UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`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 PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`
`TABLE OF CONTENTS
`
`
`Page
`
`2.
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND OF THE ’300 PATENT .................................................... 2
`II.
`III. THE BOARD SHOULD DECLINE TO CONSIDER MOST, IF NOT
`ALL, OF THE GROUNDS AND REFERENCES IN UNILEVER’S
`PETITION BECAUSE THEY ARE REDUNDANT AND
`CUMULATIVE .............................................................................................. 4
`A.
`The Art Cited Against The ’300 Patent Is Redundant ......................... 4
`1.
`Kanebo, Bowser/Evans, And Evans Are Horizontally
`Redundant With Respect To Many Of The Challenged
`Claims ........................................................................................ 6
`B. Many Grounds Are Cumulative Of A Prior Office Proceeding ........ 12
`IV. THE BOARD SHOULD REJECT UNILEVER’S PETITION
`BECAUSE IT FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE OF THE CLAIMS
`CHALLENGED IN THE PETITION IS UNPATENTABLE ..................... 14
`A.
`The Board Should Deny Grounds 5-9 Because Unilever Uses
`Impermissible Hindsight To Assert That The References
`Disclose The Claimed Compositions ................................................. 15
`1.
`Unilever Picks And Chooses The Individual Claimed
`Elements From Numerous Separate Examples In
`Multiple References ................................................................. 15
`The Nandagiri Declaration Is Conclusory And Does Not
`Support Unilever’s Use Of Hindsight ...................................... 17
`The Board Should Deny Grounds 5-9 Because Unilever
`Identifies No Flaws In The Prior Art To Invite Improvement ........... 18
`C. Unilever’s Petition Contains Insufficient Reasons For
`Combining The References In Grounds 3-5 And 7-9 ........................ 19
`The Board Should Deny Grounds 6-9 Because A POSA Would
`Have No Motivation To Modify Evans To Arrive At The
`Claimed Compositions ....................................................................... 22
`
`B.
`
`D.
`
`
`
`
`
`-i-
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`E.
`
`The Board Should Deny Ground 5 As To Claim 6 Because The
`Combination of Bowser And Evans Does Not Meet The
`Claimed Guar Derivative Molecular Weight Limitation .................. 24
`1.
`Unilever Has Not Shown That Bowser Inherently
`Discloses The Claimed Guar Derivative ................................. 24
`The Nandagiri Declaration Is Conclusory And Does Not
`Support Unilever’s Obviousness Assertions............................ 27
`The Range of Claim 6 Would Not Have Been Obvious
`To A POSA In Light Of Evans’ Broadly Disclosed
`Range........................................................................................ 27
`The Board Should Deny Ground 2 As To Claims 6-7 Because
`Unilever Provides Only Conclusory Allegations Regarding
`How Or Why A POSA Would Arrive At The Claimed
`Compositions ...................................................................................... 29
`The Board Should Deny Ground 7 As To Claims 8-10 Because
`The Claimed Ranges Would Not Have Been Obvious To A
`POSA In Light Of Coffindaffer’s Broadly Disclosed Ranges ........... 30
`V. OBJECTIVE INDICIA OF NON-OBVIOUSNESS .................................... 32
`VI. CONCLUSION ............................................................................................. 32
`
`2.
`
`3.
`
`F.
`
`G.
`
`
`
`
`
`-ii-
`
`
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Amkor Tech., Inc. v. Tessera, Inc.,
`No. IPR2013-00242, Paper No. 37, Decision Institution of Inter Partes
`Review (P.T.A.B. Oct. 11, 2013) ......................................................................... 6
`
`Page
`
`Berk-Tek LLC v. Belden Techs. Inc.,
`No. IPR2013-00057, Paper No. 21, Decision on Request for Rehearing
`(P.T.A.B. May 14, 2013) ...................................................................................... 5
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 23
`
`Ecolochem, Inc. v. Southern California Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .......................................................................... 16
`
`Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) .............................................................. 28, 31, 32
`
`Heart Failure Techs., LLC v. Cardiokinetix Inc.,
`No. IPR2013-00183, Paper No. 12, Decision Denying Institution of Inter
`Partes Review (P.T.A.B. July 31, 2013) ............................................................ 21
`
`Hewlett-Packard Co. v. MCM Portfolio, LLC,
`No. IPR2013-00217, Paper No. 10, Decision Institution of Inter Partes
`Review (P.T.A.B. Sept. 10, 2013) ................................................................ 18, 27
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 16
`
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ............................................................................ 19
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 24
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 19, 20, 21
`
`
`
`-iii-
`
`

