This morning, the Federal Circuit issued one nonprecedential opinion in a patent case. In it, the court reviewed the non-obviousness patentability requirement as applied by the Patent Trial and Appeal Board in a post-grant review proceeding. Here is the introduction to the opinion.
L’Oréal USA, Inc. v. Olaplex, Inc. (Nonprecedential)
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 maleic acid. As relevant here, L’Oréal urged unpatentability for obviousness under 35 U.S.C. § 103 based on the combination 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.
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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 combine, 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 reasonable expectation of success. As to copying, we assume that, by virtue of issue preclusion based on our decision involving 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 without 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 because 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 evidence 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.