Introduction

On October 30, 2019, the United States Court of Appeals for the Federal Circuit made decision in Liqwd, Inc. v. L’Oreal USA, Inc. On January 31, 2017, L’Oreal USA, Inc. filed a petition for post-grant review with the Patent Trial and Appeal Board (“Board”) regarding a patent belonging to Liqwd, Inc. The patent belonging to Liqwd, Inc. is U.S. Patent No. 9,498,419 (“the ‘419 patent”), and relates to formulations and methods of treating hair, skin, or nails. L’Oreal posited that claims 1-6, 8, and 10 of the ‘419 patent were anticipated by U.S. Patent No. 7,044,986 (“Ogawa”). L’Oreal also posited that claims 1-8 and 10 were obvious in view of Ogawa or in view of U.S. Patent Publication No. 2002/0189034 (“Kitabata”) in combination with German (“Berkemer”) and Korean (“KR ‘564”) Patent Publications. Upon review, the Board determined that the ‘419 patent was not anticipated by Ogawa but determined that the ‘419 patent was obvious in view of Ogawa, Berkemer, and KR ‘564. Thus, the Board determined that claims 1-8 and 10 were invalid because they are obvious in view of the prior art.

The Board also weighed evidence relating to objective indicia of non-obviousness, particularly long-felt need and copying. The Board determined that there was no long-felt need satisfied by the ‘419 patent. In regard to copying, the Board determined that L’Oreal did in fact copy Liqwd, stating that L’Oreal would not have been able to develop products containing maleic acid without access to Liqwd’s confidential information disclosed in an unpublished application (“the ‘885 patent application). However, the Board decided that the factual finding of copying was irrelevant as a matter of law because Liqwd did not provide a specific product showing proof of copying. Liqwd appealed the Board’s obviousness decision. The Federal Circuit vacates the obviousness decision for the Board’s error in disregarding the evidence of copying on the part of L’Oreal. The Federal Circuit remands the case to the Board for further analysis.

Decision

Naturally, the Federal Circuit performed an analysis of all the Board’s final determinations, as described below:

1.     Objective Evidence: Indicia and Copying. In the appeal before the Federal Circuit, Liqwd argues that the Board erred in its determination that L’Oreal’s copying of Liqwd’s unpublished ‘885 patent application did not qualify as an objective indicium of non-obviousness. The Board determined that L’Oreal adopted the use of maleic acid in its formulations because of L’Oreal’s access to the ‘885 patent application, but the Board disregarded this finding in its obviousness determination. L’Oreal responds to Liqwd’s argument stating that because Liqwd did not present a specific product containing the maleic acid, there is no evidence of copying by L’Oreal. The Federal Circuit concludes that the Board’s dismissal of the evidence of copying was error. The Federal Circuit has consistently held that objective indicia of copying may be the most probative evidence of non-obviousness. The Federal Circuit holds that more evidence than simply showing similarities between two competitors’ products is needed to prove copying, which is a major factor in the Federal Circuit’s disagreement with the Board.

The Federal Circuit tries to avoid treating instances of mere patent infringement as copying simply because the claims of a patent are similar to a competitor product. In the event that objective evidence of copying is presented to show non-obviousness, it must be proven that a nexus exists between the evidence and the claimed features of the invention. In this particular case, evidence of actual copying by L’Oreal was present, and so that evidence must be held relevant in an obviousness determination.

2.     Obviousness Determination: Remand to the Board. The evidence of copying presented to the Board included a L’Oreal email referring to a non-disclosure agreement and a planned meeting in May 2015 involving Liqwd’s founder and inventors involved with the ‘419 patent. During that meeting, L’Oreal was provided with a copy of the then-confidential ‘885 patent application, which disclosed the method of using maleic acid. The purpose of the meeting was L’Oreal’s interest in purchasing Liqwd’s technology, but this interest was subsequently lost. However, L’Oreal’s later use of maleic acid proved to the Board, and to the Federal Circuit as well, that L’Oreal copied Liqwd’s method. Because the Board dismissed this finding of evidence of copying, the Federal Circuit affirms Liqwd’s contention that the Board erred and that this evidence is indeed relevant to an obviousness determination.

For the reasons above, the Federal Circuit does not affirm the Board’s final determination that claims 1-8 and 10 of the ‘419 patent are invalid due to obviousness. The Federal Circuit vacates the Board’s obviousness decision and remands the case to the Board to complete a subsequent obviousness analysis and consider the evidence of copying. The Federal Circuit requires that all pieces of evidence be fully considered, and each be given its appropriate weight in this case.

Conclusion

Objective evidence, such as indicia of copying, should always be fully considered and given the appropriate weight when anticipation or obviousness analyses are being conducted. Indicia of copying may be able to prove the non-obviousness of a claim or set of claims in a patent. Objective evidence of copying need not solely be in the form of a particular product and may be indicated via copying efforts. In this particular case, the copying efforts were indicated by the presentation of emails, meeting discussions, and disclosure of confidential information. It should also be understood that infringement is not a clear indication of copying. While a competitor product may infringe on a patent’s claims, there must be clear evidence of copying efforts, which cannot be coincidental, as may be in the case of infringement.

Full Liqwd, Inc. v. L’Oreal USA, Inc. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2152.Opinion.10-30-2019.pdf 

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