UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CONOPCO, INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
`Case No. IPR2013-00509
`
`Patent 6,451,300
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`____________________________________________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`4846-3092-4062.6
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CONOPCO, INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
`Case No. IPR2013-00509
`
`Patent 6,451,300
`
`____________________________________________________________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
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`i
`4846-3092-4062.6
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`TABLE OF CONTENTS
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`
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`Patent No. 6,451,300
`Case No. IPR2013-00509
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`INTRODUCTION ......................................................................................... 1
`I.
`SKILL IN THE ART ..................................................................................... 1
`II.
`III. CLAIMS 1, 2, 4, 5, 11, 13, 16, 17 AND 20 ARE INVALID FOR
`ANTICIPATION ........................................................................................... 1
`IV. CLAIMS 1, 3, 12, 16, 18, 19, 24, AND 25 ARE INVALID FOR
`OBVIOUSNESS ............................................................................................. 2
`A.
`Claims 3, 18, and 25 Would Have Been Obvious Over Kanebo .......... 2
`Kanebo and the Prior Art Show the Interchangeability of the
`1.
`Claimed Shampoo Ingredients .................................................... 3
`P&G’s Argument Regarding Lack of Interchangeability Fails .. 6
`2.
`Claims 1, 12, 16, 19, and 24 Would Have Been Obvious Over Evans . 8
`1.
`Evans Expressly Suggests the Claimed Formulations ................ 8
`2.
`No Cherry Picking of Evans is Needed to Arrive at the Claimed
`Formulations. .............................................................................. 9
`The Prior Art Does Not Discourage Modification of Kanebo and
`Evans ......................................................................................... 10
`Shampoo Formulators Knew How to Optimize Shampoos for
`AD Efficacy and Conditioning ................................................. 10
`P&G’s “Different Problem” Rationale for Non-Obviousness is
`Unsupported .............................................................................. 11
`Bowser and Reid Do Not Teach Away From Modifying
`Kanebo or Evans ....................................................................... 12
`P&G’s “Lack of Flaws” Rationale for Non-Obviousness Fails .......... 14
`
`B.
`
`C.
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`1.
`
`2.
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`3.
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`D.
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`Patent No. 6,451,300
`Case No. IPR2013-00509
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`Cases
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`TABLE OF AUTHORITIES
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`
`
`Page(s)
`
`Broadcom Corp. v. Emulex Corp.
`725 F.3d 1325 (Fed. Cir. 2013)................................................................................................12
`
`Cross Med. Prods, Inc. v. Medtronic Sofamor Danek,
`1293, 1323 (Fed. Cir. 2005) .....................................................................................................12
`
`Custom Accessories, Inc. v. Jeffrey-Allen Indus. Inc.,
`807 F.2d 955 (Fed. Cir. 1986)....................................................................................................1
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994)......................................................................................................5
`
`KSR Int’l v. Teleflex,
`550 U.S. 398 (2007) .............................................................................................................2, 12
`
`Leo Pharm Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013)................................................................................................14
`
`In re Susi,
`440 F.2d 442 (CCPA 1971) .......................................................................................................3
`
`Therasense, Inc. v. Becton, Dickinson & Co.,
`593 F.3d 1289 (Fed. Cir. 2010)..................................................................................................2
`
`Upsher-Smith Labs. v. Pamlab, LLC,
`412 F.3d 1319 (Fed. Cir. 2005)..................................................................................................8
`
`Statutes
`
`35 U.S.C. § 103(a) .........................................................................................................................15
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`
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`I.
`INTRODUCTION
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`US 6,451,300 (“the ’300 patent”) simply repackages old anti-dandruff (AD)
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`shampoo compositions known in the art—including P&G’s own—with few or no
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`changes. P&G admits as much for Claims 1, 2, 4, 5, 11, 13, 16, 17 and 20 by
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`failing to contest Kanebo’s disclosure of the claimed formulations. The remaining
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`claims are simply minor modifications of near-identical formulations in Kanebo or
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`Evans. The Board should uphold its preliminary finding that Claims 1-5, 11, 13,
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`16-20, 24 and 25 of the ’300 patent are unpatentable. Inst. Dec. at 6-8, 10-14.
