Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 62
`Entered: February 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CONOPCO, INC. dba UNILEVER,
`Petitioner,
`
`v.
`
`THE PROCTER & GAMBLE COMPANY,
`Patent Owner.
`_______________
`
`Case IPR2013-00509
`Patent 6,451,300 B1
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.C.S. § 318(a) and 37 C.F.R. § 42.73
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`IPR2013-00509
`Patent 6,451,300 B1
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`I. INTRODUCTION
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`A. Background
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`Conopco, Inc. dba Unilever (“Petitioner”), filed a Petition requesting an
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`inter partes review of claims 1–25 of U.S. Patent No. 6,451,300 B1 (Ex. 1001, “the
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`’300 patent”). Paper 2 (“Pet.”). The Procter & Gamble Company (“Patent
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`Owner”) filed a Preliminary Response. Paper 8. In a Decision on Institution
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`(Paper 10, “Dec.”), we instituted trial on three grounds of unpatentability as set
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`forth in the chart below.
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`Reference
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`Kanebo1
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`Kanebo
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`Evans2
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`Basis
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`Claims Challenged
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`§ 102(b)
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`1, 2, 4, 5, 11, 13, 16, 17, and 20
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`§ 103
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`§ 103
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`3, 18, and 25
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`1, 12, 16, 19, and 24
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`
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`Within the time periods allowed by our rules, Patent Owner filed a Response
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`and Petitioner filed a Reply. Paper 35 (“PO Resp.”); Paper 45 (“Reply”). The
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`parties also fully briefed Patent Owner’s Motion to Exclude Evidence. Paper 54
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`(“PO Mot. Ex.”); Paper 55 (“PO Mot. Ex. Resp.”); Paper 56 (“PO Mot. Ex.
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`Reply”).
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`A combined oral hearing was conducted on November 5, 2014, in this
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`proceeding and IPR2013-00505, which relates to U.S. Patent No. 6,974,569 B2,
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`(“the 505 Proceeding”), and involves the same parties. Paper 60 (“Tr.”).
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`Concurrently herewith, we issue a Final Written Decision in the 505 Proceeding.
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`
`1 Kanebo, JP 9-188614 (July 22, 1997) (English translation) (Ex. 1006).
`2 Evans, WO 97/14405 (Apr. 24, 1997) (Ex. 1010).
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`IPR2013-00509
`Patent 6,451,300 B1
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
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`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons set
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`forth below, we determine that Petitioner has demonstrated, by a preponderance of
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`the evidence, the unpatentability of claims 1–5, 11–13, 16–20, 24, and 25.
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`Specifically, a preponderance of the evidence demonstrates that:
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`(1) claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 are anticipated by Kanebo under
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`35 U.S.C. § 102(b);
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`(2) claims 3, 18, and 25 are unpatentable over Kanebo under 35 U.S.C.
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`§ 103; and
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`(3) claims 1, 12, 16, 19, and 24 are unpatentable over Evans under 35 U.S.C.
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`§ 103.
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`B. Related Proceedings
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`The ’300 patent is the subject of co-pending district court litigation initiated
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`after the filing of the Petition. See Procter & Gamble Co. v. Conopco, Inc., 1:13-
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`cv-00732-TSB (S.D. Ohio) (filed Oct. 10, 2013). Petitioner also filed a second
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`petition seeking inter partes review of claims 6–10, 14, 15, and 21–23 of the ’300
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`Patent, which we denied. IPR2014-00507, Paper 17 (denying review).
`
`C. The ’300 Patent
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`The ’300 patent is directed to a shampoo composition and method for
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`providing a combination of anti-dandruff efficacy and hair conditioning. Ex. 1001,
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`2:20–22. According to the ’300 patent specification,
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`“[t]hese shampoos compositions comprise: (A) from about 5% to
`about 50%, by weight, of an anionic surfactant; (B) from about 0.01%
`to about 10%, by weight, of a non-volatile conditioning agent; (C)
`from about 0.1% to about 4%, by weight, of an anti-dandruff
`particulate; (D) from about 0.02% to about 5%, by weight of the
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`composition, of at least one cationic polymer; (E) from 0.005% to
`about 1.5%, by weight, of a polyalkylene glycol; and (F) water.”
