Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 60
` Entered: December 15, 2014
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`CONOPCO, INC. dba UNILEVER,
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`- - - - - -
`Appeal Nos. IPR2013-00505 and IPR2013-00509
`Application Nos. 09/558465 and 09/558447
`Technology Center 1600
`- - - - - -
`Record of Oral Hearing
` Held: November 5, 2014
`
`
`Before: GRACE OBERMANN, LORA GREEN, RAMA ELLURU,
`Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`
`
`November 5, 2014 at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia at 9:00 a.m. in Courtroom A.
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 60
` Entered: December 15, 2014
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`CONOPCO, INC. dba UNILEVER,
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`- - - - - -
`Appeal Nos. IPR2013-00505 and IPR2013-00509
`Application Nos. 09/558465 and 09/558447
`Technology Center 1600
`- - - - - -
`Record of Oral Hearing
` Held: November 5, 2014
`
`
`Before: GRACE OBERMANN, LORA GREEN, RAMA ELLURU,
`Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`
`
`November 5, 2014 at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia at 9:00 a.m. in Courtroom A.
`
`
`
`
`Appeal Nos. IPR2013-00505 and IPR2013-00509
`Application Nos. 09/558465 and 09/558447
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL R. HOUSTON, Ph.D., ESQ.
`
`
`JEANNE M. GILLS, ESQ.
`
`
`JOSEPH P. MEARA, Ph.D., ESQ.
`
`
`Foley & Lardner LLP
`
`
`1900 University Avenue, 6th Floor
`
`
`East Palo Alto, CA 94303-2284
`
`
`650-617-4000
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`DAVID M. MAIORANA, ESQ.
`
`MICHAEL WEINSTEIN, ESQ.
`
`THOMAS R. GOOTS, ESQ.
`
`Jones Day
`
`
`North Point
`
`
`901 Lakeside Avenue
`
`Cleveland, Ohio 44114-1190
`216-586-3939
`
`
`
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`Appeal Nos. IPR2013-00505 and IPR2013-00509
`Application Nos. 09/558465 and 09/558447
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`
`P R O C E E D I N G S
`
`(9:00 a.m.)
`JUDGE OBERMANN: Court reporter, are you
`ready? Thank you.
`Good morning. This is the final hearing in
`IPR-2013-00505 and 2013-00509. It is between Unilever as
`Petitioner and Procter & Gamble Company as the Patent
`Owner.
`
`I am Judge Obermann. And I have Judge Green on
`my right and Judge Elluru on my left. This hearing covers
`two cases and two patents. The 505 case involves U.S. Patent
`Number 6,974,569, and the 509 case involves U.S. Patent
`Number 6,451,300.
`The issues are confined to the grounds set for trial
`in our decisions to institute. There are four grounds at issue.
`Three rely on the Kanebo reference, and a fourth relies on the
`Evans reference.
`Each side will have one hour of total time to
`present argument in the two cases. The parties may allocate
`their 60 minutes between the two cases as they see fit, but we
`ask that where you make an argument regarding Kanebo,
`please identify clearly for the record which of the grounds
`that argument is directed towards.
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`Unilever bears the ultimate burden of proof that
`the patent claims at issue are unpatentable, so Unilever will
`present argument first, followed by P&G. Mr. M eara?
`MR. MEARA: Yes.
`JUDGE OBERMANN: Does Unilever wish to
`reserve time for rebuttal?
`MR. MEARA: Yes.
`JUDGE OBERMANN: How much?
`MR. HOUSTON: 20 minutes, Your Honor.
`JUDGE OBERMANN: Okay. Mr. Meara, are you
`ready to begin?
`MR. HOUSTON: Your Honor, I'm Michael
`Houston on behalf of Petitioner. I will be arguing this
`morning.
`
`JUDGE OBERMANN: Okay. Could you please
`spell your name for me?
`MR. HOUSTON: Sure. Michael, M -i-c-h-a-e-l,
`Houston, just like the city.
`JUDGE OBERMANN: Okay. Are you ready to
`
`begin?
`
`MR. HOUSTON: Yes, I am.
`JUDGE OBERMANN: When you are up there, I
`am going to start your time at 40 minutes.
`MR. HOUSTON: Good morning. May it please
`the Court, Your Honors, as I introduced myself, I am Michael
`
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`Appeal Nos. IPR2013-00505 and IPR2013-00509
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`Houston on behalf of Petitioner, Unilever. With me is
`co-counsel, Ms. Jeanne Gills and Mr. Joe Meara. And we also
`have in the room representatives from Petitioner Unilever, Mr.
