UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`Case IPR2013-00509
`Patent 6,451,300
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`
`CONOPCO, INC. d/b/a UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`_________________________
`
`Case IPR2013-00509
`Patent 6,451,300
`_________________________
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`_________________________
`
`Case IPR2013-00509
`Patent 6,451,300
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`
`CONOPCO, INC. d/b/a UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`_________________________
`
`Case IPR2013-00509
`Patent 6,451,300
`_________________________
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Pursuant to the Scheduling Order (Paper 11) and Notice of Stipulation
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`Case IPR2013-00509
`Patent 6,451,300
`
`
`(Paper 22), the undersigned, on behalf of Patent Owner, The Procter & Gamble
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`Company (“P&G” or “Patent Owner”), hereby submits this Motion to Exclude
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`Exhibits 1034, 1040, 1045-1047, 1051-1055, 1060, and 1061, attached to Conopco,
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`Inc. d/b/a Unilever’s (“Petitioner”) Reply to Patent Owner’s Response (“Reply”).
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`See IPR2013-00509, Paper 45 (and exhibits thereto). Pursuant to 37 C.F.R. §
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`42.62, Patent Owner’s Motion applies the Federal Rules of Evidence (“F.R.E.”).
`
`I.
`
`EXCLUSION OF EXHIBITS 1034, 1040, 1045, 1047, 1052-1055, AND
`1061 AND ANY REFERENCE TO/RELIANCE THEREON
`
`Patent Owner hereby submits that the Board should exclude the Second
`
`Declaration of Arun Nandagiri (Exhibit 1034) (“the Second Nandagiri
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`Declaration”), and Exhibits 1040, 1045, 1047, 1052-1055, and 1061 on the
`
`following Grounds: 37 C.F.R. § 42.6(a)(3) (Impermissible Incorporation by
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`Reference), 37 C.F.R. § 42.23(b) (Outside Scope of Response and Petition), and/or
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48767, I. (Aug. 14, 2012)
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`(Raises New Issue or Belatedly Presents Evidence).
`
`Petitioner’s Reply to Patent Owner’s Response relies on the Second
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`Nandagiri Declaration. The Board should exclude the Second Nandagiri
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`Declaration because it contains copious arguments and discussion of references not
`
`included in the Reply. The Board should also exclude the declaration because it
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`1
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`
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`contains material outside the proper scope of the Reply. Similarly, the Board
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`Case IPR2013-00509
`Patent 6,451,300
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`should exclude certain exhibits that are discussed only in the Second Nandagiri
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`Declaration and/or are outside the proper scope of the Reply.
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`A.
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`The Board Should Exclude Exhibits 1034, 1045, 1047, 1052, 1054,
`And 1055 Based On Improper Incorporation By Reference
`
`The Board has excluded and declined to consider arguments presented in an
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`expert declaration, but not included in the party’s paper itself. See, e.g., The Scotts
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`Co. LLC v. Encap LLC, IPR2013-00110, Paper 79, Final Written Decision at 8
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`(P.T.A.B. June 24, 2014) (excluding a declaration because of improper
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`incorporation by reference); Bae Sys. Info. And Elec. Sys. Integration, Inc. v.
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`Cheetah Omni, LLC, IPR2013-00175, Paper 45, Final Written Decision at 23
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`(P.T.A.B. June 19, 2014) (“It is improper for any argument to be fully developed
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`and presented, not in the party’s paper itself, but in the declaration of an expert.”).
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`Indeed, in its decision denying institution of inter partes review of
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`Petitioner’s related petition in IPR2013-00510, this Panel rejected Petitioner’s
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`attempt to rely on testimony of Mr. Nandagiri, discussed nowhere in the petition.
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`Conopco, Inc. v. The Procter & Gamble Co., IPR2013-00510, Paper 9, Decision
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`Denying Inter Partes Review at 8-9 (P.T.A.B. Feb. 12, 2014). The Panel found
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`that considering such information “would encourage the use of declarations to
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`circumvent the page limits that apply to petitions.” Id. at 8. Further, the Panel
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`2
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`
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`held that 37 C.F.R. § 42.6(a)(3) prohibits arguments made in supporting
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`Case IPR2013-00509
`Patent 6,451,300
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`declarations from being incorporated by reference into a petition. Id. at 8-9.
