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 IPR: 2013-00509
`Patent 6,451,300
`
`_____________________
`
`
`
`CONOPCO'S REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`CONOPCO, INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`_____________________
`
`CASE IPR: 2013-00509
`Patent 6,451,300
`
`_____________________
`
`
`
`CONOPCO'S REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2013-00509
`
`
`I.
`
`Introduction
`
`Petitioner requests reconsideration of the Board's denial of institution of
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`inter partes review for claims 6, 14, and 15 of U.S. Patent No. 6,451,300 ("the '300
`
`patent"). On February 12, 2014, the Board granted the Petition filed August 14,
`
`2013, only as to claims 1, 2, 4, 5, 11, 13, 16, 17 and 20 as unpatentable under 35
`
`U.S.C. § 102 by Kanebo1, and claims 3, 18, and 25 as unpatentable under 35
`
`U.S.C. § 103 over Kanebo. See Decision on Petition ("Decision") at 6-13 and 17.
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`Along with other claims and Grounds, the Board denied inter partes review of
`
`claim 6 as obvious over Kanebo, and claims 14 and 15 as obvious over Kanebo or
`
`Evans2 in view of Cardin3. As discussed in detail below, the Board erroneously
`
`interpreted the relevant law in its denial of inter partes review for claim 6 over
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`Kanebo, and claims 14 and 15 over Kanebo or Evans in view of Cardin. As the
`
`threshold for instituting inter partes review and obviousness grounds under the
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`reasonable likelihood standard is low, the Board abused its discretion in denying
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`review of these claims.
`
`
`1 Kanebo: JP 9-188614 (July 22, 1997) (English translation) (Ex. 1006).
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`2 Evans: WO 97/14405 (Apr. 24, 1997) (Ex. 1010).
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`3 Cardin: US 5,104,645 (Apr. 14, 1992) (Ex. 1014).
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`This request is authorized under 37 C.F.R. § 42.71(c), and prior
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`authorization of the Board is not required for the filing of this request. See 37
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`IPR2013-00509
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`C.F.R. § 42.71(d).
`
`II. Applicable rules and legal standard
`A. The standard of review for rehearing is abuse of discretion
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” The Federal Circuit has
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`held that “[a]n abuse of discretion occurs where the decision is based on an
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`erroneous interpretation of the law, on factual findings that are not supported by
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`substantial evidence, or represents an unreasonable judgment in weighing relevant
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`factors.” Gose v. United States Postal Service, 451 F.3d 831, 836 (Fed. Cir. 2006)
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`(internal quotations omitted); see also O’Keefe v. U.S. Postal Service, 318 F.3d
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`1310, 1314 (Fed. Cir. 2002) (“The Board necessarily abuses its discretion when it
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`rests its decision on factual findings unsupported by substantial evidence.”)
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`(internal quotations omitted).
`
`B.
`
`The standard for instituting an inter partes review is “a
`reasonable likelihood” of unpatentability of at least one claim
`Under 35 U.S.C. § 314(a), as implemented by 37 C.F.R. § 42.108, inter
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`partes review will only be "instituted for a ground of unpatentability" where the
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`Board decides that the evidence put forward in a petition "demonstrates that there
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`IPR2013-00509
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`is a reasonable likelihood that at least one of the claims challenged in the petition is
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`unpatentable." "In instituting a trial, the Board will narrow the issues for final
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`decision by authorizing the trial to proceed only on the challenged claims for
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`which the threshold standards for the proceeding have been met. Further, the Board
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`will identify, on a claim-by-claim basis, the grounds on which the trial will
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`proceed. Any claim or issue not included in the authorization for review will not be
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`part of the trial." Office Patent Trial Practice Guide (August 14, 2012). In this
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`case, the standard has clearly been met for claims 6, 14, and 15.
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`III. Argument
`A. The Board misapprehended Petitioner's proposed obviousness
`ground for Claim 6 over Kanebo
`
`The Board misapprehended Petitioner's proposed unpatentability ground that
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`claim 6 would have been obvious over Kanebo in light of general knowledge in the
`
`art. The Board appears to have viewed Petitioner's arguments as being based on
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`Kanebo in combination with Bartolo4. Decision at 12-13. But the Petition and the
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`Petitioner's expert demonstrated that the shampoo composition of claim 6 would
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`have been obvious over the disclosure of Kanebo alone, in view of the general
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`knowledge in the art. Petition at 21-22. UNL 1003 ¶¶ 69 – 70.
