University of Massachusetts, Carmel Laboratories, LLC v. L’oréal S.a., L’oréal USA, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSITY OF MASSACHUSETTS, CARMEL
LABORATORIES, LLC,
Plaintiffs-Appellants
v.
L’ORÉAL S.A., L’ORÉAL USA, INC.,
Defendants-Appellees
______________________
2021-1969
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:17-cv-00868-CFC-SRF, Judge
Colm F. Connolly.
______________________
Decided: June 13, 2022
______________________
JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, argued for plaintiffs-appellants. Also represented by
CALEB HAYES-DEATS; LAUREN F. DAYTON, New York, NY;
BEATRICE FRANKLIN, TAMAR LUSZTIG, Susman Godfrey
LLP, New York, NY; JUSTIN ADATTO NELSON, Houston, TX.
ERIC WILLIAM DITTMANN, Paul Hastings LLP, New
York, NY, argued for defendants-appellees. Also repre-
sented by ISAAC S. ASHKENAZI, KARTHIK RAM KASARANENI,
BRUCE M. WEXLER; STEPHEN BLAKE KINNAIRD, NAVEEN
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 2
MODI, Washington, DC; K ATHERINE F RENCK MURRAY , Ellis
George Cipollone O'Brien Annaguey LLP, Los Angeles, CA.
______________________
Before P ROST , MAYER , and T ARANTO, Circuit Judges.
T ARANTO, Circuit Judge.
This appeal is from a judgment in a patent-infringe-
ment action involving U.S. Patent Nos. 6,423,327 and
6,645,513, which are related as parent and child and which
are owned by University of Massachusetts and exclusively
licensed to Carmel Laboratories, LLC (hereinafter referred
to together as UMass). UMass filed the action in the Dis-
trict of Delaware against L’Oréal S.A. and its American
subsidiary, L’Oréal USA, Inc. (hereinafter referred to to-
gether as L’Oréal unless otherwise noted), alleging that
they were infringing the two patents. When L’Oréal S.A.,
which is based in France, moved to dismiss the action
against it on the ground that the Delaware forum lacked
personal jurisdiction over it, the district court granted the
motion without permitting UMass to conduct jurisdictional
discovery. See Memorandum Order, University of Massa-
chusetts v. L’Oréal S.A., No. 1:17-cv-00868 (D. Del. May 17,
2019), ECF No. 36 (Personal Jurisdiction Order); Report
and Recommendation, University of Massachusetts v.
L’Oréal S.A., No. 1:17-cv-00868 (D. Del. Nov. 13, 2018),
ECF No. 31 (Personal Jurisdiction Report and Recommen-
dation). With the case then proceeding only against
L’Oréal USA, the district court ruled on a dispute about the
proper construction of one limitation of the claim that is
representative for present purposes. See J.A. 3719–21
(Hearing Tr. at 56:22–58:16); see also Claim Construction
Order, University of Massachusetts v. L’Oréal USA, Inc.,
No. 1:17-cv-00868 (D. Del. Apr. 9, 2020), ECF No. 114
(Claim Construction Order). Relying on that construction,
the district court subsequently held another limitation of
the claim indefinite. University of Massachusetts v. L’Oréal
USA, Inc., 534 F. Supp. 3d 349 (D. Del. 2021) (Summary
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 3
Judgment Opinion). On that basis, the court entered a fi-
nal judgment of invalidity against UMass.
UMass challenges both the indefiniteness and per-
sonal-jurisdiction rulings. On UMass’s first challenge, we
address the claim construction on which the indefiniteness
ruling depends, and we reject the district court’s construc-
tion as understood by both parties on appeal. This conclu-
sion justifies our vacating the indefiniteness ruling and
remanding for further proceedings. On UMass’s second
challenge, we conclude that UMass was entitled to jurisdic-
tional discovery, and we therefore vacate the dismissal of
L’Oréal S.A.
