Filed on behalf of Heartland Tanning, Inc.
`By:
`Rudolph A. Telscher, Jr. (rtelscher@hdp.com)
`Douglas A. Robinson (drobinson@hdp.com
`Greg W. Meyer (gmeyer@hdp.com)
`Harness, Dickey & Pierce, PLC
`7700 Bonhomme, Suite 400
`
`St. Louis, MO 63105
`
`Tel: (314) 726—7500
`Fax: (314) 726—7501
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HEARTLAND TANNING, INC.
`
`Petitioner
`
`V.
`
`Patent of SUNLESS, INC.
`Patent Owner
`
`Trial Number: 2014-00018
`
`Patent 8,201,288
`
`DECLARATION OF KENNETH D. SHINNEMAN
`
`(U.S. PATENT NO. 8,201,288)
`
`Heartland
`
`Exhibit 1010
`
`
`By:
`Rudolph A. Telscher, Jr. (rtelscher@hdp.com)
`Douglas A. Robinson (drobinson@hdp.com
`Greg W. Meyer (gmeyer@hdp.com)
`Harness, Dickey & Pierce, PLC
`7700 Bonhomme, Suite 400
`
`St. Louis, MO 63105
`
`Tel: (314) 726—7500
`Fax: (314) 726—7501
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HEARTLAND TANNING, INC.
`
`Petitioner
`
`V.
`
`Patent of SUNLESS, INC.
`Patent Owner
`
`Trial Number: 2014-00018
`
`Patent 8,201,288
`
`DECLARATION OF KENNETH D. SHINNEMAN
`
`(U.S. PATENT NO. 8,201,288)
`
`Heartland
`
`Exhibit 1010
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8, 201,288
`
`1, Kenneth D. Shinneman, hereby declare as follows:
`
`I. BACKGROUND
`
`1.
`
`I am over 18 years of age and otherwise competent to make this
`
`declaration.
`
`2.
`
`I am an employee of Heartland Tanning, Inc. (“Heartland”) and
`
`submit this testimony as part of an inter partes review (“IPR”) filed by Heartland
`
`and directed to US. Patent No. 8,201,288 (EX1001, “the ‘288 patent”). I am not
`
`being separately compensated for my testimony in connection with this matter.
`
`3.
`
`I have been asked to provide my opinions and firsthand knowledge
`
`relative to the tanning fluids described in the prior art.
`
`I have reviewed the
`
`following documents:
`
`0 US. Patent 8,201,288 (“the ‘288 patent,” “EX1001”)
`
`0 US Patent No. 6,302,122 (“EXIOOS”)
`
`0 US. Patent No. 6,416,747 (“EX1006”)
`
`0 US. Patent Pub. No. 2005/0279865 (“EX1004”)
`
`o Sunless Airbrush/HVIP Technician Course, National Tanning
`
`Training Institute, published by Virgo Publishing in 2005
`
`(“EXl 01 1”)
`
`0
`
`Jennifer M. Fu et a1., Sunless Tanning, American Academy of
`
`Dermatology, Inc., published March 12, 2004. (“EX1012”)
`
`o 2005 Indoor Tanning Solutions Catalog, published by Heartland
`
`Tanning, Inc. in 2005 (“EX1013”)
`
`
`
`Shinneman Decl. concerning U. S. Patent No. 8,201,288
`
`0 Norvell 2005 Product Catalog, published by Norvell in 2005
`
`(“EX1014”)
`
`o Norvell Product Price Listed, published by Norvell in 2004
`
`(“EXIOIS”)
`
`0 US. Patent Pub. No. 2005/0008577 (“EX1023”)
`
`o
`
`J&J 2005 Indoor Tanning Distributing Catalog (“EXIOZI”)
`
`0 Salon Support Inc.’s 2005 Salon Owner’s Guide (“EX1022”)
`
`4.
`
`I have considered the disclosure of the ‘288 patent in light of general
`
`knowledge in the art in 2005 and given terms in the ‘288 patent their broadest
`
`reasonable meaning as it would be understood by one of ordinary skill in the art in
`
`View of the disclosure of the ‘288 patent.
`
`5.
`
`I understand one of ordinary skill in the art to be a person who possess
`
`five years of practical experience in the relevant art, e.g., spray tanning, or would
`
`have an engineering degree and two years of practical experience.
`
`II. MY EXPERIENCE AND QUALIFICATIONS
`
`6.
`
`I am knowledgeable in spray tanning and fluids used for spray tanning
`
`a person. I have been involved in spray tanning since 2002. A copy of my resume
`
`is provided as EX1020.
`
`7.
