Trials@uspto.gov
` 571-272-7822
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`
`
`
`
`
` Paper 50
` September 12, 2014
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` 1 RECORD OF ORAL HEARING
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` 2 UNITED STATES PATENT AND TRADEMARK OFFICE
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` 3 - - - - - -
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` 4 BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` 5 - - - - - -
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` 6
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` 7 CLIO USA, INC.
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` 8 Petitioner
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` 9 v.
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` 10 THE PROCTER & GAMBLE COMPANY
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` 11 Patent Owner
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` 12 - - - - - -
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` 13 Cases IPR2013-00438, 2013-00448, 2013-00450
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` 14 U.S. Patent Nos. 5,894,017, 5,891,453, and 7,122,199
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` 15
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` 16 - - - - - -
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` 17 Oral Hearing Held: Monday, July 28, 2014
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` 18
`
` 19 Before: LINDA M. GAUDETTE (via audio link), JAMES P. CALVE
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` 20 (via video link), and SCOTT E. KAMHOLZ, Administrative Patent
`
`
`
` 21 Judges.
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` 22 The above-entitled matter came on for hearing on
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` 23 Monday, July 28, 2014, at 1:09 p.m., Hearing Room A, at the
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` 24 U.S. Patent and Trademark Office, 600 Dulany Street,
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` 25 Alexandria, Virginia.
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`
`
`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 APPEARANCES:
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` 2 ON BEHALF OF THE PETITIONER:
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` 3
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` 4 WILLIAM H. OLDACH, III, ESQ.
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` 5 Vorys, Sater, Seymour and Pease LLP
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` 6 1909 K Street, N.W., 9th Floor
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` 7 Washington, D.C. 20006-1152
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` 8 202-467-8880
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` 9
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` 10 ARI G. ZYTCER, ESQ.
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` 11 Vorys, Sater, Seymour and Pease LLP
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` 12 52 East Gay Street
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` 13 P.O. Box 1008
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` 14 Columbus, Ohio 43216-1008
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` 15 614-464-5420
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` 16
`
` 17 ON BEHALF OF THE PATENT OWNER:
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` 18
`
` 19 DAVID M. MAIORANA, ESQ.
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` 20 JOHN V. BIERNACKI, ESQ.
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` 21 KENNETH S. LUCHESI, ESQ.
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` 22 Jones Day
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` 23 North Point, 901 Lakeside Avenue
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` 24 Cleveland, Ohio 44114-1190
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` 25 216-586-3939
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`
`
` 2
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 ON BEHALF OF THE PATENT OWNER (continued):
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` 2
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` 3 DAVID M. WEIRICH, ESQ.
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` 4 Associate General Counsel
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` 5 The Procter & Gamble Company
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` 6 299 East Sixth Street, S5-105
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` 7 Cincinnati, Ohio 45202
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` 8 513-983-4514
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` 9
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` 10
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` 11
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` 12
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` 14
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` 3
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 P R O C E E D I N G S
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` 2
`
` (1:09 p.m.)
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` 3 JUDGE KAMHOLZ: Please be seated. Good afternoon.
`
` 4 We will hear argument now in Case Numbers IPR2013 -00438,
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` 5 IPR2013-00448, and IPR2013-00450. Clio USA, Incorporated
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` 6 versus The Procter & Gamble Company.
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` 7 Will counsel for the parties please introduce
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` 8 yourselves, starting with Petitioner.
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` 9 MR. OLDACH: Thank you, Your Honor. William
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` 10 Oldach of Vorys, Sater, Seymour and Pease, lead counsel
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` 11 arguing for Petitioner, Clio USA.
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` 12 JUDGE KAMHOLZ: Patent Owner.
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` 13 MR. MAIORANA: Thank you, Your Honor. David
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` 14 Maiorana from Jones Day, on behalf of the Patent Owner,
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` 15 Procter & Gamble Company.
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` 16 JUDGE KAMHOLZ: Good afternoon. I would like to
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` 17 introduce Judges Gaudette and Calve. Judge Calve is joining
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` 18 us by video link on the screen. Judge Gaudette is joining us
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` 19 by telephone link.
