Olaplex, Inc. v. L'Oreal USA, Inc. ( 2021 )

Case: 20-1382 Document: 86 Page: 1 Filed: 05/06/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
OLAPLEX, INC.,
Plaintiff-Cross-Appellant
v.
L’ORÉAL USA, INC., L’ORÉAL USA PRODUCTS,
INC., L’ORÉAL USA S/D, INC., REDKEN 5TH
AVENUE NYC, L.L.C.,
Defendants-Appellants
______________________
2020-1382, 2020-1422, 2020-1689, 2020-1690
______________________
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: May 6, 2021
______________________
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for plaintiff-cross-
appellant. Also represented by JOSEPH M. PAUNOVICH, Los
Angeles, CA.
STEPHEN BLAKE KINNAIRD, Paul Hastings LLP, Wash-
ington, DC, argued for defendants-appellants. Also repre-
sented by NAVEEN MODI, JOSEPH PALYS, IGOR VICTOR
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2 OLAPLEX, INC. v. L’ORÉAL USA, INC.
TIMOFEYEV, DANIEL ZEILBERGER; KATHERINE FRENCK
MURRAY, Browne George Ross O’Brien Annaguey & Ellis
LLP, Los Angeles, CA.
______________________
Before DYK, REYNA, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
This appeal is from a judgment in favor of plaintiffs
Liqwd, Inc. and Olaplex LLC against L’Oréal USA, Inc.,
L’Oréal USA Products, Inc., L’Oréal USA S/D, Inc., and
Redken 5th Avenue NYC, LLC (collectively, L’Oréal). The
causes of action at issue are for (1) infringement of claims
1 and 10 of U.S. Patent No. 9,498,419 and claims 1, 4, 11–
16, 19, 20, and 30 of U.S. Patent No. 9,668,954, and (2) mis-
appropriation of several trade secrets and breach of a non-
disclosure agreement. A determination of patent infringe-
ment was made by the district court on summary judg-
ment, and a jury then found for plaintiffs on patent-validity
issues and on the two non-patent causes of action and
awarded damages. L’Oréal appeals on various grounds
from the liability and damages determinations. Plaintiffs
(Olaplex, a term that also includes Olaplex, Inc., substi-
tuted by this opinion) cross-appeal regarding the amount
of damages.
With respect to the patent-infringement component of
the case, prior decisions of this court and of the Patent Trial
and Appeal Board leave little in dispute here. Our court
has addressed aspects of the patent dispute between these
parties on multiple occasions. See Olaplex, Inc. v. L’Oréal
USA, Inc., Nos. 2019-2280 & 2019-2292, 2021 WL 831031(Fed. Cir. Mar. 4, 2021) (Injunction Appeal) (holding that
summary judgment of infringement in this case was error
and vacating permanent injunction); L’Oréal USA, Inc. v.
Olaplex, Inc., Nos. 2019-2410 & 2020-1014, 2021 WL
280493 (Fed. Cir. Jan. 28, 2021) (’954 Appeal) (affirming
Board’s rejection of patentability challenge to claims 14–16
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OLAPLEX, INC. v. L’ORÉAL USA, INC. 3
of the ’954 patent and Board’s determination of unpatent-
ability of all other claims of the ’954 patent asserted in this
case); Liqwd, Inc. v. L’Oréal USA, Inc., 720 F. App’x 623
(Fed. Cir. 2018) (appeal of preliminary injunction); Liqwd,
Inc. v. L’Oréal USA, Inc., 941 F.3d 1133 (Fed. Cir. 2019)
(’419 Appeal) (appeal involving Board review of the ’419 pa-
tent, affirming in part and remanding for reconsideration
of unpatentability of the relevant claims of the ’419 patent);
Order at 2, Liqwd, Inc. v. L’Oréal USA, Inc., No. 19-2280,
ECF No. 15 (Fed. Cir. Aug. 21, 2019) (partial stay of now-
vacated permanent injunction). Moreover, on remand from
the ’419 Appeal, the Board held the relevant claims of the
’419 patent unpatentable, L’Oréal USA, Inc. v. Liqwd, Inc.,
No. PGR2017-00012, Paper 119 (P.T.A.B. Dec. 9, 2020),
and Olaplex eventually dropped its appeal from that rul-
ing, see Order, Olaplex, Inc. v. L’Oréal USA, Inc., No. 2021-
1512, ECF No. 11 (Fed. Cir. Feb. 8, 2021). The unpatenta-
bility rulings reduce the surviving patent claims asserted
here to the ’954 patent’s claims 14–16. In addition, the In-
junction Appeal ruling reversed the district court’s grant of
summary judgment of infringement in this case, holding
that there were triable issues of fact. Those rulings sub-
stantially narrow what remains disputed about the patent
component of this case.
We reverse in part, affirm in part, vacate in part, dis-
miss in part, and remand. In particular, we reverse the
judgment of liability for trade-secret misappropriation and
breach of contract, and we vacate the infringement judg-
ment and remand for a trial on patent infringement and
damages limited to claims 14–16 of the ’954 patent. We
dismiss plaintiffs’ conditional cross-appeal as moot given
our rejection of non-patent liability.
I
After the district court granted summary judgment of
infringement, the parties presented their case to a jury
starting on August 5, 2019. Olaplex presented evidence to
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4 OLAPLEX, INC. v. L’ORÉAL USA, INC.
support its trade-secret and breach-of-contract claims and
evidence on damages for those claims and for patent in-
fringement. L’Oréal asserted, as relevant here, an affirm-
ative defense of invalidity of claims 14–16 of the ’954 patent
based on the nonobviousness and written-description re-
quirements of 35 U.S.C. §§ 103 and 112.
On August 12, 2019, the jury returned a verdict for
plaintiffs. On the trade-secret claim, the jury found that,
“on May 19, 2015, [Olaplex] possessed specific, identifiable
Trade Secret(s),” that L’Oréal “misappropriated Olaplex’s
trade secret information,” causing damages in the amount
of $22,265,000, and that L’Oréal’s misappropriation was
“willful or malicious.” J.A. 37623–24. On Olaplex’s breach-
of-contract claim, which Olaplex recognizes to be indistin-
guishable from its trade-secret claim at this point, the jury
found that L’Oréal breached the “May 2015 Non-Disclosure
Agreement[],” causing damages in the amount of
$22,265,000. J.A. 37625. On L’Oréal’s affirmative defense
of patent invalidity, the jury found, as relevant here, that
L’Oréal did not prove invalidity of claims 14–16 of the ’954
patent. J.A. 37625. On patent damages, the jury awarded
damages of $24,960,00 against L’Oréal for infringing the
’954 patent. J.A. 37627. The jury also found that Olaplex
proved that L’Oréal’s patent infringement was willful. J.A.
37627.
On August 20, 2019, the district court issued a “Mem-
orandum and Judgment,” adjusting the jury’s damages
award to avoid inconsistencies and to prevent double recov-
ery. J.A. 37682–86. Specifically, the district court reduced
the non-patent damages to reflect its view of when such
damages had to end given when the protected information
became publicly available. J.A. 37683–85. It also set an
amount for exemplary damages and approved an award of
attorney’s fees and costs. J.A. 37683–85. The total dam-
ages amount entered was $49,920,000, not including attor-
ney’s fees, court costs, or interest on the damages award.
