Introduction

The case of Liqwd Inc & Anor v. L'Oréal (UK) Ltd & Anor ([2018] EWHC 1394 (Pat)) was adjudicated in the England and Wales High Court (Patents Court) on June 11, 2018. This dispute revolved around patent infringement allegations concerning hair care formulations, specifically focusing on the use of maleic acid in hair bleaching products.

The claimants, Liqwd Inc and Olaplex LLC, are key players in the hair care industry, known for their innovative products aimed at reducing hair damage during bleaching treatments. The defendants, L'Oréal (UK) Limited and L'Oréal SA, are global giants in the cosmetics sector, with a portfolio that includes similar hair care products.

The crux of the case hinged on whether L'Oréal's product, Smartbond Step 1, infringed upon Olaplex's patent GB 2 525 793 titled "Keratin treatment formulations and methods." Olaplex asserted that L'Oréal's formulation infringed their patent, while L'Oréal countered by challenging the validity of the patent on grounds of lack of novelty, obviousness, and invalid priority claims, supplemented by prior art and alleged prior use by Olaplex.

Summary of the Judgment

Justice Birss delivered a comprehensive judgment addressing multiple facets of patent law, including claim construction, priority, prior art, and infringement. The court meticulously analyzed whether L'Oréal's Smartbond Step 1 infringed upon Olaplex's patent and whether the patent itself stood on solid legal ground.

Key findings include:

• Claim Construction: The court delved into the interpretation of terms such as "providing bleached hair" and "maleic acid or a simple salt thereof," determining their scope and applicability.
• Priority Dispute: The validity of the patent's priority claim was contested, with the court scrutinizing whether the amendments made to the patent extended its scope unlawfully.
• Prior Art Consideration: The court examined prior disclosures, notably the Catzy product and patent application WO 768, assessing their impact on the novelty and obviousness of Olaplex's claims.
• Infringement Analysis: Based on the claim construction and prior art evaluation, the court concluded that certain claims of the Olaplex patent were invalid due to lack of novelty and obviousness, while a specific use claim (Claim 11) remained valid and was found to be infringed by L'Oréal's product.
• Exclusive Licensee Status: The court addressed the standing of Olaplex LLC as an exclusive licensee, determining its right to sue for infringement under the Patents Act.

Ultimately, the court invalidated Claims 1 to 10 of the patent, considering them either not novel or obvious in light of the established prior art. However, Claim 11, as unconditionally amended, was upheld and found to be infringed by L'Oréal.

Analysis

Precedents Cited

The judgment referenced several pivotal cases that shaped the court’s reasoning:

• Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46: This case dealt with the scope of patent claims and the doctrine of equivalents, influencing the court's approach to claim construction and scope assessment.
• Actavis UK Ltd v Eli Lilly and Co [2017] UKSC 48: The Supreme Court’s decision refining the process of claim interpretation, transitioning from a purposive construction to a two-stage analysis, significantly impacted how the High Court construed patent claims in this judgment.
• Pall Corp v Commercial Hydraulics [1990] FSR 329: This case elucidated the conditions under which the use of a product constitutes making an invention available to the public, central to the prior use argument raised by L'Oréal.
• Synthon v SmithKline Beecham [2005] UKHL 59: Although not directly cited, the principles from this case regarding claim scope and equivalents influenced the court's interpretation of "simple salt."

These precedents collectively informed the court’s approach to the nuances of patent claim construction, the establishment of priority, and the assessment of infringement and validity.

Legal Reasoning

Justice Birss employed a meticulous legal analysis grounded in both statutory provisions and established case law:

• Claim Construction:

  The term "providing bleached hair" was debated regarding its inclusion of oxidation dye processes. The court concluded that it refers primarily to hair lightening processes without dye, thereby excluding methods involving oxidation dyes.

  The phrase "maleic acid or a simple salt thereof" was dissected based on its chemical interpretation. The court favored a broad understanding where "simple salt" does not significantly limit the scope beyond the presence of maleate ions in solution, thus encompassing the diamine salt used by Olaplex. This construction was pivotal in determining both the validity of the claims and the infringement by L'Oréal’s product.

• Priority and Amendments:

  L'Oréal challenged the patent's priority based on the claim that "simple salt" was not disclosed in the priority document. However, the court found that the deletion of "simple salt" in amended claims did not extend the scope of protection, but rather narrowed it, thus maintaining validity post-amendment.

• Prior Art and Lack of Novelty:

  The Catzy product, a hair lightening formulation disclosed before the priority date, was identified as prior art. It contained maleic acid, directly anticipating Olaplex's Claim 1, leading to a finding of lack of novelty for certain claims.

  Regarding the WO 768 patent application, the court determined that it did not possess priority over Olaplex's patent. Even though Example 8 of WO 768 mirrored aspects of Olaplex's claims, it did not accommodate a priority claim that would invalidate Olaplex’s patent.

• Infringement:

  L'Oréal's Smartbond Step 1 was found to infringe upon Olaplex's Claim 11 post-amendment, as it fell within the scope of the claim’s construction concerning the use of maleic acid to prevent hair damage during bleaching treatments.

• Exclusive Licensee Status:

  The court examined the legal standing of Olaplex LLC as an exclusive licensee. Based on the contractual agreements and subsequent amendments, Olaplex LLC retained its exclusive licensee status, thereby legitimizing its right to sue L'Oréal for infringement.

Impact

This judgment underscores the critical importance of precise claim construction and the maintenance of patent priority. By invalidating several key claims due to lack of novelty and obviousness, the court reinforced stringent standards for establishing patent validity.

For the hair care industry, particularly companies involved in chemical formulations, this ruling emphasizes the necessity of thoroughly distinguishing proprietary formulations from prior art and ensuring robust patent documentation to uphold priority claims. It also highlights the complexities involved in chemical patent cases, where subtle differences in compound formulations can significantly influence legal outcomes.

Moreover, the decision elucidates the responsibilities of exclusive licensees in asserting patent rights, setting a precedent for how license agreements and subsequent amendments affect the ability to enforce patents.

Complex Concepts Simplified

Conclusion

The High Court's judgment in Liqwd Inc & Anor v. L'Oréal (UK) Ltd & Anor serves as a pivotal reference in patent law, particularly concerning patent claim construction, priority, and the assessment of prior art. By invalidating several of Olaplex's patent claims due to lack of novelty and obviousness but upholding a specific use claim, the court highlighted the delicate balance between protecting genuine innovation and preventing the monopolization of established knowledge.

For practitioners and businesses in the patent realm, this ruling underscores the necessity of meticulous patent drafting, vigilant maintenance of priority claims, and comprehensive awareness of existing prior art. It also emphasizes the strategic importance of clear licensing agreements and the implications of exclusive licensee statuses in enforcing patent rights.

In the broader legal landscape, the case reinforces the High Court's commitment to upholding rigorous standards in patent validity assessments, ensuring that only truly novel and non-obvious inventions receive patent protection. This fosters an environment that encourages genuine innovation while safeguarding against potential overreach in patent claims.