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`Id. at 2:22–30. The specification further defines the polyalkylene glycol. Id. at
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`2:30–33. The specification also sets forth five examples of the claimed shampoo
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`composition. Id. at 31:50–33:45. The specification describes a method for
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`applying the shampoo to the hair and scalp, which preferably has been wetted with
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`water, in an amount that is effective to confer anti-dandruff efficacy and hair
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`conditioning; the shampoo thereafter is rinsed off. Id. at 2:34–37, 31:24–28.
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`D. Illustrative Claim
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`The independent claims—claims 1 and 19—specify a shampoo composition
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`comprising an anionic surfactant, a non-volatile conditioning agent, an anti-
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`dandruff particulate, a cationic polymer, and a polyalkylene glycol. Weight-
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`percent ranges are specified for the components.
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`Claim 1, reproduced below, is illustrative of the claimed subject matter.
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`1. A shampoo composition comprising:
`a) from about 5% to about 50%, by weight of the composition, of an anionic
`surfactant;
`b) from about 0.01% to about 10%, by weight of the composition, of a non-
`volatile conditioning agent;
`c) from about 0.1% to about 4%, by weight of the composition, of an anti-
`dandruff particulate;
`d) from about 0.02% to about 5%, by weight of the composition, of at least
`one cationic polymer;
`e) from 0.005% to about 1.5%, by weight of the composition, of a
`polyalkylene glycol corresponding to the formula:
`
`
`i) wherein R is selected from the group consisting of hydrogen,
`methyl and mixtures thereof;
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`ii) wherein n is an integer having an average value from about 1,500
`to about 120,000; and
`f) water.
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review proceeding, we give claim terms in unexpired
`
`patents their broadest reasonable interpretation in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). Under that standard, we
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`assign claim terms their ordinary and customary meaning, as understood by a
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`person of ordinary skill in the art, in the context of the entire patent disclosure. In
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`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If an inventor acts
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`as his or her own lexicographer, the definition must be set forth in the specification
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`with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
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`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
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`The independent claims—claim 1 and 19—specify a shampoo composition
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`comprising each required ingredient in an amount that falls within specified
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`weight-percent ranges. Neither party advances a special meaning for any claim
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`term. Claims 13 and 19 require a “zinc salt of 1-hydroxy-2-pyridinethione.”
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`Petitioner argues, and Patent Owner does not contest effectively, that the terms
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`“zinc salt of 1-hydroxy-2-pyridinethione” and “zinc pyrithione” interchangeably
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`refer to the same chemical component. Pet. 5 (citing Ex. 1001, 16:55–59, 32:30–
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`51 & n.4; Ex. 1003 ¶ 17); see generally PO Resp. On this record, we construe each
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`claim term according to its ordinary and customary meaning, consistent with the
`
`specification, and determine that no term needs further interpretation for the
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`purpose of rendering this Final Written Decision.
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`B. Anticipation of Claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 by Kanebo
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`Petitioner’s claim charts, substantive arguments, and supporting Declaration
`
`of Arun Nandagiri3 show sufficiently that Kanebo in Example 10 describes a
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`shampoo composition comprised of components in weight-percent ranges that
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`meet the limitations of claims 1, 2, 4, 5, 11, 13, 16, 17, and 20.4 Pet. 10–18;
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`Ex. 1003 ¶¶ 35–47, 50–60, 62–63; Ex. 1006 ¶ 37 (Kanebo Example 10).
`
`Regarding claim 13, which depends from claim 1 and further requires that
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`“said anti-dandruff particulate is a zinc salt of 1-hydroxy-2-pyridinethione,” we
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`find that the “zinc pyrithione” in Kanebo’s Example 10 (Ex. 1006 ¶ 37) is a
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`synonym for the zinc salt required by claim 13. Pet. 12, 14; Ex. 1003 ¶¶ 39, 40;
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`see Pet. 5 (citing Ex. 1001, 16:55–59, 32:30–51 & n.4; Ex. 1003 ¶ 17). For
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`example, the two terms are used interchangeably in the specification of the ’300
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`patent, which identifies both as the same chemical compound, designated as
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`“ZPT.” Ex. 1001, 16:55–59, 31:41–45, 32:30–51 & n.4; see Ex. 1003 ¶¶ 17, 56–
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`57 (explaining the disclosures, relating to ZPT, in the ’300 patent).
