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 represented by ISAAC S. ASHKENAZI, KARTHIK RAM KASARANENI,

BRUCE M. WEXLER; STEPHEN BLAKE KINNAIRD, NAVEEN

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2 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

MODI, Washington, DC; KATHERINE FRENCK MURRAY, Ellis 

George Cipollone O'Brien Annaguey LLP, Los Angeles, CA.

______________________ 

Before PROST, MAYER, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge. 

This appeal is from a judgment in a patent-infringement 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 District of Delaware against L’Oréal S.A. and its American 

subsidiary, L’Oréal USA, Inc. (hereinafter referred to together 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 Massachusetts 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 Recommendation). 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’ORÉAL S.A. 3

Judgment Opinion). On that basis, the court entered a final judgment of invalidity against UMass.

UMass challenges both the indefiniteness and personal-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 construction as understood by both parties on appeal. This conclusion justifies our vacating the indefiniteness ruling and 

remanding for further proceedings. On UMass’s second 

challenge, we conclude that UMass was entitled to jurisdictional 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 enhancing the condition of non-diseased skin by topical application 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 unbroken 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 adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell 

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4 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

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 related 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 institution. See J.A. 2798–817 (’327 patent); J.A. 2819–37 

(’513 patent); see also J.A. 2839–46 (decision denying rehearing for ’327 patent). In denying review, the Board construed 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’ORÉAL 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 concentration 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 measured 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 concluded that L’Oréal USA had not pointed to any measurement 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 nonappealable” 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 dermal cells,” not the concentration of adenosine in the composition 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 district 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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6 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

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 enhance 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 composition 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 recited in the wherein clause concerns application to the subsurface 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 entered 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’ORÉAL 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 district court’s claim-construction ruling rests only on intrinsic evidence, Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 

808 (Fed. Cir. 2021), and the intrinsic evidence likewise determines 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 particularly, but also the prosecution history, informs the determination 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 construction.’” 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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8 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

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, especially 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 preceding skin-enhancement clause refers to “topically applying 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 objects. 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’ORÉAL S.A. 9

when it asserted that the specification’s phrase, “preferably 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 applied 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” included 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), abrogated on other grounds by Zoltek Corp. v. United States, 672 

F.3d 1309, 1323 (Fed. Cir. 2012) (en banc); Griffin v. Bertina, 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 presupposition 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 particularly, 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 refer to the composition being applied, not the 

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10 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

“concentration,” and the reference is evidently to a number 

of particles per unit of volume of the composition that includes 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-application property, is contrary to UMass’s view of the meaning. 

UMass’s view is that the wherein clause refers to something that has no existence before application—that it refers, 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 testing 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 concentration “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’ORÉAL S.A. 11

B 

We next conclude that the specification and the prosecution history show that the wherein clause should be read 

to refer to the concentration of adenosine in the composition 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 effective 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 therapeutically effective amount of an angiogenesis factor.” Id., col. 

2, lines 30–34. None of these in-scope “invention” embodiments, or other references to specific numerical molar concentration 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 concentration 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 adenosine in the composition applied to the surface of the skin. 

See Phillips, 415 F.3d at 1316; VirnetX, Inc. v. Cisco Systems, 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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12 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

UMass points to other portions of the specification to 

support its contrary construction, but they do not show that 

the specification contemplates the concentration measurement UMass urges for the wherein clause. The specification 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 epidermis, 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 concentrations beneath the skin surface after topical application. 

UMass also cites the specification’s discussion of experiments in which particular dermal cells (fibroblasts) in laboratory 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 characterization). 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 prosecution histories of the patents in question resolve the ambiguity 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 current claim 1, except that it lacked the current wherein 

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UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL 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 mention of application to “dermal cells” and thus seemingly referred only to adenosine concentrations applied to the skin.

Then, to overcome a prior-art rejection, applicants imported the dependent claim’s wherein clause into the independent claim, but altered its wording so that it now read 

“wherein the adenosine concentration applied to the dermal cells is 10-4 M to 10-6 M.” J.A. 2701. Importantly, in 

describing the amendment to the examiner in the officeaction 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 concentrations 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 (similar 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 application to the skin, and they did so at least in part by directly comparing the prior-art adenosine composition 

concentrations to the claims’ adenosine concentration recited in the wherein clause, with no suggestion of a difference in location of concentration measurement. J.A. 2703–

07; J.A. 2722–24. Based on those representations, the examiner 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 comprises 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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14 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

We hold that this prosecution history requires that the 

wherein clause’s reference to the recited concentrations being “applied to the dermal cells” be read as referring to concentrations 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, unexplained notion of concentration, no longer assessed before 

contact with the object of application. UMass’s proposed 

construction now cannot fairly be squared with the understanding 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 initial, 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 otherwiseplain meaning, contrary to UMass, the Board, and the district 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 ambiguous 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 otherwise left unresolved.” Personalized Media Communications, 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 concerning 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 concentration. UMass Reply Br. 29. This is unsupported by the record. Concerning one cited reference, German patent 

Case: 21-1969 Document: 50 Page: 14 Filed: 06/13/2022
UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL 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 concentration 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 concentrations—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 statements and arguments during prosecution by pointing to 

the voluntary comments applicants made in response to 

the examiner’s reasons for allowance in the ’327 prosecution 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 allowance 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, applicants 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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16 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

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 language; it did not communicate a disagreement with the examiner’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 apply indirectly), let alone explain the measurement methodology 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 construction 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 proceedings 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-infringement, 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 noninfringement); UMass Reply Br. 21 (disputing concession); 

Oral Arg. at 18:45–19:10, 48:13–49:16 (also discussing existence of invalidity counterclaims). 

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UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 17

III

UMass also challenges the district court’s personal-jurisdiction determinations. See Personal Jurisdiction Report and Recommendation at 17–26; Personal Jurisdiction 

Order at 1–4. Because we find that at the very least jurisdictional 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 Imaging, 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 jurisdictional 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.” (citation omitted)). In other words, jurisdictional discovery 

should be allowed unless plaintiff is attempting to “undertake a fishing expedition based only upon bare allegations” 

or a claim is “clearly frivolous.” Eurofins, 623 F.3d at 157; 

Case: 21-1969 Document: 50 Page: 17 Filed: 06/13/2022
18 UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. 

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 allowing 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 commerce or because L’Oréal USA operated as L’Oréal S.A.’s 

agent in certain potentially relevant respects. See Plaintiffs’ 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 relevant to both theories, UMass put forward evidence buttressing 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, market, or advertise to consumers in Delaware any of the products 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’ORÉAL S.A. 19

Because this evidence raises the possibility that discovery 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 determinations. 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 determinations. 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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