`
`I have been involved in the support, manufacturing, supply, and
`
`design of spray tanning since 2002.
`
`I have firsthand knowledge of the state of the
`
`spray tanning industry prior to 2005.
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`8.
`
`Between 1994 and 2000 I was employed at Washer Equipment Co.
`
`Specifically, between 1994 and 2000, I was Customer Service Representative.
`
`Before that, between 1988 and 1993, I was Parts/Technical Service Representative.
`
`9.
`
`In 2000, I left Washer Equipment Co. and joined Heartland. Through
`
`my work with Heartland, I developed significant knowledge and experience with
`
`spray systems and nozzles.
`
`10.
`
`In 2005, I had 3 years of experience dealing with spray tanning
`
`systems, including handheld devices, spray booths, and the tanning fluids
`
`(including fluids applied before and after a “tanning” fluid) available and used in
`
`those systems in 2005.
`
`III. THE ‘288 PATENT
`
`11. The ‘288 patent is directed to a spray tanning booth for automatic
`
`spray application of multiple fluids onto a human subject. EX1001 at Abstract.
`
`12. The ‘288 patent’s Background section explains that the use of an
`
`automated system for spraying tanning products onto the human subject was well
`
`known in the art before the ‘288 patent, stating (EXIOOI at 1:32-33):
`
`There exist many automated systems for applying artificial
`tanning products and often include a closed booth provided
`with a spraying system. The spraying systems typically use
`high pressure compressed air nozzles, along with a fluid
`supplied to the nozzle to create an atomized spray directed
`towards the body. Currently, these booths are mostly closed,
`are limited to applying only one product per session, and
`create a foggy closed environment for the user.
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`13. The Background section’s notation that prior booths were “limited” to
`
`one product suggests it would have been desirable to apply more than one solution.
`
`The Background section fiirther lists several such products, which may be applied
`
`for cosmetic purposes, and thus, logically suggests it would be desirable to provide
`
`a spray booth capable of spraying more than one of the listed products.
`
`14.
`
`In the detailed description, the inventor describes an embodiment of a
`
`spray booth. The spray booth provides space for a person to stand while nozzles
`
`move vertically to coat him/her with one or more solutions. Each nozzle receives
`
`three separate solutions via first, second and third fluid paths F1, F2, F3. Each fluid
`
`path receives fluid from a fluid container 160. An example fluid container is
`
`shown in Figure 6, reproduced below.
`
`
`
`Figure 6 ofthe ‘288 patent
`
`15. The ‘288 patent refers to certain tanning fluids to be applied by the
`
`spray booth. The fluids are listed in the ‘288 patent, as follows (EXIOOI at 2:51-
`
`3:8):
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`In a preferred embodiment? the syazam 108 can be
`employed to apply aunlcsa tanning mlationa as: wall as other
`solutions onto a hrunan body 109. fixcmplary aunlcssdamn 11g
`solutions include one or more colorants. such aa dihydroxy—
`acetone, crotonaldclrydm pymvaldchydc, glycolaldchydc.
`glutamldchydo, otho-phxhaldchydc, aorboac, fmctosc, oryth»
`mlosc, meihylvinylkcmna. load coloring or any other avail—
`able colorant. The sonlesswtanning solutions can additionally
`or alternatively include one or more: Marmara, such aa law-
`sonc, juglone, or any othcr availablc bronzar. It will has 21;:pr
`ciatcd that the aunlcaatanning solutions can include addia
`tional ingredicma such as moisturizers and solar-la to makc
`the solution more appealing to a user.
`
`While the system 190 can be employed as a sanlcss tanning
`spray system, it can also be employed to spray other fluids
`onto tho human body. For example, {he system 109 can be
`configured to spray sunscreens, suntan lotionsl moisturizing
`
`lotions, sunless tanning pra—spray treatments, tanning accel-
`erators, sunburn treatmemgl inaact repellamag skin toners,
`skin bloachca, akin lightcncrs, antimicmbial compositions,
`exfoliama, matrimonial or vilamins. maaaaga aidcal muscle
`relaxants, akin {moment agents, barn treatment agents,
`decontamination agcnls, cosmetics, or wrinkle {matmcnta or
`removers. or any other solution, or lotion desired to he applied
`to the human body.
`
`16.
`
`The ‘288 patent does not described the chemical makeup or any
`
`process used to make the fluids.
`
`17. The claims of the ‘288 patent include three independent claims, which
`
`generally describe a spray tanning booth. For example, as recited in claim 8, the
`
`booth includes a controller configured to control a liquid source for causing a first
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`and a second fluid to flow to the nozzle. Dependent claims 12 and 15 recite the
`
`fluids as being pre-tanning liquid, tanning liquid or conditioning liquid.