I
According to the specification of the ’327 patent (and
the materially identical specification of the ’513 patent),
human skin includes a surface layer called the epidermis
and a deeper layer called the dermis. ’327 patent, col. 1,
lines 20–21. The dermis includes a variety of dermal cell
types, as well as proteins such as collagen and elastin. Id.,
col. 1, lines 24–34; J.A. 2871–72. The ’327 patent and the
related ’513 patent, both titled “Treatment of Skin with
Adenosine or Adenosine Analog,” describe methods for en-
hancing the condition of non-diseased skin by topical appli-
cation of compositions containing a naturally occurring
nucleoside called adenosine. ’327 patent, col. 1, lines 37–
47; J.A. 2877. Independent claim 1 of the ’327 patent is
representative for our purposes and recites:
1. A method for enhancing the condition of unbro-
ken skin of a mammal by reducing one or more of
wrinkling, roughness, dryness, or laxity of the skin,
without increasing dermal cell proliferation, the
method comprising topically applying to the skin a
composition comprising a concentration of adeno-
sine in an amount effective to enhance the condi-
tion of the skin without increasing dermal cell
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 4
proliferation, wherein the adenosine concentration
applied to the dermal cells is 10 -4 M to 10 -7 M.
Id., col. 10, lines 18–26 (emphases added). “M” refers to the
common measure of concentration, molar concentration,
i.e., moles per liter. L’Oréal Response Br. 22; see also J.A.
2882 n.2. Claim 1 of the ’513 patent is identical except that
its wherein clause recites a range of 10 -3 M to 10 -7 M—in
other words, it allows a higher adenosine concentration.
’513 patent, col. 10, lines 18–26.
On June 30, 2017, UMass filed a complaint in the
United States District Court for the District of Delaware
against L’Oréal S.A. and L’Oréal USA for infringement of
the ’327 and ’513 patents. J.A. 49–62; see also J.A. 228–40
(First Amended Complaint). A few months later, L’Oréal
S.A. filed a motion under Federal Rule of Civil Procedure
12(b)(2) asking that it be dismissed from the case on the
ground that the forum lacked personal jurisdiction over it,
attaching a declaration from an employee of L’Oréal USA.
J.A. 521; J.A. 551–54. UMass opposed the motion, arguing,
among other things, that it should be granted discovery re-
lated to personal jurisdiction. J.A. 557–78.
In March 2018, before the magistrate judge to whom
the matter was assigned ruled on the Rule 12(b)(2) motion,
L’Oréal USA filed petitions for inter partes reviews of the
’327 and ’513 patents under 35 U.S.C. §§ 311–19 with the
Patent and Trademark Office’s Patent Trial and Appeal
Board. In September 2018, however, the Board denied in-
stitution. See J.A. 2798–817 (’327 patent); J.A. 2819–37
(’513 patent); see also J.A. 2839–46 (decision denying re-
hearing for ’327 patent). In denying review, the Board con-
strued the wherein clause of the above-quoted claim, which
requires that “the adenosine concentration applied to the
dermal cells” have a molar concentration within a specified
range. Applying the district-court claim-construction
standard, J.A. 2803; J.A. 2824, the Board rejected L’Oréal
USA’s argument that the recited concentration range is the
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 5
adenosine concentration in the composition that is topically
applied to the skin surface (epidermis), and instead
adopted UMass’s construction that the recited concentra-
tion range is the adenosine concentration applied to the
dermal cells in the dermis below the epidermis. See J.A.
2805–12; J.A. 2825–32. The Board did not further specify
the meaning of the concentration “applied to the dermal
cells”; in particular, the Board did not specify what is meas-
ured for the liter volume that defines the denominator of
the moles/liter ratio, M. The Board did not require further
definition for its non-institution ruling because it con-
cluded that L’Oréal USA had not pointed to any measure-
ment of concentrations beneath the skin surface in the
prior art invoked against the patents. See J.A. 2812–16;
J.A. 2833–36. Because the Board denied institution, those
preliminary determinations were “final and nonappeala-
ble” under 35 U.S.C. § 314(d).
Back in the district court, on November 13, 2018, the
magistrate judge recommended granting L’Oréal S.A.’s
Rule 12(b)(2) motion without allowing discovery. Personal
Jurisdiction Report and Recommendation at 17–26. Over
UMass’s objection, J.A. 1251–56, the district court adopted
the magistrate judge’s recommendations, dismissing
L’Oréal S.A. from the suit, Personal Jurisdiction Order at
1–4. Thereafter, L’Oréal USA asked the district court to
construe the wherein clause. The district court reached the
same conclusion as the Board: The recited concentration
range refers to “the concentration as it is applied to the der-
mal cells,” not the concentration of adenosine in the com-
position that is applied to the epidermis. J.A. 3719–21
(Hearing Tr. at 56:1–58:16). Like the Board, the district
court did not further specify the meaning of “the adenosine
concentration applied to the dermal cells.” Indeed, the dis-
trict court entered an order stating that the wherein clause
“has its plain and ordinary meaning without the need for
further construction.” Claim Construction Order at 1.