`
`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .......................................................................... 19
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`No. CBM2012-00003, Paper No. 7, Order (Redundant Grounds)
`(P.T.A.B. Oct. 25, 2012) ........................................................................... 4, 5, 6, 7
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`No. CBM2012-00003, Paper No. 9, Response to Order (Redundant
`Grounds) (P.T.A.B. Nov. 1, 2012) ....................................................................... 8
`
`Oracle Corp. v. Clouding IP, LLC,
`No. IPR2013-00075, Paper No. 8, Decision Institution of Inter Partes
`Review (P.T.A.B. May 3, 2013) ........................................................................... 5
`
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.,
`No. IPR2013-00246, Paper No. 11, Decision Institution of Inter Partes
`Review (P.T.A.B. Oct. 11, 2013) ....................................................................... 21
`
`STATUTES
`
`35 U.S.C. § 325(d) ......................................................................................... 1, 12, 14
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.23(a) ................................................................................................... v
`
`37 C.F.R. § 42.65 ............................................................................................... 18, 27
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 14
`
`37 C.F.R. § 42.108(c) ........................................................................................... 1, 14
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl) ................ 13
`
`
`
`-iv-
`
`

`
`Statement of Material Facts in Dispute
`
`Case IPR2013-00509
`Patent 6,451,300
`
`
`
`
`Petitioner, Conopco, Inc. d/b/a Unilever (hereinafter, “Unilever”), did not
`
`submit a statement of material facts in its Petition. Accordingly, no response is
`
`due pursuant to 37 C.F.R. § 42.23(a), and no facts are admitted.
`
`
`
`-v-
`
`

`
`I.
`
`INTRODUCTION
`
`Case IPR2013-00509
`Patent 6,451,300
`
`
`The Board should deny Unilever’s Petition because of procedural and
`
`substantive defects. First, Unilever argues multiple alternate grounds for many of
`
`the challenged claims, and provides no meaningful distinction between them.
`
`Unilever argues two or three distinct and separate grounds for many of the
`
`challenged claims. This runs counter to a petitioner’s obligation to present only its
`
`best case in a petition for inter partes review. Additionally, four of Unilever’s
`
`seven proffered references were of record during prosecution and thus are
`
`cumulative under 35 U.S.C. § 325(d). The Board should decline to consider these
`
`redundant and cumulative grounds and references.
`
`Second, in order for the Board to grant Unilever’s Petition, Unilever must
`
`prove that there is a reasonable likelihood that at least one of the claims challenged
`
`in the Petition is unpatentable. See 37 C.F.R. § 42.108(c). For several different
`
`reasons, Unilever’s Petition fails to meet this standard. For example, Unilever: (1)
`
`relies on hindsight to arrive at the claimed compositions; (2) fails to identify where
`
`each element of the claim is found in the references; (3) relies on expert testimony
`
`that is conclusory; and (4) fails to provide sufficient reasons for combining
`
`references. The Board should deny the Petition because Unilever has failed to
`
`1
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`

`
`Case IPR2013-00509
`Patent 6,451,300
`
`meet its threshold burden to prove that there is a reasonable likelihood that at least
`
`one of the claims challenged in the Petition is unpatentable.1
`
`II. BACKGROUND OF THE ’300 PATENT
`The ’300 patent relates to shampoo compositions that provide a superior
`
`combination of anti-dandruff and conditioning efficacy. At the time of the
`
`invention of the ’300 patent, there was a consumer need for a shampoo with a
`
`superior combination of anti-dandruff efficacy and conditioning performance as
`
`compared to available products. Exh. 1001, ’300 patent at 1:47-50. This
`
`combination was difficult to achieve. Id. at 1:50-51. The patent teaches that to
`
`obtain such a shampoo, the composition should comprise certain anionic
`
`surfactants, conditioning agents, anti-dandruff particulates, cationic polymers,
`
`polyalkylene glycol and water. Id. at 2:51-53. A central concept of the patent is
`
`that the type and level of polyalkylene glycol used in the composition influences
`
`anti-dandruff efficacy and conditioning. See id. at 2:53-58 (“[u]pon dilution, the
`
`anionic surfactant and cationic polymers form a coacervate, and the type and level
`
`1 Should the Board institute proceedings in this matter, Patent Owner does
`
`not concede the legitimacy of any arguments in the Petition that are not specifically
`
`addressed herein. Patent Owner expressly reserves the right to rebut any such
`
`arguments in its Patent Owner Response.
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`2
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`

