Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 17
`Entered: July 7, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNILEVER, INC. dba UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`_______________
`
`Case IPR2014-00506
`Patent 6,974,569 B2
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Tel: 571-272-7822
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`
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`Paper 17
`Entered: July 7, 2014
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNILEVER, INC. dba UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`_______________
`
`Case IPR2014-00506
`Patent 6,974,569 B2
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00506
`Patent 6,974,569 B2
`
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`I. INTRODUCTION
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`Unilever filed a Petition for an inter partes review of claims 13, 14, 16, 20-
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`22, 24, 25, 27, 31, and 33 of U.S. Patent No. 6,974,569 B2 (Ex. 1001,
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`“the ’569 patent”). Paper 2 (“the Petition” or “Pet.”). The Procter & Gamble
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`Company (“P&G”), the owner of the ’569 patent, timely filed a Preliminary
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`Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
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`Based on the specific facts presented, we exercise our discretion, and deny review
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`under 35 U.S.C. § 325(d).
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`
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`A. Related Matter: Case IPR2013-00505 (“the 505 proceeding”)
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`Unilever filed an earlier Petition that sought an inter partes review of
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`claims 1-33 of the ’569 patent. Conopco, Inc. dba Unilever v. The Procter &
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`Gamble Co., Case IPR2013-00505 (“IPR2013-00505”), Paper 4 (PTAB August 14,
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`2013) (“the 505 Petition” or “505 Pet.”). We granted review of claims 1-12, 15,
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`17-19, 23, 26, 28-30, and 32, and denied review of claims 13, 14, 16, 20-22, 24,
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`25, 27, 31, and 33. IPR2013-00505, Paper 9 (“505 Dec. on Inst.”). Unilever filed
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`an unsuccessful Request for Rehearing, seeking reconsideration of our decision
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`denying review of claims 20-22. IPR2013-00505, Paper 11 (Request for
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`Rehearing).
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`Unilever then filed the instant Petition, challenging the patentability of each
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`claim that was denied review in the 505 proceeding. Pet. 1. Unilever concurrently
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`filed a Motion for Joinder requesting that we join the instant Petition with
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`the 505 proceeding. Paper 4 (“Joinder Mot.”).
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` 2
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`Case IPR2014-00506
`Patent 6,974,569 B2
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`B. The ’569 Patent (Ex. 1001)
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`The ’569 patent relates to a shampoo composition and method for providing
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`a combination of anti-dandruff efficacy and hair conditioning. Ex. 1001, 2:44-46;
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`2:66-3:1. The ’569 patent Specification discloses that whether the requisite criteria
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`of anti-dandruff efficacy and hair conditioning for a given composition are met
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`depends on, “for example, the level and type of cationic polymer [for conditioning]
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`employed in the composition, the type of anti-dandruff agent employed, the
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`amount of anionic surfactant employed [for hair cleansing], the level and type of
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`polyalkylene glycol employed, if any, and the rheological characteristics of the
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`coacervate.” Id. at 2:36-43; see id. at 1:24-28; 1:56-58.
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`The shampoo composition of the ’569 patent is defined further by four
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`indices that correspond to four properties of a conditioning, anti-dandruff
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`shampoo: (1) a bioavailability and coverage index, which corresponds to anti-
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`dandruff efficacy; (2) a first conditioning index, which provides an indication of
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`the comb-ability of wet hair; (3) a second conditioning index, which assesses clean
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`hair feel; and (4) a minimal inhibitory concentration index, which measures the
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`ability of the shampoo composition to inhibit growth of microorganisms. Id. at
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`2:25-35, 58-65. The ’569 patent tabulates those indices for three of the five
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`disclosed examples of the inventive shampoo composition. Id. at 43:15-44:41.
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`
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`C. Illustrative Claim
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`Claim 13, which depends from claim 1, is illustrative of the claimed subject
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`matter. Those claims are reproduced below.
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`1. A shampoo composition comprising:
`a) from about 5% to about 50%, by weight, of an anionic surfactant;
`b) from about 0.01% to about 10%, by weight, of a non-volatile conditioning
`agent;
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`Case IPR2014-00506
`Patent 6,974,569 B2
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`c) from about 0.1% to about 4%, by weight, of an anti-dandruff particulate;
`d) from about 0.02% to about 5%, by weight, of a cationic polymer;
`e) water;
`f) from about 0.1% to about 10%, by weight of the composition, of a
`suspending agent;
`wherein said composition:
`i. has a bioavailability/coverage index value, of at least about 1.25;
`ii. has a first conditioning index value, of less than or equal to about 1.0;
`iii. has a second conditioning index value, of at least about 1.5; and
`iv. has a minimal inhibitory concentration index value, of at least
`about 0.125.