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`Claim 20, moreover, recites “[a] method for providing anti-dandruff efficacy
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`and conditioning hair” and requires “a) wetting said hair with water; b) applying to
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`3 Petitioner’s witness, Dr. Nandagiri, has over 30 years of experience formulating
`shampoos, and in that capacity, has “been personally involved in the formulation
`of hundreds of hair care products.” Ex. 1003 ¶ 4. Dr. Nandagiri has significant
`experience formulating and testing both conditioning and anti-dandruff shampoos.
`Id. ¶¶ 5–7, 9. Dr. Nandagiri has the requisite familiarity with shampoo formulation
`and testing to opine on the views of a hypothetical person of ordinary skill in the
`art. See id. ¶¶ 4-10. We find his testimony credible and persuasive.
`4 In our decision to institute, we expressly denied trial as to claim 3 based on
`anticipation by Kanebo. Dec. 9–10. We decline to consider Petitioner’s further
`argument, stated in the Reply brief, that claim 3 is anticipated by Kanebo. Reply 2.
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`said hair an effective amount of a shampoo composition according to claim 1; and
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`c) rinsing said shampoo composition from said hair using water.” Ex. 1001,
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`35:11–17. Kanebo discloses an evaluation of the composition of Example 10 that
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`involves assessing “usability upon rinsing.” Ex. 1006 ¶ 38. Kanebo further
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`discloses a method for evaluating shampoo that involves hair that is “washed . . .
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`followed by rinsing.” Ex. 1006 ¶ 21; see Ex. 1003 ¶¶ 62–63.
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`Patent Owner advances no arguments or evidence responsive to the
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`anticipation ground based on Kanebo. See PO Resp. 12–13 (electing to exclude the
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`anticipation ground from the statement of issues); see generally id. (limiting
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`argument to obviousness grounds based on Kanebo and Evans). Furthermore,
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`Patent Owner’s witness, Dr. Robert Y. Lochhead, states no opinion about the
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`underlying facts surrounding the anticipation ground, nor does he opine upon the
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`ultimate conclusion that Kanebo teaches each and every limitation of the claims
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`challenged in the anticipation ground. Ex. 2015 ¶ 27 (sole paragraph that
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`addresses anticipation, stating general principles of law); id. ¶¶ 32, 67 (limiting
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`opinions to the obviousness grounds set for trial).5
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`5 Exhibit 2015 is a declaration of Patent Owner’s witness, Dr. Robert Y.
`Lochhead, filed July 25, 2014. Dr. Lochhead has been employed in academia for
`about 25 years and has significant experience practicing and teaching in the field of
`polymer chemistry. Ex. 2015 ¶¶ 6–7, 9. We are persuaded that Dr. Lochhead is an
`expert in polymer chemistry. His level of experience directly related to
`formulating shampoos, however, is less clear. He states that “some” of the 24
`patents and applications in which he is named as an inventor “relate to shampoo
`compositions.” Id. ¶ 8. He states that he has “consulted widely for the personal
`care industry, particularly in fields of chemistry, polymer chemistry, and other
`industrial chemical applications.” Id. ¶ 11. He also states that he has “authored
`alone, or with colleagues, a number of articles and book chapters” that relate to
`shampoo formulations, without identifying particular individual contributions that
`he made to that work. Id. ¶ 12.
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`We have considered the evidence of the whole record, and conclude that a
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`preponderance of the evidence supports a conclusion that claims 1, 2, 4, 5, 11, 13,
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`16, 17, and 20 are anticipated by Kanebo under 35 U.S.C. § 102(b).
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`C. Obviousness of Claims 3, 18, and 25 over Kanebo
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`We first turn to claim 3, which indirectly depends from claim 1. Ex. 1001,
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`34:5–7. Claim 1 requires “at least one cationic polymer,” and claim 2, which
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`depends from claim 1, further requires a cationic polymer that is selected from a
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`group defined as “guar derivatives, cellulose derivatives, and mixtures thereof.”
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`Id. at 33:55; 34:1–5. Claim 3 depends from claim 2, and limits the recited “guar
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`derivatives” to “guar hydroxypropyltrimonium chloride.” Id. at 34:5–7. Kanebo’s
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`Example 10 teaches each component of the shampoo composition required by
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`claim 3, but for that specified guar derivative. Ex. 1006 ¶ 37.
