Patent Owner’s
`Demonstrative Exhibits
`(combined hearing November 5, 2014)
`
`C o n o p c o , I n c . d / b / a U n i l e v e r , P e t i t i o n e r
`v .
`T h e P r o c t e r & G a m b l e C o m p a n y , P a t e n t O w n e r
`
`I P R 2 0 1 3 - 0 0 5 0 5 ( U . S . P a t . N o . 6 , 9 7 4 , 5 6 9 ) [ E x h i b i t 2 0 2 3 ]
`I P R 2 0 1 3 - 0 0 5 0 9 ( U . S . P a t . N o . 6 , 4 5 1 , 3 0 0 ) [ E x h i b i t 2 0 2 3 ]
`
`
`PG-1
`
`
`Demonstrative Exhibits
`(combined hearing November 5, 2014)
`
`C o n o p c o , I n c . d / b / a U n i l e v e r , P e t i t i o n e r
`v .
`T h e P r o c t e r & G a m b l e C o m p a n y , P a t e n t O w n e r
`
`I P R 2 0 1 3 - 0 0 5 0 5 ( U . S . P a t . N o . 6 , 9 7 4 , 5 6 9 ) [ E x h i b i t 2 0 2 3 ]
`I P R 2 0 1 3 - 0 0 5 0 9 ( U . S . P a t . N o . 6 , 4 5 1 , 3 0 0 ) [ E x h i b i t 2 0 2 3 ]
`
`
`PG-1
`
`
`
`Patent Owner’s
`Demonstrative Exhibits
`
`
`Conopco, Inc. d/b/a Unilever, Petitioner
`v.
`The Procter & Gamble Company, Patent Owner
`
`IPR2013-00505
`(U.S. Pat. No. 6,974,569)
`[Exhibit 2023]
`
`
`PG-2
`
`
`
`IPR2013-00505 (U.S. Pat. No. 6,974,569)
`
`
` Title: Shampoos Providing A Superior
`Combination Of Anti-Dandruff Efficacy And
`Condition.
`
` Claims at issue:
` Claims 1-12, 15, 17-19, 23, 26, 28-30, and 32.
`
` Ground instituted:
` Obviousness in view of Kanebo alone.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-3
`
`
`
`Introduction
`
` Petitioner has the burden to show that the
`challenged claims – including all limitations –
`would have been obvious in light of the prior art.
` Component limitations and index limitations.
`
` No one reference meets all of the limitations.
`
` Petitioner cobbles together multiple references and
`contends that they render the claims obvious.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-4
`
`
`
`Introduction
`
` In the sole instituted ground, Petitioner argues that
`Kanebo alone renders obvious the challenged claims.
`
` In arguing obviousness, Petitioner does not rely on
`Kanebo alone, but also on multiple additional
`references.
` Shin, Hoshowski, Parran, Sorkin, Coffindaffer
`
` Petitioner offers no motivation to combine these
`references.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-5
`
`
`
`Introduction
`
` Merely identifying all claim limitations in disparate
`references is insufficient to render a claim obvious. In re
`Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006).
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-6
`
`
`
`Patent Owner’s Key Arguments Go Unrebutted
`
` The index values of the ’569 patent claims must be
`determined using the specifically described methods. The
`patent was clear – not any test will do.
` No reference discloses the specific tests described in the
`patent.
` Even if any test could be used, no single reference discloses all
`four indices.
` There is no evidence that a POSA would have chosen to
`optimize the claimed indices from the laundry list of available
`shampoo evaluation parameters.
` There is no evidence that a POSA would have been able to
`optimize a formulation to obtain the claimed compositions.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-7
`
`
`
`Patent Owner’s Key Arguments Go Unrebutted
`
`
`
` Instead of addressing Patent Owner’s key
`arguments, Petitioner’s Reply:
` Attributes arguments to Patent Owner that it never made
`and then rebuts those straw man arguments; and
` Relies on new references and arguments.
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-8
`
`
`
`The Board Should Not Consider Reply Evidence
`Based On Improper Incorporation By Reference
`
` The Board should not consider the Second Declaration
`of Arun Nandagiri (Exhs. 1034/1035) because it
`contains arguments and discussion not included in the
`Reply.
`
` The Board should not consider Exhibits 1045-1047,
`1051-1059, and 1062. These references are cited in the
`Second Nandagiri Declaration, but are not cited or
`discussed in the Reply.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-9
`
`Paper 57 at 2-5.
