N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ METRICOLOR LLC, Plaintiff

- Appellant

v.

L'OREAL S.A., L'OREA L USA, INC., L'OREAL USA PRODUCTS, INC., L'OR EAL USA S/D, INC., REDKEN 5TH AVENUE NY C, L.L.C., Defendants

- Appellees

______________________

2018

- 2397

______________________ Appeal from the United States District Court for the Central District of California in No. 2:18

- cv

- 00364

- R

- E, Senior Judge Manuel L. Re al.

______________________
Decided: O ctober 30, 2019

______________________

E DUARDO M ARTORELL , Martorell Law APC, Los Angeles, CA, argued for plaintiff

- appellant.

M ARK S. D AVIES , Orrick, Herrington & Sutcliffe LLP, Washington, DC, argued for defendants

- appellees. Also represented by K ATHERINE M. K OPP ; J OSEPH C ALVARUSO , R ICHARD M ARTINELLI , New York, NY.

______________________METRICOLOR LLC v. L ' OREAL S

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Before M OORE , R EYNA , and C HEN , Circuit Judges.

C HEN , Circuit Judge

. Plaintiff

- appellant Metricolor LLC sued defendants

appellees L’Oréal S.A., L’Oréal USA, Inc., L’Oréal USA Products, Inc., L’Oréal USA S/D, Inc., and Redken 5th Avenue NYC, LLC (collectively, “ L’Oréal ” or “ L’Oréal defendants” ) in the United States District Court for the Central District of California alleging various claims related to th e launch of two L’Oréal hair bonding products that allegedly resemble the hair coloring system claimed in Metricolor’s patent , U.S. Patent No. 9,301,587 (’587 patent)

. L’Oréal moved to dismiss the complaint for failure to state a claim under Fed eral R ule of Civ il P rocedure 12(b )(6). L’Oréal S.A. , the parent corporation of the other defendants, separately mo ved to dismiss the complaint against it for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2)

. Metricolor opposed these motions and, in the alternative, requested leave to amend the complaint and leave to conduct jurisdictional discovery. The district court granted both motions to dismiss

. Metricolor now appeals these two rulings.

Because the district court did not address Metricolor ’s request for leave to amend the complaint

, much less conduct an analysis of whether any amendment would have been futile, we vacate the district court’s grant of L’Oréal ’s Rule 12(b)(6) motion and remand for the district court to address M etricolor’s request for leave in th e first instance. W e affirm the district court’s grant of L’Oréal S.A. ’s Rule12(b)(2) motion without granting leave to conduct jurisdictional discovery due to lack of actual and substantial prejudice to Metricolor.METRICOLOR LLC v. L ' OREAL S

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I. B ACKGROUND

A. Technology

Metricolo r , wh ich owns the ’587 patent, was founded byStephen D’Amico and his father Salvatore D’Amico (collectively, “the D’Amicos”). Stephen D’Amico, a hairstylist in New York City, developed a prototype for hair color formulation, dispensing, and storage, which the parties refer to as the “Metricolor System.” J.A. 24 ¶ 3. The D’Amicos filed a patent application (’587 patent application) for the Metricolor System , which published on July 17, 2014 and issued as the ’587 patent

. J.A. 28 ¶ 20; J.A. 30

– 31 ¶¶ 30

– 31.
The ’587 patent generally relates to an apparatus and method for measuring and dispensing hair dye

. ’587 patent
at Abstract. The patent discusses using a graduated syringe to extract hair dye from a container with an “air

- tight reclosing seal.” Id

. The syringe improves the accuracy of

measur ing hair dye amount , and the air

- tight reclosing seal prevents leakage and reduces waste caused by oxidation. Id. at col. 3, ll. 16

– 19, 40

– 47

. These features are captured in apparatus claim 1 and me thod claim 14, which are the only independent claims of the ’587 patent :

1. An apparatus for preparing a hair coloring comprising:
a graduated measuring and dispensing vessel;
a container having a hair dye contained therein, the container comprising an air

- tight chamber and an opening;

the container further including means for engaging the container with a container holder to support the container;

an air

- tight reclosing seal at the opening

, such that when the measuring and dispensing vesse l engages the air

- tight reclosing seal, the hair dye may be extracted from the air

- tight chamber, and when theMETRICOLOR LLC v. L ' OREAL S

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measuring and dispensing vessel is disengaged from the container, the air

- tight reclosing seal closes off the air

- tight chamber ; and
thereby perm itting a known quantity of the hair dye to be withdrawn from the container into themeasuring and dispensing vessel, allowing an accurate and repeatable quantity of hair dye to be dispensed from the container.