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`II.
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`SKILL IN THE ART
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`The parties seemingly agree on the level of skill in the art, but P&G presents
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`a POSA as unable to understand the connected disclosures within Kanebo or
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`Evans, unaware of art-recognized equivalents for cationic polymers and pearl
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`luster/suspending agents, and unable to routinely optimize shampoos to use such
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`interchangeable components. Resp., 16-22, 24-27. Contrary to P&G’s assertion, a
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`POSA is capable of making inferences and is presumed to know basic knowledge
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`in the field and all pertinent art relating to shampoo compositions. Custom
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`Accessories, Inc. v. Jeffrey-Allen Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).
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`III. CLAIMS 1, 2, 4, 5, 11, 13, 16, 17 AND 20 ARE INVALID FOR
`ANTICIPATION
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`P&G itself recognizes that Claims 1, 2, 4, 5, 11, 13, 16, 17 and 20 are invalid
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`for anticipation. Indeed, P&G does not even make an effort to rebut (see Resp. at
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`1) the Board’s finding that Kanebo’s Example 10 teaches each and every limitation
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`recited by these claims. The Board should, therefore, simply confirm their
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`invalidity. See Inst. Dec., 6-8; Nandagiri 2nd Decl. (Ex. 1034), ¶25; cf.,
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`Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289, 1311 (Fed. Cir. 2010)
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`(no triable issue of material fact where evidence of anticipation by prior art was
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`unchallenged).
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`In addition, Unilever notes that Claim 3 only alters one member of the
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`Markush group of Claim 2, narrowing that member to a specific guar. Because the
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`modified Markush group still reads on cellulose derivatives, Claim 3 is anticipated
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`for the same reasons as Claim 2. Ex. 1034, ¶26. Even if Claim 3 did limit the
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`overall composition to the specific guar, it still would be obvious over Kanebo as
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`explained below.
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`IV. CLAIMS 1, 3, 12, 16, 18, 19, 24, AND 25 ARE INVALID FOR
`OBVIOUSNESS
`A. Claims 3, 18, and 25 Are Obvious Over Kanebo
`Given P&G’s implicit admission that Kanebo Example 10 anticipates
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`Claims 1, 2, 4, 5, 11, 13, 16, 17 and 20, the only remaining question for the Board
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`is whether the minor modifications recited by dependent Claims 3, 18, and 25
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`would have been obvious over Kanebo. Ex. 1034, ¶¶27-28. Because these
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`dependent claims merely recite interchangeable shampoo ingredients expressly
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`disclosed in Kanebo and the prior art as a whole, they represent nothing more than
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`simple substitutions of one known element for another with predictable results.
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`KSR Int’l v. Teleflex, 550 U.S. 398, 416 (2007).
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`1. Kanebo and the Prior Art Show the Interchangeability of
`the Claimed Shampoo Ingredients
`
`As Petitioner proposed and the Board agreed, a POSA would have
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`recognized the interchangeability of various cationic polymers and pearlescent
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`agents in Kanebo’s shampoo formulations. Inst. Dec., 11-12; Pet. at 15-17; Ex.
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`1003, ¶¶ 48-49, 62-63. This interchangeability is not based on isolated,
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`unconnected disclosures. Kanebo requires a cationic polymer and a pearl luster
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`agent as part of shampoo formulations designed to provide excellent conditioning,
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`dispersing stability, and appearance, among other properties. Ex. 1006, ¶¶1-5; Ex.
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`1034, ¶29. For each required ingredient, Kanebo discusses in detail the different
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`types and amounts of the agents that may be used and which are preferred,
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`suggesting the interchangeability and the desirability of substitutions between
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`them. These agents were also art-recognized equivalents and their effects on
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`shampoo formulations have long been known.