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`Petitioner chose to ignore this Panel’s instructions and filled the Second
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`Nandagiri Declaration with arguments and discussion not included in the text of
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`the Reply. For example, the Second Nandagiri Declaration contains extensive
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`discussion of the level of skill in the art in paragraphs 8-24, covering
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`approximately nine pages. None of these paragraphs are cited in the Reply.
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`A reply to a patent owner response is limited to 15 pages, 37 C.F.R. §
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`42.24(c)(1), and, in this case, the Reply concludes right at the 15-page limit.
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`Petitioner’s inclusion of additional arguments and information in the Second
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`Nandagiri Declaration is an improper attempt to circumvent the page limit.
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`Petitioner also improperly incorporates by reference Exhibits 1045, 1047,
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`1052, 1054, and 1055. These references are cited in the Second Nandagiri
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`Declaration, but not in the Reply. For example, the only citation to Exhibit 1045 in
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`the Second Nandagiri Declaration is in paragraph 21. This paragraph cites Exhibit
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`1045 for various propositions relating to formulating conditioning shampoos, but
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`neither Exhibit 1045, nor paragraph 21 of the Second Nandagiri Declaration is
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`discussed or cited in the Reply. Likewise, the Reply contains no reference to
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`Exhibits 1047, 1052, 1054, or 1055. The Board has held that it should not consider
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`Exhibits not sufficiently supported by arguments in a party’s paper. See Intelligent
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`
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`3
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`
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`Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00517, Paper 56, Order
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`Case IPR2013-00509
`Patent 6,451,300
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`Conduct of the Proceeding at 2 (P.T.A.B. July 29, 2014).
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`Petitioner circumvents the IPR page limit rules by including additional
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`arguments and discussion in the Second Nandagiri Declaration. The Board should,
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`therefore, exclude the Second Nandagiri Declaration and any exhibits discussed
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`exclusively therein.
`
`B.
`
`The Board Should Exclude Exhibits 1034, 1040, 1045, 1047, 1052-
`1055, And 1061 As Raising Issues Outside The Proper Scope Of
`The Reply
`
`The Board should also exclude the Second Nandagiri Declaration and
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`Exhibits 1040, 1045, 1047, 1052-1055, and 1061 because they raise new issues
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`and/or present evidence that Petitioner should have raised in the Petition. Reply
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`submissions may only respond to arguments raised in the corresponding patent
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`owner’s response. See 37 C.F.R. § 42.23(b). Furthermore, according to Patent
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`Office guidelines, “a reply that raises a new issue or belatedly presents evidence
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`will not be considered…” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48767, I. (Aug. 14, 2012). The guidelines explain that a new issue is raised when
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`the reply includes “new evidence necessary to make out a prima facie case for the
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`patentability or unpatentability of an original or proposed substitute claim, and new
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`evidence that could have been presented in a prior filing.” Id.
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`4
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`
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`The Second Nandagiri Declaration and Exhibits 1040, 1045, 1047, 1052-
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`Case IPR2013-00509
`Patent 6,451,300
`
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`1055, and 1061 violate these rules and, therefore, the Board should exclude them.
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`As explained above, the Second Nandagiri Declaration contains an extensive
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`discussion of the level of skill in the art. See Exh. 1034 at ¶¶ 8-24. These
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`paragraphs do not respond to arguments raised in Patent Owner’s response.
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`Indeed, Patent Owner did not dispute Mr. Nandagiri’s recitation of the level of skill
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`in the art in his first declaration. See Paper 35 at 7. Instead, Petitioner uses these
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`paragraphs in attempt to further support the level of skill in the art proposed in the
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`Petition. In addition, this portion of the Second Nandagiri Declaration introduces
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`and discusses the Johnson and Sorkin references (Exhibits 1045 and 1047). See
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`Exh. 1034 at ¶¶ 11, 20, 21. These references do not respond to arguments raised in
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`Patent Owner’s response, as neither was included in the Petition. Thus, Patent
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`Owner could not have addressed them in its Patent Owner’s response. These
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`references and arguments could have been, and should have been, raised in the
`
`Petition, and the Board should not consider them.
