“The Son Of Sunscreens’ Patent Battle Royale”: L’Oreal Resists “Trial Bifurcation” Efforts — Of Merck And J&J

Here’s my older background, from January 2012 — since I haven’t mentioned this in almost two years:

I don’t know whether to file this story under the law of “unintended consequences,” or “collateral damage” — but apparently, back when the three year-long sunscreen Lanham Act Battle Royale (between Neutrogena®, a J&J brand, and Coppertone®, a legacy Schering-Plough/Merck brand) was in high dungeon, an ex-Schering-Plough (now Merck) scientist, one Dr. Patricia Agin, submitted a sworn declaration, as part of Coppertone’s case. I believe she was also deposed by the Neutrogena lawyers.

In her rather effusive declaration (quoted at the top of page 4 of the complaint), she explained that the process for stabilizing Coppertone sunscreen in ultraviolet radiation conditions (i.e., out in the sun) “is not, and was never patented by, exclusive to, or invented by, or created by Neutrogena. . . .”

True enough. It actually turns out that L’Oreal owns that patent.

L’Oreal owns a process patent (the weaker vareity of patent rights). L’Oreal’s patent lawyers allege that neither Coppertone, nor Neutrogena have a valid patent license from L’Oreal, on it. Ouch.

L’Oreal now ALSO claims it has patent on the composition of matter (the stronger form of patent rights) — i.e., a mixture of compounds that help stabilize its sunscreen. That mixture appears in so-called avobenzone sunscreens and uses the compound octocrylene. Merck and J&J both use those compositions of matter in the base of their products (just go read the labels on your sunscreens, now shelved in your closets, for the winter!). Uh-Ohs!

So. . . just a few weeks ago, now — as discovery is progressing — both Merck’s subsidiary, MSDCC, and J&J made motions to bifurcate the trials. In essence, both of the alleged infringers are asking the judge to hold one trial on whether there is any infringement, and then hold a separate trial on what the damages ought to be (if infringement is found, in the first). Merck is concerned that because the disputes now cover over 120 sunscreen product formulations, the base of which contain the claimed L’Oreal patented compositions of matter, and methods patents, any jury will unduly punish Merck if the infringement is found to be willful.

As of the moment, L’Oreal’s reasoning (resisting the Merck motion to bifurcate) on this point is under seal. But a redacted version of the J&J L’Oreal answer brief is now online, and public — at the Delaware federal District courthouse. In J&J’s version, it seems clear that Dr. Agin’s effusive statement is being used to bolster L’Oreal’s claim that the infringement was willful, since 2005. See below.

Yep — we will keep you slathered in thick white gunk on this, no doubt! But the general rule under American law is that all civil trials ought to decide all issues in dispute, in one trial, so as not to overly tax the court system. We shall see. I love these sorts of “Titans‘ battles“!

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