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`Case IPR2013-00509
`Patent 6,451,300
`
`of polyalkylene glycol employed will influence the amount of anti-dandruff
`
`particulates that are bioavailable. This is important for anti-dandruff efficacy and
`
`conditioning.”)
`
`The ’300 patent has two independent claims, 1 and 19, which recite
`
`shampoo compositions comprising certain components:
`
`1. A shampoo composition comprising:
`
`a) from about 5% to about 50%, by weight of the
`composition, of an anionic surfactant;
`
`b) from about 0.01% to about 10%, by weight of the
`composition, of a non-volatile conditioning agent;
`
`c) from about 0.1% to about 4%, by weight of the
`composition, of an anti-dandruff particulate;
`
`d) from about 0.02% to about 5%, by weight of the
`composition, of at least one cationic polymer;
`
`e) from 0.005% to about 1.5%, by weight of the
`composition, of a polyalkylene glycol corresponding to
`the formula:
`
`
`
`
`
`
`
`
`
`
`
`
`
`i) wherein R is selected from the group consisting of
`hydrogen, methyl and mixtures thereof,
`
`3
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`Case IPR2013-00509
`Patent 6,451,300
`
`
`ii) wherein n is an integer having an average value
`from about 1,500 to about 120,000;
`
`f) water.
`
`With the exception of claim 19, each of the other claims of the ’300 patent
`
`ultimately depends from claim 1.
`
`III. THE BOARD SHOULD DECLINE TO CONSIDER MOST, IF NOT
`ALL, OF THE GROUNDS AND REFERENCES IN UNILEVER’S
`PETITION BECAUSE THEY ARE REDUNDANT AND
`CUMULATIVE
`
`Unilever asserts multiple alternative grounds for most of the challenged
`
`claims, and provides no meaningful distinction between them. Additionally,
`
`Unilever relies largely on the same references and arguments that the Office
`
`considered during prosecution of the ’300 patent. Accordingly, the Board should
`
`decline to consider these redundant and cumulative grounds and references.
`
`A. The Art Cited Against The ’300 Patent Is Redundant
`With the exception of claims 8-10, Unilever argues multiple alternative
`
`grounds of invalidity for each challenged claim. For many of these claims,
`
`Unilever argues three alternate grounds. The use of redundant art in an IPR
`
`petition contradicts regulatory and statutory mandates, and the Board should not
`
`consider redundant grounds. The Board made such a ruling in its Order
`
`(Redundant Grounds) in Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`
`No. CBM2012-00003, Paper No. 7, Order (Redundant Grounds) at 1-2 (P.T.A.B.
`
`4
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`

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`Case IPR2013-00509
`Patent 6,451,300
`
`Oct. 25, 2012). In this Order, the Board identified numerous references that the
`
`petitioner applied in a redundant manner. The Board noted that the petitioner
`
`applied the redundant references “without relative distinction,” such that the
`
`petitioner did not indicate whether any of the redundant references were any better
`
`or worse than the others. Id. at 8 (emphasis added). For example, regarding the
`
`petitioner’s application of multiple references to various claims of the patent at
`
`issue, the Board explained that “none of Kosaka, Black Magic, and Pettersen is
`
`stated by Petitioner to be a better reference than the other two references.” Id. at 9.
`
`The Board thus recognized that the alleged teachings were cumulative and
`
`essentially interchangeable because the petitioner did not “articulate any relative
`
`strength [or weakness] for any one of the three references.” Id. Consequently, the
`
`Board required the petitioner to choose only one of the three references. Id. at 9-10.
`
`The Board has ruled in a similar manner in other decisions. See Berk-Tek
`
`LLC v. Belden Techs. Inc., No. IPR2013-00057, Paper No. 21, Decision on
`
`Request for Rehearing at 4-5 (P.T.A.B. May 14, 2013) (“If the petitioner makes no
`
`meaningful distinction between certain grounds, the Board may exercise discretion
`
`by acting on one or more grounds and regard the others as redundant”… “allowing
`
`multiple grounds without meaningful distinction by the petitioner is contrary to the
`
`legislative intent”); Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00075, Paper
`
`No. 8, Decision Institution of Inter Partes Review at 13-14 (P.T.A.B. May 3, 2013)
`
`5
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`