J.A. 37686 & n.1.
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OLAPLEX, INC. v. L’ORÉAL USA, INC. 5
L’Oréal then renewed its motion for judgment as a mat-
ter of law (JMOL) and moved for a new trial. Olaplex, for
its part, sought prejudgment interest on the damages
award and attorney’s fees, among other things. On Decem-
ber 16, 2019, the district court issued a memorandum and
order resolving the parties’ post-trial motions. See Liqwd,
Inc. v. L’Oréal USA, Inc., No. 1:17-cv-00014, 2019 WL
6840353 (D. Del. Dec. 16, 2019) (December 2019 Decision).
The district court denied L’Oréal’s JMOL and new-trial
motions. Id. at *5, *8–9, *14–15. The court granted
Olaplex’s motion for prejudgment interest on the damages
award but denied it as to attorney’s fees. Id. at *2–8, *10–
14.
On January 15, 2020, L’Oréal timely filed a notice of
appeal “in an abundance of caution” and “as a protective
measure to ensure appellate jurisdiction.” J.A. 42236. Two
weeks later, Olaplex timely filed a notice of cross-appeal.
On March 24, 2020, the district court entered final judg-
ment on a separate document. J.A. 22–24. The court or-
dered L’Oréal to pay $66,167,843, which included
attorney’s fees, costs, and prejudgment interest, and to pay
post-judgment interest “at the statutory interest rate pur-
suant to 28 U.S.C. § 1961 in the amount of $2,813.49 per
day beginning the day this Final Judgment is entered and
ending the day upon which Defendants fully satisfy this Fi-
nal Judgement.” J.A. 23–24.
Soon after, L’Oréal timely filed another notice of ap-
peal, and Olaplex in turn timely filed another notice of
cross-appeal. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
II
Plaintiffs Liqwd and Olaplex LLC move to substitute
Olaplex, Inc. for themselves under Federal Rule of Appel-
late Procedure 43, which “provides the procedural vehicle
for a substitution of a new party for an existing one when
authorized by law, whether the basis for substitution is a
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6 OLAPLEX, INC. v. L’ORÉAL USA, INC.
party’s death (Fed. R. App. P. 43(a)) or another reason (Fed.
R. App. P. 43(b)).” ’954 Appeal, 2021 WL 280493, at *4. We
approved this substitution based on the transfer of interest
from plaintiffs to Olaplex, Inc. in the ’954 Appeal and in the
Injunction Appeal. See ’954 Appeal, 2021 WL 280493, at
*4; Injunction Appeal, 2021 WL 831031, at *3. We grant
the motion here as well.
In its opening brief, L’Oréal argued that we should va-
cate the district court’s judgment and remand for dismissal
because, L’Oréal asserted, the judgment was entered after
plaintiffs had transferred their interests to Olaplex, Inc.,
in January 2020 and without substitution of Olaplex, Inc.
Appellant Opening Br. at 3–4. At oral argument, L’Oréal
seems to have agreed that this argument does not survive
our rulings in the ’954 Appeal and the Injunction Appeal.
See Oral Arg. at 1:00–1:19. Regardless, we reject the argu-
ment.
The transfer occurred after the district court’s Decem-
ber 2019 order. That order, entered on the docket sheet,
resolved all issues on the merits and left only ministerial
calculations, so it was a final decision. See Republic Nat.
Gas Co. v. Oklahoma, 334 U.S. 62, 68 (1948) (“[I]f nothing
more than a ministerial act remains to be done, such as the
entry of a judgment upon a mandate, the decree is regarded
as concluding the case and is immediately reviewable.”);
Meade Instruments Corp. v. Reddwarf Starware, LLC, No.
1999-1517, 2000 WL 987268, at *3 (Fed. Cir. June 23,
2000); U.S. S.E.C. v. Carrillo, 325 F.3d 1268, 1272 (11th
Cir. 2003) (per curiam); Goodwin v. United States, 67 F.3d
149, 151 (8th Cir. 1995); see also Budinich v. Becton Dick-
inson & Co., 486 U.S. 196 (1988) (holding that merits rul-
ing can be “final decision” even if attorney’s fees issues
remain). An appeal was permitted under 28 U.S.C.
§ 1295(a)(1) and Federal Rule of Appellate Procedure 4,
whether because no separate document beyond the Decem-
ber 2019 order was required under Federal Rule of Civil
Procedure 58 or because waiting for the separate document
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OLAPLEX, INC. v. L’ORÉAL USA, INC. 7
(which was eventually entered in March 2020) is not re-
quired for a valid appeal (validity depending on finality).
See Fed. R. App. P. 4(a)(7). We reject L’Oréal’s jurisdic-
tional objection because the transfer occurred after the dis-
trict court rendered a final decision. We do not explore
whether this is always a necessary condition to defeat a ju-
risdictional objection of the sort L’Oréal makes; we hold
only that this condition is sufficient to defeat the objection.
L’Oréal in fact filed a notice of appeal within 30 days of
the December 2019 order, see 28 U.S.C. § 2107; Fed. R.
App. P. 4(a)(1)(A), and upon that filing, “our jurisdiction
attached,” Injunction Appeal, 2021 WL 831031, at *3; see
also ’954 Appeal, 2021 WL 280493, at *5 (citing Gilda In-
dus., Inc. v. United States, 511 F.3d 1348, 1350 (Fed. Cir.
2008)). L’Oréal, the loser of a monetary judgment, had
standing to appeal. And there has been an Article III case
or controversy throughout the appeal. L’Oréal seeks relief
from the judgment against it. And the adverse interest of
plaintiffs—or, now, the substituted Olaplex, Inc.—would
exist in this court even if we saw a jurisdictional problem
with the December 2019 order. Even on that assumption,
the required remedy would be a remand for the district
court to substitute Olaplex, Inc. and to re-enter the judg-
ment, leaving the merits issues, and the stakes, un-
changed. See Finn v. American Fire & Casualty Co., 207
F.2d 113, 117 (5th Cir. 1953); see also Caterpillar Inc. v.
Lewis, 519 U.S. 61, 71 & n.8 (1996) (seemingly describing
Finn with approval). 1
1 We mention only L’Oréal’s appeal because we dis-
miss plaintiffs’ cross-appeal, which concerns non-patent
damages, as moot given our reversal of non-patent liability.
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8 OLAPLEX, INC. v. L’ORÉAL USA, INC.
III
A
We reverse the district court’s denial of JMOL as to
non-patent liability. Viewing the evidence in the light most
favorable to Olaplex and giving “‘the advantage of every
fair and reasonable inference,’” we conclude that no reason-
able jury could have found either trade-secret misappropri-
ation or breach of contract. Marra v. Philadelphia Hous.
Auth., 497 F.3d 286, 300 (3d Cir. 2007) (quoting Moyer v.