Id. at claim 1 (emphas e s added).

14. A method of coloring hair, comprising the steps of:
providing a first container having a quantity of hair dye contained therein;
providing a first opening in the first container with

an air

- tight re

- closable seal on the first container;
providing a graduated measuring and dispensing vessel capable of holding a predetermined quantity of hair dye;
accessing the first opening with the graduated measuring and dispensing vessel and withdrawing a first predetermined quantity of hair dye from the first cont ainer;
dispensing the first predetermined quantity of hair dye into a mixing bowl;
providing a second container having a quantity of hair dye contained therein;
providing a second opening in the second container with an air

- tight re

- closable seal on the se cond container;
accessing the second opening with the graduated measuring an dispensing vessel and withdrawing aMETRICOLOR LLC v. L ' OREAL S

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second predetermined quantity of hair dye from the second container;
dispensing the second predetermined quantity of hair dye into the mixing b owl; and
mixing the first predetermined quantity of hair dyeand second predetermined quantity of hair dye together.

Id. at claim 14 (emphas e s added).

B. Pre

- S uit Discussions
In August 2014, t he month after the ’587 patent application was published

, the D’Amicos approached L’Oréal topitch a “potential sale, partnership or licensing of the Metricolor System.” J.A. 25 ¶ 5

. On August 25, 2014, the D’Amicos signed a mutual Non

- Disclosure Agreement (NDA) with L’Oréal USA , Inc. , which prohibit ed certain use of “Confidential Information ” disclosed during their ongoing discussions. J.A. 72

– 7 5, 76

– 79

. The NDA specifiesthat “Confidential Information” does not include information which “is or becomes generally known or available to the public thr ough no act or failure to act by the receiving Party or its employees or agents.” J

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. 73 , 77

. The parties do not dispute on appeal that the content of the ’587 patent application is not “Confidential Information” under the NDA because it was published p rior to commencement of the parties’ discussions.

Over the course of approximately 18 months of discussions, Metricolor alleges that “L’Oréal received Metricolor’s sought

- after confidential information, including, crucially, all the knowledge necessary to fully understand how the [Metricolor] System worked and how it could be replicated.” J.A. 25 ¶ 6

. In October 2014, the D’Amicos met with two executives at “ L’Oré al USA ’s headquarters” in New York City, where they “presented and demonstrated the Metricolor System.” J.A. 33 ¶ 46

. In March 2016, two “corporate executives” from “L’Oréal Group France” askedMETRICOLOR LLC v. L ' OREAL S

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the D’Amicos for ten samples of the Metricolor System. J.A. 34 ¶ 51

. In June 2016, L’Oréal ceased all communication with Metricolor. J.A. 35 ¶ 53.
In September 2016, L’Oréal released two hair bonding products under two different L’Oréal brands: Matrix DMI Brand’s Matrixcolor Bond Ultim8 product and Redken Bran d’s pH

- Bonder product (collectively, “the Accused Products”) . J.A. 35 ¶ 54. Both products include a syringe for extracting hair bonding agent from a bottle. J.A. 36

– 41 ¶¶ 58

– 69.

II. P ROCEDURAL H ISTORY On January 16, 2018, Metricolor filed a complaint in the United States District Court for the Central District of California against parent corporation L’Oréal S.A.