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`Case IPR2013-00509
`Patent 6,451,300
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`(denying various grounds of unpatentability because they were redundant); Amkor
`
`Tech., Inc. v. Tessera, Inc., No. IPR2013-00242, Paper No. 37, Decision Institution
`
`of Inter Partes Review at 32-33 (P.T.A.B. Oct. 11, 2013) (same).
`
`In the instant Petition, Unilever has applied references in a cumulative and
`
`redundant manner, and has not provided any meaningful distinction between them.
`
`The Board should decline to consider Unilever’s redundant grounds and references.
`
`1. Kanebo, Bowser/Evans, And Evans Are Horizontally
`Redundant With Respect To Many Of The Challenged
`Claims
`
`Horizontal redundancy exists when multiple similar references are applied,
`
`not in combination to complement each other, but rather as distinct and separate
`
`alternatives. Liberty Mutual, CBM2012-00003, Paper No. 7, Order at 3. When a
`
`petitioner uses such distinct and separate alternatives to allegedly address the same
`
`claim limitations, and does not explain why one reference more closely satisfies
`
`the claim limitation at issue in some respects than another reference, the petitioner
`
`has applied the references in a redundant manner. Id. The Board defined
`
`horizontal redundancy as follows:
`
`[Horizontal redundancy] involves a plurality of prior art
`references applied not in combination to complement
`each other but as distinct and separate alternatives. All of
`the myriad references relied on provide essentially the
`same teaching to meet the same claim limitation, and the
`
`6
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`

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`Case IPR2013-00509
`Patent 6,451,300
`
`
`associated arguments do not explain why one reference
`more closely satisfies the claim limitation at issue in
`some respects than another reference, and vice versa.
`Because the references are not identical, each reference
`has to be better in some respect or else the references are
`collectively horizontally redundant.
`
`Id.
`
`The Board’s unwillingness to consider references presented in a horizontally
`
`redundant manner demonstrates its aversion to art that is cumulative of other art
`
`presented to it, where the multiple references are essentially interchangeable and
`
`used to allegedly disclose the same claim features. In Liberty Mutual, the Board
`
`declined to consider numerous proposed grounds, finding them to include art that
`
`was horizontally redundant. See generally id. at 4-12.
`
`Unilever’s proposed rejections for independent claim 1 rely on multiple
`
`references as allegedly disclosing all of or the majority of the claim elements. For
`
`example, Unilever asserts that Kanebo anticipates claim 1. See Petition at 10-15.
`
`As distinct and separate alternatives, Unilever also proposes grounds of rejection
`
`for claim 1 that rely on the combination of Bowser and Evans, as well as Evans
`
`alone. See id. at 23-30, 38-43.
`
`Unilever’s explanations of the alleged disclosures of these references as
`
`applied to claim 1 are substantively the same, further confirming the redundant,
`
`7
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`

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`Case IPR2013-00509
`Patent 6,451,300
`
`interchangeable nature of the references. For example, Unilever alleges that
`
`Kanebo, the combination of Bowser and Evans, and Evans alone each disclose a
`
`shampoo composition with the claimed components. While not identical, as
`
`applied to claim 1 of the ’300 patent, the disclosures of the references are
`
`substantively the same, with the references allegedly disclosing similar aspects
`
`used to accomplish similar objectives. Unilever does not articulate any relative
`
`strengths or weaknesses for these references.
`
` Accordingly, Kanebo, the
`
`combination of Bowser and Evans, and Evans alone as applied to claim 1 of
`
`the ’300 patent are substantively the same, making the references essentially
`
`interchangeable.
`
`Even if Unilever asserts that the disclosures of Kanebo, the combination of
`
`Bowser and Evans, and Evans alone are not identical, they are still horizontally
`
`redundant. The Board has held that references may still be applied in a redundant
`
`manner even if their teachings are not identical. See, e.g., Liberty Mutual Ins. Co.
`
`v. Progressive Casualty Ins. Co., No. CBM2012-00003, Paper No. 9, Response to
`
`Order (Redundant Grounds) at 5 (P.T.A.B. Nov. 1, 2012). Although the
`
`disclosures of Kanebo, the combination of Bowser and Evans, and Evans alone
`
`may not be identical, as shown above, Unilever has nevertheless applied them in a
`
`redundant manner: they are used to allegedly account for the same features of
`
`claim 1 of the ’300 patent.
`
`8
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`

