L’Oréal hair treatment infringes Olaplex patent, says court

The English High Court has said that Smartbond Step 1, a hair repair product sold by cosmetics brand L’Oréal, infringes a patent licensed by California-based Olaplex.

Mr Justice Birss ruled yesterday, June 11, that the product infringes one amended claim of the disputed patent, which covers the Olaplex No. 1 Bond Multiplier.

Olaplex’s treatment has been used by celebrities including Kim Kardashian and Jennifer Lopez.

The UK patent in dispute is number GB 2,525,793, called “Keratin treatment formulations and methods”. Olaplex exclusively licenses the patent from a company called Liqwd. According to the judgment, hair is mostly made of keratin, a naturally-occurring polymer of amino acid monomers.

Olaplex launched the No. 1 Bond Multiplier in June 2014 and it made $100 million in sales in the first year. Like the No. 1 Bond Multiplier, L’Oréal’s disputed product, Smartbond Step 1, contains maleic acid, but not in the same form. It was released in 2015. Birss noted that L’Oréal allegedly tried to buy Olaplex before marketing its product, but that this had no bearing on the issues in the case.

L’Oréal denied it had infringed the patent, and counterclaimed for invalidity, while also seeking a finding of non-infringement for an alternative formulation of the Smartbond Step 1. Olaplex then asked to amend the patent in response to L’Oréal’s counterclaim of invalidity.

In his ruling, Birss said claims 1 to 10 of the patent are invalid, as are the same numbered claims of the amended patent. However, he said the amended claim 11 is valid and infringed. 

A spokesperson for L’Oréal said that claim 11 is specifically related to the use of the technology for the sole purpose of reducing damage during bleaching.

Commenting on the ruling, they said: "We strongly disagree with this decision, which is applicable only in the UK, and we will be applying for permission to appeal. Therefore, as legal proceedings remain ongoing, we will not be commenting further at this time."

The decision followed a six-day trial in April and May, with Hogan Lovells instructing barristers on behalf of Olaplex and Baker McKenzie doing the same for L’Oréal. There will now be a separate hearing where Birss will decide on Olaplex’s request for an injunction against the Smartbond Step 1.

Bethan Hopewell, partner at law firm Powell Gilbert, said while it may be surprising to some that such a large cosmetics brand as L’Oréal was defeated by a start-up, "those working in the IP field will know that it is difficult to prevail over good invention".

She added: "Ultimately, this is what determined the matter."

The companies are also locked in a US patent battle over their products. In January this year, the US Court of Appeals for the Federal Circuit set aside a lower court’s decision that had rejected a preliminary injunction in favour of Olaxplex after it sued L’Oréal for infringement. Proceedings are ongoing.