Case: 19-2280 Document: 98 Page: 1 Filed: 03/04/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
OLAPLEX, INC.,
Plaintiff-Appellee
v.
L'OREAL USA, INC., L'OREAL USA PRODUCTS,
INC., L'OREAL USA S/D, INC., REDKEN 5TH
AVENUE NYC, L.L.C.,
Defendants-Appellants
______________________
2019-2280, 2019-2292
______________________
Appeals from the United States District Court for the
District of Delaware in No. 1:17-cv-00014-JFB-SRF, Senior
Judge Joseph F. Bataillon.
______________________
Decided: March 4, 2021
______________________
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for plaintiff-appellee.
Also represented by JOSEPH M. PAUNOVICH, Los Angeles,
CA.
STEPHEN BLAKE KINNAIRD, Paul Hastings LLP, Wash-
ington, DC, argued for defendants-appellants. Also
Case: 19-2280 Document: 98 Page: 2 Filed: 03/04/2021
2 OLAPLEX, INC. v. L'OREAL USA, INC.
represented by NAVEEN MODI, JOSEPH PALYS, IGOR VICTOR
TIMOFEYEV, DANIEL ZEILBERGER.
______________________
Before DYK, REYNA, and TARANTO, Circuit Judges.
DYK, Circuit Judge.
Liqwd, Inc. (“Liqwd”) and Olaplex LLC filed suit in the
United States District Court for the District of Delaware,
alleging that L’Oréal USA, Inc., L’Oréal USA Products,
Inc., L’Oréal USA S/D, Inc., and Redken 5th Avenue NYC,
L.L.C. (together “L’Oréal”) infringed claims 1 and 10 of
U.S. Patent No. 9,498,419 (the “’419 patent”) and claims 1,
4, 11–16, 19, 20, and 30 of U.S. Patent No. 9,668,954 (the
“’954 patent”). The district court granted Liqwd and
Olaplex LLC summary judgment of direct and indirect in-
fringement on all claims and issued a permanent injunc-
tion. L’Oréal appealed. Following post-grant review
proceedings before the Patent Trial and Appeal Board
(“Board”), only claims 14–16 of the ’954 patent survive. As
to these claims, we affirm the district court’s claim con-
struction. But because there are genuine questions of ma-
terial fact relating to infringement of these claims under
that claim construction, we vacate and remand for trial. 1
Additionally, we grant Liqwd and Olaplex LLC’s motion to
substitute Olaplex, Inc.
1 We note that patent invalidity issues have been
raised in the appeal from the district court’s final judgment
in case number 2020-1382 as to claims 14–16. Our decision
here is therefore necessarily subject to the outcome of the
invalidity issues in the 20-1382 proceeding.
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OLAPLEX, INC. v. L'OREAL USA, INC. 3
BACKGROUND
I
Olaplex, Inc. is the owner of the ’419 and ’954 patents,
which are both directed toward methods of treating keratin
in hair that has been colored or bleached.
On January 5, 2017, Olaplex, Inc.’s predecessors in in-
terest (Liqwd and Olaplex LLC) filed suit in Delaware dis-
trict court, alleging that L’Oréal directly and indirectly
infringed the ’419 patent through its Matrix Bond Ultim8
Step 1 Amplifier, Redken pH-Bonder #1 Bond Protecting
Additive, and L’Oréal Professionnel Smartbond Step 1 Ad-
ditive products (the “Step 1 products”). 2
Olaplex, Inc.’s predecessors in interest amended their
complaint to allege that L’Oréal also infringed claims of the
’954 patent, and to allege infringement by the combination
of the Step 1 products with L’Oréal’s Matrix Bond Ultim8
Step 2 Sealer, Redken pH-Bonder #2 Fiber Restorative Pre-
Wash Concentrate, and L’Oréal Professionnel Smartbond
Step 2 Pre Shampoo (together the “Step 2 products”) and
Matrix Bond Ultim8 Step 3 Sealing Treatment, Redken
pH-Bonder #3 Post-Service Perfector, and L’Oréal Profes-
sionnel Smartbond Step 3 Conditioners (together the “Step
3 products”). 3
2 The complaint also asserted several non-patent
claims that are not at issue in this appeal, but are the sub-
ject of the related appeal in case number 2020-1382.
