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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CONOPCO, INC. dba UNILEVER
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`Petitioner
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`v.
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`THE PROCTOR & GAMBLE COMPANY
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`Patent Owner
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`Case No. IPR2013-00509
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`Patent 6,451,300
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`____________________________________________________________
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`SECOND DECLARATION OF ARUN NANDAGIRI
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`UNILEVER EXHIBIT 1034
`UNILEVER VS. PROCTOR & GAMBLE
`IPR2013-00509
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`1.
`I have personal knowledge of the facts contained in this Second
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`Declaration, am of legal age, and, if called upon to do so, I could and would testify
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`to the following facts.
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`2.
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`I have been retained as an expert witness on behalf of Conopco, Inc.
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`(“Unilever”) for the above-captioned inter partes review (“IPR”). I am being
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`compensated for my time in connection with this IPR at my standard legal
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`consulting rate, which is $290 per hour. I understand that this proceeding involves
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`US Patent No. 6,451,300 (“the ’300 patent”), Ex. 1001 which resulted from U.S.
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`Application No. 09/558,447 (“the ’447 application”), filed on April 25, 2000, and
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`alleging a priority date of May 3, 1999. I further understand that, according to the
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`USPTO records, the ’300 patent is currently assigned to the Procter & Gamble
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`Company (“P&G”).
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`3.
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`I submitted a First Declaration in this proceeding in support of
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`Unilever’s Petition for Inter Partes Review of United States Patent No. 6,451,300
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`(“Petition”). Ex. 1003. I provided my background and qualifications in my First
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`Declaration, Ex. 1003 ¶¶ 4-10, and in my curriculum vitae, Ex. 1004. My
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`education and background were also provided in my deposition (Nandagiri Dep.,
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`Ex. 2019 at 8:10-23; 9:21-17:5).
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`4.
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`I understand that on February 12, 2014, the Patent Trial and Appeal
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`Board (PTAB) granted Unilever’s Petition as to Claims 1, 2, 4, 5, 11, 13, 16, 17
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`and 20 of the ’300 patent as unpatentable under 35 U.S.C. § 102 over Kanebo, JP
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`9-188614, Ex. 1006, and as to Claims 1, 3, 12, 18, 19, 24, and 25 of the ’300 patent
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`as unpatentable under 35 U.S.C. § 103, thus instituting the Inter Partes Review of
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`the ’300 patent. Paper 10, 6-8, 10-14.
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`5.
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`I understand that on July 25, 2014, P&G submitted a Patent Owner’s
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`Response Pursuant to 37 C.F.R. § 42.120 in opposition to the Petition, in which
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`P&G sets forth its argument as to why claims 1, 3, 12, 16, 18-19, and 25 of the
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`’300 patent have allegedly not been proven obvious. Paper 35. I further
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`understand that P&G did not argue against the anticipation of claims 1, 2, 4, 5, 11,
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`13, 16, 17 and 20. I further understand P&G to have argued that I did not provide
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`reasons a person of ordinary skill in the art would have been motivated to modify
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`the references over which trial was instituted on obviousness grounds.
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`6.
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`I understand that in considering the obviousness of an invention, one
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`should consider whether a modification of a reference represents merely a
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`substitution of one known element for another for the same function with
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`predictable results.
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`7.
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`I have been asked to consider Patent Owner’s Response (Paper 34,
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`“Resp.”), the Declaration of Dr. Robert Y. Lochhead (Ex. 2015), the Deposition
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`Transcript of Dr. Lochhead (Ex. 1036), and all other exhibits cited by me herein.
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`The basis for my analyses of anticipation and obviousness remain as described in
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`my first Declaration. Ex. 1003 and as further described below.
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`I.
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`SKILL IN THE ART – A POSA WOULD HAVE KNOWN HOW TO
`OPTIMIZE AD CONDITIONING SHAMPOOS
`8.
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`P&G states that it “does not dispute” the level of skill in the art as
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`described in my first Declaration at ¶ 12. Resp. at 7. However, I disagree with the
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`limited knowledge and understanding of the prior art that P&G and its expert, Dr.