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`A preponderance of the evidence persuades us that cationic polymers are
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`included in shampoo formulations to “help achieve conditioning efficacy”; in fact,
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`Patent Owner’s own witness recognizes that function of cationic polymers in
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`shampoo compositions. Ex. 2015 ¶ 52 (citing Ex. 1006 ¶ 14); see Pet. 15–17;
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`Ex. 1003 ¶¶ 48–49, 62–63; Ex. 1034 ¶¶ 29–30. Petitioner advances evidence
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`(Ex. 1003 ¶ 49) that the specific cationic polymer (guar hydroxypropyltrimonium
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`chloride) required by claim 3 is a component in Kanebo’s Example 8 (Ex. 1006
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`¶ 31 n.*2), and, further, that the specified guar derivative is an art-recognized,
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`interchangeable alternative for the cationic polymer (the cationized cellulose
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`derivative) employed in Kanebo’s Example 10. Pet. 15–16; see Ex. 1006 ¶ 14
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`(preferred cationic polymers include cationized cellulose derivative and cationized
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`guar gum derivative), ¶ 37 (disclosing use of cationized cellulose derivative in
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`Example 10); see also Ex. 1003 ¶ 49 (explaining Kanebo’s disclosure); Ex. 1034
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`¶¶ 29–32 (explaining interchangeability of cationic polymers in Kanebo’s
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`Examples 8 and 10). Based on the whole record developed during trial, we are
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`persuaded that Kanebo on its face evidences the interchangeability of the specified
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`guar derivative (disclosed in Example 8) for the cationized cellulose derivative
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`(disclosed in Example 10).
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`Patent Owner counters that the guar and cellulose derivatives disclosed in
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`Kanebo were not recognized as interchangeable components in a shampoo
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`formulation. Ex. 2015 ¶¶ 49–55. Specifically, Patent Owner advances the
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`testimony of Dr. Lochhead, who points out that Kanebo’s Example 8, which
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`includes the specified guar derivative, does not include also an anti-dandruff agent.
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`Dr. Lochhead, however, provides no persuasive reason why that fact diminishes a
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`conclusion that the guar derivative of Example 8 would have been recognized as
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`interchangeable with the cationized cellulose of Kanebo’s Example 10 for the
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`common function of improved conditioning. Id. ¶ 52.
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`Dr. Lochhead states also that the shampoo of Kanebo’s Example 10 already
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`exhibits “excellent” conditioning properties; therefore, one would not have been
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`prompted to add (or swap in) to that formulation another cationic polymer, such as
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`the specified guar derivative disclosed in Example 8. Id. ¶ 53. That argument is
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`unpersuasive because, where two known alternatives are interchangeable for a
`
`desired function, an express suggestion to substitute one for the other is not needed
`
`to render a substitution obvious. In re Fout, 675 F.2d 297, 301 (CCPA 1982); In
`
`re Siebentritt, 372 F.2d 566, 568 (CCPA 1967); see KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 417 (2007) (indicating that a claim is obvious if it is no “more than
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`the predictable use of prior art elements according to their established functions,”
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`even without an express suggestion to combine).
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`Dr. Lochhead also suggests that Petitioner was required, in the Petition, to
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`establish that the proposed substitution “would have resulted in a composition that
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`forms a coacervate upon aqueous dilution.” Ex. 2015 ¶ 54. Petitioner replies,
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`persuasively, that none of the claims require a coacervate. Reply 7. In any event,
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`a preponderance of the evidence persuades us that “cationic guar and cellulose
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`derivatives were recognized deposition aids that had been in use for decades prior
`
`to the ’300 patent,” and that “their interchangeability and functions in [anti-
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`dandruff] conditioning shampoos” were known at the time of the invention.
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`Reply 4; Ex. 1034 ¶ 31; see also id. ¶¶ 29–32 (opinions of Dr. Nandagiri, and
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`objective support cited therein, regarding the interchangeability of the two cationic
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`polymers). On that point, we credit Dr. Nandagiri’s testimony, “that coacervates
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`formed from anionic surfactants and guar or cellulose derivatives were discovered
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`in the 1970s and 1980s,” and that the guar derivative disclosed in Kanebo’s
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`Example 8, and required by claim 3, “was particularly well known and widely used
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`in shampoos prior to the ‘300 patent.” Ex. 1034 ¶¶ 31–32 (and objective support
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`cited therein).