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`Case IPR2013-00509
`Patent 6,451,300
`
`Unilever applies Kanebo, the combination of Bowser and Evans, and Evans
`
`alone in a horizontally redundant manner. The Board should decline to consider
`
`the redundant grounds. This applies equally to the proposed grounds of
`
`unpatentability for claims 2-7 and 11-23.
`
`The following chart shows that horizontal redundancies exist for many of the
`
`claims.
`
`2nd Proposed
`1st Proposed Ground
`Ground
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`3rd Proposed Ground
`Ground 6: Evans
`
`view of Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 7: Evans in
`
`view of Evans
`
`view of Coffindaffer
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 7: Evans in
`
`view of Evans
`
`view of Coffindaffer
`
`Ground 2: Kanebo
`
`Ground 5: Bowser in
`
`
`
`view of Evans
`
`9
`
`Claim
`#
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`
`
`

`
`1st Proposed Ground
`Ground 2: Kanebo
`
`2nd Proposed
`Ground
`Ground 5: Bowser in
`
`view of Evans
`
`Case IPR2013-00509
`Patent 6,451,300
`
`3rd Proposed Ground
`
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`
`
`Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Ground 3: Kanebo in
`
`view of Cardin
`
`Ground 3: Kanebo in
`
`
`
`
`
`view of Cardin
`
`Ground 8: Evans in
`
`view of Cardin
`
`Ground 8: Evans in
`
`view of Cardin
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`10
`
`Claim
`#
`
`7
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`
`
`

`
`1st Proposed Ground
`
`
`2nd Proposed
`Ground
`Ground 5: Bowser in
`
`view of Evans
`
`Case IPR2013-00509
`Patent 6,451,300
`
`3rd Proposed Ground
`Ground 6: Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Claim
`#
`
`19
`
`20
`
`Ground 4: Kanebo in
`
`21
`
`view of Schwen and
`
`Gibson
`
`22
`
`Ground 3: Kanebo in
`
`view of Cardin
`
`Ground 4: Kanebo in
`
`23
`
`view of Schwen and
`
`
`
`
`
`
`
`Ground 9: Evans in
`
`view of Schwen and
`
`Gibson
`
`Ground 8: Evans in
`
`view of Cardin
`
`Ground 9: Evans in
`
`view of Schwen and
`
`Gibson
`
`Gibson
`
`
`
`24
`
`25
`
`
`
`
`
`Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`Ground 1 & 2: Kanebo Ground 5: Bowser in
`
`Ground 6: Evans
`
`view of Evans
`
`11
`
`

