IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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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
`Petitioner
`v.
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`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
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`Patent No. 6,451,300
`Case No. IPR2013-00509
`____________________________________________________________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE
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`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`CONOPCO, INC. dba UNILEVER
`Petitioner
`v.
`
`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
`
`Patent No. 6,451,300
`Case No. IPR2013-00509
`____________________________________________________________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`TABLE OF CONTENTS
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Exhibits 1034, 1040, 1045, 1047, 1052-1055, and 1061 should not be
`excluded ........................................................................................................... 2
`A.
`Exhibits 1034, 1045, 1047, 1052, 1054, 1055 are not based on
`improper incorporation by reference ..................................................... 2
`Exhibits 1034, 1040, 1045, 1047, 1052-1055, and 1061 were
`submitted to respond to arguments raised by Patent Owner’s
`response and therefore were not outside the scope. .............................. 2
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`B.
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`III. Exhibit 1040 should not be excluded as incomplete or inadmissible
`hearsay ............................................................................................................. 4
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`IV. Exhibits 1046, 1051 and 1060 were inadvertently filed .................................. 9
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`Conclusion ..................................................................................................... 10
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`V.
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`I.
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`Introduction
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`The objections presented by Patent Owner, the Proctor & Gamble Company
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`(“P&G”), in its motion to exclude, were not properly identified, were not properly
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`preserved, and/or are not appropriate for a motion to exclude. As an initial matter,
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`P&G has failed to identify in its motion where in the record the objections were
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`made. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug.
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`14, 2012). One of the exhibits to which P&G objects (Exhibit 1040) was presented
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`during a deposition, and P&G has not identified where in the deposition transcript
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`it lodged the specific evidentiary objections it advances herein. See 37 C.F.R.
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`§ 42.64(a).
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`Respecting the other challenged exhibits, Unilever notes that P&G filed a
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`document entitled Patent Owner’s Objections to Evidence Pursuant to 37 C.F.R.
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`§ 42.64 (Paper 48)—even though the rules require that type of document to be
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`served, not filed (id. § 42.64(b)(1)). Yet, in violation of the Rules, P&G’s
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`document failed to “identify the grounds for the objection with sufficient
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`particularity to allow correction in the form of supplemental evidence.” Id. For
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`example, P&G made blanket objections to Exhibit 1034—the Second Declaration
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`of Arun Nandagiri (“Second Declaration” or “Mr. Nandagiri’s declaration”), a 30-
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`page long document consisting of 57 numbered paragraphs—under FRE 402, 403,
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`602, 702, 703, 801, 802, 901 and several PTAB rules without providing any
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`1
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`identification of which specific paragraphs corresponded to which objection(s) and
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`without any explanation or reasoning for the objections. See Paper 48 at 2. Mere
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`citation of the rule of evidence, as P&G has done, does not satisfy § 42.64’s
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`requirement. P&G’s failure to identify what particular evidentiary grounds apply
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`to what specific parts of the document (e.g., it is impossible to know which of the
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`57 paragraphs of Mr. Nandagiri’s declaration P&G’s objects to on hearsay
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`grounds) constitutes a failure to preserve its objections. Paper 48 at 2. P&G’s
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`written objections to each of Exhibits 1034, 1036-1037, 1040, 1045-1047, 1051-
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`1055, and 1060-1061 consist of nothing more than a citation to a PTAB rule or rule
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`of evidence, and therefore all of P&G’s objections to these exhibits have not been
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`properly preserved.
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`Many of P&G’s other objections, identified in the paragraphs below where
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`appropriate, are simply not proper for a motion to exclude, which is limited to
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`challenges relating to the admissibility of evidence, not the sufficiency of evidence
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`to prove a particular fact. 77 Fed. Reg. at 48767.
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`II. Exhibits 1034, 1040, 1045, 1047, 1052-1055, and 1061 should not be
`excluded
`A. Exhibits 1034, 1045, 1047, 1052, 1054, 1055 are not based on
`improper incorporation by reference
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`Exhibits 1034, 1045, 1047, 1052, 1054 and 1055 do not constitute
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`impermissible incorporation by reference and should not be excluded. The Reply
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`2
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`directly discusses and cites to subject matter in Mr. Nandagiri’s Second
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`Declaration, in which he opines on the level of skill in the art and supports his
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`opinions with citations to these documents.