3 Olaplex, Inc.’s predecessors in interest moved for a
preliminary injunction. The district court originally denied
the motion for preliminary injunction, concluding that
Olaplex, Inc.’s predecessors in interest were not likely to
show that L’Oréal’s products did not contain a hair coloring
agent (as required by claim 1 of the ’419 patent). Olaplex,
Inc.’s predecessors in interest appealed, and we
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4 OLAPLEX, INC. v. L'OREAL USA, INC.
On June 25, 2019, the district court granted Olaplex,
Inc.’s predecessors in interest summary judgment of direct
and indirect infringement of the asserted claims of the ’419
and ’954 patents. On August 16, 2019, the district court
issued a permanent injunction prohibiting L’Oréal “and
their parents, subsidiaries, affiliates, officers, directors,
agents, employees, successors, assigns, and attorneys, and
any and all persons in active concert or participation with
any of them” from “using, making, causing to be made, sell-
ing, offering to sell, causing to be sold, importing[,] and/or
exporting” the Step 1, 2, and 3 products “and all other prod-
ucts only colorably and/or trivially different therefrom.”
J.A. 23. On the same day that the court issued the perma-
nent injunction, L’Oréal filed a notice of appeal challeng-
ing the district court’s grant of a permanent injunction.
L’Oréal also moved for a partial interim stay of the in-
junction. We granted a stay of the injunction “to the extent
that it reaches beyond the following: (A) the use and pro-
motion of the use of products having the current formula-
tions of L’Oréal USA’s Step 1 products . . . or products only
colorably and/or trivially different therefrom; and (B) the
use or promotion of the use of products having the current
formulations of L’Oréal USA’s Step 2 and 3 products . . .
when used after use of the products identified in (A), or
products only colorably and/or trivially different there-
from.” Order at 2, Liqwd, Inc. v. L’Oréal USA, Inc., No. 19-
determined that the district court’s decision relied on an
incorrect claim construction. We therefore vacated the de-
nial of the preliminary injunction. On remand, the district
court determined that Olaplex, Inc.’s predecessors in inter-
est were entitled to a preliminary injunction. However, the
court ultimately declined to enter the preliminary injunc-
tion, citing the proximity of trial and concluding that it
should first decide the pending motions for summary judg-
ment.
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OLAPLEX, INC. v. L'OREAL USA, INC. 5
2280, (Fed. Cir. Aug. 21, 2019), ECF No. 15. We have juris-
diction over this appeal under 28 U.S.C. §§ 1292(c)(1) and
1295(a)(1).
II
During the pendency of the district court proceeding at
issue here, L’Oréal filed petitions for post-grant review of
the ’419 and ’954 patents. The Board held claims 1–8 and
10 of the ’419 patent unpatentable as obvious. The Board
also found that L’Oréal copied an unpublished patent ap-
plication owned by Olaplex, Inc.’s predecessors in interest,
but that this evidence of copying was not relevant to obvi-
ousness because there was no evidence L’Oréal copied a pa-
tented product. On appeal, we concluded that this evidence
of copying was relevant to the obviousness determination
and had to be considered by the Board. On remand, the
Board again concluded that claims 1–8 and 10 of the ’419
patent were unpatentable as obvious. Although Olaplex,
Inc. initially appealed the Board’s remand decision, it later
voluntarily dismissed its appeal.
In a separate decision, the Board determined that
claims 1–13, 19–23, and 29–30 of the ’954 patent were un-
patentable as obvious, but that L’Oréal had not proven that
claims 14–16, 18, and 24–28 of the ’954 patent (the “break-
age claims”) were obvious. We affirmed. L’Oréal USA, Inc.
v. Olaplex, Inc., No. 2019-2410, 2021 WL 280493 (Fed. Cir.
Jan. 28, 2021).
On this appeal, only the breakage claims remain pa-
tentable, and we address only those claims.
Claim 12 of the ’954 patent, as shown with the incorpo-
rated text of claim 1, recites:
12. [A method for bleaching hair comprising:
(a) mixing a bleach powder and a developer
to form a bleaching formulation;
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6 OLAPLEX, INC. v. L'OREAL USA, INC.
(b) mixing an active agent formulation
comprising an active agent with the
bleaching formulation to form a mix-
ture, wherein the active agent is maleic
acid; and
(c) applying the mixture to the hair;
(d) wherein the active agent in the mixture
is at a concentration ranging from about
0.1% by weight to about 50% by weight]
further comprising:
(e) applying a second active agent formula-
tion comprising maleic acid,
wherein step (d) occurs subsequent to step
(c).