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`With respect to claim 3 and cationic polymers, Kanebo expressly discloses
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`their useful properties, amounts, and describes both cationized guar gum
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`derivatives and cationized cellulose derivatives as preferred. Ex. 1006, ¶14. That
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`cationized cellulose derivatives are “particularly preferred” does not teach away
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`from using cationized guar. In re Susi, 440 F.2d 442 (CCPA 1971). Further,
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`Kanebo employs both cationized guar gum derivatives and cationized cellulose
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`derivatives in the working examples (e.g., 8 and 10), further underlining their
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`interchangeability. Ex. 1006, ¶14; Ex. 1034, ¶30.
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`Indeed, because cationic guar and cellulose derivatives were recognized
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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. Ex. 1034, ¶31. As admitted by P&G’s own expert, the
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`role of such guar and cellulose derivatives in AD deposition and conditioning as
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`well as coacervate formation, were also appreciated prior to the ’300 patent. Id.
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`Guar hydroxypropyltrimonium chloride (“guar HPT”), present in Kanebo’s
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`Example 8, was particularly well known and widely used in shampoos prior to the
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`‘300 patent. Id.,¶32.
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`With respect to claim 19 and the suspending agent, a POSA would also have
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`understood ethylene glycol distearate (EGDS) to be an interchangeable alternative
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`to ethylene glycol dimyristate (EGDM). Pet. at 17. Kanebo discloses a limited
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`number of pearl luster agents and teaches that linear fatty acid glycol diesters are
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`particularly preferred. Ex. 1006, ¶16; Ex. 1034, ¶33. Of the four pearl luster
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`agents listed by Kanebo, only three are linear, and of those three, only EGDS and
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`EGDM are found in the working examples. Ex. 1006, ¶¶16, 31, 37-38. The fact
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`that EGDS is found in six of the formulations and EGDM is found in five
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`underscores the interchangeability of these agents. Ex. 1034, ¶33.
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`Like cationized guar and cellulose derivatives, EGDS and EGDM have long
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`been known in the art as equivalents to each other. Ex. 1034, ¶34. Not only were
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`they known as equivalent pearlescent agents but they were known as equivalent
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`suspending agents. Id. The ’300 patent itself cites to and incorporates by
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`reference US 4,741,855, which teaches that ethylene glycol diesters of C16-C22
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`fatty acids are agents that suspend silicone particulates Ex. 1001 at 26:4-11; Ex.
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`1034, ¶34. Kanebo, other art, and the ‘300 patent itself also disclose using the
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`same amounts (e.g., 0.1-10 wt%) of fatty acid glycol diesters in shampoos, whether
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`as pearlescent agents or suspending agents. Id.
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`In view of Kanebo’s express teachings of interchangeability among certain
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`ingredients for use in the disclosed formulations, it would have been obvious for a
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`POSA to optimize the formulation of Example 10 to include such substitutions. In
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`re Gurley, 27 F.3d 551 (Fed. Cir. 1994). A POSA would have been aware of, and
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`had a desire to optimize, the basic functional properties of an AD conditioning
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`shampoo, namely cleansing, conditioning, and controlling or preventing dandruff.
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`Ex. 1034, ¶ 35. With respect to Example 10, based on Kanebo’s teachings and the
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`presence of a pearl luster agent (a.k.a. a suspending agent), a POSA would have
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`also been concerned with optimizing the pearl luster of the composition as well as
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`AD and conditioning properties. Id. Given this desire for optimization, Kanebo’s
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`express teachings of equivalents, and the known effects of those equivalents, it
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`would have been obvious to substitute guar HPT for cationized cellulose or to
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`substitute EGDS for EGDM into the formulation of Example 10. Id.
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`P&G cannot seriously dispute that a POSA would know how to formulate
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`Kanebo’s Example 10 shampoo to incorporate obvious substitutions with
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`predictable results. As shown by Evans, preparing AD conditioning shampoos
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`containing cationic polymer and EGDS is well known. Ex. 1010, 27-28; Ex. 1034,
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`¶ 36. Substitution of guar HPT for cationized cellulose or EGDS for EGDM into
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`Kanebo’s Example 10 would have been well within the skill in the art and would
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`have predictably yielded the shampoos of claims 3, 18 and 25. Id.
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`2.
