N OTE : This disposition is nonprecedential. 

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

______________________
OLAPLEX , INC., Plaintiff

- Appellee

v.

L'OREAL USA, INC., L'OREAL USA PRODUCTS, INC., L'OREAL USA S/D, INC., REDKEN 5TH AVENUE NYC, L.L.C.,

Defendants

- Appellants

______________________

2019

- 2280, 2019

- 2292

______________________ Appeals from the United States District Court for the District of Delaware in No. 1:17

- cv

- 00014

- JFB

- SRF, Senior Judge Joseph F. Batail lon.

______________________
Decided: March 4, 2021

______________________
S ANFORD I AN W EISBURST , Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, argued for plaintiff

- appellee. Also represented by J OSEPH M. P AUNOVICH , Los Angeles, CA.

S TEPHEN B LAKE K INNAIRD , Paul Hastings LLP, Washington, DC, argued for defendants

- appellants. Also Case: 19-2280 Document: 98 Page: 1 Filed: 03/04/2021OLAPLEX , INC

. v. L ' OREAL USA , INC

. 2

represented by N AVEEN M ODI , J OSEPH P ALYS , I GOR V ICTOR T IMOFEYEV , D ANIEL Z EILBERGER

.

______________________
Before D YK , R EYNA , and T ARANTO , Circuit Judges

. D YK , Circuit Judge

. Liqwd , Inc. (“Liqwd”) and Olaplex LLC filed suit in the United States District Court for the District of Delaware

, alleging that L’Oréal USA , Inc.

, L’Oréal USA Products

, Inc., L’Oréal USA S/D, Inc., and Redken 5 th Avenue NYC, L.L.C. ( together “ L’Oréal ”) infringed claims 1 and 10 of U.S. Patent No. 9,498,419 (the “’419 patent”) and claims 1, 4, 11

– 16, 19, 20, and 30 of U.S. Patent No. 9,668,954 (the “’954 patent”)

. The district court granted Liqwd and Olaplex LLC summary judgment of direct and indirect infringement on al l claims and issued a permanent injunction. L’Oréal appealed. Following post

- grant review proceedings before the Patent Trial and Appeal Board (“Board” ) , only claims 14

– 16 of the ’954 patent survive

. As to these claims, w e affirm the district court’s cl aim construction

. But b ecause there are genuine questions of material fact relating to infringement of the se claims under that claim construction , we vacate and remand for trial. 1 Additionally, we grant Liqwd and Olaplex LL C ’s motion t o substitute Olaplex, Inc

.

1 We note that patent invalidity issues have been raised in the appeal from the district court’s final judgment in case number 2020

- 1382 as to claims 14

– 16. Our decision here is therefore necessarily subject to the outcome of the invalidity issues in the 20

- 1382 proceeding. Case: 19-2280 Document: 98 Page: 2 Filed: 03/04/2021OLAPLEX , INC

. v. L ' OREAL USA , INC

. 3

B ACKGROUND

I
Olaplex , Inc. is the owner of the ’419 and ’954 patents, which are both directed toward methods of treating keratin in hair that has been colored or bleached

. On January 5, 2017, Olaplex , Inc. ’s predecessor s in inter est (Liqwd and Olaplex LLC) filed suit in Delaware district court , alleging that L ’Oréal directly and indirectly infringed the ’419 patent through its Matrix Bond Ultim8 Step 1 Amplifier, Redken pH

- Bonder #1 Bond Protecting Additive, and L’Oréal Professionnel Smartbond Step 1 Additive products (the “Step 1 products”)

. 2
Olaplex

, Inc. ’s predecessor s in interest amended their complaint to allege that L’Or éal also infringed claims of the ’954 patent , and to allege infringement by the combination of the Step 1 products with L’Oréal’s M atrix Bond Ultim8 Step 2 Sealer, Redken pH

- Bonder #2 Fiber Restorative Pre

Wash Concentrate, and L’Oréal Professionnel Smartb ond Step 2 Pre Shampoo (together the “Step 2 products”) and Matrix Bond Ultim8 Step 3 Sealing Treatment, Redken pH

- Bonder #3 Post

- Service Perfector, and L’Oréal Professionnel Smartbond Step 3 Conditioners (together the “Step 3 products”)

. 3

2 The complaint also asserted several non

- patent claims that are not at issue in this appeal, but ar e the subject of the related appeal in case number 2020

- 1382.