’954 patent col. 26 ll. 30–33.
In turn, claim 13 recites, “[t]he method of claim 12,
wherein the second active agent formulation further com-
prises a conditioning agent.” Id. col. 26 ll. 34–35. Finally,
claims 14, 15, and 16 recite, “[t]he method of claim 13,
wherein following step (d) breakage of the hair is decreased
by at least” 5%, 10%, and 20%, respectively, “compared to
hair bleached with the bleaching formulation in the ab-
sence of the active agent.” Id. col. 26 ll. 36–47.
III
On January 8, 2020, after the filing of the notice of ap-
peal (but while the district court proceedings were contin-
uing with respect to damages and other claims), Liqwd and
Olaplex LLC assigned their rights in the asserted patents
and causes of action to Olaplex, Inc. Then, on May 6, 2020,
Liqwd and Olaplex LLC filed a motion to join or substitute
Olaplex, Inc. for Liqwd and Olaplex LLC as a party to this
appeal.
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OLAPLEX, INC. v. L'OREAL USA, INC. 7
DISCUSSION
I
We first address Liqwd, Inc. and Olaplex LLC’s motion
to join or substitute Olaplex, Inc. Federal Rule of Appellate
Procedure 43(b) governs substitution for “any reason other
than death,” and provides that “the procedure prescribed
in Rule 43(a) applies.” Fed. R. App. P. 43(b). 4 Substitution
under Rule 43(b) “may . . . be necessary when a party is
incapable of continuing the suit, such as . . . when a trans-
fer of interest in the company or property involved in the
suit has occurred.” 21 James W. Moore et al., Moore’s Fed-
eral Practice – Civil § 343.12 (2020).
Here, Liqwd and Olaplex LLC transferred their inter-
ests in the patents at issue and causes of action to Olaplex,
Inc. on January 8, 2020. Liqwd and Olaplex LLC filed a
motion in this court to join or substitute Olaplex, Inc. on
May 6, 2020.
4 Rule 43(a) provides in relevant part that:
(a) Death of a Party.
(1) After Notice of Appeal Is Filed. If a
party dies after a notice of appeal has
been filed or while a proceeding is pend-
ing in the court of appeals, the dece-
dent’s personal representative may be
substituted as a party on motion filed
with the circuit clerk by the representa-
tive or by any party. A party’s motion
must be served on the representative in
accordance with Rule 25. If the dece-
dent has no representative, any party
may suggest the death on the record,
and the court of appeals may then direct
appropriate proceedings.
Fed. R. App. P. 43(a)(1).
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8 OLAPLEX, INC. v. L'OREAL USA, INC.
L’Oréal opposed the motion, arguing that Liqwd and
Olaplex LLC lost standing when they transferred their in-
terests to Olaplex, Inc., and that this loss of standing ren-
dered the entire action moot when the district court
entered final judgment on March 24, 2020. In support,
L’Oréal cites language from our opinion in Schreiber Foods,
Inc. v. Beatrice Cheese, Inc, 402 F.3d 1198 (Fed. Cir. 2005).
Schreiber Foods expressed “grave doubts as to whether”
Rule 25(c) of the Federal Rules of Civil Procedure would
allow a patent owner to continue as the sole plaintiff fol-
lowing transfer of its patent interests. Id. at 1204 n.6.
However, it did not decide this issue. Id.
Liqwd and Olaplex LLC argue that the transfer of in-
terests to Olaplex, Inc. does not deprive us of jurisdiction
over the appeal of the permanent injunction because
L’Oréal filed its notice of appeal on the same day the in-
junction issued, August 16, 2019, which was several
months before the January 2020 transfer of interests to
Olaplex, Inc. We agree. It is uncontested that Liqwd and
Olaplex LLC had standing when the permanent injunction
was entered and when their notice of appeal was filed,
which is when our jurisdiction attached. 5 See Uniloc USA,
Inc. v. ADP, LLC, 772 F. App’x 890, 893 (Fed. Cir. 2019)
(“When [appellants] filed the notices of appeal that set our
jurisdiction in these cases, they were indisputably the own-
ers of the patents-in-suit. The [subsequent] transfer of the
patent rights . . . did not divest this court of jurisdiction or
the ability to substitute or join a successor-in-interest.”);
see also Gilda Indus., Inc. v. United States, 511 F.3d 1348,
1350 (Fed. Cir. 2008) (stating that filing a notice of appeal
confers jurisdiction on an appellate court).