`
`B. Many Grounds Are Cumulative Of A Prior Office Proceeding
`In addition to the numerous redundant grounds identified above, the Petition
`
`Case IPR2013-00509
`Patent 6,451,300
`
`
`relies upon substantially the same prior art and arguments that the Office
`
`considered and rejected during prosecution. Under Section 325(d), the Board need
`
`not and should not second-guess issues of patentability that the Office addressed
`
`before issuing this patent. The Board should deny petitions that challenge a patent
`
`based on previously-rejected grounds and cumulative and duplicative art,
`
`otherwise petitioners will be given an unwarranted and unfair procedural
`
`advantage in pending infringement litigation. See 35 U.S.C. § 325(d).
`
`Section 325(d) authorizes the Office to reject petitions or grounds for inter
`
`partes review that seek to reargue positions previously lost:
`
`In determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, the
`Director may take into account whether, and reject the
`petition or request because, the same or substantially the
`same prior art or arguments previously were presented to
`the Office.
`
`35 U.S.C. § 325(d) (emphasis added). The legislative history of Section 325(d)
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`confirms that this is exactly what Congress intended. For instance, Senator Jon
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`Kyl stated that Section 325(d) “allows the Patent Office to reject any request for a
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`proceeding, including a request for ex parte reexamination, if the same or
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`substantially the same prior art or arguments previously were presented to the
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`Office with respect to that patent.” 157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011)
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`(Statement of Sen. Kyl). The Board should reject the instant Petition because the
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`Office already considered most of the asserted references and arguments.
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`Unilever cites Bowser and Evans, which were cited to the Office during
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`prosecution of the ’300 patent, and are expressly listed on the face of the patent.2
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`These references are the sole basis for Grounds 5 and 6. These previously-
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`presented references also constitute the central basis for Grounds 7, 8, and 9, with
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`the other references being cumulative of art already of record.
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`More specifically, in Ground 5, Unilever alleges that the combination of
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`Bowser and Evans renders obvious claims 1-7, 11-13, 16-20, 24, and 25, even
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`though both Bowser and Evans were previously presented to the Office. Similarly,
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`in Ground 6, Unilever argues that Evans alone renders obvious claims 1, 2, 4, 11-
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`13, 16-20, 24, and 25.
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`In Grounds 7, 8, and 9, Unilever relies on Evans as a primary reference and
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`adds additional, cumulative references. For example, in Ground 8, Unilever also
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`relies on Cardin, which was not only cited, but expressly considered by the Office.
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`2 The ’300 patent lists on its face the U.S. counterpart to Evans (U.S. Patent
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`No. 5,837,661).
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`In addition, Coffindaffer, a secondary reference for Ground 7, was also previously
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`presented to the Office, and Gibson, a secondary reference cited in Ground 9, was
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`incorporated by reference into the application from which the ’300 patent issued.
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`The Office already considered Bowser and Evans, as well as many of the
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`secondary references cited in the Petition. Contrary to Section 325(d), Unilever
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`adds nothing substantively new to arguments previously made and rejected, and
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`does not cast the references in a new light. The Board should deny the cumulative
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`grounds in the Petition under Section 325(d).
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`IV. THE BOARD SHOULD REJECT UNILEVER’S PETITION
`BECAUSE
`IT FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE OF THE CLAIMS
`CHALLENGED IN THE PETITION IS UNPATENTABLE
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`As Petitioner, Unilever has the burden of proof to establish that it is entitled
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`to its requested relief. 37 C.F.R. § 42.108(c). Here, Unilever must demonstrate a
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`reasonable likelihood that at least one of the ’300 patent claims would have been
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`anticipated or obvious in view of the art cited in the Petition. Unilever “must
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`specify where each element of the claim is found in the prior art patents or printed
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`publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board should reject any
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`ground that fails to meet this standard.
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`A. The Board Should Deny Grounds 5-9 Because Unilever Uses
`Impermissible Hindsight To Assert That The References Disclose
`The Claimed Compositions
`1.
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`Unilever Picks And Chooses The Individual Claimed
`Elements From Numerous Separate Examples In Multiple
`References
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`Unilever argues in Ground 5 that claims 1-7, 11-13, 16-20, 24, and 25 would
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`have been obvious over Bowser in view of Evans. Unilever contends that a POSA
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`would have had a “reasonable expectation of success” in arriving at the claimed
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`subject matter “because the compositions in Bowser and Evans are similar and
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`Evans teaches how to add polyalkylene glycol to a shampoo and the benefits of
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`adding polyalkylene glycol.” Petition at 25. Unilever also asserts in Ground 6 that
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`claims 1, 2, 4, 11-13, 16-20, 24, and 25 would have been obvious over Evans
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`alone. Evans forms the basis for Grounds 7-9. As to Ground 6, Unilever asserts