, its subsidiary corporation L’Oréal USA, Inc., and further subsidiary corporations of L’Oréal USA, Inc. ( L’Oréal USA Products, Inc., L’Oréal USA S/D, Inc., and Redken 5 th Avenue N YC, LLC )

. The complaint alleged that L’Oréal’s Accused Products infringed Metricolor’s ’587 patent . The complaint included other claims

, including breach of contract, federal theft of trade secret under 18 U.S.C. § 1831 et seq. , breach of confidence, and unfair competition under Cal ifornia Bus iness and Prof essions Code §§ 17200 et seq. (collectively, “non

- patent claims”)

. All L’Oréal defendants moved to dismiss the complaint for f ailure to state a claim under Rule 12(b)(6). L’Oréal S.A., the parent corporation which is incorporated in France, separately moved to dismiss the complaint for lack of personal jurisdiction under Rule 12(b)(2). In support, L’Oréal S.A. attached a declar ation rebutting various allegations about L’Oréal S.A.’s physical presence in California and operational control over L’Oréal USA , Inc

. In opposition to the 12(b)(6) motion, Metricolor raised for the first time an infringement theory based on doctrine of equivalents. In a single sentence, Metricolor also arguedMETRICOLOR LLC v. L ' OREAL S

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that if the 12(b)(6) motion was “granted on any grounds, Plaintiff requests leave to amend.” J.A. 162. This conditional requ est was only made in Metricolor’s opposition brief, not in a separate motion.
In opposition to the 12(b)(2) motion, Metricolor disputed the lack of personal jurisdiction. But at a minimum, Metricolor “request[ed] leave to obtain discovery regarding [L’Oré al S.A.’s] general and specific contacts with the State of California” to “confirm, among other related issues, what revenues L’Oréal S.A. derives directly from California; andthe official positions, roles and authority of the L’Oréal representatives invo lved in negotiations.” J.A. 317. Again,Metricolor’s request for leave was only made in its opposition brief, not in a separate motion.
On August 15, 2018, t he district court granted the Rule 12(b)(6) and Rule 12(b)(2) motions in a single order. Regardi ng Metricolor’s patent infringement allegation, the court found that the Accused Products did not contain the claimed “air

- tight reclosing seal .” J.A. 18

– 19

. The court also refused to consider Metricolor’s doctrine of equivalents argument because it was raised for the first time in Metricolor’s opposition brief. J.A. 20.

Metricolor’s non

- patent claims were essentially premised on the allegation that L’Oréal misused confidential information. The district court dismissed all of them because it concluded that Metricolor failed to allege any information that was actually “confidential” in the complaint. J.A. 20. Regarding the breach of contract and breach of confidence claims, the district court found that Metricolor failed to sufficiently allege any vio lation of the NDA because Metricolor only alleged disclosure of information that had already been published in the ’587 patent application prior to the negotiations. Id. As to the federal trade secret theft claim, the district court found that Metricolor “fails toidentify the trade secret” and that the published information in the ’587 patent could not be protected as a tradeMETRICOLOR LLC v. L ' OREAL S

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secret. J.A. 21. Finally, the district court found that the unfair competition claim also failed because it relied on the validity of at least one of Metricolor’s other claims to be the required “predicate act

, ” which the court had concluded were all insufficiently pleaded. J.A. 2 2. The district court did not address Metricolor’s request for leave to amend.

As to the dismissal of L’Oréal S.A. for lack of personal jurisdiction, the district court explain ed that the complaint did not justify the exercise of general or specific juris diction over L’Oréal S.A. The court did not address Metricolor’s request for leave to conduct jurisdictional discovery.
On September 13, 2018, Metricolor timely appealed the district court’s order dismissing the complaint for failure tostate a claim and dismissing L’Oréal S.A. for lack of personal jurisdiction. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

I II

. D I SCUSSION

A. Motion to Dismiss under Rul e 12(b)(6)

We review the district court’s dismissal of the complaint for failure to state a claim under regional circuit law. Juniper Networks, Inc. v. Shipley , 643 F.3d 1346, 1350 (Fed. Cir. 2011). Under Ninth Circuit law, we review a district court’s d ismissal under Rule 12(b)(6) de novo