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`P&G’s Argument Regarding Lack of Interchangeability Is
`Contradicted by the Prior Art
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`P&G’s assertions as to the lack of interchangeability between EGDS and
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`EGDM as well as cationized guar and cellulose derivatives are not supported by
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`Kanebo or the prior art. For example, P&G’s expert, Dr. Lochhead, asserts that
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`EGDS and EGDM lead to different properties that affect how the two compounds
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`perform as “both thickening and/or suspension agents and for pearl luster.” Ex.
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`2015, ¶ 45. He baldly asserts, without any evidence, that such differences would
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`have required a significant amount of experimentation, preventing a POSA from
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`contemplating such a substitution. Id. ¶46-48; Ex. 1034. Yet, the amount of
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`suspending agent required by Claim 18 is identical to that disclosed in Kanebo for
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`pearlescence, 0.1-10 wt%, and the amount used in Example 10 is 2 wt%, the same
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`amount used in six examples of the ’300 patent itself. Ex. 1034, ¶37. Nor does Dr.
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`Lochhead point to any pertinent disclosure in the ’300 patent on this point.
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`Even the art cited by the ’300 patent fails to support Dr. Lochhead’s
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`testimony. US 4,741,855 is cited for teaching suspending agents and is
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`incorporated by reference. The ’885 patent teaches “[t]he suspending agent serves
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`to assist in suspending the silicone material and may give pearlescence to the
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`product.” Ex. 1053, 7:16-18. It also makes no distinction between the crystalline
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`sizes and structures of needed for suspension activity and pearlescent activity, nor
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`does the ‘300 patent reference these points.
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`Likewise, P&G’s argument—that there is no evidence that adding guar
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`hydroxypropyltrimonium chloride to Kanebo’s Example 10 would have formed a
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`coacervate upon aqueous dilution (Resp. at 21)— misses the point. None of
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`P&G’s claims recite or in any way require the presence of a coacervate. Even if
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`they did, coacervates between the cationic polymer and the anionic surfactant were
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`well known in the art as the ’300 patent and Dr. Lochhead both admit. Ex. 1034,
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`¶39. Because the amounts of cationic polymer and anionic surfactant taught by
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`Kanebo not only fall squarely within the claimed ranges but are close to the ’300
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`working examples, P&G fails to cast any real doubt on whether a coacervate
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`forms, even if it was required by the claims. Id.
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`B. Claims 1, 12, 16, 19, and 24 Are Obvious Over Evans
`1. Evans Expressly Suggests the Claimed Formulations
`Evans expressly suggests AD conditioning shampoos having all the
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`components in the ranges required by Claims 1, 12, 16, 19, and 24, and therefore
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`renders those claims unpatentable. Evans’ and the claimed ’300 patent’s shampoo
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`formulations are nearly identical. Pet. at 38-41. Merely following Evans’
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`guidance, including the express suggestion that the formulations may be modified
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`to incorporate an AD agent, would have readily led a POSA to the claimed
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`compositions. Pet. 41-42; Ex 1003, ¶¶85-87; Ex. 1034, ¶¶40-41.
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`Claim 4 of Evans teaches a shampoo with all of the claimed components in
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`the claimed amounts, except for the AD particulate. Pet. at 41. However, Evans
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`also discloses that AD particulates such as pyridine thione salts may be added to its
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`shampoo formulations. Id.; Ex. 1034, ¶41. As the Board correctly found,
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`disclosure of AD agents as optional is still a disclosure of a formulation containing
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`such agents. See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, (Fed.
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`Cir. 2005) (reference disclosing optional component teaches compositions that
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`both do and do not contain that component). Not only that, by virtue of its
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`disclosure of optional AD agents and the statement that the “shampoo
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`compositions of the present invention may comprise one or more optional
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`ingredients,” Evans expressly motivates a POSA to add such AD agents. It would
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`also have been obvious for a POSA to optimize the disclosed formulations,
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`drawing on the disclosure of Evans and her own knowledge in the art to arrive at
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`the claimed formulations. Ex. 1034, ¶41.