United Dominion Indus., Inc., 473 F.3d 532, 545 n.8 (3d
Cir. 2007)); see also Fed. R. Civ. P. 50.
Olaplex generally agrees that, if its trade-secret claim
does not survive, neither does its breach-of-contract claim,
because both claims focus on the same information, which
was assertedly given to L’Oréal under the non-disclosure
agreement during the mid-May 2015 contacts between the
companies about a possible acquisition of Olaplex by
L’Oréal. See, e.g., J.A. 46091–96 (stating that the agree-
ment involves “Confidential Information,” which does not
include, among other things, information that “is or be-
comes generally available to the public”). The only excep-
tion to this general proposition concerns differences not
pertinent to our review of the case. See Cross-Appellant
Opening Br. at 19–20 (asserting that for its breach-of-con-
tract claim, Olaplex did not have to establish independent
economic value or reasonable efforts to preserve secrecy);
Oral Arg. at 31:14–31:50. We therefore discuss only trade-
secret misappropriation—for which the parties agree Del-
aware law supplies the governing standards. 2
2 Olaplex invoked the Delaware Uniform Trade Se-
cret Act (DUTSA), codified at Del. Code. Ann. tit. 6, § 2001,
et. seq., and the federal Defend Trade Secret Act (DTSA),
codified at 18 U.S.C. § 1836, et seq., but no party suggests
a difference in standards material to this case. We rely on
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OLAPLEX, INC. v. L’ORÉAL USA, INC. 9
As the alleged trade-secret owner, Olaplex “bears the
burden of proving both the existence and misappropriation
of a trade secret.” Beard Research, Inc. v. Kates, 8 A.3d
573, 590 (Del. Ch. 2010); see also TLS Mgmt. & Mktg.
Servs., LLC v. Rodríguez-Toledo, 966 F.3d 46, 52 (1st Cir.
2020) (Dyk, J.) (A trade-secret plaintiff has “the burden of
proof to establish the existence and scope of the alleged
trade secret in the litigation.”). “A trade secret is infor-
mation that ‘[d]erives independent economic value, actual
or potential, from not being generally known to, and not
being readily ascertainable by proper means by, other per-
sons who can obtain economic value from its disclosure or
use; and’ . . . ‘[i]s the subject of efforts that are reasonable
under the circumstances to maintain its secrecy.’” Savor,
Inc. v. FMR Corp., 812 A.2d 894, 897 (Del. 2002) (quoting
Del. Code. Ann. tit. 6, § 2001(4)); see also 18 U.S.C.
§ 1839(3)(A), (B) (nearly identical); Kewanee Oil Co. v.
Bicron Corp., 416 U.S. 470, 475 (1974) (“The subject of a
trade secret must be secret, and must not be of public
knowledge or of a general knowledge in the trade or busi-
ness.”). Misappropriation includes “[d]isclosure or use of a
trade secret of another without express or implied consent”
by certain persons, including the trade-secret owner. Del.
Code. Ann. tit. 6, § 2001(2); 18 U.S.C. § 1839(5)(B) (same);
see also Beard Research, 8 A.3d at 589.
Whether a trade secret exists is generally a question of
fact. See, e.g., SmithKline Beecham Pharms. Co. v. Merck
Delaware standards, while occasionally citing the federal
statute. See Compulife Software Inc. v. Newman, 959 F.3d
1288, 1311 n.13 (11th Cir. 2020) (treating Florida Uniform
Trade Secrets Act and DTSA as consistent when there was
no argument about differences); InteliClear, LLC v. ETC
Glob. Holdings, Inc., 978 F.3d 653, 657 (9th Cir. 2020)
(same for California); RGIS, LLC v. Gerdes, 817 F. App’x
158, 162–63 (6th Cir. 2020) (same for Michigan).
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10 OLAPLEX, INC. v. L’ORÉAL USA, INC.
& Co., 766 A.2d 442, 448 (Del. 2000) (“Whether the trade
secrets were generally known or readily ascertainable and
whether Merck took reasonable precautions to protect their
secrecy is a question of fact.”). Misappropriation is gener-
ally a mixed question of law and fact. See Total Care Phy-
sicians, P.A. v. O’Hara, No. 99C-11-201, 2002 WL
31667901, at *4 (Del. Super. Ct. Oct. 29, 2002).
In presenting its case to the jury, Olaplex classified its
asserted trade secrets in four groups: (1) information in an
Olaplex “unpublished patent” application; (2) “business in-
formation”; (3) “testing and know how”; and (4) “dead ends
and trials and errors.” See Appellant Opening Br. at 22;
Cross-Appellant Opening Br. at 18; see also J.A. 44623 (Tr.
696:7–18) (listing the four groups of information asserted
to be a trade secret). As to each, we hold, the jury could not
reasonably find sufficient proof of the elements of liability.
1
Olaplex contends that the trade secret in the un-
published patent application is only “using maleic acid dur-
ing bleaching.” See Cross-Appellant Opening Br. at 14
(“using maleic acid during bleaching”); id. at 21 (“Olaplex’s
trade secrets concern using maleic acid during bleaching.”);
id. at 22 n.7 (“The ‘during vs. after’ distinction matters be-
cause, in the ‘after’ setting, it is possible to have a low-pH
treatment, and it was there that the prior art disclosed ben-
efits of maleic acid for hair repair.”); id. at 23 (“the use of
maleic acid during bleaching”); see also J.A. 44624 (Tr.
697:11–13) (“Q. [D]o you see that this patent application
describes a maleic acid based treatment in bleaching? A.
That’s correct.”). The only reasonable finding the jury
could make about this information, however, was that
Olaplex did not disprove that the information was at least
readily ascertainable at the time of the alleged misappro-
priation.
Olaplex presented little affirmative evidence support-
ing its assertion that using maleic acid during bleaching
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OLAPLEX, INC. v. L’ORÉAL USA, INC. 11
was not readily ascertainable through proper means.
Olaplex’s expert Dr. Douglas Schoon testified as to the
value of the information in the unpublished patent appli-
cation but did not opine that particular information in the
patent application was not readily ascertainable through
proper means. See J.A. 44624–25 (Tr. 697:8–698:2) (de-
scribing the first group and its value). Dr. Schoon did tes-
tify that maleic acid was primarily thought of as a pH
adjuster before Olaplex, J.A. 44637–38 (Tr. 710:24–711:3),
but he did not testify that use of maleic acid during bleach-
ing was neither generally known nor readily ascertainable.
He acknowledged that, before the information exchange of
May 19, 2015, L’Oréal was using maleic acid in a method
of bleaching as a pH adjuster, J.A. 44668 (Tr. 741:11–13),
and he never testified that the then-available public liter-
ature failed to disclose the alleged trade secret of using ma-
leic acid during bleaching.
Olaplex also cites portions of testimony from another of
its witnesses, Dr. Edward Borish. Cross-Appellant Open-
ing Br. at 21–22 (citing J.A. 45564–65, 45569, 45573,
45582). But Dr. Borish testified only on the validity of the
asserted claims of the ’419 and ’954 patents—not to trade
secrecy. Consistent with that purpose, Dr. Borish testified
that combinations of certain references did not prove that
the asserted claims would have been obvious. At no point
did Dr. Borish opine that “using maleic acid during bleach-
ing” was not generally known or readily ascertainable
through proper means. See generally J.A. 45564–98 (Tr.