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`Based on the evidence of record, we conclude that a person of ordinary skill
`
`in the art would have understood that the guar derivative in Kanebo’s Example 8
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`(and specified in claim 3) is an interchangeable alternative for the cellulose
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`derivative disclosed in Kanebo’s Example 10. Pet. 16. A preponderance of the
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`evidence persuades us, therefore, that the subject matter of claim 3 would have
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`been obvious over Kanebo.
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`We next turn to claims 18 and 25, which require ethylene glycol distearate
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`(“EGDS”) as a suspending agent. The crux of the dispute surrounding those
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`claims is whether one would have been prompted to substitute EGDS for the
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`ethylene glycol dimyristate (“EGDM”), which is disclosed as a pearlescent agent
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`in Kanebo’s Example 10. Ex. 1006 ¶ 37. A preponderance of the evidence shows
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`that EGDS and EDGM were known at the time of the invention, not only as
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`equivalent pearlescent agents, but also as equivalent suspending agents. Ex. 1034
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`¶ 34. Both ingredients appear in lists of preferred glycerol esters in Kanebo’s
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`general disclosure (Ex. 1006 ¶ 16), and in the ’300 patent specification (Ex. 1001
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`26:12–16). Pet. 17 (citing Ex. 1003 ¶ 61).
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`We have considered Patent Owner’s evidence, advanced in support of the
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`argument that EGDS and EDGM would not have been recognized as
`
`interchangeable in a shampoo formulation. PO Opp. 16–19. On that point,
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`however, we credit the testimony of Petitioner’s witness, Dr. Nandagiri, over that
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`of Patent Owner’s witness, Dr. Lochhead. Compare Ex. 1003 ¶ 61 (Dr.
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`Nandagiri’s declaration testimony), with Ex. 2015 ¶ 45 (Dr. Lochhead’s
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`declaration testimony).6 Both ingredients are linear fatty acid glycol diesters—
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`EGDS is used in six of Kanebo’s shampoo formulations, whereas EDGM is used
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`in five—thus underscoring their interchangeability. Reply 4–5; Ex. 1006 ¶¶ 16,
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`31, 37–38; Ex. 1034 ¶ 33. A preponderance of the evidence persuades us that it
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`would have been obvious at the time of the invention to substitute EGDS for
`
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`6 Dr. Nandagiri has worked extensively in the field of shampoo formulation and
`testing for over 30 years. Ex. 1003 ¶¶ 4–10; Ex. 1004 (curriculum vitae). Patent
`Owner directs us to no persuasive evidence that Dr. Lochhead has had any
`significant experience formulating or testing shampoos after about 1990. Ex. 2015
`¶¶ 5–12; Ex. 2016 (curriculum vitae). Where their testimony conflicts, we find
`that Dr. Nandagiri’s opinions, regarding the state of the art in 1999, are more
`credible than those of Dr. Lochhead. See supra notes 3, 5.
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`EDGM in the shampoo composition described in Kanebo’s Example 10 and,
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`thereby, attain the subject matter of claims 18 and 25. Pet. 17, 19; Ex. 1001,
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`26:12–16; Ex. 1003 ¶ 61; Ex. 1006 ¶¶ 16, 37; Ex. 1034 ¶¶ 33–36.
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`In Patent Owner’s view, Petitioner fails to show sufficiently why an ordinary
`
`artisan would have been prompted to make the proposed substitutions of
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`ingredients in Kanebo. PO Resp. 13–14. The only substitutions necessary,
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`however, involve the exchange, or swapping, of interchangeable ingredients, which
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`were known to serve the same function in a shampoo formulation. Where two
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`known alternatives are interchangeable for a desired function, an express
`
`suggestion to substitute one for the other is not needed to render a substitution
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`obvious. In re Fout, 675 F.2d at 301; In re Siebentritt, 372 F.2d at 568; see KSR
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`Int’l Co., 550 U.S. at 417. That same settled principle of patent law undercuts
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`Patent Owner’s further argument—that the obviousness ground “fail[s] because
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`[Petitioner] points to no flaws or shortcomings in the disclosure of Kanebo that
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`would have motivated [a person of ordinary skill in the art] to modify it.”
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`PO Resp. 15.
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`Patent Owner’s further argument, that Kanebo and the ’300 patent focus on
`
`solving different problems, is not supported by a preponderance of the evidence.