`Evans Squillante and Mr. Ronald Koatz.
`To guide my remarks this morning, Your Honor
`has already touch upon the grounds that have been instituted
`here, and we just have a first demonstrative to help illustrate
`that.
`
`With respect to Kanebo and the '569 patent, the
`trial is instituted on a number of claims. The parties really
`only have specific disputes that focus around claims 1, 10,
`and 19 of the '569 patent.
`It turns out that claims 10 and 19 of the '569
`patent raise the same issues, identical limitations in the same
`issues come up with respect to claims 3 and 18 in the '300
`patent. Because those issues are so identical, I will actually
`discuss those in tandem, but I will try to make it clear, as
`Your Honor requested for the record, which ones I am
`discussing at which time.
`There wasn't a dispute in the Patent Owner's
`response brief as to the anticipation of the claims under the
`'300 patent for Kanebo. And then later in my remarks,
`though, I will touch upon the last ground, the Evans rejection
`under obviousness for a slightly different subset of the claims
`of the '300 patent.
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`I would like to begin by focusing on the claim 1 of
`the '569 patent. The trial was instituted based on obviousness
`in view of Kanebo. No one disputes that Kanebo discloses
`each of the limitations A through F in claim 1 in the '569
`patent.
`
`Each of these -- sometimes I refer to them as the
`compositional limitation. No one disputes that.
`That was summarized perhaps most clearly in a
`table that we included at page 6 of our reply brief, which I
`think my co-counsel will get on the screen for reference.
`And that table illustrates that point and shows
`each of the limitations.
`In addition, beyond just disclosing a single
`formula that disclosed each of these limitations, Kanebo also
`disclosed ranges for each one of these compositions, save for
`the anti-dandruff particulate. But it disclosed -- it taught
`ranges for each one of these, A, B, D, E, and F, if you will,
`that are either identical to the range that's required by claim 1
`of the '569 patent or are -- encompass the range taught by the
`'569 patent. So there is nothing in the '569 patent that isn't
`encompassed by the disclosure in Kanebo, save for the
`anti-dandruff agent, which in Kanebo was disclosed as a
`specific composition of .5 percent in example 10.
`It is our position that a person of ordinary skill in
`the art with Kanebo in hand and having knowledge of the skill
`
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`Appeal Nos. IPR2013-00505 and IPR2013-00509
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`-- having knowledge of the state of the art as of 1999 when
`this patent was filed, could have and would have been able to
`reduce a composition that not only meets the compositional
`limitations of the claim but also meets each of the four index
`values that appear at the bottom of the claim.
`Why is that? It is because these index values, as
`the Board has found and also has the patent itself states, each
`of these index values correspond to one of the two most basic
`properties of an anti-dandruff conditioning shampoo.
`What are those properties? It is no secret. It is
`not rocket science. The patent itself says or explains that the
`bioavailability/coverage index, the minimum, minimal
`inhibitory concentration index, sometimes abbreviated as
`MIC, that those measure and correspond to anti -dandruff
`efficacy. How well does the shampoo formulation do at
`actually controlling dandruff?
`The patent then separately explains that the first
`conditioning index and the second conditioning index, again,
`no surprise, are related to conditioning. How well does the
`shampoo condition? Is it -- does it condition hair? Does the
`not over-condition hair? That's what these two indexes are
`related to.
`There was a plethora of art showing that a person
`of ordinary skill in the art knew how to test for each of those
`two basic properties, the new tests for measuring those
`
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`properties. And we also know that the prior art shows how
`you can -- how you can manipulate the components in the
`shampoo formula in order to adjust the properties of the
`shampoo and thereby optimize it.
`The Patent Owner's argument in response to that
`is, hey, you haven't identified a prior art reference that
`describes word for word the test that we described for this
`index value in the specification. And they say that for all of
`them. You haven't identified a reference that has all four in it
`together.
`
`That's not the test in this case, Your Honors. This
`is an obviousness case, not an anticip ation case.
`Under obviousness, the question is simply whether
`a person of ordinary skill in the art could have and would
`have arrived at a composition that would meet these index
`values, if it were so tested. That's all that's required for
`obviousness here.
`JUDGE ELLURU: Counsel, but isn't the argument
`that we should interpret the claims to require a particular test
`based on the specification?