1530–1564).
L’Oréal, in contrast, put forth numerous prior-art ref-
erences along with expert testimony that the references
disclosed the alleged trade secret before May 19, 2015, the
start of the alleged misappropriation. Information in pub-
lished patents or patent applications is readily ascertaina-
ble by proper means. See, e.g., ID Biomedical Corp. v. TM
Techs., Inc., No. 13269, 1995 WL 130743, at *14 (Del. Ch.
Mar. 16, 1995) (DUTSA) (Information in “patent
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12 OLAPLEX, INC. v. L’ORÉAL USA, INC.
applications is readily ascertainable through appropriate
means.”); Accent Packaging, Inc. v. Leggett & Platt, Inc.,
707 F.3d 1318, 1329 (Fed. Cir. 2013) (“As a matter of law,
any specifications and tolerances disclosed in or ascertain-
able from the asserted patents became publicly available in
October 2005 when the ’877 patent application was pub-
lished and, as such, could not constitute a trade secret in
early 2006 when Leggett is alleged to have engaged in mis-
appropriation.”); Atl. Research Mktg. Systems, Inc. v. Troy,
659 F.3d 1345, 1357 (Fed. Cir. 2011) (“A trade secret is se-
cret. A patent is not. That which is disclosed in a patent
cannot be a trade secret.”); On-Line Techs. v. Bodenseewerk
Perkin-Elmer GMBH, 386 F.3d 1133, 1141 (Fed. Cir. 2004)
(“After a patent has issued, the information contained
within it is ordinarily regarded as public and not subject to
protection as a trade secret.”); see also, e.g., Attia v. Google
LLC, 983 F.3d 420, 426 (9th Cir. 2020) (DTSA) (“[D]isclo-
sure of a trade secret in a patent application extinguishes
the information’s trade secret status.”); BondPro Corp. v.
Siemens Power Generation, Inc., 463 F.3d 702, 706 (7th Cir.
2006) (“Publication in a patent destroys the trade secret
because patents are intended to be widely disclosed. . . .”
(citations omitted)).
Ogawa (U.S. Patent No. 7,044,986) was first published
on January 22, 2004, over 11 years before L’Oréal received
the unpublished patent application in May 2015, and de-
scribes a composition used for bleaching (i.e., lightening) or
dyeing hair. Ogawa, col. 1, lines 5–10. The composition,
explains Ogawa, includes “(A) ammonia or an ammonium
salt, (B) a carbonate (other than an ammonium salt), (C) a
transition metal salt, and (D) a chelating agent.” Id., Ab-
stract; see also id., col. 2, lines 1–14. For the chelating
agent, the reference describes “maleic acid, and salts
thereof,” in a section of the specification disclosing “best
modes for carrying out the invention,” as an “[i]llustrative”
“chelating agent.” Id., col. 2, lines 15–17; id., col. 2, line 61,
through col. 3, line 1; see also id., col. 8, lines 34–39 (claim
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OLAPLEX, INC. v. L’ORÉAL USA, INC. 13
8, listing “maleic acid or salts thereof”). Dr. Benny Free-
man, L’Oréal’s expert, testified that Ogawa described using
maleic acid during bleaching. See J.A. 45209 (Tr. 1235:1–
5) (Ogawa “talks about hair bleaches . . . and some of the
compositions for those hair bleaches and maleic acid is one
of the components that can be in these hair bleaches.”).
The Patent Trial and Appeal Board has found that Og-
awa discloses using maleic acid as an active agent during
bleaching. L’Oréal USA, Inc. v. Liqwd, Inc., No. PGR2017-
00012, Paper 105 (P.T.A.B. July 13, 2018). We have held
that the Board’s finding was supported by substantial evi-
dence. ’419 Appeal, 941 F.3d at 1139. We see no basis in
this case for the jury to find the contrary.
Moreover, Wahler (WO 2014/207097A1) was published
on December 31, 2014, before the alleged misappropria-
tion, and is titled “Cosmetic composition for lightening or
dyeing the hair, comprising two basic agents, an acid and
an oxidizing agent.” Wahler discloses “a cosmetic composi-
tion for lightening or dyeing keratin fibres . . . comprising
(a) one or more organic alkaline agents . . . , (b) one or more
mineral alkaline agents, (c) one or more organic or mineral
acids, (d) one or more fatty substances and (e) one or more
oxidizing agents.” Wahler, Abstract. “[M]ore preferen-
tially,” Wahler says, “maleic acid” (among other acids) is
the acid for ingredient (c). Id., page 9, line 33, through page
10, line 2. Dr. Freeman, L’Oréal’s expert, testified that
Wahler described using maleic acid during bleaching. See
J.A. 45209–10 (Tr. 1235:21–1236:2) (Wahler “talks about
cosmetic compositions for dyeing hair and it also includes
what it calls a component C over there, an organic acid and
maleic acid can be one of those organic acids that goes into
the bleaching formulations.”).
In addition, during the prosecution of what became the
’419 patent, of which the ’954 patent is a grandchild,
Olaplex itself implicitly acknowledged that a prior-art ref-
erence called Mintel—“a database entry describing a Catzy
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14 OLAPLEX, INC. v. L’ORÉAL USA, INC.
hair product”—disclosed using maleic acid during bleach-
ing. See J.A. 14285–86. Indeed, while answering an antic-
ipation rejection, Olaplex did not deny that Mintel taught
claim elements requiring use of maleic acid during bleach-
ing. Instead, Olaplex distinguished Mintel on other
grounds: “Mintel, however, does not disclose the amount of
any of the listed ingredients. Further, Mintel does not dis-
close or even suggest that the combination of the mixing
cream and bleaching powder include at least 0.1% by
weight of maleic acid.” J.A. 14286.
We need not separately consider the arguments over
L’Oréal’s additional evidence concerning its own internal
consideration of using maleic acid before it received the pa-
tent application from Olaplex in May 2015. Given the
sparse affirmative evidence put forth by Olaplex and the
competing evidence by L’Oréal, we determine that, even al-
lowing for all reasonable inferences in Olaplex’s favor,
there is insufficient evidence in the record to support the
jury’s verdict that Olaplex met its burden to prove by a pre-
ponderance of evidence that “using maleic acid during
bleaching” was a trade secret at the time of the alleged mis-
appropriation. 3
3 We do not suggest that the patent-law requirement
of novelty must be met for information to constitute a trade
secret. See Kewanee, 416 U.S. at 476 (“Novelty, in the pa-
tent law sense, is not required for a trade secret. Quite
clearly discovery is something less than invention. How-
ever, some novelty will be required if merely because that
which does not possess novelty is usually known; secrecy,
in the context of trade secrets, thus implies at least mini-
mal novelty.” (cleaned up)). Rather, we determine that
Olaplex failed to establish that “using maleic acid during
bleaching” was not readily ascertainable, considering,
among other things, the clear meaning of the prior-art ref-
erences introduced into evidence.
