Skin cream patent invalidated because it didn’t define how much it decreased wrinkles. UMASS v. L’OREAL

Skin cream patent invalidated because it didn’t define how much it decreased wrinkles. UMASS v. L’OREAL

A patent is a complicated document with several different sections.  The claims of a patent are like property lines on a map.  Elements of an invention can be described in the specification section of the patent, but if those elements are not claimed then the patent does not cover those elements.  All patent specifications shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. 35 U.S.C. § 112(b).  The claim language must be “definite” to comply with 35 U.S.C. 112(b).

A patent claim is indefinite if it fails to inform a person having ordinary skill in the art about the scope of the invention,  with reasonable certainty.  Reasonable certainty does not require absolute or mathematical precision.  However case precedent has found patent claims to be indefinite when there is more than one way to measure a physical characteristic and the patent specification does not disclose how the inventor is measuring.  The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent.

A patent does not satisfy the definiteness requirement of § 112 merely because a court can ascribe some meaning to a patent’s claims.  To comply with§ 112, a patent must provide objective boundaries for those of skill in the art. Thus, the scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual.

UNIVERSITY OF MASSACHUSETTS v. L’OREAL USA, INC., 1:17-cv-00868 (D.C.DE 2021) is an example of a case where a patent was invalidated because it was found to be indefinite.

Plaintiff in this case owns U.S. Patent Numbers 6,423,327 (the #327 patent) and 6,645,513 (the #513 patent).  The patents relate to methods to treat skin using the organic compound adenosine.  The patents vary slightly in the concentration of adenosine that is applied to the skin.  Defendant is a cosmetic company which sells a skin cream which contains adenosine. Plaintiff sued Defendant for patent infringement and after discovery Defendant moved for summary judgement on the grounds that the patent is indefinite.

Defendant’s primary argument was the the patent required the cream to contain a concentration of adenosine in an amount effective to enhance the condition of the skin.  The concentration was not explicitly stated in the claims or written description of the patent.

The primary factor complicating things is that during the claim construction portion of the trial Plaintiffs asserted that the claim should be construed to include concentrations of adenosine outside the range claimed in the patent.  The Plaintiff asserted that the skin cream could have larger or smaller concentrations of adenosine, the important factor was that the amount of adenosine delivered to the skin “enhance the condition of the skin”.

The court found that the patents did not define what “enhance the condition of the skin” means.  The patents also did they describe how a person with ordinary skill would know when an application of skin cream containing adenosine enhances the condition of the skin. The court found what whether the skin enhancement limitation was given its plain and ordinary meaning or the definition set forth in the asserted patents’ written descriptions, the term is indefinite.  Because the court found that the patents were indefinite Defendant’s motion for summary judgement was granted.

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