`MR. HOUSTON: Well, Your Honor, I guess I
`have a couple of responses to that. First of all, this panel is
`certainly aware of its statutory mandate where it can use a
`somewhat broader, broadest reasonable construction, broadest
`reasonable interpretation for interpreting the claims.
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`So I think that gives the panel some leeway as
`opposed to how it would be done in District Court where a
`District Court would be more strict and may interpret or may
`want to incorporate the test values into the claims for each of
`these index values.
`But, actually, we don't think that matters one way
`or the other. I don't think it matters whether you incorporate
`the exact test into the claim or not because, again, the test for
`obviousness isn't whether someone went out and actually did
`the test. A person of ordinary skill in the art doesn't have to
`carry out this exact test.
`A person of ordinary skill in the art only has to
`arrive at a composition that would meet these values if it were
`tested. And so there is a big distinction there.
`Otherwise -- to do otherwise would be to say, hey,
`if you go out as a patentee and you come u p with your own
`test, you make up tests, which is what they did here, they
`admit that, they made up their own test, new, never, never --
`their index values, at least, I should clarify. The tests we
`think were actually known in the prior art, but the way t hey
`used those tests to calculate a value here, that's something
`they made up.
`And so you can't reward applicants with a patent
`simply because they came up with a new test that measures
`old properties by just using a new scale, using -- instead of
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`metric units or English units, they came up with their own
`units, Houston units, and nobody knows what that means.
`You can't find it in the prior art.
`And so we think that's what Patent Owner is really
`attempting to do here.
`Does that answer your question, Your Honor?
`JUDGE ELLURU: Thank you.
`MR. HOUSTON: So I would actually like to talk a
`little bit about what tests were known in the prior art, for
`getting at both of these two key properties of an anti -dandruff
`conditioning shampoo.
`If we turn -- we don't have to go very far. We can
`turn first to just Kanebo itself. Kanebo itself reports testing
`protocols -- well, I should start off in the very beginning,
`paragraph 2 of Kanebo shows that it is concerned with the
`balance between conditioning and not getting the hair too
`clean, too squeaky clean. So there is a balance there.
`And counsel is rushing to get that in front of you,
`paragraph 2, yeah. So it wants a good running of the fingers
`through the hair but also not squeaking of the hair upon
`rinsing.
`
`So it recognizes that you want this -- this balance
`in the conditioning properties. Now, what does Kanebo do?
`It actually reports protocol, a protocol for how to go about
`measuring that property. It establishes a control shampoo
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`formulation, and it establishes a whole bunch of different
`shampoo formulations that are tested. A group of panelists
`get together. They apply the control to one -half of a subject's
`hair. They apply the shampoo to be tested to another half.
`And they rate those properties based on their subjective feel,
`how the hair feels.
`And if we can go to table 1 of Kanebo, we can see
`the results of that. Actually, Jeanne, if you can scroll back up
`a little bit, right down just a little bit, right there. There is
`the control in Kanebo, shampoo control. It has a certain
`formula. And then it goes down and tests, and you will see in
`table 1, there is a bunch of formulas that were tested. Table 1
`breaks across a couple pages. These are the different
`formulas that were tested.
`And if you scroll down just to the bottom of table
`1, it shows the properties right there (indicating). So it is
`showing the feeling upon rinsing, the running of fingers
`through the hair. These little infinity symbols, if you go back
`up to the legend, and you don't have to scroll up there, but
`that means that those have great properties compared to the
`control. So it went and tested those, it is showing you how to
`do it, remarkably similar to what is done in the '569 patent.
`But Kanebo, of course, wasn't the only one. A
`very similar test was reported in Hoshowski. Hoshowski is
`concerned, again, with the conditioning behavior of shampoo
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`formulations. Reports a very similar type of test. They
`weren't using human subjects there. They were using hair
`tresses, just sort of like wigs, I guess. But, again,
`establishing a control, establishing formulas they wanted to
`test.
`
`What did Hoshowski do? Hoshowski looked and
`said, well, one of the conditioning properties we want to test
`is wet combability. And they went and did that with a group
`of panelists. They rated it, and they gave results in the table
`1 of Hoshowski. Hoshowski then said, hey, we use this
`protocol to measure this property, but it is not the only
`property you can do that with. It said, you know, use this
`protocol such as for wet combability, and then it goes on to
`say the other conditioning properties you can measure are X,
`Y, and Z. And --
`JUDGE OBERMANN: Did Hoshowski test for
`clean hair feel?
`MR. HOUSTON: Absolutely. If we can get
`Hoshowski up. They tested -- the way Hoshowski describes it
`is wet feel.