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`As another example, the Second Nandagiri Declaration cites Exhibits 1053
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`and 1054 for propositions relating to the properties of ethylene glycol diesters. Id.
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`at ¶ 34. Petitioner provides no reason why it could not have cited these exhibits in
`
`the Petition. Similarly, the Second Nandagiri Declaration cites Exhibit 1061 to
`
`support its argument that ZPT is the only pyridine thione salt approved for use in
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`
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`5
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`
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`the U.S. as an anti-dandruff agent in shampoo. Id. at ¶ 44. Petitioner could have,
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`Case IPR2013-00509
`Patent 6,451,300
`
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`and should have, raised this argument and reference in the Petition.
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`The Board has declined to consider improper reply evidence, such as that
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`included in Petitioner’s reply submissions in this case. For example, in IPR2013-
`
`00110, the Board did not consider two reply declarations, or any arguments based
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`thereon, because they contained arguments outside the proper scope of a reply.
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`The Scotts Co. LLC, IPR2013-00110, Paper 79, Final Written Decision at 5.
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`Further, the Board excluded these declarations even though they contained some
`
`material that was appropriate for a reply. Id. at 6, n.3. It did so because “the Board
`
`will not attempt to sort the proper from the improper portions.” Id. See also Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48767, I. (Aug. 14, 2012).
`
`The Board should exclude the Second Nandagiri Declaration and Exhibits
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`1040, 1045, 1047, 1052-1055, and 1061 because they are improperly incorporated
`
`by reference into the Reply and/or contain arguments and evidence not within the
`
`proper scope of the Reply.
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`II. EXCLUSION OF EXHIBIT 1040 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Patent Owner hereby submits that the Board should exclude Exhibit 1040,
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`“Lochhead, R.Y., “Research Report – Formulation of an Antidandruff Shampoo
`
`with Improved Hair Conditioning Attributes,” Isleworth Laboratory, Unilever
`
`
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`6
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`
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`Research (October 1979)” based on the following Grounds: F.R.E. 106
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`Case IPR2013-00509
`Patent 6,451,300
`
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`(Remainder of or Related Writings), F.R.E. 801 and F.R.E. 802 (Impermissible
`
`Hearsay), and F.R.E. 901 (Authentication).
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`Exhibit 1040 is a research report purportedly authored by Patent Owner’s
`
`expert, Dr. Robert Lochhead, in 1979 while he was employed by Petitioner.
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`Petitioner relies on Exhibit 1040 as purported support for the proposition that anti-
`
`dandruff conditioning shampoos were well known before the ’300 patent. See
`
`Reply at 11.
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`Exhibit 1040, however, should be excluded under F.R.E. 106 because
`
`Petitioner has failed to prove that the document is complete and that the exhibit
`
`contains all original pages. For example, the document appears to contain two
`
`pages labeled “2.” This calls into question whether the exhibit is composed of
`
`multiple, separate documents and whether the exhibit is complete. Petitioner offers
`
`no evidence to show that the document is, in fact, complete.
`
`In addition, the Board should exclude Exhibit 1040 as hearsay and for lack
`
`of authentication. The research report is an out of court statement offered to prove
`
`the truth of the matters asserted, and Petitioner has not shown that any hearsay
`
`exception applies. Furthermore, Petitioner has not provided any evidence
`
`authenticating the document. Petitioner attempted to establish the authenticity of
`
`Exhibit 1040 and that a hearsay exception applies during the deposition of Dr.
`
`
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`7
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`
`
`Lochhead but his recollection of this 35 year old document was insufficient to do
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`Case IPR2013-00509
`Patent 6,451,300
`
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`so. Dr. Lochhead did recall that Petitioner failed in its efforts to formulate an
`
`antidandruff conditioning shampoo.
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`Accordingly, Exhibit 1040 lacks foundation and authentication, and is
`
`impermissible hearsay, and the Board should exclude it. F.R.E. 801, 802, 901.
`
`III. EXCLUSION OF EXHIBIT 1046 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Patent Owner hereby submits that the Board should exclude Exhibit 1046,
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`“Parran, J.J., “Deposition on the Skin of Particles of Antimicrobial Agents from
`
`Detergent Bases,” The Journal of Investigative Dermatology, vol. 45, no. 2, pp. 86-
`
`88 (1965)” based on the following Grounds: F.R.E. 402 (Relevance), F.R.E. 403
`
`(Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other
`
`Reasons).