5 A related issue of substitution arose in connection
with the appeal from the district court’s entry of final judg-
ment following trial in case number 2020-1382. We do not
address this issue in this appeal.
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OLAPLEX, INC. v. L'OREAL USA, INC. 9
We also reject L’Oréal’s argument that we do not have
jurisdiction to hear this appeal because the permanent in-
junction was rendered moot by merger into the district
court’s March 24, 2020 final judgment. L’Oréal is correct
that the merger rule permits parties to appeal interlocu-
tory rulings as part of an appeal of a final judgment. See
Hendler v. United States, 952 F.2d 1364, 1368 (Fed. Cir.
1991) (“As a general proposition, when a trial court dis-
poses finally of a case, any interlocutory rulings ‘merge’
with the final judgment” and “both the order finally dispos-
ing of the case and the interlocutory orders are reviewable
on appeal.”); In re Westinghouse Sec. Litig., 90 F.3d 696,
706 (3d Cir. 1996) (stating that “interlocutory orders (to the
extent that they affect the final judgment) may be reviewed
on appeal from the final order”). However, the merger
cases relied on by L’Oréal do not suggest that entry of final
judgment eliminates a party’s right to continue to appeal a
previously issued and appealed permanent injunction.
We have previously allowed these parties to substitute
under Rule 43(b) in the context of the ’954 post-grant re-
view proceeding. See L’Oréal USA, Inc. v. Olaplex, Inc., No.
2019-2410, 2021 WL 280493, at *4–6 (Fed. Cir. Jan. 28,
2021) (permitting substitution of Olaplex, Inc. for Liqwd,
Inc. following transfer of patent interests after notice of ap-
peal from a Board proceeding was filed); cf. Uniloc USA,
772 F. App’x at 894 (permitting joinder following transfer
of patent interest after notice of appeal from district court
proceeding was filed). We see no reason not to do so here.
The motion to substitute is granted. Having granted
the motion to substitute, we hereafter use the term Olaplex
to refer to Olaplex, Inc. and its predecessors in interest
Liqwd and Olaplex LLC.
II
Next, we address L’Oréal’s challenge to the district
court’s claim construction of the breakage claims. “We re-
view the district court’s ultimate construction de novo, and
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10 OLAPLEX, INC. v. L'OREAL USA, INC.
any underlying factual findings supporting the construc-
tion for clear error.” Ethicon Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1333 (Fed. Cir. 2015).
The breakage claims depend on claim 1 of the ’954 pa-
tent. Claim 1 requires that “the active agent in the mixture
is at a concentration ranging from about 0.1% by weight to
about 50% by weight.” ’954 patent col. 25 ll. 58–67. The
possible constructions for this limitation concern whether
the measurement is made when the active agent is added
into the mixture or after it has been added to the mixture.
The district court adopted Olaplex’s construction for this
limitation, construing it as the “weight of active agent
added into the active agent formulation relative to the total
weight of the mixture with the bleaching formulation.”
J.A. 29. L’Oréal contends that the district court’s construc-
tion was wrong and that this term “requires determination
of the weight of [active agent] present in the mixture.” Ap-
pellant’s Br. 24. L’Oréal argues that the district court’s
construction “contravenes . . . the plain language of the
claims.” Id. at 17. We agree with the district court.
First, L’Oréal’s construction would render the claim
term “maleic acid” meaningless because both parties agree
that maleic acid is neutralized and transformed into male-
ate (a salt) once added to an alkaline bleaching solution.
Consequently, there would be no maleic acid in the final
bleaching solution under L’Oréal’s construction, and the
claim limitation would never be satisfied. See Wasica Fin.