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`Lochhead, attribute to a person of ordinary skill in the art (“POSA”) and to the
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`alleged inability of a POSA to formulate shampoos with the desired balance of a
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`range of properties, including cleansing, anti-dandruff (“AD”) and conditioning
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`properties.
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`9.
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`As I noted in my first Declaration, AD and conditioning shampoos
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`were well-known prior to the ’300 patent as evidenced by the art of record. Ex.
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`1003, ¶ 19. P&G admits this as well (Resp. at 7) and in fact, according to its own
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`website, P&G first offered an anti-dandruff shampoo in 1961, and introduced a
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`conditioning antidandruff shampoo as early as 1979. Exs. 1056, 1057.
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`10. Formulating multi-attribute shampoos, including AD/conditioning
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`shampoos has been the norm in the industry for decades and was well within the
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`capability of a POSA. See Lochhead Happi 2006 Art. at 83, 3rd col.; Exs. 1006 at
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`¶¶ 2-3, 22-44; 1009 at 1:17-2:31; 6:36-7:20, Examples 1-3; 1010 at 3-4, 30-33;
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`1013 at col. 1, l. 13-col. 2, l. 16; col. 19, l. 11-col. 20, l. 14; 1014 at col. 1, l. 11-37;
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`col. 13-14, Examples I-XII. Formulating an AD/conditioning shampoo was even
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`one of the tasks Dr. Lochhead carried out for Unilever in the late 1970s as part of
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`his normal job responsibilities. See Ex. 1036 at 49:11-50:2; 56:25-57:6. Dr.
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`Lochhead admits that a POSA appreciated such shampoos required good cleansing,
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`conditioning, and AD properties. Id. at 61:5-18; 63:11-20; 137:8-19; 139:22-
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`140:10. A 1979 report he authored as part of his employment supports this as well.
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`Id. at 56:25-57:6; 61:5-18 ; Lochhead Rpt (Ex. 1040).
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`11. Even before the 1970s, a POSA appreciated that in order to formulate
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`a successful commercial AD shampoo, the shampoo had to simultaneously exhibit
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`numerous excellent attributes. As early as the 1960s it was appreciated that in
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`order to attain consumer approval, a shampoo would be assessed as to at least 25
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`distinct qualities or characteristics. Ex. 1047 at 540-41 (Sorkin). A variety of
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`laboratory procedures were well-known and used for these assessments even then.
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`Id., 541-550; infra at ¶¶ 32-39, 44-45. References predating the ’300 patent show
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`that a shampoo formulator continued to be concerned with balancing multiple
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`properties, including AD and conditioning. Infra at ¶¶ 43-49.
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`12. As demonstrated in the prior art, a POSA recognizes tradeoffs
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`between too much conditioning and cleansing and/or greasiness (Ex. 1018 at 1:26-
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`36; Ex. 1010 at 3), between AD agent deposition and clean feel (Ex. 1009 at 1:65-
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`2:5), and between AD agent deposition and conditioning (e.g., Ex. 1013 at 12:10-
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`15 & 14:16-39). A POSA also knew from the prior art that AD agent dispersion is
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`important for both bioavailability and good sensory properties (i.e., clean feel).
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`Ex. 1009 at 1:49-56, 1:65-2:5.
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`A. A POSA Understood the Effects of Components on Properties
`13. A POSA understood the effect that each component of a shampoo had
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`on the cleansing, conditioning, and AD properties of a shampoo. For example,
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`Bowser taught the components that affected a shampoo’s cleansing (Ex. 1009 at
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`3:9-18), conditioning (id. at 3:64-4:2; 4:26-31) and AD efficacy (id. at 1:65-2:16;
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`4:62-67). Bowser in particular describes factors affecting bioavailability of the AD
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`agent ZPT. Id. at 1:58-2:5 (due to large ZPT agglomerates and absence of certain
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`suspending agents, “deposition can be uneven and bioavailability of the active
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`substance to the hair can be reduced…”). Evans also supports these
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`understandings of a POSA, especially for cleansing (Ex. 1010 at 3-10, 19-21, 24-
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`26) and conditioning (id. at 11-19, 21-26). Reid similarly teaches components
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`affecting cleansing (Ex. 1018 at 2: 20-30;), conditioning (id. at 1:26-42; 3:6-8; 5:1-
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`8), and AD efficacy (id. at 5:11-15). Coffindaffer likewise teaches such
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`components, especially those for AD efficacy. See, e.g., Ex. 1013 at 1:13-2:23;
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`12:1-19.