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`that “a POSA would have had a reasonable expectation of success because Evans
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`provides a clear roadmap in the examples section for making a shampoo as
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`claimed…” Petition at 42. Unilever’s arguments fail, however, because Unilever
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`attempts to arrive at the claimed compositions by cherry picking from various
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`disclosures of Bowser and Evans with the aid of hindsight.
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`Unilever cobbles together the claimed elements by selectively combining
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`constituents from a myriad of formulas found in the prior art. For example, in
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`Ground 5, Unilever combines various particular elements, including both the
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`composition components and their respective percentage weight ranges, from
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`different portions of Bowser and Evans. Unilever selects elements from Bowser
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`claims 1 and 4-6, working examples 1-2, 3B and 3C, and page 6 to be combined
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`with Evans claim 1 and pages 3, 11, 19, 25, and 27 to allegedly arrive at the
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`composition of claim 1 of the ’300 patent. In addition, Unilever’s combination
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`also includes elements from page 3 of Birkofer (Exh. 1011), which Unilever
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`alleges is incorporated by reference into Evans. Similarly, in Ground 6, Unilever
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`selects elements from Evans claims 1 and 4 and pages 11, 24, 25, and 27, and
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`Birkofer page 3 to allegedly arrive at the composition of claim 1 of the ’300 patent.
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`Unilever provides no reason why a POSA would pick and choose from the
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`unrelated examples in these diverse disclosures to try to arrive at the claims of the
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`’300 patent.
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`Unilever’s strategy of picking specific disclosures from Bowser and Evans
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`with the aid of hindsight in order to try to find the compositions of the challenged
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`claims is improper. See, e.g., Ecolochem, Inc. v. Southern California Edison Co.,
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`227 F.3d 1361, 1371 (Fed. Cir. 2000) ((“[One] ‘cannot use hindsight
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`reconstruction to pick and choose among isolated disclosures in the prior art to
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`deprecate the claimed invention.’”) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed.
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`Cir. 1988)); In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“mere identification
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`in the prior art of each element is insufficient to defeat the patentability of the
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`combined subject matter as a whole.”) (citing In re Rouffet, 149 F.3d 1350, 1355
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`(Fed. Cir. 1998)).
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`2.
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`The Nandagiri Declaration Is Conclusory And Does Not
`Support Unilever’s Use Of Hindsight
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`Unilever’s Petition attempts to bolster its “reasonable expectation of success”
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`arguments by relying on a declaration of Arun Nandagiri, a former Unilever
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`employee. Mr. Nandagiri, however, fails to provide any support for his assertions.
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`The Board should not consider Unilever’s arguments that rely on Mr. Nandagiri’s
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`declaration because the statements contained therein are merely conclusory.
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`For example, with regard to Ground 5, Mr. Nandagiri states in paragraph 78:
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`A POSA would also have had a reasonable expectation of
`success in arriving at a conditioning, AD shampoo. . . .
`Bowser and Evans disclose the claimed components in
`amounts and ranges of %, MW and CD that are the same,
`subsumed by, or overlap with the claimed ranges.
`Moreover, based on Bowser and Evans, it would have
`been routine optimization for a POSA to identify the
`optimum or workable ranges of % ranges, MW and CD
`of the components.
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`Exh. 1003 at ¶ 78. Mr. Nandagiri provides no support or basis for his conclusory
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`statements. He does not explain how or why a POSA would have selected the
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`particular elements of the challenged claims from among the disparate disclosures
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`of Bowser and Evans. He also does not explain how or why it would have been
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`“routine optimization” to identify the ranges of the challenged claims. Mr.
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`Nandagiri makes similar, conclusory statements with respect to Ground 6. See id.
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`at ¶¶ 87, 89. The Board should accord minimal weight to Mr. Nandagiri’s
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`unsupported, conclusory statements. See Hewlett-Packard Co. v. MCM Portfolio,
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`LLC, No. IPR2013-00217, Paper No. 10, Decision Institution of Inter Partes
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`Review at 9 (P.T.A.B. Sept. 10, 2013) (Board gave “minimal weight” under 37
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`C.F.R. § 42.65 to conclusory expert testimony).
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`Unilever’s Petition inappropriately relies on hindsight in an attempt to prove
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`obviousness of the claimed invention over the combination of Bowser and Evans
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`and over Evans alone. As such, the Board should deny Grounds 5-9.
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`B.
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`The Board Should Deny Grounds 5-9 Because Unilever Identifies
`No Flaws In The Prior Art To Invite Improvement
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`Unilever’s obviousness arguments also fail because Unilever points to no
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`flaws or shortcomings in the disclosures of Bowser or Evans that would motivate a
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`POSA to modi