Case: 20-1382 Document: 86 Page: 15 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 15
2
As to “business information” and “financials,” which we
may assume contained trade-secret information, Olaplex
claimed that L’Oréal misappropriated that information
through improper use. For such misappropriation, Olaplex
had to prove that L’Oréal used the trade secret “without
express or implied consent” from Olaplex. Del. Code Ann.
tit. 6, § 2001 (“[m]isappropriation” means “use of a trade
secret of another without express or implied consent”); 18
U.S.C. § 1839(5)(B) (“misappropriation” means “use of a
trade secret of another without express or implied con-
sent”). We conclude that no reasonable jury could find that
Olaplex so proved.
Olaplex asserts only that the business information
“provided insight into whether it was more cost-effective
for L’Oréal to acquire Olaplex or to launch L’Oréal’s own
products.” Cross-Appellant Opening Br. at 20. In other
words, Olaplex contends that L’Oréal misappropriated its
trade secret of “business information” when L’Oréal used
that information in its Build v. Buy analysis. But the non-
disclosure agreement, naturally given the purpose of the
contacts between the companies at the time, explicitly gave
L’Oréal authorization to use the information in that way.
See J.A. 46092 (Non-Disclosure Agreement) (“Restrictions
on Disclosure and Use. We will not disclose or permit our
Representatives to disclose the Confidential Information to
any person and will not use the Confidential Information
for any purposes other than to evaluate, negotiate and, if
applicable, consummate a possible Transaction . . . .”).
Dean Christal, Olaplex’s co-founder, himself testified that
L’Oréal could use the information in a Build v. Buy analy-
sis as well. See J.A. 44351 (Tr. 472:16–23) (“Q. . . . Also,
what about the confidential information that you might
give them, were there any restrictions in the agreement
about their ability to use that in certain ways? A. No. They
could only, they could only use the confidential information
that I gave them to evaluate the purchase of the company.
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16 OLAPLEX, INC. v. L’ORÉAL USA, INC.
It couldn’t be used for any other reason, just to look at it
and crunch the numbers, I guess.”); see also J.A. 46788–89.
L’Oréal’s use of the trade secret was not improper because
Olaplex consented to that use. See Texas Advanced Optoe-
lectronic Solutions, Inc. v. Renesas Elecs. America, Inc., 895
F.3d 1304, 1314 (Fed. Cir. 2018) (“Although it is undis-
puted that Intersil used TAOS’s information for the ‘Build
vs. Buy’ analysis, that use was contractually permitted and
therefore not a proper basis of liability for trade secret mis-
appropriation.”); MPAY Inc. v. Erie Custom Computer Ap-
plications, Inc., 970 F.3d 1010, 1018 (8th Cir. 2020) (“And
because Clayton’s disclosure . . . was authorized, it did not
amount to trade secrets misappropriation . . . .”).
3
Two groups of alleged trade secrets remain: testing and
know how, and dead ends and trials and errors. We con-
clude that no reasonable jury could have found that
Olaplex met its burden of proving that this information
was a trade secret before May 19, 2015, or that L’Oréal mis-
appropriated the purported trade secrets.
a
A decisive deficiency in Olaplex’s proof regarding these
groups is the utter lack of proof that L’Oréal misappropri-
ated anything secret within these groups. Olaplex asserted
trade-secret misappropriation based only on improper use
of the purported trade secrets, but Olaplex has not pointed
us to any proof that L’Oréal improperly used the trade se-
crets in these two groups. Indeed, Olaplex describes these
groups only at the high level of generality reflected in the
labels we have quoted. It never identifies with specificity
any particular information about testing, know-how, dead
ends, or trial-and-error processes and evidence showing
that L’Oréal made use of that information, let alone evi-
dence of why that use was improper.
Case: 20-1382 Document: 86 Page: 17 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 17
In its brief, Olaplex addresses this information in a sin-
gle sentence, writing: “The ‘testing and know how’ and
‘dead ends, and trials and errors’ buckets yielded a ‘dra-
matic change’ in L’Oréal’s maleic acid ‘research after the
May 19th Meeting.’” Cross-Appellant Opening Br. at 19–
20 (quoting J.A. 44630). But the testimony Olaplex quotes
does not support its assertion that L’Oréal misappropri-
ated information on “testing and know how” or “dead ends
and trials and errors” rather than the purported trade se-
cret in the unpublished patent application. See Cross-Ap-
pellant Opening Br. at 20 (citing J.A. 44630 (Tr. 703)); J.A.
44630 (Tr. 703:3–13) (“Q. Okay. And what at a high level
did you observe in terms of the testing of lab notebooks that
you saw in L’Oréal’s lab notebooks before the May 19th,
2015, meeting, and after that meeting? A. Well, I noticed
there was a dramatic change in their research after the
May 19th meeting. Q. Okay. What do you mean by that?
A. Well, before the May 19th meeting, they were focused on
other things than maleic acid and after the May 19th meet-
ing, their research shifted to focus on maleic acid as an ac-
tive ingredient in their prototypes.”).
Although Olaplex at one point asked a question to Dr.
Schoon specifically on the non-use of silicone in L’Oréal’s
products (which Olaplex argued was a trade secret), Dr.
Schoon did not give an answer that made it into the record:
When L’Oréal immediately objected to the question,
Olaplex moved on without receiving an answer from Dr.
Schoon. See J.A. 44626–27 (Tr. 699:15–700:14). Given that
Olaplex had the burden, no reasonable jury could find that
L’Oréal committed trade-secret misappropriation even
when viewing the facts most favorably to Olaplex.
b
Olaplex’s showing as to these two groups of alleged
trade secrets—in its brief here, mentioned in a single sen-
tence—is also insufficient to support the jury verdict in a
second way. In part because of the absence of particularity,
Case: 20-1382 Document: 86 Page: 18 Filed: 05/06/2021
18 OLAPLEX, INC. v. L’ORÉAL USA, INC.
we cannot say that the evidence allowed a reasonable find-
ing that information in these groups was even a trade se-
cret, i.e., was not readily ascertainable through proper
means by other persons who can obtain economic value
from its disclosure or use. See Del. Code. Ann. tit. 6,
§ 2001(4); 18 U.S.C. § 1839(3)(B).
As to “testing and know how”: Olaplex’s expert, Dr.
Schoon, testified that the asserted trade secret “would be
the methods that Olaplex developed for evaluating their
products,” which included “sensory testing on tresses they
obtained from . . . salons” and other testing to “establish
the stability of their products.” J.A. 44625 (Tr. 698:8–16).
While Dr. Schoon admitted that L’Oréal was performing
“sensorial testing on hair swatches before May 19, 2015,”
i.e., when L’Oréal received the asserted trade secrets, J.A.
44668 (Tr. 741:14–17); see also J.A. 44670 (Tr. 743:4–7), he
opined that the “testing methods” of Olaplex were “very un-
conventional methods,” J.A. 44625 (Tr. 698:17–21). But
Dr. Schoon did not identify what these methods were so as
to provide any concrete basis for finding that they were not
“readily ascertainable” by proper means—a proposition Dr.