`
`
`
`The Board Should Not Consider Reply Evidence
`Based On Improper Incorporation By Reference
`
` The Board has excluded and/or declined to consider arguments
`and exhibits that are presented in an expert declaration, but not
`included in the party’s paper itself:
` The Scotts Co. LLC v. Encap LLC, IPR2013-00110, Paper 79, Final Written
`Decision at 8 (P.T.A.B. June 24, 2014).
` Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-
`00517, Paper 56, Order Conduct of the Proceeding at 2 (P.T.A.B. July 29,
`2014).
`
` This Panel previously criticized Petitioner for its attempts to
`incorporate by reference Mr. Nandagiri’s testimony, discussed
`nowhere in the petition:
` Conopco, Inc. v. The Procter & Gamble Co., IPR2013-00510, Paper 9,
`Decision Denying Inter Partes Review at 8-9 (P.T.A.B. Feb. 12, 2014).
`
`Paper 57 at 2-5.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-10
`
`
`
`The Board Should Not Consider Reply Evidence
`Based On Improper Incorporation By Reference
`
` A reply to a patent owner response is limited to 15 pages.
`37 C.F.R. § 42.24(c)(1).
`
` Petitioner’s Reply concludes right at the 15-page limit.
`
` Petitioner’s inclusion of additional arguments and exhibits
`in the Second Nandagiri Declaration is an improper
`attempt to circumvent the page limit.
`
` The Board should exclude the declaration and the exhibits
`that are only discussed therein.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`Paper 57 at 4-5.
`
`PG-11
`
`
`
`The Board Should Not Consider Reply Evidence
`Outside The Proper Scope Of A Reply
`
` Reply submissions may only respond to arguments raised
`in the corresponding patent owner’s response. See 37
`C.F.R. § 42.23(b).
`
` “A reply that raises a new issue or belatedly presents
`evidence will not be considered…” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48767, I. (Aug. 14,
`2012).
`
` The Second Nandagiri Declaration and Exhibits 1040,
`1045-1047, and 1051-1055 violate these rules and the Board
`should exclude them.
`
`
`Paper 57 at 6-8.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-12
`
`
`
`Petitioner’s Reply And Declaration
`Mischaracterize Evidence
`
`
`
` Petitioner repeatedly mischaracterizes testimony
`and exhibits in the Reply and Second Nandagiri
`Declaration.
`
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-13
`
`
`
`Petitioner’s Reply And Declaration
`Mischaracterize Evidence – Example
`
` Mr. Nandagiri asserts that tests for measuring bioavailability were
`known in the art prior to the ’569 patent and cites the deposition of
`Patent Owner’s expert, Dr. Geis. Exh. 1034 at ¶ 30.
` None of the citations support this statement.
`Q. Is the bioavailability of an anti-dandruff agent an
`Q. Do you believe the '569
`important property in terms of its efficacy for dandruff?
`patent is the first publication
`A. Yes.
`to describe anti-dandruff
`Q. What is bioavailability?
`efficacy using shampoo that's
`A. Bioavailability refers to the availability of that active
`at, quote, full-strength as you
`to act on the target organism in context.
`refer to it in paragraph 20?
`Q. Do you know when it was first discovered that
`A. No, I do not believe that's
`bioavailability of anti-dandruff agents was an important
`the first test.
`property with respect to the efficacy towards dandruff?
`Q. So tests for anti-dandruff
`A. The term "bioavailability," I can't address. The
`efficacy using full-strength
`concept that the active had to contact the organism is
`shampoo were known in the
`well known.
`art prior to the '569 patent; is
`Q. Well known before the '569 patent?
`that true?
`A. Yes.
`A. Yes.
`
`Q. So if we rephrase the
`question to refer to the
`concept of bioavailability --
`before the '569 patent,
`would one of ordinary skill
`in the art have appreciated
`the changing components in
`a shampoo formulation,
`besides the specific anti-
`dandruff agent, would have
`an effect on what we're
`calling the concept of
`bioavailability?
`A. Yes.