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`14. A POSA also understood that such components may have an effect on
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`more than one property. For example, Kanebo describes pearlescence agents, in
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`particular linear fatty acid glycol diesters (such as ethylene glycol distearate and
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`ethylene glycol dimyristate) and monoesters (such as ethylene glycol monostearate
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`and ethylene glycol monomyristate) as preferred examples, for use in a range of
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`about 0.1 to 10%. Id. at ¶¶ 16-17. However, it was well appreciated that
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`pearlescence agents also acted as suspending agents in conditioning shampoos. A
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`patent to Grote and Russell (Ex. 1053) evidences this fact, where ethylene glycol
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`esters such as ethylene glycol distearate and ethylene glycol monostearate are
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`taught as suspending agents useful in conditioning shampoos in amounts of about
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`0.50% to 5.0% by weight of the composition. Ex. 1053 at 6:56-63; 7:14-18 (“The
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`suspending agent serves to assist in suspending the silicone material and may give
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`pearlescence to the product”).
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`15. A POSA clearly understood that any shampoo conditioning formula is
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`a combination of cleansing and conditioning agents, and that as one tries to
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`optimize the levels of cleansing it may effect conditioning or vice versa. (Kanebo,
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`Ex. 1006 at ¶¶ 2-3). When suspended anti-dandruff agents such as ZPT are used in
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`such formulations, balancing the cleaning and conditioning properties can also
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`effect the deposition of the agents. For example, Bowser, instructs one to avoid the
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`deposition of the antidandruff agent as large sticky agglomerates, which avoids the
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`negative impact of poor sensory properties, as well as poor dispersion of the AD
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`agent particles and poor bioavailability. Bowser at 1:58-2:5 (Ex. 1009).
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`16. Kanebo also teaches that formula optimization can be done by
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`balancing the levels of cleansing and conditioning agents. For example, the
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`preferred cleansing agents in Kanebo are ionic surfactants and are used in a range
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`of 3-50%. Kanebo at ¶¶ 9-11 (Ex. 1006). The conditioning agents are a
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`combination of high molecular weight dimethyl polysiloxane silicones having a
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`viscosity of not less than 5000cps, and high molecular weight cationic cellulose
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`derivatives such as Catinal HC- 200 or cationized guar gum derivative, wherein the
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`silicones are used in the range of 0.01-25% and the cationic polymer is used in the
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`range of 0.01-5.0%. Id. ¶¶ 12-15.
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`17. Although the antidandruff agent in Kanebo (ZPT) is used at 0.5% (id.
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`¶ 37, Example 10), it was known in the art that it can be in amounts of 0.1-5 wt%
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`(Coffindaffer at 10:62-11:8, Ex. 1013). Coffindaffer also taught the desirability of
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`avoiding large agglomerates of AD particles to achieve excellent deposition of the
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`AD agent for good AD efficacy. Id. at 3:33 to 4:5. Bowser likewise taught ZPT
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`concentrations of 0.001 to 5 wt%, with a preferred range of 0.1 to 3wt%. Bowser
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`at 3:3-8 (Ex. 1009). Bowser further taught that bioavailability of the AD active is
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`influenced by the particle size of the AD active. Id. at 1:58-2:5, 2:61-67. Evans
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`likewise taught inclusion of antidandruff agents at from about 0.1% to about 4%,
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`preferably about 0.2% to about 2%, by weight of the shampoo compositions.
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`Evans at 27 (Ex. 1010). Evans further taught the inclusion of polyalkylene glycols
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`to improve the spreadability of the shampoo composition, which in turn leads to
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`better consumer perception of conditioning performance. Id. at 2, 19-21.
