NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

METRICOLOR LLC,

Plaintiff-Appellant

v.

L'OREAL S.A., L'OREAL USA, INC., L'OREAL USA 

PRODUCTS, INC., L'OREAL USA S/D, INC., 

REDKEN 5TH AVENUE NYC, 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. Real.

______________________

Decided: October 30, 2019

______________________

EDUARDO MARTORELL, Martorell Law APC, Los Angeles, CA, argued for plaintiff-appellant. 

 MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP, 

Washington, DC, argued for defendants-appellees. Also 

represented by KATHERINE M. KOPP; JOSEPH CALVARUSO,

RICHARD MARTINELLI, New York, NY. 

 ______________________
2 METRICOLOR LLC v. L'OREAL S.A.

Before MOORE, REYNA, and CHEN, Circuit Judges.

CHEN, Circuit Judge.

Plaintiff-appellant Metricolor LLC sued defendantsappellees 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 the

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 Federal Rule of Civil Procedure 12(b)(6). L’Oréal 

S.A., the parent corporation of the other defendants, separately moved 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 Metricolor’s request for leave in the first instance. 

We affirm the district court’s grant of L’Oréal S.A.’s Rule 

12(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.A. 3

I. BACKGROUND

A. Technology 

Metricolor, which owns the ’587 patent, was founded by 

Stephen 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 

measuring 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 method 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 vessel engages 

the air-tight reclosing seal, the hair dye may be extracted from the air-tight chamber, and when the 
4 METRICOLOR LLC v. L'OREAL S.A.

measuring and dispensing vessel is disengaged 

from the container, the air-tight reclosing seal 

closes off the air-tight chamber; and

thereby permitting a known quantity of the hair 

dye to be withdrawn from the container into the 

measuring and dispensing vessel, allowing an accurate and repeatable quantity of hair dye to be 

dispensed from the container.

Id. at claim 1 (emphases 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 container;

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 second container;

accessing the second opening with the graduated 

measuring an dispensing vessel and withdrawing a 
METRICOLOR LLC v. L'OREAL S.A. 5

second predetermined quantity of hair dye from the 

second container;

dispensing the second predetermined quantity of 

hair dye into the mixing bowl; and

mixing the first predetermined quantity of hair dye 

and second predetermined quantity of hair dye together.

Id. at claim 14 (emphases added).

B. Pre-Suit Discussions

In August 2014, the month after the ’587 patent application was published, the D’Amicos approached L’Oréal to 

pitch 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 prohibited certain 

use of “Confidential Information” disclosed during their ongoing discussions. J.A. 72–75, 76–79. The NDA specifies 

that “Confidential Information” does not include information which “is or becomes generally known or available 

to the public through no act or failure to act by the receiving Party or its employees or agents.” J.A. 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 prior 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’Oréal 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” asked 
6 METRICOLOR LLC v. L'OREAL S.A.

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 

Brand’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. PROCEDURAL HISTORY

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 5th Avenue NYC, 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

California Business and Professions Code §§ 17200 et seq. 

(collectively, “non-patent claims”). 

All L’Oréal defendants moved to dismiss the complaint 

for failure 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 declaration 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 argued 
METRICOLOR LLC v. L'OREAL S.A. 7

that if the 12(b)(6) motion was “granted on any grounds, 

Plaintiff requests leave to amend.” J.A. 162. This conditional request 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’Oréal 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; and 

the official positions, roles and authority of the L’Oréal representatives involved 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, the district court granted the 

Rule 12(b)(6) and Rule 12(b)(2) motions in a single order. 

Regarding 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 violation 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 to 

identify the trade secret” and that the published information in the ’587 patent could not be protected as a trade 
8 METRICOLOR LLC v. L'OREAL S.A.

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. 22. 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 explained that the complaint 

did not justify the exercise of general or specific jurisdiction 

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 to 

state a claim and dismissing L’Oréal S.A. for lack of personal jurisdiction. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1).

III. DISCUSSION

A. Motion to Dismiss under Rule 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 dismissal 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 by 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 independent 
METRICOLOR LLC v. L'OREAL S.A. 9

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,” plainly 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 (9th Cir. 2016). Factors such as “undue 

delay, bad faith 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. 
10 METRICOLOR LLC v. L'OREAL S.A.

U.S. 178, 182 (1962); see also Moore v. Kayport Package Express, Inc., 885 F.2d 531, 538 (9th 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 complaint 

could not be saved by any amendment.” Thinket Ink Info.

Res., Inc. v. Sun Microsystems, Inc., 368 F.3d 1053, 1061 

(9th Cir. 2004).

On appeal, Metricolor argues that the district court 

abused its discretion in failing to grant Metricolor’s request 

for 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 equivalents. 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 application. Appellant’s Br. at 31–32. 

In dismissing the complaint under Rule 12(b)(6), the 

district court did not acknowledge 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 Rules 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 the 
METRICOLOR LLC v. L'OREAL S.A. 11

the district court implicitly denied Metricolor’s request for 

leave through its silence, we find that the district court’s

failure to provide any reason for denying Metricolor’s request constituted an abuse of discretion in this case because the record does not clearly indicate that the district 

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 reason 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, 1292–93 (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 futile, 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 district 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., 459 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 appeals 

and 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. 
12 METRICOLOR LLC v. L'OREAL S.A.

court simply overlooked Metricolor’s conditional request 

for leave to amend rather than tacitly concluded that 

granting such a request 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 analysis 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 of 

the 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, such as futility.

C. Motion to Dismiss L’Oréal S.A. Under 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. for Imaging, Inc. v. Coyle, 340 F.3d 1344, 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 (9th 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 Metricolor argues 

that L’Oréal S.A. had “control” 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 that 
METRICOLOR LLC v. L'OREAL S.A. 13

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 Group 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 resident 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, 1021 (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 discovery 

results 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 

1193, 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.
14 METRICOLOR LLC v. L'OREAL S.A.

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 

jurisdictional discovery effectively acted as a denial. To the 

extent the district court erred in failing to explicitly address Metricolor’s request, such error was harmless, 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 1093. 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 “plaintiff’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 Laub, 342 F.3d at 1093, we affirm the district court’s dismissal of L’Oréal S.A. for lack of personal 

jurisdiction without granting leave to conduct jurisdictional discovery.

We have considered Metricolor’s remaining arguments 

but find them unpersuasive. Accordingly, 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, and we affirm the district court’s dismissal of L’Oréal S.A. for lack of 
METRICOLOR LLC v. L'OREAL S.A. 15

personal jurisdiction without granting leave for jurisdictional discovery.

VACATED-AND-REMANDED-IN-PART AND

AFFIRMED-IN-PART

COSTS

No costs.