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`Notwithstanding P&G’s protests to the contrary, the level of skill of a person
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`of ordinary skill in the art (“POSA”) is an over-arching issue raised by its
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`Response; paragraphs 8-24 of the Second Nandagiri declaration address this issue.
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`As noted in Section II of Unilever’s Reply, P&G depicts a POSA as “unable to
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`understand the connected disclosures within Kanebo or Evans, unaware of art-
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`recognized equivalents for cationic polymers and pearl luster/suspending gents,
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`and unable to routinely optimize shampoos to use such interchangeable
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`components. Resp. at 16-22, 24-27.” Reply at 1. Unilever’s Reply then discusses
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`each of these points in the appropriate section with references back to the Second
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`Nandagiri Declaration showing the level of skill in the art.
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`For example, in the discussion of the interchangeability of claimed shampoo
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`ingredients, at pages 5 and 6 of the Reply, Unilever cites several times to
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`paragraph 35 of the Second Nandagiri Declaration for support regarding the level
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`of skill in the art. Specifically, the Reply notes that a POSA would have been
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`aware of the basic functional properties of an AD conditioning shampoo, namely
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`cleansing, conditioning, and controlling or preventing dandruff. Reply at 5. Mr.
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`Nandagiri makes this exact point at paragraph 35 of his Second Declaration and
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`3
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`relies on the discussion in Section I of his Second Declaration, including
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`paragraphs 8-24, as confirmatory support for his conclusion. Paragraph 21 and Ex.
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`1045, highlighted by P&G, are among the paragraphs in Section I.A that Mr.
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`Nandagiri points to as corroborating his opinion. Likewise, Mr. Nandagiri at
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`paragraphs 46, 48, and 55 relies on the discussion in Section I of his declaration to
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`corroborate that, contrary to P&G’s view, a POSA knew how to optimize a
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`shampoo to balance multiple properties, including AD and conditioning. It is not
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`impermissible incorporation by reference for Unilever to expressly point out
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`problems with P&G’s view of the level of skill in the art and then rely on expert
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`opinion to show what the appropriate skill level is for a POSA. Similarly, Exhibits
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`1047, 1052, 1054 and 1055 all corroborate Mr. Nandagiri’s opinions in one or
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`more of paragraphs 31, 35, 46, 48, and 55 of his Second Declaration, which in turn
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`are cited on pages 4-6, 11 and 15 of Unilever’s Reply.
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`B.
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`Exhibits 1034, 1040, 1045, 1047, 1052-1055, and 1061 were
`submitted to respond to arguments raised by Patent Owner’s
`response and therefore were not outside the scope.
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`The Second Nandagiri Declaration and Exhibits 1040, 1045, 1047, 1052-
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`1055 and 1061 respond directly to arguments raised by P&G’s Response. As
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`explained in the previous section, P&G’s Response raises the issue of the level of
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`skill in the art because its arguments depict a POSA as having an artificially
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`narrow understanding of the prior art, and as lacking knowledge of the
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`4
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`interchangeability of shampoo ingredients and which shampoo properties a POSA
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`would routinely optimize. See Resp. at 8, 13, 16-22, 24-27. Because all of these
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`depend on the POSA’s level of skill, P&G’s assertion that it does not dispute the
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`level of skill in the art is simply not borne out by its arguments. Id.; see Reply at 1,
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`3-7, and 9-11.
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`Exhibits 1045 and 1047 do not raise new issues as they are part of Mr.
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`Nandagiri’s rebuttal of P&G’s positions, namely that: a POSA would not know
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`how to optimize AD/conditioning shampoo formulations (Resp. at 8); and a POSA
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`would not recognize the interchangeability of cationic polymers disclosed in the
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`cited art and the interchangeability of suspending agents/pearl luster agents
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`disclosed in the cited art (id. at 20-22, 17-18). The Reply discusses and cites Mr.
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`Nandagiri’s opinions at paragraphs 35, 46, 48, and 55 regarding these topics.