`
`Ex. 1041 at 35:20-36:12
`
`Ex. 1041 at 65:2-10
`
`Ex. 1041 at 97:17-25
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-14
`
`
`
`’569 Patent Representative Claim
`
`1. A shampoo composition comprising:
`a) from about 5% to about 50%, by weight, of an
`anionic surfactant;
`b) from about 0.01% to about 10%, by weight, of a non-
`volatile conditioning agent;
`c) from about 0.1% to about 4%, by weight, of an anti-
`dandruff particulate;
`d) from about 0.02% to about 5%, by weight, of a
`cationic polymer;
`e) water;
`f) from about 0.1% to about 10%, by weight of the
`composition, of a suspending agent;
`wherein said composition:
`i. has a bioavailability/coverage index value, of
`at least about 1.25;
`ii. has a first conditioning index value, of less
`than or equal to about 1.0;
`iii. has a second conditioning index value, of at
`least about 1.5; and
`iv. has a minimal inhibitory concentration index
`value, of at least about 0.125.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-15
`
`
`
`The ’569 Patent
`
` The ’569 patent relates to shampoo compositions that provide a
`superior combination of anti-dandruff and conditioning. Paper
`33 at 3-4.
`
`
`
` A POSA in 1999 understood and accepted that formulating
`anti-dandruff, conditioning shampoos involved certain trade-
`offs. Paper 33 at 10.
` Optimizing [wet-combing] conditioning performance left shampooed
`hair feeling greasy or unclean. Paper 33 at 10; Exh. 2015, Lochhead
`Decl. at ¶ 22.
`
` Optimizing anti-dandruff performance caused conditioning performance
`to suffer. Paper 33 at 10; Exh. 2015, Lochhead Decl. at ¶ 22.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-16
`
`
`
`The ’569 Patent
`
` The inventors of the ’569 patent discovered that it was
`surprisingly possible to formulate shampoo compositions
`without trade-offs between anti-dandruff efficacy and
`conditioning performance. Paper 33 at 45.
`
` The ’569 patent discloses and claims an unexpected “sweet spot”
`in which a shampoo will have superior anti-dandruff efficacy and
`conditioning properties. Paper 33 at 16.
`
` The ’569 patent defines the boundaries of the “sweet spot” with
`the combination of the claimed ranges of certain ingredients and
`the claimed ranges of specific indices. Id.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-17
`
`
`
`The ’569 Patent
`
` To determine whether a shampoo composition falls within
`the sweet spot, the ’569 patent discloses and claims values
`calculated by use of four specific analytical methods:
` (1) the “bioavailability/coverage index,”
` (2) the “first conditioning index,”
` (3) the “second conditioning index,” and
` (4) the “Minimal Inhibitory Concentration index.”
`
`Paper 33 at 5.
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-18
`
`
`
`The Invention Of The ’569 Patent
`
` Petitioner argues that by claiming values of the indices, the
`’569 patent attempts to patent new properties of known
`compositions. See Paper 48 at 1.
`
` Petitioner provides no evidence to show that the
`compositions defined by the combination of the claimed
`components and the claimed values of the indices were
`actually known.
`
` Petitioner could have tested Kanebo’s Example 10, but
`either chose not to, or did so and obtained negative results.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-19
`
`
`
`Claim Construction Of The Indices
`
` The Board preliminarily concluded that the ’569 patent does not
`“require that the indices be evaluated by any particular technique or
`assay.” Paper 9 at 7. Patent Owner respectfully disagrees.
`
` The ’569 patent specifically provides that these indices must be
`determined using the methods disclosed in the specification.
` Exh. 1001, ’569 patent at 33:23-25 (“The methods to be employed
`for determining the values of these indecies [sic] are described in
`detail below.”) (emphasis added).
` Exh. 1001, ’569 patent at 3:15-17 (“More particularly, these
`compositions exhibit certain characteristics which are measured
`by four indecies [sic], defined herein.”) (emphasis added).
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-20
`
`Paper 33 at 14.
`
`
`
`Claim Construction Of The Indices
`
` P&G’s proposed construction comports with the written
`description, which provides controlling definitions as to the
`meaning of the claimed indices.
`
`
` Ethicon Endo-Surgery v. United States Surgical Corp., 93
`F.3d 1572, 1578 (Fed. Cir. 1996) (finding it “entirely
`appropriate” for a district court to look “to the specification
`to aid its interpretation of a term already in the claim”).
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-21
`
`Paper 33 at 17.
`
`
`
`Claim Construction Of The Indices
`
` The Board’s proposed construction reads the specifically
`claimed values of the indices out of the ’569 patent.
`
`
` It is improper to disregard specific language included in the
`claims.
` Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29
`(1997) (“Each element contained in a patent claim is deemed
`material to defining the scope of the patented invention . . . .”)
` Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)
`(“Claims are interpreted with an eye toward giving effect to all terms
`in the claim.”)
`
`
`
`
`
`Paper 33 at 17-18.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-22
`
`
`
`Claim Construction Of The Indices
`
` The Board’s proposed construction would allow one to use any
`test, available at the relevant time and capable of providing some
`measure of anti-dandruff efficacy and/or conditioning
`performance, regardless of whether it relates to the claimed
`index values.
`
`
`
` Other tests would not provide numerical results that correlate
`with the values derived from the indices claimed in the ’569
`patent, rendering the claimed values meaningless.
` There would be no difference between claim 1 (bioavailability/coverage
`index value of at least about 1.25), claim 2 (bioavailability/coverage index
`value of at least about 1.5), and claim 3 (bioavailability/coverage index value
`of at least about 2.0).
`
`
` This construction is incorrect.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-23
`
`Paper 33 at 17-18; Exh. 2015,
`Lochhead Decl. at ¶ 49.
`
`
`
`Claim Construction Of The Indices
`
` Petitioner cites various references as allegedly disclosing
`tests comparable to the ’569 patent indices.
`
` Petitioner provides no explanation of how a POSA would
`have been able to convert or correlate any values
`calculated using these methods to the values of the
`indices disclosed and claimed in the ’569 patent.
`
` Without these correlations, a POSA would not be able to
`determine whether a particular composition was within
`the boundaries of the claimed “sweet spot.”
`
`Paper 33 at 15-16; Exh. 2015, Lochhead Decl. at ¶¶ 47-48.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-24
`
`
`
`Board’s Institution Decision
`
` The Board preliminarily determined that “Kanebo’s Example 10 sets
`forth a shampoo composition comprising the components required by
`the claims, in amounts that fall within the specified weight-percent
`ranges.” Paper 9 at 10.
`
`
` The Board also found that each of the four indices set forth in the
`claims of the ’569 patent corresponds to a desirable property of
`shampooed hair. Paper 9 at 11-12.
`
` The Board preliminarily concluded that “[a] skilled artisan would have
`been led to conduct routine experiments to optimize those desirable
`properties – and, thereby, the values of the indices – in the shampoo
`composition disclosed in Kanebo’s Example 10.” Paper 9 at 11.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-25
`
`
`
`Exhibit 1006, JPA No. 08/019,389 (Kanebo)
`
` Kanebo is directed to providing a composition having
`excellent pearl lustre, usability, and conditioning effect.
`
` Kanebo was of record during prosecution and is listed on the
`face of the ’569 patent.
`
`
` Kanebo is not concerned with providing a shampoo with a
`superior combination of anti-dandruff and conditioning
`efficacy.
`
` Kanebo does not discuss or mention anti-dandruff efficacy,
`and has only one formulation that even contains an anti-
`dandruff agent.
`
`
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`
`Paper 33 at 8-9.
`
`PG-26
`
`
`
`Exhibit 1006, JPA No. 08/019,389 (Kanebo)
`
` Kanebo discloses only one anti-dandruff agent, used at one
`particular weight percentage. Paper 33 at 9.
`
` Petitioner argues that a POSA could optimize the anti-
`dandruff agent of Kanebo’s Example 10 in view of
`Coffindaffer’s teaching of a weight percentage range for the
`anti-dandruff agent that encompasses the claimed range of
`the ’569 patent. Paper 48 at 6.
`
` This new argument is improper: Coffindaffer is not part of
`the instituted ground and Petitioner never made this
`argument in the Petition.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-27
`
`
`
`Petitioner Cites No Tests For Optimizing All Four
`Indices
`
` The Board preliminarily found that “[c]ritically significant
`is Petitioner’s evidence that at least one test for optimizing
`each of those known, desirable properties was available at
`the time the invention was made.” Paper 9 at 11.
`
` Patent Owner respectfully disagrees with the Board’s
`preliminary conclusions because Petitioner has identified
`no tests for optimizing the properties associated with the
`bioavailability/coverage index or the second conditioning
`index. Paper 33 at 23.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-28
`
`
`
`Petitioner’s Cited References
`
` In the Petition, Petitioner argued that Shin and Woods disclose
`tests “comparable” to the bioavailability/coverage index and that
`Hoshowski disclosed a test “comparable” to the second
`conditioning index. See Paper 3 at 3-4, 19-21; Exh. 1003 at ¶¶ 17,
`19, 81-83.