. Davis v. Pac. Capital Bank, N.A. , 550 F.3d 915, 916 (9th Cir. 2008).
We agree with the district court that Metricolor failed to sufficiently plead a claim of patent infringement in its complaint. As the district court correctly found

, nothing in the complaint shows that the Accused Products contain the “air

- tight reclosing seal ” / “air

- tight re

- closable seal” required b y the independent claims

. 1 J.A. 18

– 19

. Metricolor

1 Since Metricolor does not raise any distinctions between the “air

- tight reclosing seal” (recited in independentMETRICOLOR LLC v. L ' OREAL S

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did not identify any “air

- tight” seal in any of the Accused Products. To the contrary, the district court aptly noted that the Redken pH

- Bonder product has an “open hole at the base of the bottle,” plain ly contradicting its allegation of an “air

- tight” seal. J.A. 19.

We also agree with the district court that the complaint failed to sufficiently plead any of Metricolor’s non

- patent claims of breach of contract, breach of confidence, federal trade secret theft, and unfair competition under state law

. As the district court correctly found, the complaint did not sufficiently allege any misuse of confidential information beyond what was already disclosed in the published ’587 patent application.

B. Metricolor’s Request for Leave to Amend the Complaint
We “apply regional circuit law to a trial court’s procedural decisions that relate to issues not unique to our exclusive jurisdiction, including motions for leave to amend.” Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp. , 587 F.3d 1339, 1354 (Fed. Cir. 2009). The Ninth Circuit reviews a district court’s denial of leave to amend for abuse of discretion. Leadsinger, Inc. v. BMG Music Publ’g , 512 F.3d 522, 532 (9th Cir. 2008). According to Federal Rule of Civil Procedure 15(a)(2), leave to amend the complaint should be given “freely

. . . when justice so requires.” See also Arizona Students’ Ass’n v. Arizona Board of Regents

, 824 F.3d 858 , 871 (9 th Cir. 2016). Factors such as “ undue delay, bad fai th or dilatory motive on the part of the movant

. . . undue prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment , etc.” may justify denial of leave to amend. Foman v. Davis , 371

claim 1) and “air

- tight re

- closable seal” (recited in independent claim 14), we treat the limitations as the same for purposes of this appeal.METRICOLOR LLC v. L ' OREAL S

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U.S. 178, 182 (1962); see also Moo re v. Kayport Package Express, Inc. , 885 F.2d 531, 538 (9 th Cir. 1989). Though the “grant or denial of an opportunity to amend is within the discretion of the [d]istrict [c]ourt ,” “outright refusal to grant the leave without any justifying reason appearing for the denial is not an exercise of discretion.” Foman , 371 U.S. at 182. “ Dismissal without leave to amend is improper unless it is clear, upon de novo review, that the comp laint

c ould not be saved by any amendment.” Thinket Ink Info

. Res., Inc. v. Sun Microsystems, Inc. , 368 F.3d 1053, 1061 (9 th Cir. 2004).
On appeal, Metricolor argues that the district court abused its discretion in failing to grant Metricolor’s request fo r leave to amend the complaint. Appellant’s Br. at 28

– 33

. For example, Metricolor argues that it could have cured any defect in its initial pleading of patent infringement by amending the complaint to allege an infringement theory under the doctrine of e quivalents. Appellant’s Br.
at 33 . Metricolor also argues that it could have cured any defect in its initial pleadings of non

- patent claims by amending the complaint to allege misuse of confidential information that was not disclosed in the ’587 patent a pplication. Appellant’s Br. at 31

– 32

. In dismissing the complaint under Rule 12(b)(6), the district court did not acknowledg e that Metricolor made a request for leave to amend the complaint

. 2 To the extent

2 During oral argument, L’Oréal argued that the district court did not need to consider Metricolor’s request for leave to amend the complaint because the request did not comply with Local Rul es 7

- 4 and 15

- 1 of the Central District of California. See Oral Arg. at 12:15

– 38; 17:20

- 38. To support this argument, L’Oréal relies on a statement made by the district court in an order denying L’Oréal ’s motion for sanctions that issued after the notice of appeal was filed. We need not consider any argument attacking theMETRICOLOR LLC v. L ' OREAL S