`
`IV.
`
`THE STATE OF THE ART
`
`A. Disclosures of Certain Non-Patent Publications
`
`18. My personal knowledge of the tanning fluids for use with spray
`
`systems available in the industry in 2005 are evidence by the printed publications
`
`referenced below.
`
`19. For example, EX1013 is a true and correct copy of an excerpt from
`
`the Heartland 2005 Indoor Tanning Solution Catalog (“2005 Catalog”). In 2005
`
`and prior, I had firsthand knowledge and experience with the fluids included in the
`
`2005 Brochure. The 2005 Catalog was publically available in the US. in 2005 as
`
`a reflection of the artificial tanning products available from both California Tan,
`
`and Norvell—Body Invest and sold through Heartland.
`
`20. Under “Individual Sunless Products” on the right, Item # 130962, for
`
`example, is a 1 gallon or 128 ounce container of Pro-Primer PH Balancing Spray.
`
`This product is a “primer” because it was used to prime the skin (or adjust the pH
`
`of the skin) prior to application of an artificial tanning fluid. This product is a pre-
`
`tanning liquid in the context of the ‘288 patent.
`
`21.
`
`Item # 130969, for example, is a 1 gallon or 128 ounce container of
`
`Airbrush Sunless Solution Spray — Clear, which is a tanning fluid with DHA, but
`
`no bronzer. This product is referred to as “Clear” because it goes on clear with the
`
`artificial tan appearing over the next hours. The bronzer (also) listed includes a
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`colorant, which immediately provides a tanned appearance to the skin. The clear is
`
`a tanning liquid in the context of the ‘288 patent.
`
`22. The Pro Long Tan Extending lotion is also listed in EX1013. This
`
`product was applied after the tanning fluid to moisturize the skin and permit the
`
`tanned look to be retained longer after the original application. As such, the
`
`product is a conditioning liquid in the context of the ‘288 patent. Although the
`
`product is listed as available in 2 oz. and 8 oz. bottles, it was also available in 2005
`
`and prior in the 1 gallon size for use with spray equipment. See EX1015 (true and
`
`correct copy of a Norvell Price List, which was publically available in the US. in
`
`2004)
`
`23. Referring again to EX1013, as demonstrated by the clustering of the
`
`products in the “NT200 Sunless Spray System” section, there products were sold
`
`together, and meant to be used together in 2005. The pre—tanning liquids help
`
`prepare the skin for artificial tanning liquids, and the condition liquids were used to
`
`make the tanned look last longer.
`
`24. These products were well known to those persons who were
`
`experienced in spray tanning in 2005. And, the products were well known to be
`
`applied one after the other in a single spray session. For example, there is no
`
`reason to spray a pre-tanning liquid onto a person, and then not follow with a
`
`tanning fluid. Likewise, applying a moisturizer to the skin immediately prior to the
`
`tanning fluid would interrupt the chemical reaction of the tanning fluid with the
`
`skin. Consequently, the moisturizers were applied after the tanning fluids.
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`25. These products were further sold direct from Norvell. For example,
`
`EX1014 is true and correct copy of a Norvell Product Catalog, dated 2005. It
`
`illustrates the same products discussed above. The second bottle from the left, for
`
`example, is the Pro-Primer PH Balancing Spray.
`
`26.
`
`I knew about the products listed in the 2005 Catalog prior to 2005, as
`
`part of my employment with Heartland, and understood them to be applied
`
`together and in a certain order (i.e., pre-tanning liquid, tanning liquid, and
`
`conditioning liquid).
`
`27. Additionally, EX1021 is a true and correct copy of an excerpt from
`
`the J&J 2005 Indoor Tanning Distributing Catalog. EX1021 was publically
`
`available in the US. in 2005.
`
`28. And, EX1022 is a true and correct copy of an excerpt from Salon
`
`Support Inc.’s 2005 Salon Owner’s Guide. EX1022 was publically available in the
`
`US. in 2005.
`
`29. EX1021 and EX1022 each disclose pre—tanning liquids, tanning
`
`liquids, and conditioning liquids, which are the same as or similar to the liquids of
`
`EX1013 noted above. These catalogs further demonstrate that these liquids were
`
`both publically known and known to be used together in the same spray session.
`
`B. The Disclosures of Prior Art Patent Documents
`
`30. My person knowledge of tanning fluids is further borne out by
`
`disclosures of the prior art patents below.
`
`31.
`
`I have reviewed U.S. Publication No. 2005/0279865 (“Thomason
`
`US’865”).
`
`I understand Thomason ‘865 to be prior art to the ‘288 patent.