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`PO Resp. 14–15. Kanebo’s Example 10 discloses an anti-dandruff, conditioning
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`shampoo formula; thus, Patent Owner’s suggestion that Kanebo falls outside the
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`range of relevant prior art is unpersuasive. Ex. 1006 ¶ 37 (Kanebo’s Example 10).
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`Based on the evidence of the whole record, we are persuaded that Petitioner
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`has shown by a preponderance of the evidence that the subject matter of claims 3,
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`18, and 25 would have been obvious over Kanebo.
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`D. Obviousness of Claims 1, 12, 16, 19, and 24 over Evans
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`Petitioner’s claim charts, substantive arguments, and Declaration of
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`Dr. Nandagiri show sufficiently that claims 1, 12, 16, 19, and 24 would have been
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`obvious over Evans. Pet. 38–46; Ex. 1003 ¶¶ 84–90 (and citations therein to
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`Ex. 1010 (Evans)).7 In particular, Petitioner directs us to credible evidence from
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`which we find that Evans discloses a shampoo formulation comprising components
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`in ranges that meet, are subsumed by, or overlap the ranges specified in those
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`claims. Pet. 38–46. Patent Owner raises no evidence that casts any reasonable
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`doubt on that finding. PO Resp. 22–23. We conclude that, to the extent that the
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`weight-percent range stated in those claims for any shampoo ingredient is critical,
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`a desire to identify in Evans’s composition the optimal or workable range, by
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`routine experimentation, would have led a skilled artisan to the specified range.
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`Pet. 41–42 (citing Ex. 1003 ¶ 86).
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`Patent Owner raises two arguments in an attempt to counter that conclusion.
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`We find both unpersuasive. First, Patent Owner submits that Evans solves a
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`problem unrelated to the anti-dandruff efficacy that is of concern in the ’300
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`patent. PO Resp. 22–23. Yet, Patent Owner observes that Evans discloses the use
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`of optional anti-dandruff agents in a conditioning shampoo. Id. at 23; Ex. 1010,
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`28–298 (Evans, disclosing “anti-dandruff aids” and “antidandruff agents such as
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`pyridinethione salts”). On this record, we are persuaded that a preponderance of
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`evidence supports a finding that Evans addresses anti-dandruff efficacy, and is
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`within the scope of the relevant prior art.
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`7 Here again, where their testimony conflicts, we find that Dr. Nandagiri’s
`opinions are more credible than those of Dr. Lochhead. See supra notes 3, 5, 6.
`8 We refer to the numbers centered on the bottom of the pages of this exhibit.
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`Second, Patent Owner submits that one would arrive at the subject matter of
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`claims 1, 12, 16, 19, and 24 only “by cherry picking from various disclosures of
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`Evans with the aid of hindsight.” PO Resp. 24. In particular, Patent Owner takes
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`issue with the fact that some of the ingredients required by the challenged claims
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`are described as optional in Evans. Id. at 25–27. Those arguments are not
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`persuasive in light of the record developed at trial. Specifically, we agree with
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`Petitioner that the disclosure of Evans is not limited to its working examples; nor is
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`Evans’s disclosure “isolated or unrelated” to a patent, incorporated therein by
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`reference—that is, U.S. Patent No. 3,962,418 (“the ’418 patent”)—which
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`“identifies cationized cellulose derivatives as useful cationic polymers in
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`amounts . . . encompassed by” the limitations of claim 1 and 19. Reply 9 (and
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`citations to the record therein); Pet. 39–40 (claim chart); Ex. 1010, 25:6–9 (Evans,
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`incorporating by reference the description of suitable cellulose ethers provided in
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`the ’418 patent); Ex. 1011, 3:5–9 (the ’418 patent, disclosing suitable cellulose
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`ethers that meet the limitations of claims 1 and 19); Ex. 1034 ¶ 43 (explaining the
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`significance of the disclosures of Evans and the ’418 patent, from the viewpoint of
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`a person of ordinary skill in the art at the time of the invention).
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`We determine that the shampoo composition specified in the challenged
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`claims is an obvious variant of the shampoo disclosed in Evans, and contributes no
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`“more than the predictable use of prior art elements according to their established
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`functions.” KSR Int’l Co., 550 U.S. at 417; cf. In re Mayne, 104 F.3d 1339, 1340
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`(Fed. Cir. 1997) (substitution of one known element for a known equivalent is
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`prima facie obvious). Based on the evidence of the whole record, we conclude that
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`claims 1, 12, 16, 19, and 24 are unpatentable as obvious over Evans under 35
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`U.S.C. § 103.