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the district court implicitly denied Metricolor’s request for leave through its silence, we find that the district court’s failure to provide a ny reason for denying Metricolor’s request constituted an abuse of discretion in this case because the record does not clearly indicate that the distr ict court even considered Metricolor’s request

. See Foman

,371 U.S. at 182 (“Of course, the grant or denial of an opportunity to amend is within the discretion of the [d]istrict [c]ourt, but the outright refusal to grant the leave without any justifying r eason appearing for the denial is not an exercise of discretion; it is merely abuse of that discretion and inconsistent with the spirit of the Federal Rules.”) ; Klamath

- Lake Pharm. Ass’n v. Klamath Med. Serv. Bureau

, 701 F.2d 1276, 129 2

– 9 3 (9th Cir. 1983) (“[W]here the record does not clearly dictate the district court’s denial [of leave to amend], we have been unwilling to affirm absent written findings

. . . . ” )

. L’Oréal argues that no justification was needed because any amendment would have been futi le , citing Klamath

- Lake in support . Appellees’ Br. at 61

– 63. We are unpersuaded, because it appears to us that the district

form of Metricolor’s request for leave to amend because it was untimely raised for the first time by Appellees at oral argument. To the extent the statement serves to explain the distr ict court’s reasons for dismissing the complaint without granting leave to amend, the district court did not have jurisdiction to supplement its final order in such a way after the notice of appeal was filed. See Griggs v. Provident Consumer Disc. Co. , 45 9 U.S. 56, 58 (1982) (“The filing of a notice of appeal is an event of jurisdictional significance

— it confers jurisdiction on the court of appealsand divests the district court of its control over those aspects of the case involved in the appeal.”). Upon remand,the district court is free to consider whether to deny Metricolor’s request for leave in light of local rules.METRICOLOR LLC v. L ' OREAL S

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court simply overlooked Metricolor’s conditional request for leave to amend rather than tacitly concluded that granting such a req uest would have been futile. Without any indication in the record, we do not merely assume the latter, even if we were to agree that any amendment would be futile. Klamath

- Lake does not go so far as to permit an appellate court to undertake a futility an alysis in the first instance where the district court did not even address the request for leave to amend, much less provide any basis for its denial, as here

. Accordingly, we vacate the dismissal ofthe complaint under Rule 12(b)(6) and remand for the district court to explicitly address Metricolor’s conditional request for leave to amend the complaint based on any of the factors justifying denial under Foman , s uch as futility

. C. Motion to Dismiss L’Oréal S.A. U nder Rule 12(b)(2)
In reviewing the district court’s dismissal of L’Oréal S.A. for lack of personal jurisdiction, we apply Federal Circuit law in reviewing the personal jurisdiction inquiry over Metricolor’s patent infringement claim and regional circuit law in reviewing the personal jurisdiction inquiry over Metricolor’s non

- patent claims because they are not “intimately involved with the substance of the patent laws

. ” See Elecs. f or Imaging, Inc. v. Coyle

, 340 F.3d 13 4 4, 1348 (Fed. Cir. 2003)

. Both the Federal Circuit and Ninth Circuit review the district court’s dismissal for lack of personal jurisdiction de novo

. Akro Corp. v. Luker , 45 F.3d 1541, 1543 (Fed. Cir. 1995); Swartz v. KPMG LLP , 476 F.3d 756, 760 (9 th Cir. 2007).
We agree with the district court that Metricolor failed
to meet its burden of showing that the court had personal jurisdiction over L’Oréal S.A

. Though Metricolo r argues that L’Oréal S.A. had “ cont rol” over the negotiations with Metricolor to support general jurisdiction, Appellant’s Br.at 35, uncontroverted sworn testimony refutes that allegation. J.A. 136

– 37 ¶¶ 3

– 4 (attesting that the subsidiaries of L’Oréal S.A. do not act as L’Oréal S.A.’s “agents” and thatMETRICOLOR LLC v. L ' OREAL S