3 Olaplex , Inc.’s predecessors in interest moved for a preliminary injunction. The district court originally denied the motion for preliminary injunction, concluding that Olaplex , Inc.’s prede cessors in interest were not likely to show that L’Oréal’s products did not contain a hair coloring agent (as required by claim 1 of the ’419 patent). Olaplex

, Inc.’s predecessors in interest appealed , and we Case: 19-2280 Document: 98 Page: 3 Filed: 03/04/2021OLAPLEX , INC

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On June 25, 2019, the district court granted Olaplex

, Inc.’s predecessors in interest summary judgment of direct and indirect infringement of the asserted claims of the ’419 and ’954 patents

. On August 16, 2019, the district court issued a permanent injunction p rohibiting L’Oréal “ and their parents, subsidiaries, affiliates, officers, directors, agents, employees, successors, assigns, and attorneys, and

any an d all persons in active concert or participation with any of them” from “using, making, causing to be mad e, selling, offering to sell, causing to be sold, importing [

, ] and/or exporting ” the Step 1, 2, and 3 products “and all other products only colorably and/or trivially different therefrom.” J.A. 23. On the same day that the court issued the permanent inju nction, L’Oréal filed a notice of appeal challenging the district court’s grant of a permanent injunction

. L’Oréal also moved for a partial interim stay of the injunction

. We granted a stay of the injunction “to the extent that it reaches beyond the following: (A) the use and prom o tion of the use of products having the current formulations of L’Oréal USA’s Step 1 products .

. . or products only colorably and/or trivially different therefrom; and (B) the use or promotion of the use of products having t he current formulations of L’Oréal USA’s Step 2 and 3 products

. . . when used after use of the products identified in (A), orproducts only colorably and/or trivially different therefrom. ” Order at 2, Liqwd, Inc. v. L’Oréal USA, Inc.

, No. 19

-

determined that the district court’s decision relied on anincorrect claim construction. We therefore vacated the denial of the preliminary injunction. On remand, the district court determined that Olaplex , Inc.’s predecessors in interest were entitled to a preliminary injunction. However, the
court ultimately declined to enter the preliminary injunction, citing the proximity of trial and concluding that itshould first decide the pending motions for summary judgment. Case: 19-2280 Document: 98 Page: 4 Filed: 03/04/2021OLAPLEX , INC

. v. L ' OREAL USA , INC

. 5

2280, (Fed. Cir. Aug

. 21, 2019) , ECF No. 15

. We have jurisdiction over this appeal under 28 U.S.C. §§ 1292(c)(1) and 1295(a)(1).

II
During the pendency of the district court proceeding at issue here, L’Oréal filed petitions for post

- grant review of the ’419 and ’954 patents. The Board held claims 1

– 8 and 10 of the ’419 patent u npatentable as obvious . The Board also found that L’Oréal copied an unpublished patent application owned by Olaplex

, Inc.’s predecessors in interest

, but that this evidence of copying was not rele v ant to obviousness because there was no evidence L’Oréal copied a patented product. On appeal, we concluded that th is evidence of copying was relevant to the obviousness determination and had to be considered by the Board. On remand, t he Board again concluded that claims 1

– 8 and 10 of the ’419 patent were unpatentable as obvious. Although Olaplex

, Inc. initial ly appealed the Board’s remand decision, it later voluntarily dismissed its appeal.
In a separate decision, t he Board determined that claims 1

– 13, 19

– 23, and 29

– 30 of the ’954 patent were unpatentable as obvious, but that L’Oréal had not proven that claims 14

– 16, 18, and 24

– 28 of the ’954 patent (the “breakage claims”) were obvious. We affirmed. L’Oréal USA, Inc. v. Olaplex, Inc.

, No. 2019

- 2410, 2021 WL 280493 (Fed. Cir. Jan. 28, 2021).

On this appeal, only the breakage claims remain patentable, and we address only those claims.

Claim 1 2 of the ’954 patent , as shown with the incorporated text of claim 1, recites:

12. [ A method for bleaching hair comprising:
(a) mixing a bleach powder and a developer to form a bleaching formulation; Case: 19-2280 Document: 98 Page: 5 Filed: 03/04/2021OLAPLEX , INC

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(b) mixing a n active agent formulation comprising an active agent with thebleaching formulation to form a mixture, wherein the active agent is maleic acid; and
(c) applying the mixture to the hair;
(d) wherein the active agent in the mixture is at a concentration ranging fr om about 0.1% by weight to about 50% by weight ] further comprising:
(e) applying a second active agent formulation comprising maleic acid,
wherein step (d) occurs subsequent to step (c).