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`Reply at 5-6, 11, 15. As part of his opinions, Mr. Nandagiri makes the related
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`points that: (1) a POSA has long needed to balance multiple properties in a
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`shampoo formulation; and (2) a POSA would have been aware of the basic
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`functional properties of an AD conditioning shampoo, namely cleansing,
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`conditioning, and controlling or preventing dandruff. Ex. 1034 at ¶¶ 35, 46, 48,
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`and 55 (each citing back to Mr. Nandagiri’s discussion of skill in the art in Section
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`1). Unilever’s expert would not have needed to make these points had P&G not
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`drastically understated the level of the skill in the art.
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`5
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`With respect to Exhibits 1053 and 1054 (which are P&G’s own patents),
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`Petitioner was merely rebutting P&G’s arguments alleging the non-
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`interchangeability of EGDM and EGDS. In its response, P&G and its expert
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`advanced the argument that EGDM and EGDS were non-interchangeable because
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`their melting points, crystal structures and other properties needed for suspending
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`agents allegedly differ from that needed for pearl luster agents. Resp. at 17-18; Ex.
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`2015 at 45-47. In reply, Unilever merely points out that P&G’s own art does not
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`support this position.
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`Ex. 1061 was cited by Mr. Nandagiri to rebut P&G’s contention that the
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`claims would not have been obvious over Evans, in part due to Evans’ allegedly
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`limited disclosure regarding the AD agent. Resp. at 22-23. Unilever’s rebuttal
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`showing that Evan’s disclosure of pyridinethione salts is sufficient in combination
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`with the rest of its disclosure to render claims 1, 12, 16, 19 and 24 obvious was not
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`a new issue, and Ex. 1061 was merely used to bolster this point from the Petition.
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`Reply at 10; Ex. 1034 at ¶44.
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`Similarly, Exhibits 1040, 1052 and 1055, which are a report and two articles
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`by P&G’s own expert, do not raise new issues. As noted above, P&G called into
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`question the level of skill in the art in its Response. Resp. at 8, 13, 16-22, 24-27.
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`P&G also contested the interchangeability of cationized cellulose and guar, and
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`whether adding cationic guar to Kanebo’s Example 10 formulation would form a
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`6
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`coacervate or otherwise works properly. Resp. at 19-22. Mr. Nandagiri rebutted
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`the overly circumscribed understanding of the skill in the art required by P&G’s
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`arguments by using, among other things, Dr. Lochhead’s own research report and
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`article expressly showing that guar and cellulose were viewed as equally
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`interchangeable additives for this purpose. Ex. 1034 at ¶¶ 31-35, 46, 48, 55; Reply
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`at 5-6, 11, 15. Mr. Nandagiri also demonstrated that P&G’s own expert
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`acknowledged the long-standing and well-known use of both cationic guar and
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`cationized cellulose to form coacervates in shampoos. Ex. 1034 at ¶31. Unilever
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`properly cited Exhibits 1040, 1052, and 1055 in rebuttal to issues raised by P&G in
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`its response. See Sony Corp. v. Yissum Research Development Co. of the Hebrew
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`Univ. of Jerusalem, IPR2013-00219, Paper 60 at 50-51 (PTAB Sept. 22, 2014)
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`(finding that Petitioner’s Reply and corresponding evidence properly fall within
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`the scope of, and respond properly to, Patent Owner’s Response); Polaris Wireless,
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`Inc. v. Trueposition, Inc., IPR2013-00323, Paper 33 at 2-4 (PTAB June 4, 2014)
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`(same).
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`Because Exhibits 1034, 1040, 1045, 1047, 1052-1055 and 1061 respond
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`directly to issues raised by P&G in its Response, akin to Sony Corp. and Polaris
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`Wireless, they are properly relied on by Unilever. P&G’s assertion that these
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`Exhibits are beyond the proper scope of the Reply is unfounded and belies its
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`efforts to exclude damaging testimony and documents authored by its own expert.
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`7
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`In any event, “[a] motion to exclude is not a mechanism to argue that a reply
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`contains new arguments or relies on evidence necessary to make out a prima facie
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`case.” Sony Corp., IPR2013-00219, Paper 60 at 50. Accordingly, the Board
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`should refuse to exclude any of Exhibits 1034, 1040, 1045, 1047, 1052-1055 and
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`1061.
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`III. Exhibit 1040 should not be excluded as incomplete or inadmissible
`hearsay
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`Exhibit 1040 is report dated October 1979 by P&G’s technical expert, Dr.