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`13. A shampoo composition according to claim 1, wherein said anti-
`dandruff particulate is ketoconazole.
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`D. The Asserted Grounds of Unpatentability
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`Unilever challenges claims 13, 14, 16, 20-22, 24, 25, 27, 31, and 33 on the
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`
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`following asserted grounds of unpatentability:
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`Reference[s]
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`Kanebo1 and Kalla2
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`Kanebo, Kalla, Evans3
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`Basis
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`§ 103
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`§ 103
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`Kanebo, Sime,4 Hoshowski5
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`§ 103
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`Claims challenged
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`16, 20-22
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`27
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`20-22
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`1 Kanebo JP 09-188614 (July 22, 1997) (English translation) (Ex. 1006).
`2 Kalla WO 97/026854 (July 31, 1997) (Ex. 1031).
`3 Evans WO 97/14405 (Apr. 24, 1997) (Ex. 1010).
`4 Sime US 5,037,818 (Aug. 6, 1991) (Ex. 1028).
`5 Hoshowski US 5,137,715 (Aug. 11. 1992) (Ex. 1021).
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`Case IPR2014-00506
`Patent 6,974,569 B2
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`Reference[s]
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`Kanebo, Sime, Cardin6
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`Basis
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`§ 103
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`Kanebo, Cseh,7 Cosmedia8
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`§ 103
`
`Kanebo, Cothran9
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`Kanebo, Ramachandran,10
`Hoeschele11
`Kanebo, Ramachandran, Bar-
`Shalom12
`Reid13, Sime, Cardin
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`§ 103
`
`§ 103
`
`§ 103
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`§ 103
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`
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`Claims challenged
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`14, 16
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`20, 21
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`24, 25
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`13
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`31, 33
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`20-22
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`II. ANALYSIS
`
`§ 314(a) as follows:
`
`THRESHOLD -- The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`the petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.
`
`
`6 Cardin US 5,104,645 (Apr. 14, 1992) (Ex. 1014).
`7 Cseh US 4,676,978 (June 30, 1997) (Ex. 1042).
`8 Cosmedia® Guar C 260 (Product Data Sheet) (Ex. 1040).
`9 Cothran WO 96/32919 (Oct. 24, 1996) (Ex. 1044).
`10 Ramachandran US 5,900,393 (May 4, 1999) (Ex. 1033).
`11 Hoeschele, et. al., “In Vitro Analysis of the Interaction between Sucralfate and
`Ketoconazole,” Antimicrobial Agents and Chemotherapy, Feb. 1994, pp. 319-325
`(Ex. 1036).
`12 Bar-Shalom US 5,618,798 (Apr. 8, 1997) (Ex. 1034).
`13 Reid US 5,085,857 (Feb. 4, 1992) (Ex. 1018).
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`Case IPR2014-00506
`Patent 6,974,569 B2
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`As set forth in 35 U.S.C. § 325(d), the Director, and by extension the Board,
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`has broad discretion to deny a petition that raises substantially the same prior art or
`
`arguments previously presented to the Office. That statutory provision provides as
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`follows:
`
`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.
`
`The instant Petition challenges each claim that was denied review in
`
`the 505 proceeding. Compare 505 Pet. 6-7 with Pet. 9-10 (both raising
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`obviousness challenges against claims 13, 14, 16, 20-22, 24, 25, 27, 31, and 33);
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`see 505 Dec. on Inst. 18 (denying review of those claims). The instant Petition
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`relies on thirteen pieces of prior art: six that were raised in the 505 Petition
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`(Kanebo, Evans, Cardin, Reid, Sime, and Hoshowski); and seven that are new to
`
`this proceeding (Kalla, Cseh, Cosmedia, Cothran, Ramachandran, Hoeschele, and
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`Bar-Shalom). Compare 505 Pet. 6-7 with Pet. 9-10; 505 Pet. 20-21 with Pet. 9 (for
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`Hoshowski); and 505 Pet. 23 with Pet. 10 (for Sime). Unilever, however, presents
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`no argument or evidence that the seven newly cited references were not known or
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`available to it at the time of filing of the 505 Petition. Moreover, eight grounds
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`rely on Kanebo, a reference previously presented in the 505 Petition. A ninth
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`ground is based on Reid, Sime, and Cardin, references previously presented in
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`the 505 Petition. Compare 505 Pet. 6-7 with Pet. 9-10. On this record, we exercise
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`our discretion and “reject the petition” because “the same or substantially the same
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`prior art” previously was “presented to the Office” in the 505 proceeding.