GmbH v. Cont’l Automotive Systems, Inc., 853 F.3d 1272,
1288 n.10 (Fed. Cir. 2017) (“It is highly disfavored to con-
strue terms in a way that renders them void, meaningless,
or superfluous.”); Bicon, Inc. v. Straumann Co., 441 F.3d
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OLAPLEX, INC. v. L'OREAL USA, INC. 11
945, 950– 51 (Fed. Cir. 2006) (rejecting a construction of a
term that would render another limitation superfluous). 6
Second, Example 3 discloses “maleic acid at concentra-
tions of 2.0 g in 10 g total solution (water)” that is then
added to a bleaching solution comprising a developer and a
powder bleach. ’954 patent col. 22 ll. 45–58. This example
supports the district court’s construction because it “de-
scribes the weight of maleic acid before it is mixed with
bleaching formulation” rather than “the weight of maleic
acid still present in the ultimate active agent formulation-
bleaching formulation mixture.” Appellee’s Br. 23. Exam-
ple 3 therefore illustrates how the patent consistently fo-
cuses on pre-mixing weights of maleic acid. Additionally,
the final bleaching mixture in Example 3 would not have a
maleic acid concentration within the claimed range under
L’Oréal’s construction, as both parties agree that maleic
acid is fully neutralized to maleate at the high pH levels
required for bleaching hair. Finally, Olaplex’s statements
during the prosecution history are also consistent with the
proposed construction as they do not address when the ma-
leic acid is weighed to determine the concentration.
Third, Olaplex’s expert, Dr. Borish, explained that a
person of ordinary skill in the art would understand the
term “as describing the concentration range in terms of
6 Our opinion in Chef America, Inc. v. Lamb-Weston,
Inc., 358 F.3d 1371 (Fed. Cir. 2004), does not require a dif-
ferent result. In Chef America, the claims were only sus-
ceptible to one meaning and the patent owner was
essentially asking this court to “redraft” the claim to make
it operable. 358 F.3d at 1374 (“[W]e construe the claim as
written, not as the patentees wish they had written it.”).
Here, the claim language supports either proposed con-
struction and Olaplex has presented intrinsic and extrinsic
evidence, including expert testimony, supporting its con-
struction.
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12 OLAPLEX, INC. v. L'OREAL USA, INC.
(1) the weight of active agent added into the active agent
formulation relative to (2) the total weight of the final mix-
ture.” J.A. 10,556. The district court credited this testi-
mony in arriving at its claim construction.
We thus affirm the district court’s claim construction
as requiring calculation of the weight percent of maleic acid
using the “weight of active agent added into the active
agent formulation relative to the total weight of the mix-
ture with the bleaching formulation.” J.A. 29.
III
Finally, we address the district court’s grant of sum-
mary judgment of infringement. A grant of summary judg-
ment is reviewed de novo. Gonzalez v. Sec’y of Dep’t of
Homeland Security, 678 F.3d 254, 257 (3rd Cir. 2012).
Summary judgment is appropriate when “the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a).
There are three types of products at issue here, all
three of which contain maleic acid. The Step 1 products are
mixed with a bleach solution or a coloring agent before ap-
plication to the client’s hair by stylists in a salon setting.
The Step 2 products are applied by stylists after the Step 1
product and bleaching solution or coloring agent are rinsed
from the client’s hair. Finally, the Step 3 products are at-
home products used by clients on a weekly basis. Because
claim 12 requires a first and second application of maleic
acid, the alleged infringement takes place by a combination
of the Step 1 and 2 products. We conclude that there is a
genuine issue as to whether the use of Step 1 and 2 prod-
ucts infringe. As we discuss below, the district court also
should not have granted summary judgment on whether
the accused use of the Step 3 products constitutes infring-
ing activity.
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OLAPLEX, INC. v. L'OREAL USA, INC. 13
A
L’Oréal argues that there is a question of material fact
regarding whether its Step 1 products contain a maleic acid
concentration between about 0.1% by weight and 50% by
weight as required by claim 1, upon which the breakage
claims depend. 7 Olaplex’s expert witness, Dr. Borish, used
nuclear magnetic resonance (“NMR”) testing to establish
that L’Oréal’s Step 1 products contain added maleic acid at
concentrations between 10.2 and 10.6% by weight, well
within the claimed range. L’Oréal argues that this testing
failed to establish infringement because only nonionic ma-
leic acid infringes the claims, and NMR cannot distinguish
between hydrogen maleate, maleate, and maleic acid.
L’Oréal contends that Dr. Borish’s concentration calcula-
tions therefore improperly included the amount of non-in-
fringing maleates in L’Oréal’s products.