`
` In the Reply Declaration, Petitioner introduced two completely
`new references, Parran and Sorkin. Exh. 1034 at ¶¶ 32-35.
` Improperly incorporated by reference from declaration and improper new
`argument in Reply. The Board should not consider these references.
`
`
` None of these five references discloses tests comparable to the
`bioavailability/coverage index or second conditioning index.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-29
`
`
`
`The Bioavailability/Coverage Index
`
` The bioavailability/coverage index is a deposition assay that
`determines anti-dandruff efficacy of a shampoo through a
`combination of the degree to which the anti-dandruff agent is
`able to spread across the scalp (coverage) and treat the
`affected areas (bioavailability). Paper 33 at 23; Exh. 2013,
`Geis Decl. at ¶ 29.
`
` The anti-dandruff agent is in particulate form and is
`mechanically deposited on pigskin and subsequently on an
`agar surface directly exposed to that pigskin. The
`bioavailability/coverage index is determined by measurement
`of the areas of the agar plate colonized after having been in
`contact with treated pigskin. Paper 33 at 26; Geis Decl. at ¶
`26.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-30
`
`
`
`Shin’s Test Is Materially Different From The
`Bioavailability/Coverage Index
`
` Shin’s test is a diffusion assay that measures the ability of a solubilized
`anti-dandruff active to diffuse outward from a treated surface to kill
`fungal growth remote from the treated surface.
`
`
`
` Diluted shampoo formulations containing anti-dandruff actives are
`applied to skin discs. The treated skin discs are applied to, and remain
`on, an agar plate that was previously cultured with a fungus.
`
` The test uses chelating agents to solubilize the anti-dandruff agent.
`
` The test estimates anti-dandruff efficacy based on a linear measure of
`diffusion of the solubilized anti-dandruff agent from the treated
`surface.
`
`
`Paper 33 at 26-27; Exh.
`2013, Geis Decl. ¶¶ 24-27.
`PG-31
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`
`
`
`Shin’s Test Is Materially Different From The
`Bioavailability/Coverage Index
`
` The bioavailability/coverage index test incorporates
`bioavailability and coverage together:
` Considers how well a shampoo product distributes the anti-dandruff
`particulates, suspended therein, over the scalp during use by the
`consumer; and
` Considers how effective the distributed anti-dandruff particulates are
`at preventing fungal growth.
`
`
` Shin’s test does not analyze bioavailability or coverage:
` Does not consider how well an anti-dandruff particulate deposits
`from a shampoo onto the treated area.
` Does not consider the shampoo’s ability to prevent fungal growth in
`the treated area.
`
`
`Paper 33 at 28; Exh. 2013,
`Geis Decl. ¶¶ 29-30.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-32
`
`
`
`Shin’s Test Is Materially Different From The
`Bioavailability/Coverage Index
`
` Petitioner calculated a “value” from the Shin test by comparing the
`results measured from two of Shin’s examples and concluded that this
`value is comparable to a value of the bioavailability/coverage index of
`the ’569 patent. Exh. 1003, Nandagiri Decl. at ¶ 81.
`
`
` This is incorrect: The bioavailability/coverage index is established on
`the basis of the area of coverage of the particulate ZPT and its
`bioavailability, whereas Shin is based on linear measure of diffusion of
`solubilized ZPT. Paper 33 at 29; Exh. 2013, Geis Decl. ¶ 31.
`
` Mr. Nandagiri did no testing to determine if Shin’s skin diffusion test
`provides the same results as the claimed bioavailability/coverage index
`values of the ’569 patent. Exh. 2019 at 54:24-55:4.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-33
`
`
`
`Shin’s Test Is Materially Different From The
`Bioavailability/Coverage Index
`
` The differences between the bioavailability/coverage index
`and Shin’s diffusion test are summarized in the table below:
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-34
`
`Paper 33 at 30.
`
`
`
`Woods’ Test Is Materially Different From The
`Bioavailability/Coverage Index
`
` Woods describes laboratory methods (diffusion and
`dilution tests) to estimate the sensitivity of diverse bacteria
`to standard antibiotics.
`
`
`
` The disclosed methods employ neither fungi nor skin.
`
` Woods does not disclose anything related to dandruff or
`specific anti-dandruff agents such as ZPT.