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` 20 Judge Gaudette, are you with us?
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` 21 JUDGE GAUDETTE: I am. Good afternoon.
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` 22 JUDGE KAMHOLZ: And, Judge Calve, can you hear us?
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` 23 JUDGE CALVE: Yes, I can. Good afternoon, Judge
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` 24 Kamholz.
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` 25 JUDGE KAMHOLZ: Thank you. Per our order dated
`
`
`
`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 July 1, 2014, each side will have a total of 90 minutes to
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` 2 argue. The cases will be argued in sequence, starting with
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` 3 case IPR2013-00438.
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` 4 The Petitioner will argue first for each case and
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` 5 may reserve rebuttal time. The Patent Owner may not reserv e
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` 6 rebuttal time.
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` 7 Once both parties have argued the case, the
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` 8 hearing will proceed to the next case. Each party may
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` 9 allocate its time among the three cases as it wishes.
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` 10 I will remind the parties that the Petitioner
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` 11 bears the burden of proving any proposition of
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` 12 unpatentability by a preponderance of the evidence.
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` 13 Please remember also to mention each slide number
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` 14 as you refer to it. This is especially important in order to
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` 15 ensure that the remote Judges can follow the proceeding if
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` 16 their links are disturbed.
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` 17 With that I will invite Mr. Oldach to open the
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` 18 Petitioner's case.
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` 19 MR. MAIORANA: Your Honor, we have one issue
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` 20 before Mr. Oldach begins.
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` 21 JUDGE KAMHOLZ: Yes.
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` 22 MR. MAIORANA: About two hours ago Petitioner's
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` 23 counsel filed a new exhibit in each of the proceedings, and
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` 24 it was something that we have not -- has not been filed
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` 25 previously. It was not referenced in any paper in the
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`
`
` 5
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 proceeding. I was not made aware whether they were going to
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` 2 rely on it today. It was about 11 o'clock this morning t hat
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` 3 it was filed.
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` 4 So we would raise an objection to any use of that
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` 5 exhibit in this argument today.
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` 6 JUDGE KAMHOLZ: Mr. Oldach.
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` 7 MR. OLDACH: Thank you, Your Honor. In fact,
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` 8 Mr. Maiorana is correct. We filed that because -- we do not
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` 9 intend to rely on that exhibit today. We filed it today
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` 10 because, in review over the weekend, we realiz ed it had not
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` 11 been filed and made of record.
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` 12 It was a deposition transcript, which we are
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` 13 obligated to file to make the record, which we have done, but
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` 14 it is not intended to be part of today's proceedings.
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` 15 JUDGE KAMHOLZ: Mr. Maiorana?
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` 16 MR. MAIORANA: I understand what Mr. Oldach is
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` 17 saying. We still have an objection to the late submission of
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` 18 an exhibit so close to the hearing and after the close of all
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` 19 of the motions to exclude evidence and associated briefing.
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` 20 JUDGE KAMHOLZ: I understand. I will tell you
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` 21 that the Panel has not given that submission any
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` 22 consideration yet, but we can take that matter up in a
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` 23 conference call after the hearing, if that's necessary.
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` 24 I would invite the two of you to work this out a nd
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` 25 determine whether that evidence is necessary. And if you
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`
`
` 6
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 cannot reach an agreement on that, then please request a call
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` 2 with us.
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` 3 MR. MAIORANA: Thank you, Your Honor.
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` 4 JUDGE KAMHOLZ: Sure. Before you begin,
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` 5 Mr. Oldach, do you intend to reserve any time?
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` 6 MR. OLDACH: Yes, Your Honor. And to be clear, I
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` 7 just want a point of clarification, we are arguing all three
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` 8 proceedings sequentially, that is, argument, response and
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` 9 rebuttal on 438, followed by argument, rebuttal, response on
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` 10 the other two. Is that correct?
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` 11 JUDGE KAMHOLZ: That's correct.