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 6
In September 2020, L’Oréal USA moved for summary
judgment on multiple grounds. In one motion, L’Oréal
USA focused on the claim language preceding the wherein
clause (the so-called skin-enhancement clause)—requiring
“topically applying to the skin a composition comprising a
concentration of adenosine in an amount effective to en-
hance the condition of the skin, without increasing dermal
cell proliferation.” L’Oréal USA argued that the language
would be indefinite if the court (1) maintained its earlier
ruling on the wherein clause and (2) further concluded that
the recited concentration range in the wherein clause does
not establish the adenosine concentration in the composi-
tion topically applied to the skin in the skin-enhancement
clause. See J.A. 11794–812; J.A. 18823–34.
In April 2021, the district court granted L’Oréal USA’s
summary-judgment motion on that ground, relying on the
earlier claim-construction ruling that the concentration re-
cited in the wherein clause concerns application to the sub-
surface dermal cells and emphasizing the distinctness of
that concentration and the concentration recited in the
skin-enhancement clause. Summary Judgment Opinion,
534 F. Supp. 3d at 353–57. The district court then entered
its final judgment of invalidity of the asserted claims.
UMass timely appealed. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1).
II
On appeal, UMass first challenges the district court’s
indefiniteness determination. UMass’s argument and the
district court’s ruling on indefiniteness rely on resolution
of a dispute about claim construction, specifically, about
the proper understanding of the wherein clause and how it
relates to the skin-enhancement clause. Notably, UMass
insists that the “concentration” in the wherein clause is the
concentration of adenosine in the dermis after it has en-
tered the dermis, i.e., it measures the molar concentration
M as the number of moles of adenosine divided by the
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 7
volume (liters) of the dermis itself. See Oral Arg. at 12:54–
13:16; J.A. 12437. We turn initially to this dispute, and we
reject UMass’s view and conclude that the district court
erred. Our conclusion eliminates an important premise of
the indefiniteness determination, warranting vacatur of
that determination and remand for further proceedings.
We decide claim construction here de novo, as the dis-
trict court’s claim-construction ruling rests only on intrin-
sic evidence, Intel Corp. v. Qualcomm Inc., 21 F.4th 801,
808 (Fed. Cir. 2021), and the intrinsic evidence likewise de-
termines our construction. “We generally give words of a
claim their ordinary meaning in the context of the claim
and the whole patent document; the specification particu-
larly, but also the prosecution history, informs the deter-
mination of claim meaning in context, including by
resolving ambiguities; and even if the meaning is plain on
the face of the claim language, the patentee can, by acting
with sufficient clarity, disclaim such a plain meaning or
prescribe a special definition.” World Class Technology
Corp. v. Ormco Corp., 769 F.3d 1120, 1123 (Fed. Cir. 2014)
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc); and then Thorner v. Sony Computer
Entertainment America LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012)).
“The prosecution history, in particular, ‘may be critical
in interpreting disputed claim terms,’” and “even where
‘prosecution history statements do not rise to the level of
unmistakable disavowal, they do inform the claim con-
struction.’” Personalized Media Communications, LLC v.
Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020) (quoting
Sunovion Pharmaceuticals, Inc. v. Teva Pharmaceuticals
USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir. 2013); and then
Shire Development, LLC v. Watson Pharmaceuticals, Inc.,
787 F.3d 1359, 1366 (Fed. Cir. 2015)). “‘We cannot look at
the ordinary meaning of the term . . . in a vacuum. Rather,
we must look at the ordinary meaning in the context of the
written description and the prosecution history.’” Medrad,
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 8
Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir.
2005) (quoting DeMarini Sports, Inc. v. Worth, Inc., 239
F.3d 1314, 1324 (Fed. Cir. 2001)). We conclude that the
claim language is not plain in the respect at issue and that
the proper interpretation is determined by the specification
and, most pointedly, by the prosecution history.