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`18. P&G’s expert, Dr. Lochhead admits that prior to the ’300 patent, one
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`of ordinary skill in the art would have known and appreciated that the types and
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`amounts of the shampoo components, including each of the components claimed in
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`the ’300 patent (i.e., the anionic surfactant, conditioning agent, antidandruff agent,
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`cationic polymer, suspending agent, and water) would affect the basic properties of
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`an AD conditioning shampoo, i.e., cleansing, conditioning, and AD efficacy. See,
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`e.g., Ex. 1036 at 28:24-25; 39:7-10; 96:15-20; 100:1-9; 102:9-103:7; 134:8-20;
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`141:3-19. Indeed, Dr. Lochhead’s own work for Unilever in the 1970s is an
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`example of such a recognition, where various compositions were studied and tested
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`in order to achieve a workable AD conditioning shampoo. See Lochhead Report,
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`Ex. 1040.
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`B. A POSA Would Routinely Balance Multiple Properties
`19. The trade-offs and balancing between one property versus another
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`were also well-known before the ’300 patent. As amply evidenced by the prior art,
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`a POSA routinely optimized multiple variables and took into account numerous
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`properties to generate balanced compositions.
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`20. As noted above, Sorkin teaches 25 distinct categories of properties of
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`a conditioning shampoo, where “[e]very shampoo under development and all
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`competitive shampoos are evaluated against this check list.” Id. at 540. As noted
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`previously, two of these properties are “combability of wet hair” and “feel on
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`hands.” Id. at 541, 549, Figure 3. Sorkin further shows that testing protocols for
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`such properties were established (as of 1966) for each property: “Many of the
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`qualities can be measured by well-established laboratory procedures. Others must
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`be evaluated by specially devised techniques. And still other qualities can only be
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`determined subjectively, and here experience and a thorough understanding of
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`shampoos are invaluable.” Id. at 540.
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`21. Furthermore, in a book edited by Johnson (Ex. 1045), Hoshowski
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`authored a section entitled “Conditioning of Hair.” Ex. 1045 at 65. This section
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`teaches that nearly all conditioning products operate by incorporating one or more
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`conditioning agents. Id. at 68. “When developing a conditioner, the formulating
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`scientist must balance product attributes, esthetics, safety, and cost parameters.”
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`Id. at 85 (emphasis added). Thus, the article teaches that a formulator would be
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`working and optimizing a variety of properties of the conditioning shampoo. See
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`also id. at 97. The article further discloses that “[t]here are many methods to
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`evaluate the physical properties of hair before and after application of the
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`conditioner.” Id. at 97. The article concludes that there is no single, perfect
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`conditioning agent and that “combinations of ingredients must be used to formulate
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`a balanced conditioner.” Id. at 99.
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`22. Kanebo is yet another reference illustrating this point. Kanebo states
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`that shampoo compositions of his invention exhibit excellent usability,
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`conditioning and pearl luster effects on the hair, as well as excellent dispersing
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`stability. Ex. 1006 at ¶¶1, 4, 45. Kanebo describes pearlescence agents, in
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`particular linear fatty acid glycol diesters (such as ethylene glycol distearate and
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`ethylene glycol dimyristate) and monoesters (such as ethylene glycol stearate and
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`ethylene glycol myristate) as preferred examples, for use in a range of about 0.1 to
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`10% Id. at ¶¶ 16-17. As noted previously, it was well appreciated that
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`pearlescence agents also acted as suspending agents in conditioning shampoos.
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`See Ex. 1053 at 6:56-63; 7:14-18. Kanebo goes on to explain that “usability”
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`includes properties such as “good spreadability on and compatibility with the hair,
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`good running of the fingers through the hair and no squeaking of the hair upon
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`rinsing.” Ex. 1006 at ¶2. Of course cleaning of the hair is important as well. Id.
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`Kanebo reports that Example 10, an AD formulation, exhibited all these properties
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`as well (¶38) and therefore would have balanced each of these properties with AD
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`activity.
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`23. Likewise, Evans, Bowser and Reid, e.g., are each concerned with
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`multiple properties of a shampoo formulation. Evans discloses shampoo
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`compositions that “provide excellent cleansing and conditioning benefits, and
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`further provide enhanced conditioning impression by way of enhanced
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`spreadability through hair, and denser, thicker lather.” Ex. 1010, at Abstract, 1, 2.