’ 954 patent col. 2 6 ll. 30

– 33.
In turn, claim 13 recites

, “[t]he meth od of claim 12,wherein the second active agent formulation further comprises a conditioning agent.” Id. col. 26 ll. 34

– 35. Finally, claims 14, 15, and 16 recite

, “[t]he method of claim 13, wherein following step (d) breakage of the hair is decreased by at least” 5%, 10%, and 20%, respectively, “compared tohair bleached with the bleaching formulation in the absence of the active agent.” Id. col. 26 ll. 36

– 47.

III
On January 8, 2020, after the filing of the notice of appeal (but while the district court proceedings were continuing with respect to damages and other claims ), Liqwd and Olaplex LLC assigned their rights in the asserted patents and causes of action to Olaplex, Inc. Then, on May 6, 2020, Liqwd and Olaplex LLC filed a motion to join or substitu te Olaplex, Inc. for Liqwd and Olaplex LLC as a party to this appeal. Case: 19-2280 Document: 98 Page: 6 Filed: 03/04/2021OLAPLEX , INC

. v. L ' OREAL USA , INC

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D ISCUSSION

I
We first address Liqwd , Inc. and Olaplex LLC’s motion to join or substitute Olaplex

, Inc

. Federal Rule of Appellate Pro c e d ure 43(b) governs substitution for “ any reason other than death, ” and provides that “ the procedure prescribed in Rule 43(a) applies.” Fed. R. App. P. 43(b). 4 Substitution under Rule 43(b) “may .

. . be ne cessary when a party is incapable of continuing the suit, such as .

. . when a transfer o f interest in the company or property involved in the suit has occurred.” 21 James W. Moore et al., Moore’s Federal Practice

– Civil § 343.12 (2020)

. Here, Liqwd and Olaplex LLC transferred their interests in the patents at issue and causes of action to O laplex, Inc. on January 8, 2020. Liqwd and Olaplex LLC filed a motion in this court to join or substitute Olaplex

, Inc. on May 6, 2020.

4 Rule 43(a) provides in relevant part that: (a) Death of a Party

. (1) After Notice of A ppeal Is Filed . If a party dies after a notice of appeal hasbeen filed or while a proceeding is pending in the court of appeals, the decedent’s personal representative may be substituted as a party on motion filed with the circuit clerk by the representative or by any party. A party’s motion must be served on the representative inaccordance with Rule 25. If the decedent has no representative, any party may suggest the death on the record, and the court of appeals may then direct appropriate p roceedings. Fed. R. App. P. 43(a)(1). Case: 19-2280 Document: 98 Page: 7 Filed: 03/04/2021OLAPLEX , INC

. v. L ' OREAL USA , INC

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L’Oréal oppose d the motion, arguing that Liqwd and Olaplex LLC lost standing when they transferred their interests to Olaplex

, In c

. , and that this loss of standing rendered the entire action moot when the district court entered final judgment on March 24, 2020

. In support, L’Oréal cites language from our opinion in Schreiber Food s, Inc. v. Beatrice Cheese, Inc

, 402 F.3d 1198 (Fed. Cir. 2005). Schreiber Foods expressed “grave doubts as to whether” Rule 25(c) of the Federal Rule s of Civil Procedure wouldallow a patent owner to continue as the sole plaintiff following transfer of i ts patent interests

. Id. at 1204 n.6. H owever , it did not decide this issue. Id.
Liqwd and Olaplex LLC argue that the transfer of interests to Olaplex

, Inc. does not deprive us of jurisdiction over the appeal of the permanent injunction becauseL’Oréal filed its notice of appeal on the same day the injunction issued, August 16, 2019, which was several months before the January 2020 transfer of interests to Olaplex

, Inc. We agree. It is uncontested that Liqwd and Olaplex LLC had standing when the permanent injunction was entered and when their notice of appeal was filed

, which is when our jurisdiction attached

. 5 See Uniloc USA, Inc. v. ADP, LLC , 772 F. App’x 890 , 893 (Fed. Cir. 2019) (“When [appellants] file d the notices of appeal that set ourjurisdiction in these cases, they were indisputably the owners of the patents

- in

- suit. The [subsequent] transfer of the patent rights . . . did not divest this court of jurisdiction or the ability to substitute or join a successor

- in

- interest.”) ; see also Gilda Indus., Inc. v. United States , 511 F.3d 1348, 1350 (Fed. Cir. 2008) (stating that filing a notice of appeal confers jurisdiction on an appellate court)

.