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`2. No Cherry Picking of Evans is Needed to Arrive at the
`Claimed Formulations
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`P&G’s accusations of impermissible picking and choosing from isolated and
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`unrelated disclosures in Evans is unfounded. No “cobbling together” of disparate
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`disclosures is necessary as Evans provides a roadmap on exactly how to obtain an
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`AD shampoo with “excellent cleansing and conditioning benefits.” §III.B.1 supra.
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`Further, in view of a POSA’s skill and knowledge in the art, the selection of a
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`cationic polymer and AD agent would have been straightforward. Ex. 1034, ¶42.
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`Evans is a reference for all that it teaches and is not limited to its working
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`examples as P&G would have it. In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir.
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`1983). Evans’ Claim 4 expressly teaches a formulation including a cationic
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`polymer. It further identifies cationized cellulose derivatives as useful cationic
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`polymers in amounts (via incorporated reference US 3,962,418), that are
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`completely encompassed by the amount of Claims 1 and 19. Ex. 1010. 25:6-9; Ex.
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`1034, ¶43. P&G affirmatively made the ‘418 patent part of its disclosure in Evans
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`and cannot now insinuate it is somehow isolated or unrelated therefrom. Since
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`even P&G’s expert admits that cationized cellulose derivatives are among the most
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`commonly used cationic polymers in shampoos, a POSA would have no trouble
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`optimizing the Evans formulation with this cationic polymer. Ex. 1034, ¶43.
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`Evans also expressly teaches that the formulations may include AD agents
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`such as pyridine thione salts in amounts identical to or encompassed by Claims 1
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`and 9. Ex. 1034, ¶44. As noted by Mr. Nandagiri, ZPT is not just commonly used
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`in the shampoo industry, it is the only pyridine thione salt approved for use in the
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`U.S. as an AD agent in shampoo. Id. A POSA therefore would naturally select
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`and optimize ZPT for the Evans formulations. Id. Because Evans’ disclosure is
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`entirely related to the production of shampoos, including AD shampoos, hindsight
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`is not needed to conclude it would have been obvious for a POSA to optimize the
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`formulations of Evans to arrive at the claimed compositions.
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`C. The Prior Art Does Not Discourage Modification of Kanebo and
`Evans
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`P&G spends many pages arguing that there was no reason to modify Kanebo
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`and Evans to arrive at the claimed formulations. Resp. at 7-9, 14-16. It makes
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`much of the alleged lack of flaws in Kanebo and the alleged inability of a POSA to
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`formulate an AD conditioning shampoo that exhibited both good AD efficacy and
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`good conditioning, the alleged problem solved in the ‘300 patent versus the prior
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`art. Id. These assertions are flawed.
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`1.
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`Shampoo Formulators Knew How to Optimize Shampoos
`for AD Efficacy and Conditioning
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`Contrary to P&G’s assertions, shampoo formulators knew how to obtain a
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`shampoo with both good AD efficacy and good conditioning performance prior to
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`the ’300 patent. P&G admits that AD conditioning shampoos were well known
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`before the ‘300 patent, as shown by Dr. Lochhead’s own work. Resp. at 7;
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`Lochhead Rpt (Ex. 1040), 08-9 (Bates numbered pages). Nor does P&G dispute
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`that the shampoo formulation of Kanebo Example 10 contains every ingredient in
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`the amount required by Claims 1, 2, 4, 5, 11, 13, 16, 17 and 20. See § III, supra.
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`By definition, this formulation must also show the superior AD and conditioning
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`ascribed to formulations of the ‘300 patent. Evans also discloses AD compositions
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`that exhibit “excellent cleansing and conditioning.” Ex. 1010, at Abstract, 1-2, 27.
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`Thus, Kanebo and Evans, and Dr. Lochhead’s own work, demonstrate a POSA
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`knew how to optimize multi-component AD conditioning shampoos to provide a
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`good balance of these properties. Ex. 1034, ¶46.
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`In contrast, P&G presents no evidence beyond the ’300 patent’s self-serving
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`statements that shampoo formulators would not know how to balance AD efficacy,
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`conditioning and other shampoo properties. Even P&G’s expert’s statements on
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`this point are unsupported and conclusory. Id. In reality, the ‘300 patent
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`improperly claims known combinations of ingredients in known amounts—
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`formulations that are well within a POSA’s knowledge and capability to optimize.