Schoon did not expressly assert or try to establish. A
method that is infrequently used (i.e., is unconventional)
may well be readily ascertainable—or even generally
known. Nor did Dr. Schoon testify to how the testing and
know-how information differed from the methods disclosed
in Trevor A. Evans & Kimun Park, A Statistical Analysis
of Hair Breakage, 61 J. Cosm. Sci. 439 (2010), J.A. 51408–
24—an article that, according to a co-inventor of the ’954
patent, Dr. Craig Hawker, describes experiments that
would have been well known to those in the industry at the
time of the alleged misappropriation, J.A. 44300–01 (Tr.
421:19–422:1) (“Q. Do you believe – well, would you agree
that the ’419 patent doesn’t describe any methodology re-
lated to repeated grooming; is that correct? A. We were
aware of – you know, there’s a famous paper from Evans in
2010 which describes repeated grooming experiments. And
Case: 20-1382 Document: 86 Page: 19 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 19
for anyone kind of knowledgeable in the field, you know,
that the kind of gold standard for repeated grooming exper-
iments.”).
As to “dead ends and trials and errors”: Olaplex’s ex-
pert, Dr. Schoon, testified that the asserted trade secrets
“tell you where to go and where not to go. One example of
a dead-end that Olaplex found was use of silicones. They
claimed that the use of silicones in a product can destabi-
lize the product and cause them to separate. So once they
realized that, of course, they would formulate around that
and not include silicones in their products.” J.A. 44625–26
(Tr. 698:24–699:5). He further opined that information
about dead ends would be “helpful” because it “prevent[s]
wasting time and resources on following down pathways
that were of a dead-end and be no value and waste a lot of
time on dead-ends.” J.A. 44626 (Tr. 699:6–11). According
to Dr. Schoon, “the fact that silicone wasn’t compatible with
Olaplex” was not generally known. J.A. 44626 (Tr. 699:12–
14). At no point did Dr. Schoon testify that the dead ends
or trials and errors were not readily ascertainable by
proper means.
Testimony from Mr. Christal, Olaplex’s co-founder,
does not provide the required evidence proving that the in-
formation was not readily ascertainable either. See Cross-
Appellant Opening Br. at 18–19 (quoting J.A. 44370). Mr.
Christal’s testimony that the information was Olaplex’s
“playbook” does not support an inference that the infor-
mation was not readily ascertainable by proper means. See
J.A. 44370 (Tr. 491:9–14) (“Well, it was our playbook. It
was everything. It was our chemistry. It was a roadmap
of how to replicate, how to duplicate it, all of the other in-
formation we gave them.”); J.A. 44370 (Tr. 491:20–23)
(“When I say playbook, it was something that if it just fell
into an alien’s hands, they could have replicated our entire
business in a very short period of time.”).
Case: 20-1382 Document: 86 Page: 20 Filed: 05/06/2021
20 OLAPLEX, INC. v. L’ORÉAL USA, INC.
Olaplex’s lack of specificity in describing the “testing
and know how” and “dead ends and trials and errors” in-
formation asserted to be trade secrets is telling on the issue
of failure of proof of trade-secret status. In its brief,
Olaplex did not specify what the trade secrets were besides
using the labels “testing and know how” and “dead ends
and trials and errors.” See generally Cross-Appellant
Opening Br. at 13–14, 18–20. As a result, L’Oréal, in its
reply, had to speculate as to what contentions Olaplex was
still pressing as to these groups; L’Oréal stated that the
“only testing, know-how, dead-ends, and trials-and-errors
that Olaplex identified to the jury were information orally
conveyed to [one of L’Oréal’s employees] regarding (1) sen-
sory testing of marketed products on hair tresses; (2) prod-
uct stability testing; and (3) non-use of silicones.”
Appellant Response and Reply Br. at 31 (citing J.A. 44625–
27). On those subjects, as we have explained, Olaplex’s
proof was insufficient.
c
There is a “general requirement that ‘[a] person claim-
ing rights in a trade secret bears the burden of defining the
information for which protection is sought with sufficient
definiteness to permit a court to apply the criteria for pro-
tection . . . and to determine the fact of an appropriation.’”
TLS Mgmt., 966 F.3d at 53 (alterations in original) (quot-
ing Restatement (Third) of Unfair Competition § 39 cmt. d
(Am. Law Inst. 1995)); see also InteliClear, LLC v. ETC
Glob. Holdings, Inc., 978 F.3d 653, 658 n.1 (9th Cir. 2020)
(noting that the particularity requirement has been ap-
plied in federal trade-secret cases). The Delaware courts
have articulated the point in the context of discovery, with
the logic of the requirement in that context carrying over
to what is needed for a fair trial on liability. See
SmithKline, 766 A.2d at 447 (“In cases involving trade se-
crets, the plaintiff is required to disclose, before obtaining
discovery of confidential proprietary information of its ad-
versary, the trade secrets it claims were misappropriated.
Case: 20-1382 Document: 86 Page: 21 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 21
The plaintiff must disclose the allegedly misappropriated
trade secrets with reasonable particularity.” (citation omit-
ted)). In this case, the Verdict Form stated the require-
ment. J.A. 37623 (“Has Olaplex proven that on May 19,
2015, it possessed specific, identifiable Trade Secret(s)
. . . ?” (emphasis added)). And at oral argument in this
court, Olaplex acknowledged that there was a particularity
requirement for its breach-of-contract claim, Oral Arg. at
31:51–32:17, and that it was not arguing for different treat-
ment of that claim and its trade-secret claim, id. at 31:16–
31:50. See also SL Montevideo Tech., Inc. v. Eaton Aero-
space, LLC, 491 F.3d 350, 354 (8th Cir. 2007) (“A claim that
a confidentiality agreement was breached by disclosure of
a proprietary combination of data should require the same
precision of proof as a comparable trade secret claim.”).
The requirement of reasonable particularity matters
here because a trade secret “described in general terms . . .
will usually be widely known” or readily ascertainable by
proper means and thus “not a trade secret.” BondPro
Corp., 463 F.3d at 710. It matters, too, because, without
particularity (pre-trial and at trial), there is an inadequate
basis for a fair adjudication of what information was actu-
ally used by the defendants. See, e.g., InteliClear, 978 F.3d
at 658 (“Identifying trade secrets with sufficient particu-
larity is important because defendants need concrete iden-
tification to prepare a rebuttal. Courts and juries also
require precision because, especially where a trade secrets
claim involves a sophisticated and highly complex system,
the district court or trier of fact will not have the requisite
expertise to define what the plaintiff leaves abstract.”
(cleaned up)); Givaudan Fragrances Corp. v. Krivda, 639 F.
App’x 840, 845 (3d Cir. 2016) (“It is patently obvious that
trade secrets must be identified with enough specificity to
put a defendant on notice of what is actually alleged to have
been stolen.”). In both respects, as we have explained, we
find insufficient proof of elements required for liability. If
the record contains more evidence than we have identified,
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22 OLAPLEX, INC. v. L’ORÉAL USA, INC.