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`4 Bartolo: U.S. Patent No. 5,202,048 (Apr. 13, 1993) (Ex. 1012).
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`IPR2013-00509
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`The Petition relies on Bartolo simply to provide evidence of the general
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`knowledge in the art relating to the molecular weights and charge densities of
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`cationic guar derivatives. Petition at 21-22; Ex. 1003, ¶¶ 69 - 70. To establish
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`obviousness, a party must show “some objective teaching in the prior art or that
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`knowledge generally available to one of ordinary skill in the art would lead that
`
`individual to combine the relevant teachings of the references.” See Tec Air, Inc. v.
`
`Denso Mfg. Michigan Inc., 192 F.3d 1353, 1359 (Fed. Cir. 1999) (emphasis
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`added); citing In re Fine, 837 F.2d 1071, 1073 (Fed.Cir.1988). The Supreme Court
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`has stressed the role of common sense in the obvious analysis, stating that "[r]igid
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`preventative rules that deny factfinders recourse to common sense, however, are
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`neither necessary under our case law nor consistent with it." KSR Int'l Co. v.
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`Teleflex, Inc., 550 U.S. 398, 421 (2007); see also DyStar Textilfarben GmbH &
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`Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367-68 (Fed. Cir. 2006)
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`(which states that the obviousness analysis "not only permits, but requires,
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`consideration of common knowledge and common sense").
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`Thus, it was improper for the Board to require that the Petition articulate a
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`specific reason to combine the teaching of the sole reference (Kanebo) with
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`references referred to simply for establishing the general knowledge in the art.
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`Further, a person of ordinary skill in the art would have been able to determine the
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`claimed guar molecular weight through routine optimization. The "normal desire of
`
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`- 4 -
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`IPR2013-00509
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`scientists or artisans to improve upon what is already generally known provides the
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`motivation to determine where in a disclosed set of percentage ranges is the
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`optimum combination of percentages." In re Peterson, 315 F.3d 1325, 1330 (Fed.
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`Cir. 2003).
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`Had the Board properly considered Kanebo in view of the general
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`knowledge in the art as reflected in Bartolo, the Board should have found claim 6
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`to be obvious over Kanebo in light of such general knowledge.
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`The Board erred in failing to grant review of claim 6 over Kanebo by
`
`requiring a reason to combine Kanebo with Bartolo. On the current record,
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`Petitioner has a reasonable likelihood of showing that claim 6 would have been
`
`obvious over Kanebo in light of the general knowledge in the art. The Board
`
`should authorize inter partes review of claim 6.
`
`B.
`
`The Board misapprehended the proposed obviousness grounds
`for Claims 14 and 15 over Kanebo or Evans in view of Cardin
`
`The Board summarily dismisses
`
`the sufficiency of
`
`the proposed
`
`combinations of prior art asserted against claims 14 and 15 (as well as other
`
`claims). Decision at 15-16. Claims 14 and 15 recite shampoo compositions having
`
`a zinc salt of 1-hydroxy-2-pyridinethione in platelet particle form, and an anti-
`
`dandruff particulate having an average particle size of about 2.5 um, respectively.
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`The '300 patent, 34:37-42. In denying trial on claims 14 and 15, the Board simply
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`IPR2013-00509
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`stated:
`
`Petitioner offers conclusory argument regarding the general
`
`feasibility of selecting elements from the disclosures of multiple
`
`prior art references, without articulating an adequate reason why
`
`a skilled artisan would have thought to incorporate the elements
`
`required by the claims.