A
We first conclude that the relevant claim language, es-
pecially when viewed in the context of the whole claim, is
not plain on its face, much less plain in supporting UMass’s
interpretation of it. See IGT v. Bally Gaming Int’l, Inc., 659
F.3d 1109, 1117 (Fed. Cir. 2011) (“Extracting a single word
from a claim divorced from the surrounding limitations can
lead construction astray.”). The language contains evident
uncertainties and indicators pointing against UMass’s
view.
A starting point is the fact relied on by the Board and
district court: The wherein clause refers to “the adenosine
concentration applied to the dermal cells,” whereas the pre-
ceding skin-enhancement clause refers to “topically apply-
ing to the skin a composition comprising a concentration of
adenosine.” The contrast in the object of the variants of the
same verb is suggestive of a difference. See J.A. 2806–07
(Board resting primarily on this rationale); J.A. 3720
(Hearing Tr. at 57:1–24) (similar for district court); see, e.g.,
Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d
1328, 1340 (Fed. Cir. 2018). But this difference in one
phrase is only a starting point. The specifics of the overall
language immediately complicate the picture and push
against UMass’s argument.
One reason is the particular verb with the different ob-
jects. The word “applied” is capable of covering both direct
application (to the skin surface) and indirect application (to
the sub-surface layer). See J.A. 2845 (Board noting broad
dictionary definition of “apply”). UMass itself, before the
Board, confirmed the availability of the indirect meaning
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 9
when it asserted that the specification’s phrase, “prefera-
bly applied by topical routes,” ’327 patent, col. 5, line 12,
meant “‘preferably applied [to the dermal cells] by topical
routes,’” J.A. 2864 (emphasis and alteration added by
UMass). As a result, the fact that one phrase using a form
of “apply” refers to the “skin” and the other to the “dermal
cells” does not mean that different things are being applied:
The same thing can be applied directly to one object and
indirectly to the other.
Language of the wherein clause affirmatively suggests
such a connection between the two clauses at issue. The
wherein clause refers to “the adenosine concentration ap-
plied to the dermal cells.” That is the language for invoking
an antecedent—for repeating, not departing from, the
claim’s prior reference to “a concentration of adenosine” in-
cluded in the topically applied composition. J.A. 3720
(Hearing Tr. at 57:10–20); see, e.g., NTP, Inc. v. Research
in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005), abro-
gated on other grounds by Zoltek Corp. v. United States, 672
F.3d 1309, 1323 (Fed. Cir. 2012) (en banc); Griffin v. Ber-
tina, 285 F.3d 1029, 1033–34 (Fed. Cir. 2002). So viewing
claim 1 as involving one concentration, rather than two,
also fits the dependent claims, some of which likewise refer
to “the adenosine concentration,” ’327 patent, col. 10, lines
29–32 (emphasis added) (claims 3 and 4), suggesting a pre-
supposition that there is only one such concentration called
for by independent claim 1.
Finally, the use of the phrase “concentration applied to
the dermal cells” in the wherein clause undermines
UMass’s suggestion of a plain meaning and, more particu-
larly, its proposal of what that meaning is. As indicated by
the undisputed definition of M (molar concentration), a
concentration is a number of particles (in moles) per unit
of volume (liter). The skin-enhancement clause speaks of
applying a “composition” to the skin where the composition
“compris[es] a concentration of adenosine.” The claims re-
fer to the composition being applied, not the
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 10
“concentration,” and the reference is evidently to a number
of particles per unit of volume of the composition that in-
cludes the adenosine before putting it in contact with the
skin. See Oral Arg. at 12:54–13:27. The wherein clause
then speaks of a “concentration applied to the dermal cells.”
This phrase naturally refers to a number of particles per
unit of volume of the mixture of which the adenosine is a
part before putting the mixture in contact with the dermal
cells. But that apparent meaning, referring to a pre-appli-
cation property, is contrary to UMass’s view of the mean-
ing.
UMass’s view is that the wherein clause refers to some-
thing that has no existence before application—that it re-
fers, instead, to a number of particles per unit of volume of
the dermal layer, after the adenosine particles have suffused
into the dermis and thus already come into contact with the
dermal cells. Applying the district court’s construction,
UMass’s infringement expert conducted cell-diffusion test-
ing on L’Oréal’s accused products to trace adenosine as it
seeps through the epidermis and dermis after it is topically
applied to a skin sample. To determine the adenosine con-
centration “applied to the dermal cells” (again, one part of
the dermis), UMass’s expert calculated the concentration
as moles of applied adenosine in the dermis over liters of
dermis. See J.A. 12437. This methodology reveals UMass’s
reliance on an interpretation that would call for a rewrite
of the wherein clause (of claim 1 of the ’327 patent) to say
something like “wherein the adenosine permeating to the
dermal layer results in a concentration of adenosine in the
dermal layer of 10 -4 M to 10 -7 M.” The need for a departure
from the natural meaning confirms that UMass’s asserted
meaning is not plain.