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` 12 MR. OLDACH: In that case, and we were invited to
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` 13 distribute our time as we chose for our 90 minutes, it is my
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` 14 intention to use 40 minutes of Petitioner's 90 minutes on the
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` 15 '017 case, so as to be able to incorporate the secondary
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` 16 consideration issues which are common to all three
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` 17 proceedings.
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` 18 So I would intend to break down Petitioner's time
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` 19 as 40 minutes on the 438 matter, and 25 on the '453 or the,
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` 20 excuse me, the 448 proceeding, 25 minutes on the '199 case.
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` 21 And for breaking down for -- in this first
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` 22 proceeding on the '017 patent, case 438, I intend to reserve
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` 23 10 minutes of our 40 for rebuttal.
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` 24 JUDGE KAMHOLZ: You may proceed when ready.
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` 25 MR. OLDACH: Thank you, Your Honor. So on the 438
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`
`
` 7
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 case, relating to the '017 patent, the key issue that we are
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` 2 going to discuss here is the analogous art issue, which
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` 3 Procter & Gamble has at length tried to distance themselves
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` 4 or distance, if you will, the Shapiro patent from the '017
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` 5 patent from the Fischer patent as being non-analogous art.
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` 6 And, again, Ground 6, the ground on which we have
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` 7 been instituted in this case, is that claim 21 is obvious
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` 8 over Fischer in view of Shapiro.
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` 9 JUDGE KAMHOLZ: Please refer to the slide numbers.
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` 10 MR. OLDACH: Thank you, Your Honor. So referring
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` 11 to our page 3, where claim 21 is set forth, we see that claim
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` 12 21 requires a delivery system for an oral care substance
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` 13 comprising a strip of material made of polyethylene, and an
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` 14 oral care substance applied to said strip of material,
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` 15 followed by several functional limitations, such that when
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` 16 said delivery system is placed on the surface of said tooth
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` 17 and its adjoining soft tissue, said substance contacts said
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` 18 surface providing an active onto said surface.
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` 19 Said substance also providing adhesive attachment
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` 20 between said strip of material and said surface to hold said
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` 21 delivery system in place for a sufficient time to allow said
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` 22 active to act upon said surface.
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` 23 Now, there really is not much question in the
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` 24 record, Your Honor, but that all of the structural features
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` 25 in this claim 21 are present and found in the combination of
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`
`
` 8
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 the Fischer reference and the Shapiro reference. The strip
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` 2 of material, polyethylene, the oral care substance being
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` 3 applied, both are clearly present.
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` 4 Moving on to our slide number 4, Your Honor, you
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` 5 will see that we had color-coded in the previous slide the
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` 6 red color for the strip of polyethylene, with the green color
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` 7 for the oral care substance which is applied to that strip.
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` 8 And in the figure 7, from the '017 patent, you can
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` 9 see how the strip is placed around the tooth so that it
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` 10 contacts the surface of said tooth.
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` 11 Notably, Your Honor, in claim 21 of the '017
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` 12 patent we are not dealing necessarily with a multitude or a
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` 13 plurality of teeth. A single tooth suffices. And the
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` 14 substance is simply an oral care substance. There is not any
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` 15 requirement that the substance be a tooth whitening or any
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` 16 other specific form of oral care substance.
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` 17 Moving onto slide 5 we see that in the '017 paten t
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` 18 Procter & Gamble discussed the fact that commercial tooth
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` 19 whiteners are available that are operable with the delivery
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` 20 system of the present invention.
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` 21 They mention a specific fluoride topical gel, not
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` 22 necessarily a whitening product, but a fluoride gel made by
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` 23 Johnson & Johnson. And that comes all from column 6 of the
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` 24 '017 patent.
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` 25 So the oral care substance in this case can
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`
` 9
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 definitely be a known substance.
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` 2 We know from the '017 patent that the strip of
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` 3 material can be a single layer of a polymer, and it
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` 4 specifically can be polyethylene. This is disclosed as
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` 5 being, you know, certainly known products within the art.
