Intellectual Property News and Reports

This appeal is from a judgment in a patent-infringement action involving U.S. Patent Nos. 6,423,327 and 6,645,513, which are related as parent and child and which are owned by University of Massachusetts and exclusively licensed to Carmel Laboratories, LLC (hereinafter referred to together as UMass). UMass filed the action in the District of Delaware against L’Oréal S.A. and its American subsidiary, L’Oréal USA, Inc. (hereinafter referred to together as L’Oréal unless otherwise noted), alleging that they were infringing the two patents. When L’Oréal S.A., which is based in France, moved to dismiss the action against it on the ground that the Delaware forum lacked personal jurisdiction over it, the district court granted the motion without permitting UMass to conduct jurisdictional discovery. See Memorandum Order, University of Massachusetts v. L’Oréal S.A., No. 1:17-cv-00868 (D. Del. May 17, 2019), ECF No. 36 (Personal Jurisdiction Order); Report and Recommendation, University of Massachusetts v. L’Oréal S.A., No. 1:17-cv-00868 (D. Del. Nov. 13, 2018), ECF No. 31 (Personal Jurisdiction Report and Recommendation). With the case then proceeding only against L’Oréal USA, the district court ruled on a dispute about the proper construction of one limitation of the claim that is representative for present purposes. See J.A. 3719–21 (Hearing Tr. at 56:22–58:16); see also Claim Construction Order, University of Massachusetts v. L’Oréal USA, Inc., No. 1:17-cv-00868 (D. Del. Apr. 9, 2020), ECF No. 114 (Claim Construction Order). Relying on that construction, the district court subsequently held another limitation of the claim indefinite. University of Massachusetts v. L’Oréal USA, Inc., 534 F. Supp. 3d 349 (D. Del. 2021) (Summary Judgment Opinion). On that basis, the court entered a final judgment of invalidity against UMass.

UMass challenges both the indefiniteness and personal-jurisdiction rulings. On UMass’s first challenge, we address the claim construction on which the indefiniteness ruling depends, and we reject the district court’s construction as understood by both parties on appeal. This conclusion justifies our vacating the indefiniteness ruling and remanding for further proceedings. On UMass’s second challenge, we conclude that UMass was entitled to jurisdictional discovery, and we therefore vacate the dismissal of L’Oréal S.A.

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