`JUDGE OBERMANN: Is that in dispute? I am
`looking at the Patent Owner's brief and they have a whole
`section on how Hoshowski does not teach a test for
`determining clean hair feel, and I wonder what your response
`to that is.
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`MR. HOUSTON: Right, Your Honor.
`Jeanne, if we can scroll to column 22. Okay. I
`would like to address that question.
`So what they are saying is, or at least what I
`understand them to be saying is, hey, Ho showski did this test
`for doing the wet combability but they didn't tell you how to
`do the wet feel. They highlight wet feel here, but they didn't
`tell you how to do that one. I read Hoshowski as saying, look,
`the shampoo is rated in this blind test that they describe up
`here how to do it, a blind test for one or more hair
`conditioning properties like combing index by trained judges.
`And then it says the trained judges can rate the shampoo if a
`shampooing hair conditioning properties such as, and it list s
`these. So I think it is the same protocol. They do the same
`thing.
`
`They can have a control if they want. They've got
`their shampoos that they want to test. They've got the tresses.
`And while they are doing it, they can include whichever one
`of these properties they want to.
`And the other thing that Patent Owner makes a big
`deal of is how many properties are listed here. Well, there is
`really only four listed for conditioning. There is the
`detangling, I suppose would be a conditioning one, which by
`the way the '569 patent says is exactly one of the things that
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`the first conditioning index is looking at, is the detangling of
`the hair.
`
`It mentions the wet feel, which we think
`corresponds to the second index. Wet comb, which is the wet
`combability test that we know that Hoshowski reports the
`values of, and, again, that's identical to what's in the first
`conditioning index. And residue, which is the fourth point.
`Those are the -- those correspond almost -- you
`know, not -- again, the exact test, as in the '569 patent isn't
`spelled out, but getting at the exact same properties that these
`indexes are getting at. These are just proxies for those
`properties. And measuring those properties was certainly
`something that was known how to do in the skil l of the art.
`I want to also point out that this isn't something
`that's relatively new. Patent Owner's expert, Dr. Lochhead, in
`really his only formulation work where he was looking to
`formulate an anti-dandruff conditioning shampoo in his whole
`career where he was physically doing that was in the 1970s
`when he was at Unilever, and his project was actually to
`formulate an anti-dandruff conditioning shampoo.
`What did he do in that work? Way back in the
`'70s, he looked at feel of the hair, he looked at wet
`combability of the hair. We have that work memorialized in a
`report that he authored back in 1979, which we submitted into
`the record as Exhibit 1040.
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`And we also asked Dr. Lochhead about that work
`in his deposition. And he testified that the test was much the
`same as what's described in these other references, Kanebo
`and Hoshowski. Panels were used. Controls were used. And
`they were able to -- to measure the feel of the hair and
`measure its wet combability.
`And the wet combing properties are mentioned
`right there (indicating). The feel, I think, maybe is down on
`the next slide, but it is also sort of in the results section.
`JUDGE OBERMANN: Excuse me, counsel. Are
`we looking at this Exhibit 1040 right now?
`MR. HOUSTON: That is 1040 right there, yes,
`Your Honor. It is a 1979 report authored by Dr. Lochhead.
`We pulled this out at his deposition, and he said yeah, that
`looks like the report I authored. And we proceeded to ask him
`about it. This is exactly -- you know, this is evidence of what
`a person of ordinary skill in the art has been doing to try to
`get at these properties, not just in the recent past, but for a
`long, long time as they are developing these anti -dandruff
`conditioning shampoos.
`So, you know, it is our position that te sts
`comparable to the first and second conditioning index and
`certainly tests for getting at what the underlying properties
`are, the underlying conditioning properties, were well known,
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`well understood, and used by those of skill in the art
`regularly.
`The same thing can be said with respect to
`anti-dandruff efficacy. The other two index values. The same
`exact thing. And I will start by mentioning that when we
`asked Dr. Lochhead at his deposition, were there tests known
`in the art for measuring anti-dandruff efficacy prior to the
`'569 patent, he said yes, he gave us a whole laundry list of
`tests, things that were done to measure anti -dandruff efficacy,
`which is simply the measure of does the shampoo work? Does
`it control dandruff?
`What did he say? He said: Well, you know, there
`is stripping techniques, for example, to look at the deposition
`of the anti-dandruff particles in a given hair sample. We see
`that tape stripping method go all the way back to 1965 in the
`paper by Parran. I think that's Exhi bit 1046. I won't put it up
`on the board, but I will cite it for the record. In 1965,
`Parran -- and actually Dr. Lochhead mentioned in his
`deposition some of the innovative work that was done by
`Parran.