5 A related issue of substitution arose in connection with the appeal from the district court’s entry of final judgment following trial in case number 2020

- 1382. We do not address this issue in this appeal

. Case: 19-2280 Document: 98 Page: 8 Filed: 03/04/2021OLAPLEX , INC

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We also reject L’Oréal’s argument that we do not havejurisdiction to hear this appeal because the permanent injunction was rendered moot by merger into the district court’s March 24, 2020 final judgment. L’Oréal is correct that the merger rule permits parties t o appeal interlocutory rulings as part of an appeal of a final judgment. See Hendler v. United States , 952 F.2d 1364, 1368 (Fed. Cir.1991) (“As a general proposition, when a trial court disposes finally of a case, any interlocutory rulings ‘merge’ with t he final judgment” and “both the order finally disposing of the case and the interlocutory orders are reviewable on appeal

. ”); In re Westinghouse Sec. Litig ., 90 F.3d 696, 706 (3d Cir. 1996) (stating that “interlocutory orders (to the extent that they affe ct the final judgment) may be reviewed on appeal from the final order”). However, the merger cases relied on by L’Oréal do not suggest that entry of final judgment eliminates a party’s right to continue to appeal a previously issued and appealed permanent injunction.

W e have previously allowed these parties to substitute under Rule 43(b) in the context of the ’954 post

- grant review proceeding

. See L’Oréal USA, Inc. v. Olaplex, Inc. , No. 2019

- 2410, 2021 WL 280493, at * 4

– 6 (Fed. Cir. Jan. 28, 2021) (permitt ing substitution of Olaplex, Inc. for Liqwd, Inc. following transfer of patent interest s after notice of appeal from a Board proceeding was filed); cf. Uniloc USA

, 772 F. App’x at 894 (permitting joinder following transfer of patent interest after notice o f appeal from district court proceeding was filed) . We see no reason not to do so here.

The motion to substitute is granted. H aving granted the motion to substitute, we hereafter use the term Olaplex to refer to Olaplex

, Inc. and its predecessor s in interest Liqwd and Olaplex LLC.

II
Next, we address L’Oréal’s challenge to the district court’s claim construction of the breakage claims . “We review the district court’s ultimate construction de novo, and Case: 19-2280 Document: 98 Page: 9 Filed: 03/04/2021OLAPLEX , INC

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any underlying factual findings supporting the construction for clear error.” Ethicon Endo

- Surgery, Inc. v. Covidien, Inc. , 796 F.3d 1312 , 1333 (Fed. Cir. 2015).
The breakage claims depend on claim 1 of the ’954 patent. Claim 1 requires that “the active agent in the mixture is at a concentration ranging from about 0.1% by weight to about 50% by weight.” ’954 patent col. 25 ll. 58

– 67. The possible constructions for this limitation concern whether the measurement is made when the active agent is added into the mixture or after i t has been added to the mixture. The district court adopted Olaplex’s construction for this limitation , construing it as the “ weight of active agent added into the active agent formulation relative to the total weight of the mixture with the bleaching for mula tion

. ” J.A. 29

. L’Oréal contends that the district court’s construction was wrong and that this term “requires determinationof the weight of [active agent] present in the mixture.” Appellant’s Br. 24. L’Oréal argues that the district court’s construction “contravenes

. . . the plain language of the claims.” Id. at 17

. We agree with the district court.
First, L’Oréal’s construction would render the claim term “maleic acid” meaningless because both part ies agreethat maleic acid is neutralized and transformed into maleate (a salt) once added to an alkaline bleaching solution. Consequently, there would be no maleic acid in the final bleaching solution under L’Oréal’s construction , and the claim limitatio n would never be satisfied

. See Wasica Fin

. GmbH v. Cont ’ l Automotive Systems, Inc ., 853 F.3d 1272,1288 n.10 (Fed. Cir. 2017) (“It is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous.”) ; Bicon, Inc. v. Stra umann Co. , 441 F.3d Case: 19-2280 Document: 98 Page: 10 Filed: 03/04/2021OLAPLEX , INC