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`Reid is concerned with conditioning to leave hair softer and more manageable,
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`ease of combability, avoiding static build-up, avoiding dull or greasy appearance of
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`hair, and avoiding the anti-foam effect of silicone conditioners, and providing
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`greater stability, all in a formulation that can include an AD agent. Ex. 1018 at
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`1:9-66, 5:9-20. Bowser is concerned with “good mechanical stability, optical
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`properties and anti-dandruff ability” as well as conditioning. Ex. 1009 at Abstract,
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`2:26-31, 3:64-4:61. Bowser further taught that dispersion of the AD agent was
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`important to both the AD efficacy and conditioning (i.e., sensory feel) properties of
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`the shampoo. Id. at 2:1-5.
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`24.
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`In addition, Dr. Lochhead’s 1979 report evidences that recognition of
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`these tradeoffs was well appreciated by a POSA. In Dr. Lochhead’s report, he
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`notes that in order incorporate two components into a ZPT-containing AD
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`shampoo, it was necessary to omit a clay suspending agent “because interaction
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`between the polymeric cationic conditioning agent and the clay would be likely to
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`lead to instability of the shampoo with respect to separation and sedimentation” of
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`ZPT. Ex. 1040 at 2. Thus Dr. Lochhead even in 1979 recognized a tradeoff in the
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`conditioning ability and the anti-dandruff capabilities of an AD conditioning
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`shampoo at the outset. The report also provides results for various properties of
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`newly formulated AD shampoos incorporating the conditioning agents, such as wet
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`combability and feel. Id. at 000008.
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`II. CLAIMS 1, 2, 4, 5, 11, 13, 16, 17 AND 20 ARE INVALID FOR
`ANTICIPATION
`25.
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`I stand by my opinion in my first Declaration that Example 10 of
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`Kanebo discloses each and every element of Claims 1, 2, 4, 5, 11, 13, 16, 17 and
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`20 as shown by the claim charts and discussion therein. Ex. 1003, ¶¶35-60, 62-63.
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`As P&G has not even made an effort to rebut the Board’s finding that these claims
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`are anticipated by Kanebo (See Resp., 1; Inst. Dec., 6-8), I am unaware of any
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`information that would change my opinion. Claims 1, 2, 4, 5, 11, 13, 16, 17 and 20
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`are invalid for anticipation by Kanebo.
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`26.
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`In addition, I have been asked to assume that Claim 3, which depends
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`from Claim 2, only limits the identity of the guar derivative listed in Claim 2, but
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`does not require the cationic polymer to be the specified guar derivative. That is,
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`Claim 3 does not require the cationic polymer to be guar hydroxypropyltrimonium
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`chloride (“guar HPT”), but only that the cationic polymer be selected from guar
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`HTP, cellulose derivatives and mixtures thereof. Assuming this is the case, Claim
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`3 would still encompass cellulose derivatives, and would be anticipated by Kanebo
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`for the same reasons as Claim 2. That is, Example 10 of Kanebo discloses a
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`cationized cellulose derivative and all the other ingredients required by Claim 2
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`due to its dependence on Claim 1. Even if Claim 3 did limit the overall
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`composition to the specific guar, it still would be obvious over Kanebo as
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`explained in §III.A below.
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`III. CLAIMS 1, 3, 12, 16, 18, 19, 24, AND 25 ARE INVALID FOR
`OBVIOUSNESS
`27.
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`I stand by my opinion in my first Declaration that each of Claims 1, 3,
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`12, 18, 19, 24, and 25 is obvious over at least one of Kanebo or Evans. Ex. 1003,
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`67-68, 71-73. A POSA would have had ample reason to make minor modifications
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`to the shampoo formulations disclosed by Kanebo and Evans as I discuss below. I
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`therefore disagree with Dr. Lochhead’s opinion that a POSA would have no
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`motivation to modify Kanebo’s Example 10 or to select the allegedly optional
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`components of Evans to arrive at the claimed formulations of the ‘300 patent.