For these reasons, we conclude that the claim language
is not plain in the respect at issue.
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 11
B
We next conclude that the specification and the prose-
cution history show that the wherein clause should be read
to refer to the concentration of adenosine in the composi-
tion applied to the skin’s surface.
1
The patents describe multiple embodiments that are
within the claim scope as the “invention.” See ’327 patent,
col. 1, line 35, through col. 2, line 34. More specifically, the
specification states that “[t]he therapeutically effective
amount of adenosine used in the above-described methods
is preferably 10 -3 M to 10 -7 M, more preferably 10 -3 M to
10 -6 M, and most preferably about 10 -4 M,” id., col. 2, lines
14–17, where the “above-described methods” include, for
example, “topically administering a therapeutically effec-
tive amount of adenosine . . . to a region of non-diseased
skin of the mammal containing dermal cell,” id., col. 1, lines
56–59; see also id., col. 1, lines 44–47; id., col. 1, lines 64–
66; id., col. 2, lines 3–6. The patent further states that
“[t]he invention also provides a composition including
about 10 -3 M to about 10 -7 M adenosine and a therapeuti-
cally effective amount of an angiogenesis factor.” Id., col.
2, lines 30–34. None of these in-scope “invention” embodi-
ments, or other references to specific numerical molar con-
centration figures of 10 -3 M to 10 -7 M or the like, specify a
measurement of concentration after seepage through the
skin into the dermis—much less a measurement of concen-
tration as an amount of adenosine per unit of volume of
dermal cells. This is significant evidence that the wherein
clause is best read to refer to the concentration of adeno-
sine in the composition applied to the surface of the skin.
See Phillips, 415 F.3d at 1316; VirnetX, Inc. v. Cisco Sys-
tems, Inc., 767 F.3d 1308, 1318 (Fed. Cir. 2014); Netcraft
Corp. v. eBay, Inc., 549 F.3d 1394, 1397–98 (Fed. Cir.
2008).
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 12
UMass points to other portions of the specification to
support its contrary construction, but they do not show that
the specification contemplates the concentration measure-
ment UMass urges for the wherein clause. The specifica-
tion does recognize that the epidermis is different from the
dermis, which contains the dermal cells, see ’327 patent,
col. 1, lines 19–25, and that when an adenosine-containing
composition is applied topically to the surface of the epider-
mis, not all the adenosine in the composition will penetrate
to the dermis and dermal cells, see id., col. 5, lines 10–24;
see also J.A. 2877. But the passages so recognizing do not
imply that the invention includes measuring concentra-
tions beneath the skin surface after topical application.
UMass also cites the specification’s discussion of experi-
ments in which particular dermal cells (fibroblasts) in la-
boratory dishes were directly exposed to solutions having a
concentration of adenosine in the recited concentration
range. ’327 patent, col. 6, line 15, through col. 9, line 51.
But UMass has not shown that, even in this context, the
specification makes clear that the inventors contemplated
measuring the adenosine concentration after exposure to
the cells, rather than in a solution before application to the
cells. See L’Oréal Response Br. 49–51 (characterizing the
experiments as using pre-application measurements);
UMass Reply Br. 25–27 (not contesting that characteriza-
tion). And, in any event, the passages on the experiments
certainly do not make clear any such contemplation in the
context of a topical skin application covered by the claims
at issue.
2
Even more strongly than the specification, the prosecu-
tion histories of the patents in question resolve the ambi-
guity surrounding the meaning of “the adenosine
concentration applied to the dermal cells” in the wherein
clause. The starting point is that the predecessor claim of
independent claim 1 of the ’327 patent was identical to cur-
rent claim 1, except that it lacked the current wherein
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 13
clause. J.A. 2684. A separate dependent claim, however,
claimed the method of the independent claim with the
added requirement, “wherein the adenosine concentration
is 10 -4 M to 10 -6 M.” J.A. 2684. Those claims made no men-
tion of application to “dermal cells” and thus seemingly re-
ferred only to adenosine concentrations applied to the skin.