`
`
`
`Shinneman Decl. concerning U. S. Patent No. 8,201,288
`
`32. Thomason ‘US’865 discloses a spray system 100 for spraying tanning
`
`fluids and other fluids onto a person. The taming fluids or solution are listed as
`
`(EX1004 at 111116—17):
`
`In a preferred embodiment, the fluid spraying sysw
`[0016]
`tem 100 can be employed as a sunless tanning spraying
`system where it is configured to spray a analogs-tanning
`solution onto a human body. Exemplary sunless-tanning
`solutions include one or more colorants, such as dihydroxyv
`acetone, crotonaldehyde, pyruvaldehyde, glycolaldehyde,
`glutaraldehyde, othophthaldehyde, sorbose, fructose, eryth-
`rulose, methylvinylketone, food coloring, or any other avail-
`able colorant. The sunless-taoning solutions can additionally
`or alternatively include one or more bronzers, such as
`lawsone, juglone, or any other available bronzer. It will be
`appreciated that the Sunless—tanning solutions can include
`additional ingredients, such as moisturizers and seems, to
`make the solution more appealing to a user.
`
`[0017] While the preferred embodiment can be employed
`as a sanleas tanning spray system, the system 100 can also
`be employed to spray other fluids onto the human body. For
`example, the system 100 can be configured to spray auntw
`screens, suntan lotions, tanning accelerators, sunburn treat~
`meats,
`insect repellents, skin toners, skin bleaches, skin
`lighteners, anti-microbial compositions, moisturizers, exfo-
`liants, nutriments or vitamins, massage aideS, muscle relax-
`ants, skin treatment agents, bum treatment agents, decon-
`tamination agents, cosmetics, or Wrinkle treatments or
`removers.
`
`33. Notably, this list is Virtually identical to the listing of fluids in the
`
`‘288 patent. See EXIOOl at 2:51-3:8.
`
`10
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`34. The above list previously-known tanning fluids that are provided to
`
`color the skin. Dihydroxyacetone (“DHA”) has been a common active ingredient
`
`in artificial tanning fluids since prior to 2005. See, e. g., EX1011 at p. 2 and
`
`EX1012 at 708-709.
`
`35. The other fluids listed in Thomason US’865 include tanning
`
`accelerators and skin treatment agents. Each is reasonably understood to be pre-
`
`tanning solution. Specifically, the skin treatment agents (e. g., a pH adjuster as
`
`noted in Background) prepares the skin to receive the tanning fluid, and facilitates
`
`a uniform reaction of tanning fluid with the skin of the person. The above section
`
`further discloses that the spray system 100 may be used to spray moisturizers onto
`
`the person. EX1004 at 1H7. In 2005, like today, a moisturizer conditions the skin,
`
`and is therefore a conditioning solution.
`
`36.
`
`I have reviewed US. Patent 6,302,122 (“Parker”). Parker discloses a
`
`booth for spraying artificial tanning compositions onto a person. The booth is
`
`disclosed as suitable to apply multiple different compositions, sequentially,
`
`through the same nozzle. The tanning compositions are defined as, (EXIOOS at
`
`5:18-42):
`
`11
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`As used hcrciu, 1111: term “tanning mmpcsition" means
`any communion designed for application to the skin to
`facilitate the cosmetic coloring of the: 31% to achieve a
`runner! appearance. The term includcnr but in not limited in,
`sun tanning solutions, oils and creams, as well as composi-
`tions which grain or induce a change: in pigmentation of the
`skin. Tanning compositions may also be hlcndcd with othcr
`components such as mointurizcrs, vitamins, surfactants,
`emul‘sificrs, solvcnzs, cxtcndcrs, therapeutic 3km agents, etc.
`As used humid, the {can “artificial snarling mmposilion”
`means a tanning composition mar door; on; rcly on UV
`radiation, either from sunlight or from UV gcncmting light
`bulbs, to cosmcrically color the: skin The form includes
`within as meaning. but is not limited to, “rumour tanning”
`and/m “hronzing’” solutions, oils, and creams, no for
`example, but without limitation, compositions containing
`the artificial tanning active agents such as dihydroxyacctonc,
`crythmlosc, lawsonc, or jugulaner Aflificial tanning compow
`unions may contain one or mom active artificial tanning
`agents and may be blended with sun or UV tanning
`facilitmors, as well as moisturizers, rimming, nurfaczantn
`like cthoxydiglyccl and dimcthyl morbidc, cmulsificm,
`solvents, thinners, cxrcndcrs, dycs, fragrances, :hcmpcuric
`skin agcntn. etc.