`
`JUDGE OBERMANN: Are citations to that in
`your reply?
`MR. HOUSTON: Yes, they certainly are, Your
`
`Honor.
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`
`
`JUDGE OBERMANN: Okay, great.
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`Appeal Nos. IPR2013-00505 and IPR2013-00509
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`MR. HOUSTON: And so I want to be clear, it
`wasn't that Dr. Lochhead specifically said that tape stripping
`method was an innovation by Parran, but he identified Parra n
`as an innovator in the field for anti -dandruff shampoos. So
`we went and found one of his papers and looked it up, and
`sure, there you go, he does the tape stripping method where he
`is looking at the deposition of anti -dandruff particles. That
`same technique was actually used much more recently in
`Bowser. Bowser, we know, is concerned with the balance
`between not getting too much deposition, not getting the
`particles down on sticky clumps where it affects that feel of
`the hair but yet still is bioavaila bility. You have the particles
`dispersed so that you have it bioavailable. And this isn't a
`novel concept. If anybody ever salted the food on their plate
`or spread fertilizer on the lawn knows that you -- to be
`effective, you spread these things out.
`And these tests are used over and over again in the
`art. Dr. Lochhead said he himself at Unilever -- or, well, let
`me clarify.
`At Unilever, the team he was working with, they
`were -- they were doing electron microscope tests, they were
`doing x-ray photoelectron microscopy to look again and see
`the spread of the particles on the surface.
`He also mentioned that people were doing in vivo
`tests, which is sort of the ultimate test, I would argue, for
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`Appeal Nos. IPR2013-00505 and IPR2013-00509
`Application Nos. 09/558465 and 09/558447
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`anti-dandruff efficacy. So you are looking at a real per son
`who really has dandruff. Does the shampoo control that
`dandruff? That's getting at the most basic underlying
`property. Does it control dandruff?
`And then finally he mentioned Shin, of course.
`And that was probably because Shin is at issue in this case,
`but nonetheless it is useful to talk about Shin. Shin, first of
`all, reports minimum inhibitory concentration index test. So
`this MIC concentration test is reported here. Shin reports
`doing it with anti-dandruff formulations.
`Shin also reports doing a skin deposition-type
`assay. So Shin takes a skin sample, he washes it with the
`shampoo formula, he rinses it, takes it and sticks it on a plate.
`It's a guar plate that has been inoculated with the fungus that
`is most commonly associated with dand ruff. And -- and, after
`some period of time letting that plate inoculate, the researcher
`takes it out and looks at it and sees does it control dandruff?
`And these are the type of results that are reported
`from that test, the inhibition zone, which is me asuring a
`radius in millimeters out from the center of the disk that the
`dandruff fungi have been inhibited.
`And what is important, the reason I have this
`comparative example 2 highlighted is that one of Patent
`Owner's complaints about Shin is, oh, Shin was just concerned
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`Appeal Nos. IPR2013-00505 and IPR2013-00509
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`with ZPT that has been solubilized, meaning dissolved. They
`weren't really looking at ZPT particles. That's not true.
`If you look at column 9, right there, so Shin is
`saying, hey, look, you know, we did shampoos containing
`dissolved ZPT, and, yeah, we saw it was more effective, but
`we were comparing it to a shampoo with dispersed ZPT. The
`dispersed ZPT exists in the form of a particle. So that is
`comparative example 2.
`And we go back up to table 2, we see that Shin in
`comparative example 2 is actually reporting that it was able to
`measure inhibition of the growth in that comparative example
`2.
`
`It didn't report zero. It reported an actual radius
`there. It is seeing inhibition. So that's a test where, again,
`we're taking the skin sample, washing it, rinsing it, seeing if
`it inhibits the growth.
`And really that is what the bioavailability test is.
`We asked -- Patent Owner had a separate expert that mostly
`focused on this bioavailability test, Dr. Geis. We asked Dr.
`Geis: What does bioavailability mean? It is the ability of a
`given agent to act upon the microbe of interest; in other
`words, to inhibit it or kill it.
`JUDGE OBERMANN: Can I stop you for one
`
`second?
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`
`
`THE WITNESS: Absolutely.
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`JUDGE OBERMANN: I apologize. In a nutshell,
`can you tell me how Exhibit 2 of Shin counters their argument
`about solubilization?