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` 6 Now, the Fischer patent teaches that an ora l care
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` 7 composition -- I am on slide 7 now, Your Honor -- the Fischer
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` 8 patent teaches that such an oral care composition can be
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` 9 sealed against the teeth using a thin, soft tray material.
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` 10 And so we see the Fischer patent there on slide 7.
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` 11 And in slide 8 we see what Fischer teaches. We
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` 12 see, for example, that Fischer teaches that a composition for
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` 13 use with his invention can have a tackiness or stickiness
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` 14 which retains and seals the soft tray material against the
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` 15 teeth, thus, meeting the adhesive attachment limitation found
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` 16 in claim 21.
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` 17 We see the soft transparent vinyl material is
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` 18 relatively thin. The thickness is only .04 inch to about .06
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` 19 inches.
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` 20 And what this means, Your Honor, is that Fischer
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` 21 shows everything in claim 21 except that the delivery
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` 22 mechanism would be a strip of polyethylene as opposed to the
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` 23 thin, soft tray that Fischer discusses.
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` 24 Now, looking at claim -- excuse me, column 2 of
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` 25 the Fischer patent, Your Honor, and I am reading from column
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`
` 10
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 2 of the Fischer patent at lines 3 to 9: "Because the time
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` 2 commitment for the actual bleaching process takes place
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` 3 outside the dental office, the cost for the procedure is
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` 4 substantially less than conventional in -office bleaching
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` 5 techniques.
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` 6 "Moreover, patient discomfort associated with home
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` 7 use teeth bleaching techniques, both during and after
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` 8 treatment, is reportedly less than that associated with
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` 9 conventional in-office bleaching."
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` 10 And going on then in line 10 in Fischer, at column
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` 11 2, he states: "Notwithstanding the foregoing advantages,
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` 12 there remains some important disadvantages to home use
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` 13 bleaching products and techniques."
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` 14 So Fischer himself in his patent, which was filed
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` 15 in 1996, stated that he was trying to solve deficiencies in
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` 16 home whitening treatments, and that his first object, in
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` 17 fact, is to improve patient compliance.
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` 18 In column 4 of the Fischer patent, lines 5 to 9,
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` 19 his first object states: "It is, therefore, an object of the
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` 20 present invention to provide improved composi tions and
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` 21 methods for treating tooth surfaces which facilitate patient
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` 22 compliance so that the ultimate purpose of the treatment is
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` 23 realized."
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` 24 Now, I don't know what better mo tivation, Your
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` 25 Honor, there could be than to move away from a bulky tray
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`
`
` 11
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 device. Fischer stated that he was taking an existing bulky
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` 2 tray and making it less bulky to improve patient compliance,
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` 3 but right there is where your motivation is to try to find
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` 4 something that would be even less bulky than even this thin
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` 5 tray that Fischer had developed. And that is where we come
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` 6 to the Shapiro patent.
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` 7 Note in our slide 9 how Fischer discloses the
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` 8 contact of his tray and the substance onto the tooth in a
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` 9 very similar manner to how that is disclosed in the '017
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` 10 patent.
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` 11 So we come then to the Fischer patent -- excuse
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` 12 me, the Shapiro patent. And there is the face page of that,
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` 13 our slide 10, Your Honor. And we see at our slide 11 that
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` 14 Shapiro, pardon me, Shapiro teaches a thin, flat, disposable
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` 15 polyethylene film to be worn upon the teeth and gums for the
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` 16 hygienic protection of teeth and gums.
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` 17 So that keyword "hygienic" is certainly going to
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` 18 be relevant here. We have coded the polyethylene film in
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` 19 purple, this purple-bluish color, as you can see there on
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` 20 page 11.
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` 21 So then we get to the question of whether Shapiro
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` 22 and Fischer are analogous art. As the Board found in
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` 23 instituting the proceeding, they are, of course, both
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` 24 analogous art. Procter & Gamble denies this as to Shapiro.
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` 25 I don't think they really could deny that with respect to
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`
`
` 12
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 Fischer.