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L’Oréal USA , Inc. “operates independently from its parent” ) . Metricolor also failed to allege any conduct by defendant L’Oréal S.A. that was “ purposefully ” aimed at the forum state of California such that specific jurisdiction would apply. See Walden v. Fiore , 571 U.S. 277, 285 (2014). The only alleged connection between defendant L’Oréal S.A. and the forum state is a conversation between two

“ L’Oréal Grou p France” executives and Metricolor, a California resident. But even if initiated by L’Oréal S.A. representatives, that single conversation is insufficient to create specific jurisdiction, because the contact must be aimed at the forum state, not just a r esident plaintiff. See id. (stating that “the plaintiff cannot be the only link between the defendant and the forum” when determining whether defendant satisfies “minimum contacts” necessary to create specific jurisdiction).

D. Metricolor’s Request for Leave to Conduct Jurisdictional Discovery
We apply the law of the regional circuit when “review [ing] the district court’s denial of [jurisdictional] discovery, an issue not unique to patent law.” Autogenomics, Inc. v. Oxford Gene Tech. Ltd. , 566 F.3d 1012, 102 1 (Fed. Cir. 2009). Under Ninth Circuit law, we “review a district court’s decision to grant or deny discovery on jurisdictional facts for abuse of discretion.” Pebble Beach Co. v. Caddy

, 453 F.3d 1151

, 1154 (9th Cir. 2006). “A district court is vested with broad discretion to permit or deny discovery,and a decision ‘to deny discovery will not be disturbed except upon the clearest showing that the denial of discoveryresults in actual and substantial prejudice to the complaining litigant.’” Laub v. U.S . Dep ’ t of Interior , 342 F.3d 1080, 1092 ( 9th Cir. 2003) (quoting Hallett v. Morgan , 287 F.3d 119 3 , 1212 (9th Cir. 2002)). “Prejudice is established if there is a reasonable probability that the outcome would have been different had discovery been allowed .” Id.METRICOLOR LLC v. L ' OREAL S

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Metricolor argues that the district court abused its discretion in failing to address Metricolor’s request for leave to conduct jurisdictional discovery. Appellant’s Br. at 34

– 37. The district court’s silence on Metricolor’s request for jurisdict ional discovery effectively acted as a denial. To theextent the district court erred in failing to explicitly address Metricolor’s request, such error was harmles s, because, upon consideration of its arguments, we conclude that Metricolor fails to clearly show that there is a “reasonable probability” that its requested jurisdictional discovery would have yielded facts sufficient to establish personal jurisdiction. Laub

, 342 F.3d at 109 3

. Metricolor does not refute sworn testimony that L’ Oréal S.A. has “no physical presence in the United States” and does “ not conduct business in the United States

, ” J.A. 137 ¶¶ 6

– 7. In the face of these specific denials, we conclude that Metricolor’s alleged claim of personal jurisdiction is too attenuated to justify overturning the district court’s denial of discovery. Pebble Beach

, 453 F.3d at 1160 ( holding that a district court “need not permit even limited discovery” where a “ plaintif f’ s claim of personal jurisdiction appears to be both attenuated and based on bare allegations in the face of specific denials made by the defendants ”)

. Because we are unpersuaded that the district court’s failure to allow further discovery resulted in “ actual and substantial prejudice ” to Metricolor, see La ub

, 342 F.3d at 109 3

, we affirm the district court’s dismissal of L’Oréa l S.A. for lack of personaljurisdiction without granting leave to conduct jurisdictional discovery.
We have considered Metricolor’s remaining arguments but find them unpersuasive. A ccordingly, we vacate the district court’s grant of the motion to dismiss for failure to state a claim and remand for the district court to address Metricolor’s request for leave to amend the complaint in light of the Foman factors in the first instance, a nd we affirm the district court’s dismissal of L’Oréal S.A. for lack ofMETRICOLOR LLC v. L ' OREAL S

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personal jurisdiction without granting leave for jurisdictional discovery.

VACATED

- AND

- REMANDE D

- IN

- PART AND

AFFIRMED

- IN

- PART

C OSTS

No costs.