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945, 950

– 51 (Fed. Cir. 2006) (rejecting a construction of a term that would render another limitation superfluous)

. 6Second, Example 3 discloses “maleic acid at concentrations of 2.0 g in 10 g total solution (water)” that is then adde d to a bleaching solution comprising a developer and a powder bleach. ’954 patent col. 22 ll. 45

– 58 . This examplesupports the district court’s construction because it “describes the weight of maleic acid before it is mixed with bleaching formulation” ra ther than “the weight of maleic acid still present in the ultimate active agent formulation

bleaching formulation mixture.” Appellee’s Br. 23. Example 3 therefore illustrates how the patent consistently focuses on pre

- mixing weights of maleic acid. Addi tionally, the final bleaching mixture in Example 3 would not have a maleic acid concentration within the claimed range under L’Oréal’s construction, as both parties agree that maleic acid is fully neutralized to maleate at the high pH levels required for b leaching hair. Finally, Olaplex’s statements during the prosecution history are also consistent with the proposed construction as they do not address when the maleic acid is weighed to determine the concentration.
Third, Olaplex’s expert, D r. B o rish, explained that a person of ordinary skill in the art would understand the term “as describing the concentration range in terms of

6 Our opinion in Chef America, Inc. v. Lamb

- Weston, Inc. , 358 F.3d 1371 (Fed. Cir. 2004), does not require a differen t result. In Chef America , the claims were only susceptible to one meaning and the patent owner was essentially asking this court to “redraft” the claim to make it operable. 358 F.3d at 1374 (“[W]e construe the claim as written, not as the patentees wish they had written it.”).Here, the claim language supports either proposed construction and Olaplex has presented intrinsic and extrinsicevidence, including expert testimony, supporting its construction. Case: 19-2280 Document: 98 Page: 11 Filed: 03/04/2021OLAPLEX , INC

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(1) the weight of active agent added into the active agent formulation relative to (2) the total weight of the final mixture.” J.A. 10

, 556

. The district court credited this testimony in arriving at its claim construction.

We thus affirm the district court’s claim construction as requiring calculation of the weight percent of maleic acid using the “ weight of active agent added into the activeagent formulation relative to the total weight of the mixture with the bleaching formula tion .” J.A. 29

. III
Finally, we address the district court’s grant of summary judgment of infringement

. A grant of summar y judgment is reviewed de novo

. Gonzalez v. Sec ’ y of Dep’t of Homeland Security

, 678 F.3d 254, 257 (3 rd Cir. 2012)

. Summary judgment is appropriate when “the movant shows that there is no genuine dispute as to any material fact and the movant is entitle d to judgment as a matter of law.” Fed. R. Civ. P. 56(a).
There are three types of products at issue here , all three of which contain maleic acid

. The St ep 1 products are mixed with a bleach solution or a coloring agent before application to the client’s hair by stylist s in a salon setting

. The Step 2 products are applied by stylists after the Step 1 product and bleaching solution or coloring agent are ri nsed from the client’s hair. Finally, the Step 3 products are at

home products used by clients on a weekly basis

. Because claim 12 requires a first and second application of maleic acid, t he alleged infringement takes place by a combination of the Step 1 and 2 products

. We conclude that there is agenuine issue as to whether the use of Step 1 and 2 products infringe. As we discuss below, the district court also should not have granted summary judgment on whether the accused use of the Step 3 products constitutes infringing activity. Case: 19-2280 Document: 98 Page: 12 Filed: 03/04/2021OLAPLEX , INC

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A
L’Oréal argues that there is a question of material fact regarding whether its Step 1 products contain a maleic acid concentration between about 0.1% by weight and 50% by weight as requi red by claim 1, upon which the breakage claims depend. 7 Olaplex’s expert witness, Dr. Borish, used nuclear magnetic resonance (“NMR”) testing to establish that L’Oréal’s Step 1 products contain added maleic acid at concentrations between 10.2 and 10.6% b y weight , well within the claimed range. L’Oréal argues that this testingfailed to establish infringement because only nonionic maleic acid infringes the claims, and NMR cannot distinguish between hydrogen maleate, maleate, and maleic acid. L’Oréal cont ends that Dr. Borish’s concentration calculations therefore improperly included the amount of non

