centrations, and the dependent breakage claims call for
particular breakage decreases. There is no claim-construc-
tion implication that the entire concentration range pro-
duces any or all of the particular breakage decreases.
Case: 19-2410 Document: 62 Page: 29 Filed: 01/28/2021
L’ORÉAL USA, INC. v. OLAPLEX, INC. 29
VI
For the foregoing reasons, we grant Liqwd’s motion to
substitute Olaplex for Liqwd and affirm the Board’s deci-
sion.
The parties shall bear their own costs.
AFFIRMED