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`A. Claims 3, 18, and 25 Would Have Been Obvious Over Kanebo
`28. By their lack of rebuttal, P&G and Dr. Lochhead admit that Kanebo’s
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`Example 10 anticipates Claims 1, 2, 4, 5, 11, 13, 16, 17 and 20. Resp., 1. Claims
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`3, 18, and 25 claim only minor modifications of the formula in Kanebo’s Example
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`10, and would have been obvious over Kanebo. As I explained previously,
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`Kanebo discloses the shampoo ingredients of Claims 3, 18 and 25 for use in its
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`shampoo compositions and discloses that they are interchangeable. Ex. 1003, 48-
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`49, 60-64. A POSA also would have recognized these well-known ingredients as
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`interchangeable based on the prior art as a whole. Hence, both Kanebo and the
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`prior art teach that cationize guar derivatives are interchangeable with cationized
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`cellulose derivatives and that ethylene glycol distearate (EGDS) is interchangeable
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`with ethylene glycol dimyristate (EGDM). Hence, substitutions of these
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`ingredients would have been part of a routine optimization of prior art AD
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`conditioning shampoo formulations.
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`1. Kanebo and the Prior Art Show the Interchangeability of
`the Claimed Shampoo Ingredients
`29. Kanebo describes the interchangeability of various cationic polymers
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`and pearlescent agents for use in its shampoo formulations as I have previously
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`described. Ex. 1003, ¶¶ 48-49, 62-63. Kanebo requires a cationic polymer (termed
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`“high molecular compound”) and a pearl luster agent along with other ingredients
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`as part of shampoo formulations designed to provide excellent conditioning,
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`dispersing stability, and appearance (pearl luster), as well as cleaning, “good finish
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`of rinsing treatment, good spreadability on and compatibility with hair and no
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`squeaking of the hair upon rinsing.” Ex. 1006, ¶¶1-5, 31, 33, 38. Kanebo
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`discusses in detail, for each required ingredient, the different types and amounts of
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`the agents that may be used and which are preferred, thereby suggesting the
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`interchangeability and the desirability of substitutions between them. As
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`demonstrated by the prior art, these agents have also long been recognized to be
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`interchangeable equivalents and their effects on shampoo formulations known.
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`30. Regarding cationic polymers, Kanebo expressly discloses useful
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`properties and amounts, and describes cationized guar gum derivatives and
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`cationized cellulose derivatives as preferred. Ex. 1006, ¶14. Even though Kanebo
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`describes cationized cellulose as particularly preferred, this does not mean a POSA
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`would not use any other of Kanebo’s preferred cationic polymers. Even Kanebo
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`employs both cationized guar gum derivatives and cationized cellulose derivatives
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`in the working examples (e.g., 8 and 10), underlining their interchangeability.
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`31. Because cationic guar and cellulose derivatives were well known
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`deposition aids that had been in use for decades prior to the ‘300 patent, their
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`interchangeability and functions in AD conditioning shampoo formulations were
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`already known to a POSA. As Dr. Lochhead admitted, the use of such guar and
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`cellulose derivatives in conditioning shampoos were also appreciated prior to the
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`‘300 patent. Ex. 1036, 163:25-164:3. Indeed, Dr. Lochhead in a 2012 book
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`chapter wrote that coacervates formed from anionic surfactants and guar or
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`cellulose derivatives were discovered in the 1970s and 1980s, and that cationic
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`hydroxyethylcellulose (polyquaternium-10) and guar hydroxypropyltrimonium
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`chloride continue to dominate the compositions of conditioning shampoos:
`
`The origin of conditioning shampoos can be traced to the
`balsam shampoos of the 1960s followed by the introduction of
`polyquaternium-10 by Des Goddard in the 1970s and 1980s in
`which he introduced the concept of polymer-surfactant complex
`coacervates that phase-separate and deposit on the hair during
`rinsing. The first two-in-one shampoos depended on a complex
`coacervate being formed between anionic surfactant and the
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`15
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`000016
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`cationic hydroxyethylcellulose, polyquaternium-10. … Later
`guar hydroxypropyltrimonium chloride was introduced as an
`alternative cationic polymer that worked on the same principle
`as polyquaternium-10. These two polymer types continue to
`dominate the compositions of conditioning shampoos.