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`2.
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`P&G’s “Different Problem” Rationale for Non-Obviousness
`is Unsupported
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`Even if Kanebo, Evans and the ’300 patent were focused on solving different
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`problems as P&G asserts (and Petitioner denies), the law does not support P&G’s
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`insinuation that only prior art solving the same problem as an inventor can render a
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`patented invention obvious. Looking only to the problem the patentee was trying
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`to solve is legal error. KSR 550 U.S. at 420; see also Cross Med. Prods, Inc. v.
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`Medtronic Sofamor Danek, 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in
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`the art need not see the identical problem addressed in the prior art reference to be
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`motivated to apply its teachings.”) P&G’s reliance on Broadcom Corp. v. Emulex
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`Corp. 725 F.3d 1325 (Fed. Cir. 2013) is misplaced as it is not the general rule and
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`is readily distinguishable.
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`Broadcom was concerned with whether it was obvious to modify a single
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`reference that failed to disclose all the elements of the claimed digital
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`communications system as well as a key function of that system. Id. at 1334-35.
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`Because the prior art system described was self-contained and did not require the
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`omitted function, and because the proposed modification would have rendered it
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`inoperable for its intended purpose, the court found no motivation to modify the
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`reference. Id. at 1335. This is far from the present case where each of the cited
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`references expressly suggests all the elements of the claimed composition, and
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`routine optimization was all that was needed to arrive at the claimed invention.
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`3.
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`Bowser and Reid Do Not Teach Away From Modifying
`Kanebo or Evans
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`In an attempt to undercut Unilever’s expert, P&G attacks the Bowser and
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`Reid references as employing “mechanisms different from those of the ’300 patent
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`to separately provide anti-dandruff and conditioning benefits.” Resp. at 8-9. On
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`this basis, P&G’s expert alleges that Bowser and Reid teach away from modifying
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`Kanebo or Evans. LDec., ¶ 25. These assertions are wrong.
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`The ’300 patent and Bowser do not teach different mechanisms of AD
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`activity. The ’300 patent teaches use of pyridine thione metal salts as AD agents
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`“preferably from about 0.1% to about 3%.” Ex. 1001, 16:46-60. It also teaches
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`that the AD particles have an average particle size “preferably up to about 5µ, most
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`preferably of up to about 2.5 µ.” Id., 16:60-62. Bowser teaches the same AD
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`agents at the same concentrations (“more preferably from about 0.1 to about 3% by
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`weight”), and at identical particles sizes (“at least about 90% by weight of the
`
`particles have a size of 5 µm or less”) Ex. 1009, 2:45-65. Hence, Bowser clearly
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`does not use “larger anti-dandruff particles” as asserted by P&G’s expert.
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`Nor do Reid and the ’300 patent teach different conditioning mechanisms.
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`The ’300 patent teaches that silicone conditioning agents may be used in an
`
`emulsion at a wide range of particle diameters, i.e., from about 0.01 µm to about
`
`50 µm. Ex. 1001, 6:63-65. Small particle applications are specifically disclosed,
`
`including particle diameters “from about 0.01 µm to about 2 µm, more preferably
`
`from about 0.01 µm to about 0.5 µm” (6:65–7:12). Reid teaches use of emulsions
`
`of the same silicone conditioning agents with average particle sizes of “less than 2
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`4846-3092-4062.6
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`13
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`µm and preferably 0.01 to 1 µm.” Ex. 1018 at 4:3-6. The preferred and most
`
`preferred ranges of silicone particles in Reid and the ’300 patent are nearly
`
`identical. Moreover, the ’300 patent actually encourages the use of small particles,
`
`rather than discourages it. Id. at 7: 7-13. The teachings of Reid and the ’300
`
`patent with respect to silicone conditioner are therefore entirely consistent.
`
`Nothing in Bowser and Reid relied on by P&G would have led away from
`
`modifying the formulations of Evans and Kanebo.