Then, to overcome a prior-art rejection, applicants im-
ported the dependent claim’s wherein clause into the inde-
pendent claim, but altered its wording so that it now read
“wherein the adenosine concentration applied to the der-
mal cells is 10 -4 M to 10 -6 M.” J.A. 2701. Importantly, in
describing the amendment to the examiner in the office-
action response, applicants implied that this new wording
changed nothing about where the concentration was to be
measured. Applicants remarked: “This amendment would
add no new matter, as it merely includes a range of concen-
trations of adenosine recited in dependent claims.” J.A.
2702 (emphasis added) (also stating “all [claims] are based
on the application of certain concentrations of adenosine to
the skin to achieve certain results”); see also J.A. 2762 (sim-
ilar description in ’513 prosecution history). In fact, in the
same filing, applicants went on to distinguish two prior-art
references in which concentrations are measured before ap-
plication to the skin, and they did so at least in part by di-
rectly comparing the prior-art adenosine composition
concentrations to the claims’ adenosine concentration re-
cited in the wherein clause, with no suggestion of a differ-
ence in location of concentration measurement. J.A. 2703–
07; J.A. 2722–24. Based on those representations, the ex-
aminer eventually allowed the claims, commenting that
the “[i]nstant claims are directed to a method of enhancing
the condition of unbroken skin . . . where the method com-
prises administering adenosine at a concentration of 10 -4 M
to 10 -7 M, to the skin.” J.A. 2727 (emphasis added). And
the next year, the examiner made the same statement in
allowing the application that issued as the ’513 patent.
J.A. 2769.
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 14
We hold that this prosecution history requires that the
wherein clause’s reference to the recited concentrations be-
ing “applied to the dermal cells” be read as referring to con-
centrations of the composition applied to the skin’s surface.
The amendments and comments clearly convey that
UMass was continuing the pre-amendment reliance on the
concentration in the composition before application to the
skin, rather than introducing a materially different, unex-
plained notion of concentration, no longer assessed before
contact with the object of application. UMass’s proposed
construction now cannot fairly be squared with the under-
standing that both it and the examiner expressed during
prosecution, and on which skilled artisans are entitled to
rely.
UMass makes various counterarguments concerning
the prosecution history, but all are unavailing. As an ini-
tial, legal matter, we reiterate that this is not a case where
the prosecution history must meet the standard of clear
and unmistakable disclaimer for overcoming an otherwise-
plain meaning, contrary to UMass, the Board, and the dis-
trict court’s framings. See UMass Reply Br. 27; J.A. 2808–
10; J.A. 3721 (Hearing Tr. at 58:4–7). We need not decide
whether that standard is met here. Because the meaning
of the relevant claim language is not plain, but rather am-
biguous for the reasons described in Section II.A, we can
look to the prosecution history to “inform[] the meaning of
the disputed claim phrase and address[] an ambiguity oth-
erwise left unresolved.” Personalized Media Communica-
tions, 952 F.3d at 1345; see also SoundView Innovations,
LLC v. Hulu, LLC, 33 F.4th 1326, 1332–35 (Fed. Cir. 2022).
Additionally, UMass’s two factual arguments concern-
ing the prosecution history are unpersuasive. First, UMass
contends that applicants’ distinguishing of the prior-art
references should not be given weight because applicants
did not do so “solely” on the basis of adenosine concentra-
tion. UMass Reply Br. 29. This is unsupported by the rec-
ord. Concerning one cited reference, German patent
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 15
application DE 19545107, see J.A. 2709–20, applicants
compared DE ’107’s adenosine composition concentration
to the claims’ recited concentration range and argued that,
although DE ’107 disclosed a concentration of adenosine
within the recited range, it incorrectly taught that this
level of adenosine would increase cell proliferation, J.A.
2704; J.A. 2722–24.1 Similarly, concerning another cited
reference, Hartzshtark, see J.A. 2917–18, applicants again
compared Hartzshtark’s adenosine composition concentra-
tion to the claims’ recited concentration range, this time
distinguishing Hartzshtark on the basis of this limitation,
J.A. 2705–06; see also J.A. 2723. That applicants at least
twice compared the claims’ adenosine concentration in the
wherein clause to prior-art adenosine composition concen-
trations—whether to distinguish the claims’ concentration
range for Hartzhtark or some other aspect of the claims for
DE ’107—strongly signals that the wherein clause requires
that the recited concentrations are measured as amounts
per volume of the composition applied to the skin’s surface.
