Liqwd Inc & Anor v L'Oréal (UK) Ltd & Anor

Patent claims are construed first by normal interpretation, understood as purposive construction, and then by applying the doctrine of equivalents where relevant. The expression “providing bleached hair” meant hair lightening by bleaching, not oxidation dyeing, despite some bleaching occurring during dyeing. A claim to maleic acid in an aqueous formulation could include the ions formed in solution. Deleting “simple salt” therefore narrowed, rather than extended, the claim. Samples of a product supplied for testing did not form prior art where recipients were subject to enforceable restrictions on analysis, use and disclosure. A published formulation listing maleic acid as an excipient could nevertheless anticipate a method claim where the claim contained no functional or minimum-quantity limitation. Claims 1 to 10 were invalid, while amended claim 11 was valid and infringed.

The claimants owned or exclusively licensed a patent for formulations and methods intended to reduce hair damage during bleaching. The defendants’ Smartbond products were alleged to infringe. The defendants challenged validity on construction, priority, prior use, anticipation by Catzy and WO 768, and obviousness over Catzy and Kim. The claimants sought amendments and a declaration concerning an alternative Smartbond formulation.

The court determined the meaning of “providing bleached hair”, “maleic acid” and “simple salt”, the effect of the proposed amendments, infringement, priority, the confidentiality of pre-priority product samples, and the status of the second claimant as an exclusive licensee.

1. Construction. Following Actavis UK Ltd v Eli Lilly and Co [2017] UKSC 48, claim scope involves normal interpretation followed, where necessary, by a doctrine-of-equivalents analysis. Normal interpretation is purposive construction. “Providing bleached hair” meant hair lightening without dyeing, not oxidation dyeing. “Maleic acid” included the undissociated molecule and the maleate and hydrogen maleate ions present in aqueous solution. “Simple salt” had no precise technical meaning but included the relevant solid salt form.
2. Amendment and infringement. Deleting “simple salt” narrowed the claims and did not offend section 76 of the Patents Act 1977. The Smartbond formulations fell within the claims, including the alternative formulation. The product’s stated pH variation reflected measurement calibration, not variation in the manufactured product. The defendants infringed the relevant claims.
3. Prior use. Applying Merrell Dow v Norton [1996] RPC 76 and Pall Corp v Commercial Hydraulics [1990] FSR 329, the samples supplied to colourists remained subject to material restrictions on testing, analysis and onward distribution. They therefore did not make the invention available to the public.
4. Catzy. The published Catzy formulation disclosed a first bleaching formulation and a second formulation containing maleic acid. “Active agent” did not impose a subjective purpose limitation or require a minimum amount. Claim 1 lacked novelty, and claim 4 lacked inventive step. The Fall-Back 2 claims were also invalid over Catzy. All method claims 1 to 10 were consequently invalid.
5. WO 768 and Kim. Example 8 of WO 768 was not entitled to priority from US 239 because the priority document disclosed a different chemical entity and the proposed NMR inference was speculative. The claims were novel over WO 768. Kim disclosed dyeing, not hair lightening; applying its teaching to the strongly oxidative bleaching process would have required an inventive step.
6. Exclusive licence. Under sections 67 and 130(1) of the Patents Act 1977, the second claimant lacked standing when the claim was issued but became the exclusive licensee during the proceedings. That affected damages, not forward-looking relief.
7. Disposition. Claims 1 to 10, including the Fall-Back 2 amendments, were invalid. Claim 11 as unconditionally amended was valid and infringed.

First-instance decision of the High Court (Patents Court). No prior appellate decision is stated in the judgment.