Olaplex has not brought such additional evidence to our at-
tention, and we need not sift the extensive record for it on
our own. See Albrechtsen v. Bd. of Regents of Univ. of Wis-
consin System, 309 F.3d 433, 436 (7th Cir. 2002) (“Courts
are entitled to assistance from counsel, and an invitation
to search without guidance is no more useful than a liti-
gant’s request to a district court at the summary judgment
stage to paw through the assembled discovery material.
Judges are not like pigs, hunting for truffles buried in the
record.” (internal quotation marks omitted)); IDX Systems
Corp. v. Epic Systems Corp., 285 F.3d 581, 584 (7th Cir.
2002) (explaining in the trade-secret context that “a plain-
tiff must do more than just identify a kind of technology
and then invite the court to hunt through the details in
search of items meeting the statutory definition.”); Compo-
site Marine Propellers, Inc. v. Van Der Woude, 962 F.2d
1263, 1266 (7th Cir. 1992) (“It is not enough to point to
broad areas of technology and assert that something there
must have been secret and misappropriated. The plaintiff
must show concrete secrets.”).
B
1
L’Oréal raises two issues regarding patent invalidity
on appeal: first, whether no reasonable jury could find, as
the jury here found, that the claims 14–16 of the ’954 pa-
tent were not invalid based on the written-description re-
quirement; second, whether the court’s jury instruction on
obviousness was legally erroneous. Appellant Opening Br.
at 41–46; Appellant Response and Reply Br. at 47–51. We
affirm the district court’s denial of L’Oréal’s JMOL motion
on invalidity based on the written-description requirement
and denial of L’Oréal new-trial motion on invalidity for ob-
viousness. We hold that estoppel under 35 U.S.C.
§ 325(e)(2) bars L’Oréal from seeking to overturn the ver-
dict on written description and obviousness because
Case: 20-1382 Document: 86 Page: 23 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 23
L’Oréal reasonably could have raised these arguments dur-
ing the post-grant review of the ’954 patent.
a
At the outset, we reject L’Oréal’s contention that, even
if estoppel would apply here, we should not apply it because
Olaplex raised the estoppel bar too late. Olaplex, Inc. v.
L’Oréal USA, Inc., No. 2020-1382, ECF No. 83 (Fed. Cir.
Mar. 24, 2021) (L’Oréal Letter).
On July 30, 2019, the Board issued a confidential final
decision involving the ’954 patent. The trial in this case
was less than a week away: It began on August 5, 2019.
The jury reached a verdict one week later, rejecting the va-
lidity challenges (among its other rulings). At the end of
August, the 30-day period for seeking rehearing as of right
from the Board expired, 37 C.F.R. § 42.71(d)(2); on Septem-
ber 6, 2019, the Board’s decision was made public; and on
September 12, 2019, L’Oréal appealed from the decision,
followed by Olaplex’s cross-appeal. On December 16, 2019,
as we have described, the district court in this case resolved
post-trial motions, and appeal proceedings began soon af-
ter. After L’Oréal submitted its brief in this case challeng-
ing (among other things) the jury’s verdict on validity,
Olaplex responded on August 4, 2020. Briefing also pro-
ceeded in the appeal and cross-appeal from the Board’s de-
cision on the ’954 patent, and we affirmed that decision on
January 28, 2021. Six weeks later, on March 10, 2021—six
days after we issued our opinion vacating and remanding
for trial certain patent issues in the present case—Olaplex
filed a letter asserting estoppel.
Olaplex could have raised the estoppel issue before it
actually did, but we do not decide when precisely Olaplex
should have raised it to avoid any timeliness question. We
conclude, in the exercise of our discretion, that estoppel
should be addressed in this case even if Olaplex raised it
here later than it should have. See, e.g., Singleton v. Wulff,
428 U.S. 106, 121 (1976) (“The matter of what questions
Case: 20-1382 Document: 86 Page: 24 Filed: 05/06/2021
24 OLAPLEX, INC. v. L’ORÉAL USA, INC.
may be taken up and resolved for the first time on appeal
is one left primarily to the discretion of the courts of ap-
peals, to be exercised on the facts of individual cases.”);
Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1378
n.6 (Fed. Cir. 2020) (“[W]hether to apply the waiver rule is
discretionary.”); Barefoot Architect, Inc. v. Bunge, 632 F.3d
822, 834–35 (3d Cir. 2011) (noting that the forfeiture rule
“may be relaxed whenever the public interest so warrants”
(internal quotation marks omitted)); Tri-M Grp., LLC v.
Sharp, 638 F.3d 406, 416 (3d Cir. 2011).
The point in time at which the issue generally must be
raised is not apparent on the face of the statute and has not
been decided by this court. See Progressive Cas. Ins. Co. v.
Liberty Mut. Ins. Co., 625 F. App’x 552, 556 (Fed. Cir. 2015)
(Ҥ 325(e)(1) does not say when a final decision begins to
have estoppel effect (on the petitioner).”). Moreover, we
concluded that under the pre-America Invents Act’s estop-
pel provision for inter partes reexaminations, 35 U.S.C.
§ 315(c) (2012)—whose language is similar but not identi-
cal to § 325(e)(2)—estoppel rights arose when all appellate
rights were exhausted. See Bettcher Indus., Inc. v. Bunzl
USA, Inc., 661 F.3d 629, 642–48 (Fed. Cir. 2011). Contrary
to L’Oréal’s suggestion, the timing issue was not decided
by this court in Network-1 Technologies, Inc. v. Hewlett-
Packard Co., 981 F.3d 1015 (Fed. Cir. 2020), in which no
dispute about untimeliness was presented. As relevant
here, this court in Network-1 held only that the estoppel
provision of 35 U.S.C. § 315(e)(2), whose language is mate-
rially identical to that of § 325(e)(2), did not bar Hewlett-
Packard from raising challenges in court where it could not
have raised those challenges in the inter partes review it
had joined, but not initiated, because joiners were limited
to the issues raised by the initiating petitioner. 981 F.3d
at 1026–28.
We have said that we “will disregard the rule of waiver
in compelling circumstances, particularly if the issue has
been fully briefed, if the issue is a matter of law or the
Case: 20-1382 Document: 86 Page: 25 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 25
record is complete, if there will be no prejudice to any party,
and if no purpose is served by remand.” Automated Merch.
Systems, Inc. v. Lee, 782 F.3d 1376, 1380 (Fed. Cir. 2015)
(cleaned up); see also, e.g., Ericsson Inc. v. TCL Commc’n
Tech. Holdings Ltd., 955 F.3d 1317, 1322–23 (Fed. Cir.