Cf. Amgen Inc. v. Coherus BioSciences, Inc., 931 F.3d 1154,
1159–60 (Fed. Cir. 2019); Saffran v. Johnson & Johnson,
712 F.3d 549, 559 (Fed. Cir. 2013).
Second, UMass seeks to dilute applicants’ prior state-
ments and arguments during prosecution by pointing to
the voluntary comments applicants made in response to
the examiner’s reasons for allowance in the ’327 prosecu-
tion history. See Salazar v. Procter & Gamble Co., 414 F.3d
1342, 1345 (Fed. Cir. 2005). Specifically, after noting that
they were not conceding that the examiner’s reason for al-
lowance was the only reason the claims were allowable,
1 In arguing that the amount of adenosine recited in
DE ’107 does not increase dermal-cell proliferation, appli-
cants submitted results from tests in which adenosine was
applied directly to fibroblasts at concentrations of 10 -4 M
and 10 -5 M. J.A. 2704; J.A. 2723.
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 16
applicants further “note[d] that the claimed concentration
of adenosine is applied to the dermal cells.” J.A. 2729. But
that statement merely recited the ambiguous claim lan-
guage; it did not communicate a disagreement with the ex-
aminer’s clear statement of what that language meant.
UMass did not clarify the sense in which it was using the
term “apply” (which, again, can mean apply directly or ap-
ply indirectly), let alone explain the measurement method-
ology UMass now says is required (using the dermal layer
as the volume). Tellingly, when the examiner made the
same statement in allowing the application that issued as
the ’513 patent, UMass, while submitting a one-sentence
comment on the statement of reasons for allowance, made
no reference to the “applied to the dermal cells” language.
J.A. 2771. For these reasons, UMass’s bare statement
made after allowance in the ’327 prosecution history does
not provide a sufficient reason to adopt a different con-
struction from the one clearly indicated by the rest of the
prosecution history (and specification). See Biogen, Inc. v.
Berlex Laboratories, Inc., 318 F.3d 1132, 1138–39 (Fed. Cir.
2003).
C
As a result of our new construction, the district court’s
subsequent indefiniteness ruling must be vacated, and we
remand for the district court to conduct any further pro-
ceedings that are necessary. Although L’Oréal proposes
that, if we reverse the claim construction of the wherein
clause, we could directly enter a judgment of non-infringe-
ment, we leave it to the district court to determine how to
proceed under the new construction. See L’Oréal Response
Br. 45–46 & n.24 (contending that UMass conceded non-
infringement); UMass Reply Br. 21 (disputing concession);
Oral Arg. at 18:45–19:10, 48:13–49:16 (also discussing ex-
istence of invalidity counterclaims).
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 17
III
UMass also challenges the district court’s personal-ju-
risdiction determinations. See Personal Jurisdiction Re-
port and Recommendation at 17–26; Personal Jurisdiction
Order at 1–4. Because we find that at the very least juris-
dictional discovery was appropriate, we vacate and remand
to the district court, without reaching the question of
whether UMass made a sufficient prima facie showing that
L’Oréal S.A. was subject to personal jurisdiction based on
the complaint and evidence submitted at the time of the
Rule 12(b)(2) motion. See Autogenomics, Inc. v. Oxford
Gene Technology Ltd., 566 F.3d 1012, 1016–17 (Fed. Cir.
2009).
Personal-jurisdiction analysis for patent-infringement
claims is governed by Federal Circuit law. See Synthes
(U.S.A.) v. G.M. Do Reis Jr. Ind. Com. de Equip. Medico,
563 F.3d 1285, 1293 (Fed. Cir. 2009); Electronics for Imag-
ing, Inc. v. Coyle, 340 F.3d 1344, 1348 (Fed. Cir. 2003). A
denial of jurisdictional discovery, however, is reviewed for
abuse of discretion, applying the law of the regional circuit.