`
`
`Paper 33 at 25; Exh.
`2013, Geis Decl. ¶ 22.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-35
`
`
`
`Parran’s Test Is Materially Different From The
`Bioavailability/Coverage Index
`
` Parran describes a test for determining the
`distribution of particulates deposited on the scalp by
`use of adhesive tape and microscopy. Exh. 1034 at
`¶¶ 32-33; Exh. 1046 at 86.
`
`
`
` This test is materially different from the
`bioavailability/coverage index because it is not a
`chemical test and because it provides a POSA with
`no information regarding the bioavailability of the
`deposited particulates.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-36
`
`
`
`The Second Conditioning Index
`
` The second conditioning index is a measure of a shampoo’s
`conditioning efficacy as indicated by the “clean hair feel” of shampooed
`hair. See ’569 patent at 38:60-39:11.
`
` Consumer acceptance of a conditioning shampoo is determined, in
`part, by the clean hair feeling left by the shampoo. ’569 patent at 2:30-
`31.
`
` As the ’569 patent noted, the prior art recognized a trade-off: providing
`effective anti-dandruff protection can negatively affect the clean hair
`feel left by a shampoo. ’569 patent at 1:56-2:7.
`
` The inventors of the ’569 patent found that certain shampoo
`formulations unexpectedly were capable of providing excellent anti-
`dandruff efficacy while also achieving a clean hair feel.
`
`Paper 33 at 31-32; Exh. 2015, Lochhead Decl. ¶ 52.
`PG-37
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`
`
`
`The Second Conditioning Index
`
` The ’569 patent describes a specific test protocol to
`determine whether shampooed hair has a clean feel.
`
` Test protocol uses trained sensory panelists to compare the
`feel of shampooed hair to a hair standard that has been
`determined to have a clean feel. See ’569 patent at 38:65-
`42:11.
`
`
`
`
`Paper 33 at 32; Exh. 2015, Lochhead Decl. ¶ 53.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-38
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` Mr. Nandagiri claims that Hoshowski discloses a “subjective test”
`in which trained judges rate shampooed hair for properties
`including “wet feel” and “residue.” Exh. 1003, Nandagiri Decl. at
`¶ 82.
`
` Mr. Nandagiri concludes that “testing for wet feel and residue
`equate to the clean feel of the hair.” Id. at ¶ 83.
`
`
`
` Petitioner provides no evidence that “wet feel” and “residue”
`relate to the same property as the clean hair feel of the ’569
`patent.
`
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`Paper 33 at 33; Exh. 2015, Lochhead Decl. ¶¶ 82-83.
`
`PG-39
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` “Wet feel” and “residue” are merely part of a laundry list of
`21 properties that a trained judge might consider:
`
`
`
`
`
`
`
`
` Hoshowski does not indicate why a POSA would or should
`choose to test shampooed hair for “wet feel” or “residue,” as
`opposed to any of the other listed properties.
`
`Paper 33 at 33-34; Exh. 2015, Lochhead Decl. ¶ 56.
`
`Hoshowski (Exhibit 1021) at 22:35-43.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-40
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` Mr. Nandagiri does not explain why a POSA would have
`been motivated to choose to evaluate these particular
`properties.
` In fact, he singled out certain properties from
`Hoshowski’s list solely because he believed them to be
`comparable to the ’569 patent indices.
`
`Q. The reason you picked those
`
`four, sir, in your declaration is
`because those are what you think
`
`are comparable to what's in the
`
`’569, right?
` This is improper hindsight.
`A. Yes.
`
`Paper 33 at 34.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`
`Exhibit 2019 at 69:23-70:2
`
`PG-41
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` Hoshowski provides no details regarding the methodology for
`testing for “wet feel” or “residue.”
`
` Mr. Nandagiri admitted that a POSA could test for the “wet feel”
`and “residue” properties of Hoshowski in a number of different
`ways. Exh. 2019, Nandagiri Dep. at 78:17-79:6.
`
`Paper 33 at 34-35; Exh. 2015, Lochhead Decl. ¶¶ 60-61.
`
`
` A POSA would have no way of determining the proper way to
`perform the tests allegedly disclosed in Hoshowski or how to
`calculate the resulting index values.
`
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-42
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` Mr. Nandagiri contends that Table I of Hoshowski provides
`results of a “subjective test” similar to the second
`conditioning index. See Exh. 1003, Nandagiri Decl. at ¶ 83.