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`E. Patent Owner’s Motion to Exclude
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`The party moving to exclude evidence bears the burden of proving that it is
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`entitled to the relief requested—namely, that the material sought to be excluded is
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`inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c),
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`42.62(a).
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`Patent Owner seeks to exclude evidence that, in Patent Owner’s view,
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`violates our rule against incorporation by reference, exceeds the permissible scope
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`of reply or rebuttal evidence, and raises new issues or belatedly presents evidence.
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`PO Mot. Ex. 1; see generally id. at 1–6. To the extent that any such violations
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`have occurred, we decline to consider such evidence in reaching our decision.
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`A motion to exclude, however, is not an appropriate vehicle for challenging
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`a reply, or a reply’s supporting evidence, as exceeding the scope of a proper
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`reply. Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-
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`00002, slip op. at 62 (PTAB Jan. 23, 2014) (Paper 66); Norman Int’l, Inc. v.
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`Andrew Toti Testamentary Trust, Case IPR2014-00283, slip op. at 2 (PTAB Jan.
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`22, 2015) (Paper 33). The purpose of a motion to exclude is to challenge
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`admissibility of evidence. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,767 (Aug. 14, 2012); Paper 41, 1–2.
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`We have considered, but find unpersuasive, Patent Owner’s additional
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`arguments as to the authenticity of Exhibit 1040. PO Mot. Ex. 6–8. Exhibit 1040
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`was authenticated by its author, Dr. Lochhead, during his deposition. See PO Mot.
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`Ex. Resp. 8; Ex. 1037, 56:25–57:21.
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`At Petitioner’s request, and based on the representation that they were filed
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`in “inadvertent error,” we order expunged from the record Exhibits 1045, 1051,
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`and 1060. PO Mot. Ex. Resp. 9.
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`We have fully considered the positions of the parties relating to the
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`remaining evidentiary issues. See generally PO Mot. Ex.; PO Mot. Ex. Resp.; PO
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`Mot. Ex. Reply. For reasons stated by Petitioner, we decline to exclude evidence
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`in this proceeding. PO Mot. Ex. Resp. 1–10.
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`Accordingly, Patent Owner’s Motion to Exclude Evidence is denied.
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`Exhibits 1045, 1061, and 1060 are expunged from the record.
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`III. CONCLUSION
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`
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`Petitioner has demonstrated, by a preponderance of the evidence, that
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`claims 1–5, 11–13, 16–20, 24, and 25 of the ’300 patent are unpatentable as
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`follows:
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`(1) claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 are anticipated by Kanebo under
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`35 U.S.C. § 102(b);
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`(2) claims 3, 18, and 25 are unpatentable over Kanebo under 35 U.S.C.
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`§ 103; and
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`(3) claims 1, 12, 16, 19, and 24 are unpatentable over Evans under 35 U.S.C.
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`§ 103.
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`It is
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`IV. ORDER
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`ORDERED that claims 1–5, 11–13, 16–20, 24, and 25 of the ’300 patent are
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`unpatentable;
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`FURTHER ORDERED that Patent Owner’s Motion to Exclude Evidence is
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`denied;
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`FURTHER ORDERED that Exhibits 1045, 1061, and 1060 are expunged
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`from the record; and
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`FURTHER ORDERED that, because this is a Final Written Decision, the
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`parties to the proceeding seeking judicial review of the decision must comply with
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`the notice and service requirements of 37 C.F.R. § 90.2.
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`Patent 6,451,300 B1
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`For Petitioner:
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`Joseph Meara
`Michael Houston
`Jeanne Gills
`FOLEY & LARDNER LLP
`jmeara-PGP@foley.com
`mhouston@foley.com
`jmgills@foley.com
`
`For Patent Owner:
`
`David Maiorana
`John V. Biernacki
`Michael Weinstein
`JONES DAY
`dmaiorana@jonesday.com
`jvbiernacki@jonesday.com
`trgoots@jonesday.com
`msweinstein@jonesday.com
`
`Steven Miller
`Carl Roof
`Angela Haughey
`THE PROCTER & GAMBLE COMPANY
`miller.sw@pg.com
`roof.cj@pg.com
`haughey.a@pg.com
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