`
`Decision at pages 15-16. But the Petition presents clearly articulated reasoning
`
`regarding why a person of ordinary skill in the art would have combined the
`
`teaching of Kanebo or Evans in view of Cardin to arrive at the subject matter of
`
`claims 14 and 15, and it establishes a reasonable expectation of success. In
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`particular, Cardin discloses that anti-dandruff particulates in the zinc pyrithione
`
`platelet form and having the average particle size recited in claims 14 and 15 were
`
`well known in the art, and Cardin provides shampoo compositions containing zinc
`
`pyrithione with substantial antidandruff efficacy. Petition at 51-52, UNL 1003,
`
`¶95. Thus, the current record provides a reasonable likelihood that claims 14 and
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`15 would have been obvious over Kanebo or Evans in view of Cardin.
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`The Board's conclusions relating to claims 14 and 15 are not supported by
`
`substantial evidence. In particular, the Board did not specifically address the
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`teachings of Kanebo or Evans and Cardin as they relate to claims 14 and 15.
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`- 6 -
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`IPR2013-00509
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`Petition at 51-52. As provided in the petition and supported by Petitioner's expert,
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`Kanebo teaches anti-dandruff shampoo compositions comprising zinc pyrithione,
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`which is also known as ZPT. Petition at 11 and 14. As also provided in the petition
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`and supported by Petitioner's expert, Cardin is directed to anti-dandruff shampoo
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`compositions and indicates that the platelet particle form of zinc pyrithione having
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`an average particle size of about 2.5 µm was well known in the art. Petition at 51,
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`UNL 1003, ¶95. As pointed out in the petition and supported by Petitioner's
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`expert, Cardin teaches "it has been surprisingly found that when a pyridinethione
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`metal salt in platelet form, with a specified particle size, is combined with any of a
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`group of specific synergizers in a shampoo matrix, an unexpected substantial
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`improvement in antidandruff efficacy is realized." Petition at 51-52, UNL 1003,
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`¶95. The Petition clearly articulates why a person skilled in the art would have had
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`a reason to combine Kanebo or Evans with Cardin to use ZPT in platelet particle
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`form, with an average particle size of about 2.5 µm, and would have a reasonable
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`expectation of success. Petition at 52, UNL 1003, ¶96.
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`The Petition provides clearly articulated and factually supported reasoning
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`and expert testimony indicating the general feasibility and desirability of
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`combining teaching of Kanebo or Evans with the teaching of Cardin. Petition at
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`50-52. In contrast, the Board's findings are not supported by substantial evidence.
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`Thus, the Board's dismissal of the Petition to initiate inter partes review of claims
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`- 7 -
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`14 and 15 is erroneous and claims 14 and 15 do indeed have a reasonable
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`likelihood of being found to have been obvious over Kanebo or Evans in view of
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`IPR2013-00509
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`Cardin.
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`- 8 -
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`IPR2013-00509
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`IV. Conclusion
`For the reasons above, Petitioner requests that the Board authorize inter
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`partes review of claim 6 under 35 U.S.C. § 103 over Kanebo and inter partes
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`review of claims 14 and 15 under 35 U.S.C. § 103 over Kanebo or Evans in view
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`of Cardin.
`
`RESPECTFULLY SUBMITTED,
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`
`Date: February 26, 2014
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`
`
`/Eldora L. Ellison/
`
`Eldora L. Ellison, Ph.D.
`Attorney for Petitioner
`Registration No. 39,967
`
`
`
`
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`- 9 -
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`
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned "Conopco's Request for
`
`Reconsideration Under 37 C.F.R. § 42.71(c)" was served in its entirety on
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`February 26, 2014, upon the following parties via email:
`
`Steven W. Miller
`Kim W. Zerby
`Carl J. Roof
`Angela K. Haughey
`THE PROCTER & GAMBLE
`COMPANY
`299 E. Sixth Street
`Cincinnati, Ohio 45202
`miller.sw@pg.com
`zerby.kw@pg.com
`roof.cj@pg.com
`haughey.a@pg.com
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`
`/ELDORA L. ELLISON/
`Eldora L. Ellison, Ph.D.
`Attorney for Petitioner
`Registration No. 39,967
`
`David M. Maiorana
`John V. Biernacki
`Michael S. Weinstein
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`dmaiorana@jonesday.com
`jvbiernacki@jonesday.com
`msweinstein@jonesday.com
`
`
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`Date: February 26, 2014
`
`
`
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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