`R.Y. Lochhead, Chapter 3, Shampoo and Conditioner Science,
`Practical Modern Hair Science, R. Evans & R.R. Wickett (Eds.)
`AlluredBooks, Carol Stream, 2012 (citations omitted) (Ex.
`1055, 92-93).
`
`
`
`32. Thus, guar hydroxypropyltrimonium chloride (“guar HPT”), present
`
`in Kanebo’s Example 8, was particularly well known and widely used in shampoos
`
`prior to the ‘300 patent. See also Ex. 1018, 3:5-28; Ex. 1009, 5:13-24; Ex. 1013,
`
`15:5-8.
`
`33. As set forth in my first Declaration and the Petition, a POSA would
`
`also have understood EGDS to be an interchangeable alternative to EGDM. Ex.
`
`1003 at ¶¶ 60-61; Pet. at 17. Kanebo discloses a limited number of pearl luster
`
`agents and also teaches that linear fatty acid glycol diesters are particularly
`
`preferred. Ex. 1006 at ¶ 16. Kanebo identifies four pearl luster agents, only three
`
`of which are linear, and of those three, only EGDS and EGDM are found in the
`
`working examples. Id. at ¶¶ 16, 31, 37-38. The interchangeability of EGDS and
`
`EGDM is underscored by the fact that EGDS is found in six of the formulations
`
`and EGDM is found in five of the formulations.
`
`16
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`000017
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`34. Similar to cationized guar and cellulose derivatives, EGDS and
`
`EGDM have long been known in the art. Ex. 1036, 40:8-25; 41:1-2; see also Ex.
`
`1010, 21. They were not only known as equivalent pearlescent agents, but also
`
`they were known as equivalent suspending agents. The ‘300 patent itself cites to
`
`and incorporates by reference US 4,741,855, which explains that ethylene glycol
`
`diesters of C16-C22 fatty acids are agents that suspend silicone particulates Ex.
`
`1001, 26:4-11; Ex. 1053, 7:16-18 (“The suspending agent serves to assist in
`
`suspending the silicone material and may give pearlescence to the product”).
`
`Ethylene glycol fatty acid diesters also suspend AD particulates. US 4,470,982
`
`(Ex.1054), 2:39-42. That EGDS and EGDM are interchangeable is further
`
`supported by Kanebo, the ‘300 patent itself, and other art, which all disclose use of
`
`the same amounts (e.g., 0.1-10 wt%) of fatty acid glycol diesters in shampoos,
`
`whether as pearlescent agents or suspending agents. Ex. 1006, ¶17; Ex. 1001,
`
`25:53-58, claim 17. Indeed, all of Kanebo’s working examples, including Example
`
`10 disclose amounts of EGDS and EGDM that fall within the most preferred range
`
`of suspending agents (about 0.3% to about 2.5%) disclosed by the ‘300 patent. Ex.
`
`1006, ¶¶31, 35, 37; Ex. 1001, 25:53-58.
`
`35.
`
`It would have been obvious for a POSA to optimize the formulation of
`
`Example 10 to substitute Kanebo’s expressly disclosed equivalents for cationized
`
`cellulose and EGDM. As discussed above (§ I.A) and agreed by Dr. Lochhead, a
`
`17
`
`000018
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`
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`POSA would have been aware of the basic functional properties of an AD
`
`conditioning shampoo, namely cleansing, conditioning, and controlling or
`
`preventing dandruff and would have known and appreciated that the types and
`
`amounts of shampoo components used in such shampoos. See ¶18 supra. In
`
`addition, a POSA wishing to optimize an AD conditioning shampoo formulation
`
`would be aware of the tradeoffs involved in balancing multiple shampoo
`
`properties. See §I.B, supra. With respect to Example 10, based on Kanebo’s
`
`teachings and the presence of a pearl luster/suspending agent, a POSA would have
`
`also been concerned with optimizing the pearl luster of the composition as well as
`
`AD and conditioning properties. A POSA would therefore have a desire to
`
`optimize AD conditioning shampoo formulations to improve or provide alternative
`
`formulations. Given a POSA’s desire for optimization, Kanebo’s express
`
`teachings of equivalents that could be used in its formulations, and the known
`
`effects of those equivalents, it would have been obvious not just to optimize ranges
`
`of ingredients, but also to substitute guar HPT (from Example 8) for cationized
`
`cellulose or to substitute EGDS for EGDM into the formulation of Example 10.