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` 2 But as we look at our slide 12, if you look at the
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` 3 background section of the '017 patent compared to Shapiro,
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` 4 you see these terms in both references being repeated very
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` 5 often.
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` 6 In the '017 patent, we see in the very first line
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` 7 that they are talking about dental hygiene. Line 2 they
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` 8 mention toothbrush. They talk about a toothbrush aiding in
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` 9 the removal of food particles in line 3. They talk about the
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` 10 use of toothpaste.
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` 11 They talk about, down -- and this is about I think
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` 12 at line 19 or 20 -- consumers have turned their attention to
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` 13 cosmetic aspects of dental care, as highlighted here on our
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` 14 slide 12.
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` 15 The cosmetic aspects then that the '017 patent is
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` 16 talking about are aspects of dental care. There is no great
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` 17 mystery in the fact that these things are all related to
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` 18 dental hygiene. Look at Shapiro. Shapiro's first statement
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` 19 in the field of invention is that the invention concerns a
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` 20 device to be worn in a person's mouth du ring eating for the
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` 21 hygienic protection of teeth and gums.
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` 22 JUDGE KAMHOLZ: In the '017 patent, the very first
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` 23 sentence defines the field of invention as: For the delivery
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` 24 of an oral care substance to one's oral tissue.
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` 25 Why does that not control the definition of the
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`
`
` 13
`
`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 field?
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` 2 MR. OLDACH: I believe, Your Honor, that in cases
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` 3 such as Bigio, we look not just -- it is not just for the
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` 4 field of invention. It is also the background invention that
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` 5 is relevant for determining the relevant field of invention.
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` 6 And just because there may be a system for the
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` 7 delivery of a tooth-whitening substance does not necessarily
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` 8 limit the consideration of a device such as Shapiro, which
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` 9 has a film that could be used for such a purpose.
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` 10 JUDGE KAMHOLZ: But isn't that what the inventor
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` 11 regards as the field?
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` 12 MR. OLDACH: I believe, no, Your Honor, that under
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` 13 analogous art you have to look at the invention of the patent
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` 14 as a whole. And regardless of an inventor's subjective
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` 15 intent, you have to evaluate all of the items that are set
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` 16 out in the patent to determine what the field is for purposes
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` 17 of an analogous art determination.
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` 18 The '017 patent clearly says that this also bears
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` 19 on dental hygiene. Shapiro clearly directed to dental
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` 20 hygiene.
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` 21 As I mentioned Your Honor, in In Re Bigio the test
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` 22 as set forth was, and I am quoting: "First, whether the art
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` 23 is from the same field of endeavor, regardless of the problem
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` 24 addressed and, second, if the reference is not within the
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` 25 field of the inventor's endeavor, whether the reference still
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`
`
` 14
`
`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 is reasonably pertinent to the particular problem with which
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` 2 the inventor is involved."
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` 3 Now, Procter & Gamble has attempted, and many of
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` 4 their slides are directed to this, they try to explain away
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` 5 the first prong of the test by saying that the invention is
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` 6 an oral care delivery system and that Shapiro, therefore,
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` 7 becomes the very opposite thing.
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` 8 And that's just plain wrong. We see here, again,
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` 9 the use of dental hygiene. They refer to toothbrushes and
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` 10 they refer to food particles in the background of the
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` 11 invention, the same thing that Shapiro is talking about his
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` 12 strip as being a way of preventing fool particles.
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` 13 You know, but the large point is that you can't
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` 14 have a background section that talks about aspects of dental
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` 15 hygiene, and how this is one such aspect, and then try to
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` 16 avoid dental hygiene being your field of endeavor.
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` 17 In fact, one thing you can also notice from our
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` 18 slide 12, Your Honor, and from the first column of th e '017
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` 19 patent, is notice how the Patent Owner uses its brand Crest
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` 20 in this second paragraph.
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` 21 And that itself, Your Honor, is an indication that
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` 22 under the Crest brand Procter & Gamble is considering all of
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` 23 these things to be somewhat related. Crest toothpaste.