Autogenomics, 566 F.3d at 1021–22. In the Third Circuit,
“[i]f the plaintiff presents factual allegations that suggest
with reasonable particularity the possible existence of the
requisite contacts . . . , the plaintiff’s right to conduct juris-
dictional discovery should be sustained.” Eurofins Pharma
US Holdings v. BioAlliance Pharma SA, 623 F.3d 147, 157
(3d Cir. 2010) (cleaned up and emphasis added); see also
Compagnie Des Bauxites de Guinee v. L’Union Atlantique
S.A. d’Assurances, 723 F.2d 357, 362 (3d Cir. 1983) (“A
plaintiff who is a total stranger to a corporation should not
be required, unless he has been undiligent, to try such an
issue on affidavits without the benefit of full discovery.” (ci-
tation omitted)). In other words, jurisdictional discovery
should be allowed unless plaintiff is attempting to “under-
take a fishing expedition based only upon bare allegations”
or a claim is “clearly frivolous.” Eurofins, 623 F.3d at 157;
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 18
Toys “R” Us, Inc. v. Step Two, S.A., 318 F.3d 446, 456 (3d
Cir. 2003) (citation omitted).
Here, the district court abused its discretion in not al-
lowing jurisdictional discovery on the record before it. In
front of the magistrate judge, UMass made more than
clearly frivolous, bare allegations that L’Oréal S.A. was
subject to personal jurisdiction, either because L’Oréal S.A.
introduced the accused products into the stream of com-
merce or because L’Oréal USA operated as L’Oréal S.A.’s
agent in certain potentially relevant respects. See Plain-
tiffs’ Memorandum of Law in Opposition to Defendant
L’Oréal S.A.’s Motion to Dismiss at 1–17, University of
Massachusetts v. L’Oreal S.A., No. 1:17-cv-00868 (D. Del.
Dec. 8, 2017), ECF No. 27. For example, as potentially rel-
evant to both theories, UMass put forward evidence but-
tressing the possibility that L’Oréal S.A. researched and
developed the addition of adenosine to skin-care products,
J.A. 263–69; J.A. 1070; J.A. 1073–77, and L’Oréal S.A.’s
own submitted declaration indicated that L’Oréal S.A. may
have licensed that technology to L’Oréal USA, J.A. 553–54
(Rabinowitz Decl. ¶ 6) (“From time to time, L’Oréal S.A.
and L’Oréal USA engage in the sale of goods or services
between the two companies.”). For its part, L’Oréal S.A.
did not specifically deny allegations that it developed and
licensed the relevant technology to L’Oréal USA, stating
only that “L’Oréal S.A. does not directly develop, sell, mar-
ket, or advertise to consumers in Delaware any of the prod-
ucts at issue in this action,” without making it clear what
it meant by “directly develop.” J.A. 553–54 (Rabinowitz
Decl. ¶ 6).2
2 UMass may not have objected to the magistrate
judge’s finding that UMass did not, based on the evidence
in front of the district court at the time of the Rule 12(b)(2)
motion, sufficiently show personal jurisdiction based on a
stream-of-commerce theory. See J.A. 1251–55. But, on the
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UNIVERSITY OF MASSACHUSETTS v. L’O RÉAL S. A. 19
Because this evidence raises the possibility that discov-
ery might have uncovered the requisite contacts under our
precedent, see, e.g., Nuance Communications, Inc. v. Abbyy
Software House, 626 F.3d 1222, 1233–34 (Fed. Cir. 2010);
Celgard, LLC v. SK Innovation Co., 792 F.3d 1373, 1379–
82 (Fed. Cir. 2015), we vacate the jurisdictional determina-
tions. UMass is entitled to jurisdictional discovery before
any jurisdictional determination, if one remains necessary,
is made.
IV
For the foregoing reasons, we reverse the district
court’s claim construction of the wherein clause and vacate
the court’s subsequent summary-judgment determination.
We also vacate the district court’s personal-jurisdiction de-
terminations. And on both issues, we remand for further
proceedings consistent with this opinion.
The parties shall bear their own costs.
REVERSED IN PART, VACATED IN PART, AND
REMANDED
issue of discovery, UMass did more generally object. J.A.
1255 (“At the very least, Plaintiff’s’ argument that L’Oréal
S.A. designs and develops the Accused Adenosine Products
is not ‘clearly frivolous,’ given the extensive supporting
public evidence, and Plaintiffs should be permitted to take
jurisdictional discovery.” (quoting Toys “R” Us, 318 F.3d at
456)).
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