L’Oréal’s argument appears to be an attempt to rear-
gue the district court’s construction of claim 1, which ex-
pressly required that the maleic acid concentration be
based on the maleic acid added into solution, and not the
maleic acid remaining in the mixed solution. Further, we
conclude that Olaplex established that all the maleates de-
tected by Dr. Borish’s testing “derived from pure maleic
acid that had been added into [L’Oréal’s] product[s]” and
therefore served as an appropriate proxy for calculating the
maleic acid concentration added to the mixture. Appellee’s
Br. 32. L’Oréal failed to show that the weight of the maleic
acid salts in the solution were not representative of the
weight of the maleic acid originally added into solution. Fi-
nally, Dr. Borish separately calculated the Step 1 active
agent concentration using L’Oréal’s own internal calcula-
tions and data sheets. These separate calculations showed
that L’Oréal’s Step 1 products have a maleic acid
7 There is no contention that the Step 2 products are
relevant to whether this limitation is satisfied.
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14 OLAPLEX, INC. v. L'OREAL USA, INC.
concentration of approximately 10.7% by weight, which
both corresponds to the weight percent calculated by NMR
testing and falls within the claimed range. Thus, there is
no question of material fact concerning the maleic acid con-
centration added to the mixture in the Step 1 products, and
Olaplex has established that the combination of the Step 1
and Step 2 products satisfies this limitation.
B
L’Oréal argues that there is a material issue as to
whether the combination of its Step 1 and 2 products sat-
isfy the specific percentages of decreased hair breakage
limitations of the breakage claims following treatment
with the claimed method. 8 The district court’s summary
judgment analysis of these claims was brief, consisting of a
single sentence stating that “[t]he Accused Product also
meets the breakage decrease requirements of claim 14.”
J.A. 98. The district court did not further explain the basis
for its determination. We agree with L’Oréal.
In support of its summary judgment motion, Olaplex
did not rely on any independent testing or expert analysis
to demonstrate that the claim limitations were met. In-
stead, Olaplex relied on L’Oréal marketing materials and
internal testing to show that the accused products cause a
70 percent reduction in hair breakage, which would be suf-
ficient to meet the limitations of all the breakage claims.
L’Oréal’s expert, Dr. Freeman, challenged the relevance of
this evidence, explaining that the marketing materials and
L’Oréal internal tests only reported breakage results fol-
lowing a “repeated application process that involved
8 Claim 14 recites at least a 5% reduction in break-
age, claim 15 recites at least a 10% reduction in breakage,
and claim 16 recites at least 20% reduction in breakage.
’954 patent col. 26 ll. 36 – 47.
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OLAPLEX, INC. v. L'OREAL USA, INC. 15
different procedures, different formulations, [and] different
hair.” J.A. 23,988.
We agree with L’Oréal that summary judgment was in-
appropriate on this issue. L’Oréal’s marketing material
advertises “70% less breakage after 3 lightening services.”
J.A. 23,642. Similarly, L’Oréal’s internal breakage testing
also involved repeated applications of bleach and maleic
acid. Because the breakage claims require specific break-
age reductions following a single application of the claimed
maleic acid treatment comprising a single bleach treat-
ment and two serial applications of maleic acid, the evi-
dence does not permit summary judgment of infringement.
There is a question of material fact concerning whether the
Step 1 and 2 products meet the limitations of the breakage
claims.
C
L’Oréal argues that Olaplex failed to establish that its
combination of Step 1 and 2 products used a “bleach pow-
der” as required by the breakage claims, and that Olaplex
failed to establish that L’Oréal induced third parties to per-
form the method of the breakage claims with a “bleach pow-
der.” The district court construed “bleach powder,” as used
in claim 1 of the ’954 patent, on which the breakage claims
depend, to require “a dry particulate composition (i.e., a
powder) comprising at least a persulfate and an alkalizing
agent.” J.A. 32. Both parties appear to agree with this
construction. Olaplex was therefore required to establish
that the accused products produced the claimed reduction
in breakage when hair was treated with a bleaching pow-
der that contained a persulfate and an alkalizing agent.
Additionally, Olaplex was required to show that accused
infringers performed the claimed method using a bleach
powder containing a persulfate and alkalizing agent.
Olaplex failed to establish entitlement to summary judg-
ment in either respect.
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16 OLAPLEX, INC. v. L'OREAL USA, INC.