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`35 U.S.C. § 325(d).
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` 6
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`Case IPR2014-00506
`Patent 6,974,569 B2
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`An additional rationale supports our decision. We are persuaded that
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`arguments raised in the Petition are “substantially the same” as those “previously []
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`presented to the Office” in the 505 proceeding. Id. Unilever’s treatment of
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`claim 13 is illustrative. Claim 13 includes all the limitations of claim 1 and,
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`further, requires ketoconazole as the anti-dandruff particulate.
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`In the 505 Petition, Unilever argued that Kanebo discloses each limitation of
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`claim 13, except for the limitation requiring “ketoconazole,” arguing that Liu14
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`discloses that missing feature. 505 Pet. 23-25. We denied review on the ground
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`that Unilever provided only “conclusory arguments” supporting the proposed
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`combination of prior art. 505 Dec. on Inst.16. Unilever now repeats the same
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`arguments as to Kanebo but, in lieu of Liu, raises two pieces of new prior art
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`(Ramachandran and Hoeschele) for a disclosure of ketoconazole, emphasizing
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`alleged reasons to combine. Pet. 43-45. In both petitions, Unilever advances
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`“substantially the same” argument—namely, that claim 13 would have been
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`obvious over Kanebo in view of other prior art disclosing ketoconazole.
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`35 U.S.C. § 325(d).
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`Unilever similarly argued in the 505 Petition that claim 27 would have been
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`obvious over Kanebo and Evans (505 Pet. 26-27), but we found lacking any
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`persuasive evidence of a reason to combine those references. 505 Dec. on Inst. 16.
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`Unilever now contends that claim 27 would have been obvious over Kanebo,
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`Evans, and Kalla. Pet. 25-28. Unilever relies on Kalla in support of its reason to
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`combine (see Pet. 27, first full paragraph), but the claim charts essentially are
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`identical in both petitions. Compare 505 Pet. 26-27 with Pet. 26 (nowhere
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`referring to Kalla in the claim chart relating to claim 27).
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` 7
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`14 Liu US 5,456,851 (Oct. 10, 1995).
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`Case IPR2014-00506
`Patent 6,974,569 B2
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`We have considered all of the papers filed in both proceedings. Based on
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`the information presented, we are persuaded that the instant Petition uses our prior
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`Decision on Institution to bolster challenges that were advanced, unsuccessfully, in
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`the 505 Petition. Specifically, Unilever argues that the instant Petition “obviates
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`purported deficiencies” illuminated in our prior decision. Joinder Mot. 8. P&G,
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`on the other hand, contends that Unilever seeks to revive and augment challenges
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`that were rejected in the 505 proceeding, “[a]rmed with the Board’s guidance as to
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`the flaws in the [505 Petition].” Prelim. Resp. 9. On this record, we determine that
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`the instant Petition presents “the same or substantially the same prior art or
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`arguments” that were advanced in the 505 Petition. 35 U.S.C. § 325(d).
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`Unilever has not presented considerations that tip the balance in favor of
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`review. Given that we already have considered the same or substantially the same
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`prior art or arguments in connection with the challenged claims, we deny the
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`request for an inter partes review under § 325(d). We deny the motion for joinder
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`as moot.
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`It is
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`III. ORDER
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`ORDERED that the Petition is denied at to all challenged claims of
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`the ’569 patent;
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`FURTHER ORDERED that Unilever’s Motion for Joinder with IPR2013-
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`00505 is denied as moot.
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`Case IPR2014-00506
`Patent 6,974,569 B2
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`PETITIONER:
`
`Eldora Ellison
`Eellison-PTAB@skgf.com
`
`Robert Sterne
`Rsterne-PTAB@skgf.com
`
`
`PATENT OWNER:
`
`David Maiorana
`dmaiorana@jonesday.com
`
`John Biernacki
`jvbiernacki@jonesday.com
`
`Michael Weinstein
`mweinstein@jonesday.com
`
`Steven Miller
`Miller.sw@pg.com
`
`Kim Zerby
`Zerby.kw@pg.com
`
`Carl Roof
`Roof.cj@pg.com
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`Angela Haughey
`Haughey.a@pg.com
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