`
` Based on these results, Mr. Nandagiri concludes that “a
`POSA would have had a reasonable expectation of success
`in obtaining the index values claimed in the ’569 patent as
`such index values had already been achieved in
`conditioning shampoos.” Id.
`
` Mr. Nandagiri is incorrect.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-43
`
`Paper 33 at 36-37; Exh. 2015, Lochhead Decl. ¶¶ 62-63.
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` Table I of Hoshowski only reports “combing index”
`data. Paper 33 at 36-37; Exh. 2015, Lochhead Decl.
`at ¶ 62.
`
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-44
`
`Exhibit 1021 , Table I
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` The combing index measures the ease of combing wet,
`shampooed hair.
`
`
`
`
`
`
`Exhibit 1021 at 22:21-27
`
`
` Hoshowski Table I does not report test methods or data
`related to the “clean feel” of shampooed hair or even
`properties like “wet feel” or “residue” that Mr. Nandagiri
`singled out based on hindsight. Paper 33 at 37; Exh.
`2015, Lochhead Decl. at ¶ 63.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`
`
`PG-45
`
`
`
`Hoshowski Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` Mr. Nandagiri admitted that the combing index
`described in Table I does not relate to the second
`conditioning index:
`
`Q. Now, the combing index that is described in Table 1 of
`Hoshowski, that is not comparable to the second
`conditioning index of the ’569, correct?
`
`A. It’s comparable to the first conditioning index values.
`
`
`Q. But it’s not comparable to the second conditioning
`index, correct?
`
`A. That’s correct.
`
`Paper 33 at 37.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-46
`
`Exhibit 2019 at 79:7-15
`
`
`
`Sorkin Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` New reference Sorkin describes 25 properties that were
`allegedly important to a successful shampoo. Exh. 1034 at
`¶ 34.
`
` None of these properties relate to the “clean hair feel.”
`
` Sorkin recognizes that certain properties “must be
`evaluated by specifically devised techniques.” Exh. 1047 at
`540.
`
` This is exactly what P&G has done for the property of “clean
`hair feel.”
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-47
`
`
`
`Sorkin Does Not Teach A Test For
`Determining The “Clean Hair Feel”
`
` One of Sorkin’s 25 properties is “feel on hands.” Exh. 1047 at
`541.
`
` Mr. Nandagiri singles out this property and argues that it is
`comparable to the clean hair feel of the second conditioning
`index of the ’569 patent. Exh. 1034 at ¶ 35.
`
` Mr. Nandagiri is incorrect.
`
` Sorkin explains that the “feel on hands” property refers to how
`the shampoo feels on the hands during application, not
`whether shampooed hair has a clean hair feel after shampooing
`and rinsing is done. Exh. 1047 at 548.
`
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-48
`
`
`
`Petitioner Mischaracterizes More Citations
`
` Petitioner mischaracterizes deposition testimony to support
`the proposition that tests for determining “bioavailability
`and dispersion of AD agent in shampoos” and “clean feel”
`were known in the art. Paper 48 at 5, 8.
` “P&G’s experts confirmed that the concept of bioavailability and
`dispersion of AD agent in shampoos, and tests therefor, were known
`prior to the ’569 patent. (Ex. 1036 at 63:14-20; 64:8-25; 69:13-70:18;
`73:5-18; Ex. 1041 at 65:2-11).”
` “However, tests for measuring clean feel were already known in the
`art (Ex. 1036 at 99:17-100:9; 102:9-20)…”
`
`
` None of the cited excerpts supports Petitioner’s statements.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-49
`
`
`
`Not Obvious To Consider
`All Four Indices Simultaneously
`
`
`
` It would not have been obvious to a POSA to
`prepare a shampoo composition meeting all four of
`the claimed index values at the same time.
`
`
`
`
`Paper 33 at 38-40.
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, IPR2013-00505.
`
`PG-50
`
`
`
`Not Obvious To Consider
`All Four Indices Simultaneously
`
`Q. There’s no reference that you cited or referred to in your declaration
`that discloses tests the same as or comparable to all four index values in
`Claim 1 of ’569, correct?
`THE WITNESS: There's not one disclosure that has all four indices cited.
`
` Even if “comparable” tests were relevant, Mr. Nandagiri
`conceded that no single reference discloses tests
`comparable to all fou
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