`
`36. A POSA would know how to formulate Kanebo’s Example 10
`
`shampoo to incorporate obvious substitutions such as guar HPT for cationized
`
`cellulose or EGDS for EGDM. As shown by Evans in a typical procedure,
`
`preparing AD conditioning shampoos containing cationic polymer and EGDS is
`
`18
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`000019
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`well known. Ex. 1010, 27-28. Basically, a mixture of at least a portion of the
`
`anionic surfactant and the EGDS is heated above the melting point of the EGDS so
`
`that it may disperse. The heated mixture may contain cocamide
`
`monoethanolamine and fatty alcohol as well as preservative or other minor
`
`additives but not the cationic polymer, silicone conditioner, polyalkylene glycol or
`
`AD particulate. The heated mixture is allowed to cool and collected in a finishing
`
`tank. During this process, the EGDS “crystallizes to form a crystalline network in
`
`the product.” See id. The remainder of the ingredients, including any remaining
`
`anionic surfactant, are added to the finishing tank. The cationic polymer is added
`
`as a dispersion as part of the latter step. See id. Hence, substitution of guar HPT
`
`for cationized cellulose or EGDS for EGDM into Kanebo’s Example 10 would
`
`have been well within the skill in the art and would have predictably yielded the
`
`shampoos of claims 3, 18 and 25.
`
`2.
`
`Dr. Lochhead’s Assertions Regarding the Lack of
`Interchangeability Are Unsupported
`
`37.
`
`I disagree with Dr. Lochhead’s assertions that a POSA would not
`
`interchange EGDS and EGDM or cationized guar and cellulose derivatives in
`
`Kanebo’s Example 10. Neither Kanebo nor the prior art support this assertion. Dr.
`
`Lochhead asserts that the different carbon chain lengths of EGDS and EGDM lead
`
`to different properties that affect how the two compounds perform as “both
`
`thickening and/or suspension agents and for pearl luster.” Ex. 2015, ¶45. I note
`
`19
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`000020
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`that Dr. Lochhead does not state that these differences render either diester
`
`unsuitable for use as both pearlescent and suspending agents; nor does he claim
`
`that a POSA is unaware of these differences. Without any evidence, Dr. Lochhead
`
`baldly states that 1) different crystal sizes and structures are needed for effective
`
`use of in suspending agents than as pearlescent agents; and 2) such differences
`
`would have required a significant amount of experimentation, preventing a POSA
`
`from contemplating such a substitution. Id. ¶46-48. Yet, as I explained above (§
`
`II, ¶ 12), Kanebo expressly states that EGDS and EGDM are two of his three
`
`preferred pearl luster agents and employs them nearly equally in the working
`
`examples. Ex. 1006, ¶¶16, 31, 35, 37. Also, the amount of suspending agent
`
`required by Claim 18 is identical to that disclosed in Kanebo for pearlescence, 0.1-
`
`10 wt%, and the amount used in Example 10 is 2 wt%, the same amount used in
`
`six examples of the ’300 patent itself. Id., ¶¶17, 31, 35, 37.
`
`38. The art cited by the ’300 patent also fails to support Dr. Lochhead’s
`
`testimony. US 4,741,855 is cited for teaching suspending agents and is
`
`incorporated by reference. The ’885 teaches “[t]he suspending agent serves to
`
`assist in suspending the silicone material and may give pearlescence to the
`
`product.” Ex. 1053, 7:16-18. The ’885 does not distinguish between the crystalline
`
`sizes and structures of needed for suspension activity and pearlescent activity.
`
`39.
`
`I also disagree with P&G’s argument (Resp., 21) that there is no
`
`20
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`000021
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`evidence that adding guar hydroxypropyltrimonium chloride to Kanebo’s Example
`
`10 would have formed a coacervate upon aqueous dilution. None of P&G’s
`
`claims, as I understand
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