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`Robert Y. Lochhead. Ex. 1040. Dr. Lochhead authenticated the report as one that
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`he authored while working for Unilever. Ex. 1036 at 56:25-57:21. P&G’s
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`objection as to incompleteness on the grounds that “the document appears to
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`contain two pages labeled ‘2’” is baseless. Dr. Lochhead testified that he did not
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`know of any reason to think that Exhibit 1040 was in any way fabricated or altered
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`from the way he originally wrote it. Id. at 60:16-21. A plain viewing of Exhibit
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`1040 shows that it is comprised of three sections: a title page with no page number;
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`a summary section with a first and second page; and a more detailed section having
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`first through ninth pages. The fact that Exhibit 1040’s pagination restarted at one
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`after the summary section is no grounds for inadmissibility. If P&G’s position was
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`correct, then every exhibit without continuous pagination would be excluded.
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`P&G’s hearsay objection also fails. First, since the 1979 report was
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`authenticated by Dr. Lochhead and is more than 20 years old, Exhibit 1040 falls
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`8
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`under the ancient document exception to the prohibition against hearsay. FRE
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`803(16). Exhibit 1040 also falls under the business record exception to the hearsay
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`rule. FRE 803(6). Dr. Lochhead testified that while employed at Unilever,
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`research was one of his regular activities as was writing reports like Exhibit 1040.
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`Ex. 1036 at 58:25-59:16.
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`Finally, Exhibit 1040 is cited to show the level of skill in the prior art, and
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`courts have refused to exclude prior art references on the grounds of hearsay. VS
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`Techs., LLC v. Twitter, Inc., No. 2:11cv43, 2012 U.S. Dist. LEXIS 59475, at *18
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`(E.D. Va. Apr. 27, 2012) (prior art did not constitute inadmissible hearsay because
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`it was being offered for the purpose of establishing the existence of claim
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`elements). Here, Exhibit 1040 is relevant for teaching that a person of skill in the
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`art of shampoos knew even as of 1979 how to formulate and test antidandruff
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`conditioning shampoos for properties similar to those claimed in the ’569 patent.
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`IV. Exhibits 1046, 1051 and 1060 were inadvertently filed
`Unilever acknowledges that Exhibits 1046, 1051 and 1060 were not cited in
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`its Reply or in the Second Declaration of Arun Nandagiri (Ex. 1034). Unilever’s
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`filing of Exhibits 1046, 1051 and 1060 was an inadvertent error, and they may be
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`expunged from the record in this proceeding. Unilever notes that Exhibits 1046
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`and 1051 were properly filed in the related proceeding, IPR2013-000505.
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`9
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`V. Conclusion
`For the foregoing reasons, P&G motion to exclude should be denied.
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`Respectfully submitted,
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`Dated: October 20, 2014
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`By: /Joseph P. Meara/
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`
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`Joseph P. Meara (Lead Counsel)
`Registration No. 44,932
`Foley & Lardner, LLP
`150 E. Gilman Street
`Suite 5000
`Madison, Wisconsin 53703
`Telephone: (608) 257-5035
`Facsimile:
`(608) 258-4258
`jmeara@foley.com
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`Jeanne M. Gills (Back-up Counsel)
`Registration No. 44,458
`Michael R. Houston (Back-up
`Counsel)
`Registration No. 58,486
`Foley & Lardner, LLP
`321 N. Clark Street
`Chicago, Illinois 60654
`Telephone: (312) 832-4500
`Facsimile:
`(312) 832-4700
`jmgills@foley.com
`mhouston@foley.com
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`Counsel for Petitioner
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`10
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`IPR2013-00509
`Petitioner’s Response to Patent Owner’s Motion to Exclude
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`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO
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`EXCLUDE EVIDENCE is being served by electronic mail October 20, 2014 on
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`counsel for Patent Owner as follows:
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`David M. Maiorana
`John V. Biernacki
`Thomas R. Goots
`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
`trgoots@jonesday.com
`msweinstein@jonesday.com
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`
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`Dated: October 20, 2014
`
`Steven W. Miller
`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
`roof.cj@pg.com
`haughey.a@pg.com
`
`/Joseph P. Meara/
`By:
`Joseph P. Meara
`Registration No. 44,932
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`
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