`MR. HOUSTON: Yes, it is because the formula
`that was tested in example 2 is one that it explains in column
`9 actually involves ZPT particles. So the other o nes we agree
`that Shin is saying we're solubilizing those. Okay? So the
`examples 1 through whatever it was, 1 through 8.
`JUDGE OBERMANN: And they argue that Shin
`doesn't give any indication about the particle version, and you
`are saying -- you are saying example 2 is one that shows --
`MR. HOUSTON: Comparative example 2. I know
`they argue that, Your Honor, but I am up here saying it is just
`not the case. It is right there. Disbursed ZPT exists in the
`form of a particle. And it is comparative exampl e 2 that has
`the dispersed ZPT.
`So comparative example 2 is one, and that is kind
`of what they were doing, they were saying, hey, does
`dissolved ZPT work better? That's one of the things they were
`looking at. But the point is it doesn't mean that the t est they
`were using wasn't applicable for measuring anti -dandruff
`efficacy even if it was in a particle form.
`JUDGE OBERMANN: So what you are really
`saying is that this particular claim, if it does anything, it
`optimizes this particular property and that this test would
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`Appeal Nos. IPR2013-00505 and IPR2013-00509
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`have allowed an ordinary artisan to optimize that property and
`basically attain a composition that would have met that index?
`MR. HOUSTON: Absolutely. That is exactly
`right, Your Honor. I couldn't say it better myself.
`That's exactly what Shin is allowing a person of
`ordinary skill in the art to do. And it is not just Shin. I
`mean, again, Dr. Lochhead mentioned all these different
`techniques for measuring anti-dandruff efficacy, and I should
`mention that Shin, in addition to the sk in test, in addition to
`the MIC test, Shin also reports in vivo tests, which is, again,
`yet another technique for testing the property of anti -dandruff
`efficacy. So the person of ordinary skill in the art had all
`these things at their disposal to -- to optimize a formula. The
`whole question here is how would one of ordinary skill in the
`art go about optimizing a formula? How would they know
`how to do that? It is because they have these tests at their
`disposal to measure the property and they knew how to tweak
`the formula in order to get where they wanted to be on the
`property.
`
`Evidence of that is basically throughout the prior
`art. That's what everybody in this field did, is they looked at
`formulas, they moved compositions of certain components up
`and down, they looked to see what effect that had on
`properties. And you've got this rich history. This isn't a new
`art. It has been around for a long, long time, at least 1965,
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`when the first anti-dandruff shampoo was reported in the
`literature.
`The first anti-dandruff conditioning shampoo came
`out in 1979, introduced by Patent Owner in 1979.
`And at the same time, Unilever was doing its own
`work on anti-dandruff conditioning shampoos. And we have
`only seen the art get richer and richer from that time up until
`1999, showing how to do this.
`So I suppose one thing I want to emphasize is that
`the Patent Owner hasn't come forth with any evidence of why
`it wouldn't be routine optimization to do this. And they don't
`point to a single reference that teaches away. They don't
`point to a single reference that says, hey, this is difficult to
`do.
`
`Even their own patent, while it has a whole bunch
`information about the different components that can be used,
`it has information about how to do the test, it doesn't have any
`teachings on any special way to combine those things, any
`special way, oh, if you are having a problem with this index,
`here is what you change. The '569 patent doesn't have
`anything on that topic above and beyond what is already in the
`prior art. And the inventors clearly felt like that was within
`the purview of a person of ordinary skill in the art to be able
`to do that.
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`And so we think the Board got it entirely right in
`the Institution decision when it decided the case law, In re
`Aller, In re Bausch, and In re Peterson, and found that it
`would be routine optimization to come up with a formula that
`would have the optimal properties, and those optimal
`properties are going to hit these index values because that's
`all the inventors were doing in the '569 patent, starting with
`this composition and arriving at, you know, what they believe
`to be desirable properties.
`JUDGE OBERMANN: You have about 15 minutes.
`MR. HOUSTON: Okay. Thank you, Your Honor.
`Okay. I think this is a good opportunit y to segue
`into some of the other grounds that have been instituted here
`and talk about those.
`The first one in this sort of jumps back and forth
`between the '569 or it covers both the '569 and the '300
`patent, which is claims 10 and 19. If we keep scro lling down,
`I believe, we can see the claims. There we go. There was 19.
`So claim 10 of the '569 patent with composition according to
`claim 1, wherein the suspending agent is ethylene glycol
`distearate, EGDS, it i
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