`
`37. As listed above, Parker discloses spray application of any composition
`
`that facilitates the coloring of skin to achieve a tanned appearance, i.e., a tanning
`
`liquid. Parker further discusses the application of different fluids, such as
`
`moisturizers, surfactants and emulsifiers. I would have understood the moisturizer
`
`to be a conditioning fluid in 2005, While the surfactants and emulsifiers (in the
`
`context of spray tanning) are understood to be pro-tanning liquids.
`
`12
`
`
`
`Shinneman Decl. concerning U. 8. Patent No. 8,201,288
`
`38. Further, Parker discloses spraying two different fluids from the same
`
`nozzles, as either a mixture or separately. For separate Spraying, I understand this
`
`to disclose spraying one of the fluids listed in above section, and then spraying
`
`another one of the fluids listed in the above section.
`
`39. Additionally, I have reviewed US. Patent No. 6,416,747
`
`(“Laughlin”). Laughlin discloses a spray booth, in which an HVLP nozzle is
`
`discloses to spray several different fluids onto a person.
`
`40. Available tanning fluids are also listed in Laughlin. In the
`
`Background, for example, Laughlin lists pH adjusters, which modify the pH of the
`
`skin to cause the skin to be more susceptible to tanning fluids. This pH adjuster is
`
`disclosed as a component that might be mixed with the tanning fluid. By itself,
`
`however, a pH adjuster is a pre-tanning liquid. Likewise, moisturizers are
`
`disclosed as possibly being mixed with tanning fluids. By itself, a moisturizer is a
`
`conditioning liquid.
`
`41.
`
`In the detailed description, Laughlin discloses taming accelerators
`
`and skin treatment agents, which are reasonably understood to be pre-tanning
`
`solutions. Specifically, the skin treatment agents (e. g., a pH adjuster as noted in
`
`Background) prepares the skin to receive the tanning fluid, and facilitates a
`
`uniform reaction of tanning fluid with the skin of the person.
`
`42. Laughlin also disclose moisturizers, which are applied separately from
`
`the tanning fluid. The moisturizer is a conditioning liquid. Likewise, I would
`
`consider nutriments and vitamins to be skin conditioning liquids.
`
`l3
`
`
`
`Shinneman Dec]. concerning U. 8. Patent No. 8,201,288
`
`43.
`
`In applying the fluid referenced above, Laughlin teaches that multiple
`
`applications of the above fluids to better control the amount of material applied,
`
`and “additional substances [such as the pH adjusters and moisturizers noted above]
`
`can be applied in separate applications.” EX1006 at 3:52—55. For example,
`
`Laughlin discloses applying a “skin preconditioner,” such as a pH adjuster through
`
`nozzle 140 of Fig. 15 onto the person, and then spraying a “self—tanning
`
`composition” through the nozzle 140 onto the person. EX1006 at 17:44-58 and
`
`Fig. 15. The skin preconditioner prepares the skin to receive the self-tanning
`
`composition. As such, I understand it to be a pre-tanning liquid.
`
`44. Laughlin further discloses that by simultaneously or sequentially
`
`misting the two components (e.g., pH adjuster and bronzer) onto the person “an
`
`enhanced tan is achieved without requiring the consumer to deal with a multi-
`
`component system.” EX1006 at 18:14-18. In other words, this allowed the user to
`
`receive “sequential” applications consisting of the pre-tanning liquid and then the
`
`self—tanning composition without going into another machine.
`
`45. Finally, I have review U.S. Publication 2005/0008577 (“Cooper”).
`
`Cooper discloses a spray tanning system, which is capable of spraying multiple
`
`different fluids. Specifically, Cooper teaches (EX1023 at1[21):
`
`14
`
`
`
`Shimmer: Beat mnaeming (1.3. Pam?! No. 8,201,288
`
`requiring that purging of the liquid canduit 145. F0: axample,
`a particular wstamer may dasirc: {0 have a pm-ianning,
`compound from a first
`flammable liquid cgmtainer he
`applied, and than subscqaemly haw a tanning campound
`from a second mmevable liquid mnialmr be agaplied. In
`accordance wiih 0&6: ambodimcnts of {he preset}: inven‘
`tion, the liquid condui: 145 may be adapied ta be: contaimd
`within the liquid valve 149, the gpra‘y 99221:“: 115, or a fitfing.
`
`a:
`
`t
`
`1‘
`
`1, Kenneth D. Shinneman, declare under penalty of pexjury of the laws :3?
`
`the United States that the foregoing is true and correct.
`
`Executed this 4th day of October, 2013 in Lee’s Szzmmit, Mismuri.
`
`lS
`
`
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