Olaplex argued that it was known in the industry that
bleach powders include a persulfate. However, Olaplex re-
lied on an excerpt from a hair care textbook that stated that
“[i]f extensive bleaching is required or a frosting/streaking
effect is desired, peroxide alone is too slow” and “a ‘bleach
booster’ is added” that is “usually a mixture of ammonium
and potassium persulfates.” J.A. 2131. Rather than sup-
porting Olaplex’s argument, the cited textbook by the use
of the word “usually” suggests that not all bleach powders
necessarily contain a persulfate. Additionally, while
Olaplex presented evidence that L’Oréal sold bleach pow-
ders containing potassium persulfate, it did not provide ev-
idence entitling it to a finding on summary judgment that
these bleach powders were used in L’Oréal’s internal
breakage testing or by the accused infringers. We there-
fore agree with L’Oréal that there is a question of material
fact concerning infringement of the breakage claims with
respect to the bleach powder limitation.
D
L’Oréal also argues that the accused use of its Step 3
products does not infringe because these products are ap-
plied to the hair by customers at home, days or weeks after
the salon stylists complete their work applying the Step 1
and 2 products. Because the Step 3 products are at-home
treatments, L’Oréal asserts that they are “applied after,
not as part of, the claimed bleaching method.” Appellant’s
Br. 42. We agree with L’Oréal that the district court erred
in granting summary judgment on this issue. The accused
use of Step 3 products by clients in their own homes is not
part of the “method of bleaching hair” required by claim 1
(incorporated into the claims still at issue) and so cannot
be infringing. 9
9 L’Oréal also contends that Olaplex failed to prove
“that a single actor performed the method steps with
Case: 19-2280 Document: 98 Page: 17 Filed: 03/04/2021
OLAPLEX, INC. v. L'OREAL USA, INC. 17
Although the word “subsequent” in the claim does not,
standing alone, set a time limit on when the “second active
agent formulation” is applied, the claim requires that the
application of the first “active agent formulation” (as part
of a mixture with a bleaching formulation) and also the
“second active agent formulation” be part of a “method for
bleaching hair.” It would not be reasonable to find the
“method for bleaching hair” phrase met on the facts of rec-
ord, understood in the light most favorable to Olaplex,
about the accused uses of L’Oréal’s products. First, maleic
acid within a bleaching formulation must be applied to the
hair, which is allegedly achieved by application of the Step
1 products. Second, a “second active agent formulation”
that contains a conditioning agent must be applied to the
hair, which is allegedly achieved by application of the Step
2 products. The “method for bleaching hair” readily encom-
passes both of those steps when performed in the same set-
ting (as alleged here, a salon) in the same client visit. But
when that process is complete—Step 1 and Step 2 products
have been applied—and the client’s visit ends, it is not rea-
sonable, under the claim, to treat the self-application of the
Step 3 product days or weeks later as part of the “method
for bleaching hair.” Applying the Step 3 product in that
situation would be applying a third, not second, active
agent formulation.
On the summary judgment evidence of record, the Step
3 products are used by clients in their own homes following
treatment with the Step 1 and 2 products in the salon.
There is no allegation that the Step 3 products are ever ap-
plied to hair that has been treated by Step 1, but not Step
2, products. Additionally, while there is a contention that
the Step 3 products have been used by stylists in a salon,
regard to Step 3 products.” Appellant’s Br. 44. Because we
conclude that the use of the Step 3 products is not infring-
ing activity, we do not address this argument.
Case: 19-2280 Document: 98 Page: 18 Filed: 03/04/2021
18 OLAPLEX, INC. v. L'OREAL USA, INC.
there is no evidence that the Step 3 products were used in
salons as part of the accused process after the ’954 patent
issued. 10 In this case, therefore, we agree with L’Oréal that
the district court should not have granted summary judg-
ment because the Step 3 products are applied after, not
during, the claimed bleaching method.
E
L’Oréal also argues that the district court should not
have granted summary judgment on induced infringement
because there were questions of material fact concerning
L’Oréal’s intent to induce infringement. We decline to ad-
dress this argument because our conclusions with respect
to direct infringement affect the induced infringement
analysis. This must be addressed on remand.
We vacate the injunction and remand for further pro-
ceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
No costs.
10 Olaplex submitted an affidavit by Vicki Laris, a
stylist, who stated that she had “used all three steps” of the
accused products “with clients when performing bleaching
treatments.” J.A. 33,250. However, the declaration does
not state that this use occurred after June 6, 2017, when
the ’954 patent issued.