- infringing maleates in L’Oréal’s products.
L’Oréal’s argument appears to be an attempt to reargue the district court’s construction of claim 1, which expressly required that the maleic acid concentration be based on the maleic acid added into solution, and not the maleic acid remaining in the mixed solution. Further, we conclude that Olaplex establis hed that all the maleates detected by Dr. Borish’s testing “derived from pure maleic acid that had been added into [L’Oréal’s] product [ s ] ” and therefore served as an appropriate proxy for calculating the maleic acid concentration added to the mixture . App ellee’s Br. 32. L’Oréal failed to show that the weight of the maleic acid salts in the solution were not representative of the weight of the maleic acid originally added into solution. Finally, Dr. Borish separately calculated the Step 1 active agent con centration using L’Oréal ’s own internal calculations and data sheets. These separate calculations showed that L’Oréal’s Step 1 products have a maleic acid

7 There is no contention that the Step 2 products are relevant to whether this limitation is satisfied. Case: 19-2280 Document: 98 Page: 13 Filed: 03/04/2021OLAPLEX , INC

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concentration of approximately 10.7 % by weight , which both corresponds to the weight percent calcula ted by NMR testing and falls within the claimed range. Thus, there isno question of material fact concerning the maleic acid concentration added to the mixture in the Step 1 products

, and Olaplex has established that the combination of the Step 1 and Step 2 products satisfies this limitation

. B

L’Oréal argues that there is a material issue as to whether the combination of its Step 1 and 2 products satisfy the specific percentages of decreased hair breakage limitations of the breakage claims following t reatment with the claimed method. 8 The district court’s summary judgment analysis of these claims wa s brief , consisting of a single sentence stating that “[t]he Accused Product also meets the breakage decrease requirement s of claim 14.” J.A. 98. The di strict court did not further explain the basis for its determination. We agree with L’Oréal

. In support of its summary judgment motion, Olaplex did not rely on any independent testing or expert analysis to de monstrate that the claim limitations were met. Instead

, Olaplex relied on L’Oréal marketing materials and internal testing to show that the accused products cause a 70 percent reduction in hair breakage , which would be sufficient to meet the limitations of all the breakage claims

. L’Oréal’s expe rt, Dr. Freeman, challenged the relevance of this evidence , explaining that the marketing materials and L’Oréal internal tests only reported breakage results following a “repeated application process that involved

8 Claim 14 recites at least a 5% reduction in breakage, claim 15 recites at least a 10% reduction in breakage, and claim 16 recites at least 20% reduction in breakage. ’954 patent col. 26 ll. 36

– 47. Case: 19-2280 Document: 98 Page: 14 Filed: 03/04/2021OLAPLEX , INC

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different procedures, different formulatio ns, [and] different hair.” J.A. 23

, 988.
We agree with L’Oréal that summary judgment was inappropriate on this issue

. L’Oréal ’s marketing material advertises “70% less breakage after 3 lightening services.” J.A. 23

, 642. Similarly, L’Oréal ’s internal bre akage testing also involved repeated applications of bleach and maleicacid. Because the breakage claims require specific breakage reductions following a single application of the c laimed maleic acid treatment comprising a single bleach treatment and two serial applications of maleic acid , th e evidence does not permit summary judgment of infringement. There is a question of material fact concerning whether the Step 1 and 2 products meet the limitations of the breakage cla ims.

C

L’Oréal argues that Olaplex failed to establish that its combination of Step 1 and 2 products used a “ bleach powder ” as required by the breakage claims , and that Olaplex failed to establish that L’Oréal induced third parties to perform the method of the breakage claims with a “bleach powder

. ” The district court construed “bleach powder,” as used in claim 1 of the ’954 patent, on which the breakage claims depend, to require “a dry particulate composition (i.e., a powder) comprising at least a persulfate and an alkalizing agent.” J.A. 32. Both parties appear to agree with this construction. Olaplex was therefore required to establish that the accused products produced the c laimed reduction in breakage when hair was treated with a bleaching powder that contained a persulfate and an alkalizing agent. Additionally, Olaplex was required to show that accused infringers performed the claimed method using a bleach powder containi ng a persulfate and alkalizing agent. Olaplex failed to establish entitlement to summary judgment in either respect