`
`P&G’s “Lack of Flaws” Rationale for Non-Obviousness Fails
`
`D.
`P&G’s reliance on Leo Pharm Prods., Ltd. v. Rea (726 F.3d 1346 (Fed. Cir.
`
`2013) to support its “lack of flaws” rationale in Kanebo (Resp. at 15-16) is
`
`misplaced. In Leo, the court found that a claimed three-component drug
`
`formulation was not obvious in view of art that expressly discouraged the claimed
`
`combination of drugs because of a stability problem as well as objective indicia of
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`nonobviousness. Id. at 1348, 1353. Further, the claim at issue expressly required
`
`the formulation to be storage stable, a limitation added during prosecution to
`
`distinguish the prior art. Id. at 1350. Hence, the court’s comment that an invention
`
`can be the recognition of a problem simply does not apply to the present case.
`
`Leo is distinguishable on multiple grounds. First, the present claims do not
`
`recite any special property related to the allegedly unrecognized problem of
`
`superior AD efficacy and conditioning in a single shampoo. The claims merely
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`4846-3092-4062.6
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`14
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`require previously known ingredients and amounts, as shown in Kanebo and
`
`admitted by P&G, See §III, supra; Ex. 1034, 55. Second, Kanebo itself recognized
`
`that formulating shampoos requires balancing competing considerations, e.g.,
`
`cleansing, conditioning, and, in the case of Example 10, AD efficacy, and that to
`
`do so requires routine optimization. Ex. 1034, ¶55. A POSA would modify
`
`Kanebo’s Example 10 because Kanebo itself suggests that a range of shampoo
`
`formulations may be made in accordance with his invention and teaches exactly
`
`what ingredients are interchangeable and in what ranges. Id., ¶56. Third, neither
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`Bowser nor Reid teach away from modifying Kanebo or Evans. See §IV.C.3,
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`supra.
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`Thus, P&G’s assertion—because Unilever did not identify flaws in Kanebo,
`
`a POSA would have lacked motivation to modify Kanebo—misses the point.
`
`There is no unrecognized problem that the ’300 patent solves. Where, as here, a
`
`POSA would naturally desire to optimize a product and the reference itself teaches
`
`desirable substitutions, motivation to modify the reference does not require
`
`identifying flaws in the reference. In re Peterson, 315 F.3d 1325, 1329-30 (Fed.
`
`Cir. 2003). Routine optimization following Kanebo’s teachings of interchangeable
`
`equivalents render Claims 3, 18 and 25 obvious.
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`4846-3092-4062.6
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`15
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`
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`
`
`
`
`Respectfully submitted,
`
` By: /Joseph P. Meara/
`Joseph P. Meara
`Registration No. 44,932
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: September 22, 2014
`
`
`
`
`
`
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`4846-3092-4062.6
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`16
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`
`
`Patent No. 6,451,300
`Case No. IPR2013-00509
`
`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE and
`
`accompanying Exbits is being served by electronic mail September 22, 2014 on
`
`counsel for Patent Owner as follows:
`
`David M. Maiorana
`John V. Biernacki
`Michael S. Weinstein
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`Telephone (216) 586-3939
`Facsimile (216) 579-0212
`dmaiorana@jonesday.com
`jvbiernacki@jonesday.com
`msweinstein@jonesday.com
`
`Dated: September 22, 2014
`
`
`
`
`
`
`
`Steven W. Miller
`Kim W. Zerby
`Carl J. Roof
`Angela K. Haughey
`THE PROCTOR &
`GAMBLE COMPANY
`299 E. Sixth Street
`Cincinnati, Ohio 45202
`Telephone (513) 983-1246
`Facsimile (513) 945-2729
`miller.sw@pg.com
`zerby.kw@pg.com
`roof.cj@pg.com
`haughey.a@pg.com
`
`
`Respectfully submitted,
`
`By: /Joseph P. Meara/
`Joseph P. Meara
`Reg. No. 44,932
`Foley & Lardner LLP
`Counsel for Petitioner
`
`4846-3092-4062.6
`
`1
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