2020); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d
1034, 1040–41 (Fed. Cir. 2017). Here, the estoppel issue
before us requires no additional factfinding. See, e.g., Tri-
M Grp., 638 F.3d at 418 (“[W]e have been reluctant to apply
the waiver doctrine when only an issue of law is raised and
no additional fact-finding is necessary.” (internal quotation
marks omitted)); L.E.A. Dynatech, Inc. v. Allina, 49 F.3d
1527, 1531 (Fed. Cir. 1995) (noting that a forfeited argu-
ment is more readily addressed if it presents “a pure ques-
tion of law”); Cemex, S.A. v. United States, 133 F.3d 897,
902 (Fed. Cir. 1998). And L’Oréal has not demonstrated
any sandbagging by Olaplex or any concrete prejudice from
any delay in Olaplex’s raising the issue. We therefore ad-
dress estoppel.
b
Section 325(e)(2) provides:
The petitioner in a post-grant review of a claim in
a patent under this chapter that results in a final
written decision under section 328(a), or the real
party in interest or privy of the petitioner, may not
assert either in a civil action arising in whole or in
part under section 1338 of title 28 or in a proceed-
ing before the International Trade Commission un-
der section 337 of the Tariff Act of 1930 that the
claim is invalid on any ground that the petitioner
raised or reasonably could have raised during that
post-grant review.
35 U.S.C. § 325(e)(2). In an earlier decision, we affirmed
the Board’s final written decision determining that the ’954
patent’s breakage claims (including claims 14–16) “were
not proved unpatentable,” while claims 1–13, 19–23, and
Case: 20-1382 Document: 86 Page: 26 Filed: 05/06/2021
26 OLAPLEX, INC. v. L’ORÉAL USA, INC.
29–30 of the ’954 patent “were proved unpatentable.” ’954
Appeal, 2021 WL 280493, at *1. We conclude that L’Oréal
is estopped from pressing its challenges both to written de-
scription and obviousness in an effort to overturn the jury
verdict.
As to written description, because L’Oréal sought a
post-grant review, which is not limited to challenges based
on prior art, it was able to challenge claims 14–16 for lack
of written description. See 35 U.S.C. § 321(b). L’Oréal ar-
gues that estoppel does not apply because the district court
issued a claim construction of the breakage requirements
in claims 14–16 of the ’954 patent after it filed its post-
grant-review petition. L’Oréal Letter at 1. But L’Oréal
here made no showing that its written-description argu-
ment was affected by the district court’s claim construction.
The possibility of different claim constructions is inherent
in the two-forum problem that § 325(e) is addressing, and
the possibility would hardly have been obscure to Con-
gress. That possibility in and of itself cannot fairly provide
an exception to the straightforward application of
§ 325(e)(2)’s language without significantly impairing the
evident function of the language. Here, nothing prevented
L’Oréal from raising the written-description challenge. Cf.
Network-1, 981 F.3d at 1026–27; Shaw Indus. Grp., Inc. v.
Automated Creel Systems, Inc., 817 F.3d 1293, 1299–1300
(Fed. Cir. 2016).
As to obviousness, L’Oréal contends that estoppel does
not apply to its obviousness challenge simply because it “re-
lied on different prior-art combinations below.” L’Oréal
Letter at 1. Like the possibility of different claim construc-
tions, the possibility of different prior-art references is in-
herent in the two-forum problem that is the subject of
§ 325(e), and it would hardly have been obscure to Con-
gress. This possibility, the only basis of L’Oréal’s argument
against estoppel on the obviousness challenge, would not
justify an exception to the provision without severely weak-
ening the evident function of the provision by generally
Case: 20-1382 Document: 86 Page: 27 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 27
allowing challengers, having lost on certain prior-art com-
binations before the Board, to press others in court.
L’Oréal, which has not identified any basis for its challenge
here that was unavailable at the time of its Board petition,
could have reasonably raised in the post-grant review the
prior-art combination it raised here.
2
On March 4, 2021, we decided an appeal from the dis-
trict court’s entry of a permanent injunction. See Injunc-
tion Appeal, 2021 WL 831031. That decision requires a
vacatur of the infringement and damages verdict on patent
infringement here, and a remand for a trial on infringe-
ment and damages. We do not address L’Oréal’s challenges
regarding damages.
We clarify one point from our prior decision. The par-
ties have disagreed about what issues concerning L’Oréal’s
Step 3 products are available for Olaplex to press in the
new trial. Compare Olaplex, Inc. v. L’Oréal USA, Inc., No.
2020-1382, ECF No. 80 at 1 n.1 (Fed. Cir. Mar. 10, 2021)
(Olaplex’s Letter), with id., ECF No. 84 at 1 (Fed. Cir. Mar.
24, 2021) (L’Oréal’s Letter). The universe of possible sce-
narios of use available on this record, according to Olaplex
itself, is limited. Within that universe, which confines fur-
ther proceedings, our earlier opinion establishes that the
only possibility remaining, as a substantive matter, would
be in-salon use of Step 3 products in a single bleaching visit
when only one, but not two, applications of the required ac-
tive-agent formulation precedes use of Step 3 products.
Whether discovery and other procedural constraints allow
Olaplex now to press that possibility is a matter for the dis-
trict court to decide.
IV
L’Oréal requests reassignment to a different district-
court judge, making the request in one sentence, only un-
der the “Conclusion” heading of its opening brief, not in the
Case: 20-1382 Document: 86 Page: 28 Filed: 05/06/2021
28 OLAPLEX, INC. v. L’ORÉAL USA, INC.
Statement of Issues or the Argument section. See Appel-
lant Opening Br. at 67 (“Because of the systematic errone-
ous rulings, L’Oréal USA respectfully requests
reassignment to a new district judge. See Svindland v. The
Nemours Found., 287 F. App’x 193, 195–96 (3d Cir.
2008).”). We follow Third Circuit law on reassignment re-
quests. See, e.g., Cohesive Techs., Inc. v. Waters Corp., 543
F.3d 1351, 1375 (Fed. Cir. 2008) (noting that reassignment
is governed under regional-circuit law). We deny the re-
quest.
The request is forfeited as unsupported by a “developed
argument.” SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006); Ethypharm S.A.
France v. Abbott Labs., 707 F.3d 223, 231 n.13 (3d Cir.
2013). In any event, the Third Circuit in Svindland, the
only case L’Oréal cites, did not rest its reassignment order
on “systematic erroneous rulings.” It relied on a record
that “reveal[ed] numerous instances of . . . impatience and
precipitous rulings” and “countless interruptions of coun-
sel’s arguments” by the district court, the precipitous rul-
ings leaving key decisions wholly unexplained and
therefore unreviewable. 287 F. App’x at 195–96. L’Oréal
has not shown this case to be like Svindland, and it has not
even dealt with an extensive body of Third Circuit prece-
dent that limits the circumstances in which the appeals
court should order reassignment.
V
For the foregoing reasons, we grant the motion to sub-
stitute, reverse the denial of L’Oréal’s JMOL motion as to
trade-secret misappropriation and breach of contract, af-
firm the denial of L’Oréal’s post-trial motions on patent in-
validity, vacate and remand for a trial on patent
infringement and damages, dismiss Olaplex’s cross-appeal,
and deny L’Oréal’s request for reassignment.
The parties shall bear their own costs.
Case: 20-1382 Document: 86 Page: 29 Filed: 05/06/2021
OLAPLEX, INC. v. L’ORÉAL USA, INC. 29
REVERSED IN PART, AFFIRMED IN PART,
VACATED IN PART, DISMISSED IN PART, AND
REMANDED