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` 24 Crest toothbrushes. Crest floss. Things that Shapiro may be
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` 25 more particularly directed at, but also Crest Whitest rips.
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`
`
` 15
`
`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 It is, in effect, a position by Procter & Gamble
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` 2 that the Crest brand deals with dental hygiene and dental
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` 3 hygiene is all under one umbrella and it is all analogous.
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` 4 JUDGE KAMHOLZ: What evidence concerning the field
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` 5 of endeavor did you present in the petition?
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` 6 MR. OLDACH: Well, the evidence of the f ield of
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` 7 endeavor, Your Honor, comes most directly from the references
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` 8 themselves. And the '017 patent itself and, of course,
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` 9 Shapiro are of record and were discussed in the petition.
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` 10 JUDGE KAMHOLZ: Your expert did not comment on
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` 11 that, did he?
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` 12 MR. OLDACH: The expert did not specifically
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` 13 address that issue. Now, this is an issue that bears, I
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` 14 think, both on the 438 matter and the 453 matter -- excuse
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` 15 me, the 448 matter, Your Honor.
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` 16 The main thrust of the expert's testimony that was
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` 17 submitted with the petition was in support of the i nherency
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` 18 position of the Handle-O-Meter claims, and those claims, you
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` 19 know, were not instituted.
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` 20 We would take the position that there was no need
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` 21 in the petition to provide expert testimony on the question
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` 22 of analogous art in this matter. The plainness of the
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` 23 disclosures we believe is more than sufficient to carry the
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` 24 burden by a preponderance of evidence that these two
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` 25 references are analogous.
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`
`
` 16
`
`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 JUDGE CALVE: Mr. Oldach, is it your contention
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` 2 that they are analogous under the field of endeavor t est or
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` 3 reasonably pertinent to the problem or both?
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` 4 MR. OLDACH: It would be the field of endeavor
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` 5 test, Your Honor, is what we are primarily relying on.
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` 6 JUDGE CALVE: In claim 21, Mr. Oldach, it is
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` 7 claiming a delivery system. I guess the background in the
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` 8 '017 describes delivery mechanisms.
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` 9 How do you feel that the device that doesn't
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` 10 deliver and appears to be directed toward preventing delivery of
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` 11 anything to the teeth is the same field of endeavor?
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` 12 MR. OLDACH: Because they all deal with dental
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` 13 hygiene, Your Honor. For example, we know that Petitioner --
`
` 14 excuse me, the Patent Owner in the '017 patent has said, for
`
` 15 example, that toothbrushes and toothpaste are in the same
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` 16 field of endeavor as these Whitestrips, for exa mple.
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` 17 There can be toothpaste that carries a whitening
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` 18 aspect. The toothbrush, you know, it is carried by the
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` 19 toothbrush. The toothbrush removes food particles just as
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` 20 Shapiro would. They are really trying to slice it, you know,
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` 21 slicing the bologna thin by arguing that Shapiro somehow is
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` 22 non-analogous to the '017 patent.
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` 23 JUDGE CALVE: Mr. Oldach, is it slicing it too
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` 24 thin? Perhaps the prior art reference is intended to
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` 25 preclude the need for delivery systems if it is worn.
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`
`
` 17
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`

`

`Case Nos. IPR2013-00438,448, 450
`Pat Nos. 5,894,017, 5,891,453, 7,122,199
`
`
` 1 So is that, in fact, perhaps a different field of
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` 2 endeavor than what the '017 patent is directed to?
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` 3 MR. OLDACH: No, I disagree, Your Honor. Again,
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` 4 the overall goal is dental hygiene. And they try to argue
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` 5 that dental hygiene is too broad a field, but I would
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` 6 disagree.
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` 7 However, you are trying to prevent, you know, the
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` 8 mal-effects from food or anything else, again, a tooth brush
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` 9 we know is part of dental hygiene. We know these Whitestrips
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` 10 are part of dental hygiene.
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` 11