`
`Neither the Reply, nor the Second Nandagiri Declaration cite to or reference
`
`Exhibit 1046. Therefore, Exhibit 1046 is not relevant to any issue in this trial and
`
`the Board should exclude it. F.R.E. 402, 403.
`
`IV. EXCLUSION OF EXHIBIT 1051 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Patent Owner hereby submits that the Board should exclude Exhibit 1051,
`
`“Freedberg, I.M., et al.(eds.), “Fitzpatrick’s Dermatology in General Medicine,”
`
`vol. 1, Sixth Ed., pp. 1180-1194 (2003)” based on the following Grounds: F.R.E.
`
`
`
`8
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`
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`402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Case IPR2013-00509
`Patent 6,451,300
`
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`Confusion, Waste of Time, or Other Reasons).
`
`Neither the Reply, nor the Second Nandagiri Declaration cite to or reference
`
`Exhibit 1051. Therefore, Exhibit 1051 is not relevant to any issue in this trial and
`
`the Board should exclude it. F.R.E. 402, 403.
`
`V. EXCLUSION OF EXHIBIT 1060 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Patent Owner hereby submits that the Board should exclude Exhibit 1060,
`
`“Kalla, et al., WO 97/26854, “Shampoo Compositions with Improved Deposition
`
`of Antimicrobial Agents,” filed January 6, 1997; published July 31, 1997” based
`
`on the following Grounds: F.R.E. 402 (Relevance), F.R.E. 403 (Excluding
`
`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons).
`
`Neither the Reply, nor the Second Nandagiri Declaration cites to or
`
`references Exhibit 1060. Therefore, Exhibit 1060 is not relevant to any issue in
`
`this trial and the Board should exclude it. F.R.E. 402, 403.
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`
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`9
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`
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`Case IPR2013-00509
`Patent 6,451,300
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`Respectfully submitted,
`
`
`
`/s/ David M. Maiorana
`David M. Maiorana (Reg. No. 41,449)
`John V. Biernacki (Reg. No. 40,511)
`Thomas R. Goots (admitted pro hac vice)
`Michael S. Weinstein (Reg. No. 62,446)
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`Tel: (216) 586-3939 / Fax: (216) 579-0212
`
`Steven W. Miller (Reg. No. 31,984)
`Carl J. Roof (Reg. No. 37,708)
`Angela K. Haughey (Reg. No. 56,373)
`THE PROCTER & GAMBLE COMPANY
`299 E. Sixth Street, Cincinnati, Ohio 45202
`Tel: (513) 983-1100 / Fax: (513) 945-2729
`
`Attorneys For Patent Owner
`The Procter & Gamble Company
`
`10
`
`Dated: October 14, 2014
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`
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`
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`CERTIFICATE OF SERVICE
`
`Case IPR2013-00509
`Patent 6,451,300
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on October 14,
`
`2014, a copy of the foregoing Patent Owner’s Motion to Exclude Evidence, was
`
`served by email, pursuant to agreement of the Parties, on the following:
`
`Michael R. Houston, Esq.
`mhouston@foley.com
`Jeanne M. Gills, Esq.
`jmgills@foley.com
`FOLEY & LARDNER LLP
`321 North Clark Street, Suite 2800
`Chicago, IL 60654
`
`Edward A. Squillante
`Ronald A. Koatz
`edward.a.squillante@unilever.com
`ronald.koatz@unilever.com
`UNILEVER
`700 Sylvan Avenue
`Englewood Cliffs, NJ 07632
`
`
`/s/ David M. Maiorana
`David M. Maiorana
`Registration No. 41,449
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`
`Attorney For Patent Owner
`The Procter & Gamble Company
`
`Joseph P. Meara, Esq.
`jmeara-PGP@foley.com
`FOLEY & LARDNER LLP
`150 E. Gilman Street, Suite 5000
`Madison, WI 53703
`
`Matthew J. Becker
`Jonathan A. Harris
`mbecker@axinn.com
`jharris@axinn.com
`AXINN, VELTROP &
`HARKRIDER LLP
`90 State House Square
`9th Floor
`Hartford, CT 06103
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