. Case: 19-2280 Document: 98 Page: 15 Filed: 03/04/2021OLAPLEX , INC

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Olaplex argued that it was known in the industry thatbleach powders include a persulfate. However, Olaplex relied on an excerpt from a h air care textbook that stated that “[i]f extensive bleaching is require d or a frosting/streaking effect is desired, peroxide alone is too slow” and “a ‘bleach booster’ is added” that is “usually a mixture of ammonium and potassium persulfates.” J.A. 2131. Rather than supporting Olaplex’s argument, the cited textbook by the use of the word “usually” suggests that not all bleach powders necessarily contain a persulfate. Additionally, while Olaplex presented evidence that L’Oréal s old bleach powders contai ning potassium persulfate, it did not provide evidence e ntitling it to a finding on summary judgment that these bleach powders were used in L’Oréal’s internal breakage testing or by the accused infringers

. We therefore agree with L’Oréal that there is a q uestion of material fact concerning infringement of the breakage claims with respect to the bleach powder limitation

. D

L’Oréal also argues that the accused use of its Step 3 products do es not infringe because these products are applied to the hair by customers at home, days or weeks after the salon stylist s complete their work applying the Step 1 and 2 products

. Because the Step 3 products are at

- home
treatments
, L’Oréal asserts that they are “applied after, not as part of, the claimed bleaching method.” Appellant’s Br. 42. We agree with L’Oréal that the district court erred in granting summary judgment on this issue . The accused use of Step 3 products by clients in their own homes is not
pa rt of the “method of bleaching hair” required by claim 1 (incorporated into the claims still at issue) and so cannot be infringing

. 9

9 L’Oréal also contends that Olaplex failed to prove “that a single actor performed the method steps with Case: 19-2280 Document: 98 Page: 16 Filed: 03/04/2021OLAPLEX , INC

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Although the word “subsequent” in the claim does not, standing alone, set a time limit on when the “second active agent f ormulation” is applied, the claim requires that the application of the first “ active agent formulation ” (as part of a mixture with a bleaching formulation) and also the “second active agent formulation” be part of a “method f or bleaching hair.” It would n ot be reasonable to find th e “method for bleaching hair” phrase met on the facts of record, understood in the light most fa v orable to Olaplex, about the accused uses of L’Oréal’s products. First, maleic acid within a bleaching formulation must be applied to the hair, which is allegedly achieved by application of the S tep 1 products . Second, a “second active agent formulation” that contains a conditioning agent must be applied to the hair

, which is a llegedly achieved by application of the Step 2 products

. The “method for bleaching hair” readily encompasses both of those steps when performed in the same setting ( as alleged here, a salon) in the same client visit. But when that process is complete

— Step 1 and Step 2 products have been applie d

— and the client’s visit ends, it is not reasonable, under the claim, to treat the self

- application of the Step 3 product days or weeks later as part of the “method for bleaching hair.” Applying the Step 3 product in that situation would be applying a thi rd, not second, active agent formulation.

On the summary judgment evidence of record, the Step 3 products are used by clients in their own homes following treatment with the Step 1 and 2 product s in the salon

. There is no allegation that the Step 3 produc ts are ever applied to hair that has been treated by Step 1, but not Step 2, products. Additionally, w hile there is a contention that the Step 3 products have been used by stylists in a salon

,

regard to Step 3 products.” Appellant’s Br. 44. Because weconclude that the use of the Step 3 products is not infringing activity, we do not addres s this argument. Case: 19-2280 Document: 98 Page: 17 Filed: 03/04/2021OLAPLEX , INC

. v. L ' OREAL USA , INC

. 18

there is no evidence that the Step 3 products were used in sal ons as part of the accused process after the ’954 patent issued. 10 In this case, therefore, we agree with L’Oréal thatthe district court should not have granted summary judgment because the Step 3 products are applied after, not during, the claimed bleaching method

. E

L’Oréal also argues that th e district court should not have granted summary judgment on induced infringement because there were questions of material fact concerning L’Oréal’s intent to induce infringement. W e decline to addres s this argument because our conclusions with respect to direct infringement affect the induced infringement analysis. This must be addressed on remand.
We vacate the injunction and remand for further proceedings consistent with this opinion.

VACATED AND R EMANDED

C OSTS

No c osts

.

10 Olaplex submitted an affidavit by Vicki Laris, a stylist, who stated that she had “used all three steps” of the accused products “with clients when performing bleaching treatments.” J.A. 33

, 250. However, the declaration does
not state that this use occurred after June 6, 2017, when the ’954 patent issued. Case: 19-2280 Document: 98 Page: 18 Filed: 03/04/2021