Brightex Bio-Photonics, LLC v. L'Oreal USA, Inc.

Background

Brightex alleged that L'Oreal infringed U.S. Patent Nos. 9,842,358 and 9,542,595. On March 6, 2025, the court granted L'Oreal’s motion to dismiss under 35 U.S.C. § 101 and the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank International as to the ’358 Patent. The court dismissed Brightex’s infringement claim involving that patent with prejudice. The infringement claim involving the ’595 Patent remained pending.

Brightex moved under Federal Rule of Civil Procedure 54(b) for entry of final judgment on the ’358 Patent claim. Rule 54(b) allows a court to enter final judgment on fewer than all claims in a case if the resolved claim is final and there is no just reason to delay judgment. Brightex argued that the two patent claims were separate, that the ’358 Patent ruling involved issues unique to that patent, and that immediate judgment would allow an immediate appeal. L'Oreal did not dispute that the ’358 Patent dismissal was final, but argued that immediate review could create duplicative or piecemeal appeals because the patents involved similar technology, websites, evidence, and testimony. L'Oreal alternatively asked the court to deny the motion.

Court’s Analysis

The court found that the dismissal with prejudice of the ’358 Patent infringement claim was a final adjudication and satisfied the first Rule 54(b) requirement. It then considered judicial efficiency and the equities to determine whether there was a just reason to delay entry of judgment.

The court concluded that the issues concerning the ’595 Patent did not hinge on the ruling concerning the ’358 Patent. The earlier ruling applied the two-step analysis from Alice to the claims and specification of the ’358 Patent, asking whether the claims were directed to an abstract idea and, if so, whether they contained an inventive concept. Because the claims and specifications of the two patents did not overlap, the court found that this analysis was unique to the ’358 Patent. The court therefore concluded that an immediate appeal would not require the Federal Circuit to decide the same issues more than once, even if the ’595 Patent were later found invalid under Section 101.

The court distinguished decisions cited by L'Oreal because those cases involved circumstances such as overlapping claim terms, multiple patents facing similar challenges, or a greater risk of successive appeals. The court also found that the equities did not strongly favor either party, but concluded that immediate appeal of the unique ’358 Patent issues would not prejudice L'Oreal.

Ruling

The court GRANTED Brightex’s Rule 54(b) motion. It concluded that there was no just reason for delay in entering judgment on the ’358 Patent claim and found that a stay of the ’595 Patent litigation was unwarranted. The court instructed the clerk to enter a separate partial judgment in favor of L'Oreal on Brightex’s claim for infringement of U.S. Patent No. 9,842,358, which had been dismissed with prejudice in the March 6, 2025 order.