Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: February 12, 2014
`
`
`
`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
`_______________
`
`Case IPR2013-00510
`Patent 6,649,155 B1
`_______________
`
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: February 12, 2014
`
`
`
`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
`_______________
`
`Case IPR2013-00510
`Patent 6,649,155 B1
`_______________
`
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00510
`Patent 6,649,155 B1
`
`
`I. INTRODUCTION
`
`Conopco, Inc. dba Unilever (“Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1-23 of U.S. Patent No. 6,649,155 B1 (Ex. 1001, “the ’155
`
`patent”). Paper 2 (“Pet.”). The Procter & Gamble Company (“Patent Owner”)
`
`filed a timely preliminary response. Paper 7 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides:
`
`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.
`
`Based on the information presented, we are not persuaded that there is a
`
`reasonable likelihood that Petitioner would prevail with respect to at least one
`
`claim of the ’155 patent. On this record, we deny the Petition.
`
`
`
`A. Related Proceedings
`
`The ’155 patent is the subject of co-pending district court litigation initiated
`
`after the filing of the Petition. See Procter & Gamble Co. v. Conopco, Inc., 1:13-
`
`cv-00732-TSB (S.D. Oh.) (filed Oct. 10, 2013). Concurrently herewith, we issue
`
`Decisions on Petitions in two other inter partes review proceedings involving the
`
`same parties. See IPR 2013-00505 (relating to US Patent No. 6,974,569 B2) and
`
`IPR 2013-00509 (relating to US Patent No. 6,451,300 B1).
`
`
`
`
`
` 2
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`Case IPR2013-00510
`Patent 6,649,155 B1
`
`
`B. The ’155 Patent (Ex. 1001)
`
`The ’155 patent is directed to a shampoo composition and method for
`
`providing a combination of anti-dandruff efficacy and conditioning. Ex. 1001
`
`2:32-34. According to the ’155 patent specification, “[t]hese shampoos comprise:
`
`(A) from about 5% to about 50%, by weight, of an anionic surfactant; (B) from
`
`about 0.01% to about 10%, by weight, of a non-volatile conditioning agent; (C)
`
`from about 0.1% to about 4%, by weight, of an anti-dandruff particulate; (D) from
`
`about 0.02% to about 5%, by weight, of a cationic guar derivative; and (E) water.”
`
`Id. at 2:34-41. The specification further discloses that “[t]he cationic guar
`
`derivative has a molecular weight from about 50,000 to about 700,000, and has a
`
`charge density from about 0.05 meq/g to about 1.0 meq/g.” Id. at 2:41-44.
`
`The specification identifies polymers sold by Rhodia Company under the trade
`
`names JAGUAR™ C13S and JAGUAR™ C17 as suitable cationic guar
`
`derivatives for use in the invention. Id. at 20:9-12; 21:6-11.
`
`
`
`C. Representative Claim
`
`Petitioner seeks inter partes review of claims 1-23, all of the issued claims
`
`of the ’155 patent. Claims 1 and 19 are independent claims. Claim 1, reproduced
`
`below, is illustrative of the claimed subject matter.
`
`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 a
`cationic guar derivative;
`
` 3
`
`
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`Case IPR2013-00510
`Patent 6,649,155 B1
`
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`i) wherein said cationic guar derivative has a molecular weight from about
`50,000 to about 700,000; and
`ii) wherein said cationic guar derivative has a charge density from about
`0.05 meq/g to about 1.0 meq/g;
`e) water.
`
`Claim 19 further narrows the weight-percent, molecular weight, and charge
`
`density ranges of the cationic guar derivative. Specifically, that derivative must
`
`comprise from about 0.1% to about 5% of the composition by weight, have a
`
`molecular weight from about 100,000 to about 400,000, and have a charge density
`
`from about 0.4 meq/g to about 1.0 meq/g. The ’155 patent also specifies a method
`
`for applying the composition to wet hair to provide anti-dandruff efficacy and hair
`
`conditioning (claim 20) and to regulate hair growth (claims 22 and 23).
`
`
`
`D. The Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1-23 on the following grounds of
`
`unpatentability:
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Bowser1
`
`Bowser
`
`Bowser and Cardin2
`
`Bowser, Schwen,3 and
`Gibson4
`
`§ 102(b)
`
`1-5, 7, 9-11, 19, 20, and 22
`
`§ 103
`
`§ 103
`
`§ 103
`
`1-5, 7, 9-11, 19, 20, and 22
`
`1-11, 19, 20, and 22
`
`1-5, 7, 9-11, and 19-23
`
`
`1 Bowser US 5,723,112 (Mar. 3, 1998) (Ex. 1009).
`2 Cardin US 5,104,645 (Apr. 14, 1992) (Ex. 1014).
`3 Schwen WO 95/03319 (Feb. 2, 1995) (Ex. 1015).
`4 Gibson US 5,015,470 (May 14, 1991) (Ex. 1030).
`
` 4
`
`
`
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`Case IPR2013-00510
`Patent 6,649,155 B1
`
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Reid5
`
`Reid
`
`Reid and Bowser
`
`Reid and Cardin
`
`§ 102(b)
`
`1-5, 7, 9-13, 19, 20, and 22
`
`§ 103
`
`§ 103
`
`§ 103
`
`1-5, 7, 9-13, 19, 20, and 22
`
`1-5, 7, 9-13, 19, 20, and 22
`
`1-13, 19, 20, and 22
`
`Reid, Schwen, and Gibson
`
`§ 103
`
`1-5, 7, 9-13, and 19-23
`
`Evans6
`
`Evans and Bowser
`
`Evans and Cardin
`
`§ 103
`
`§ 103
`
`§ 103
`
`1-5, 7, 9-20, and 22
`
`1-5, 7, 9-20, and 22
`
`1-20 and 22
`
`Evans, Schwen, and Gibson
`
`§ 103
`
`1-5, 7, and 9-23
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review proceeding, we give claim terms in unexpired
`
`patents their broadest reasonable interpretation in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). Under that standard, we
`
`assign claim terms their ordinary and customary meaning, as understood by a
`
`person of ordinary skill in the art, in the context of the entire patent disclosure. In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`
`5 Reid US 5,085,857 (Feb. 4, 1992) (Ex. 1018).
`6 Evans WO 97/14405 (Apr. 24, 1997) (Ex. 1010).
`
` 5
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`Case IPR2013-00510
`Patent 6,649,155 B1
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`definition for a term must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Neither party advances a special meaning for any claim term. Claims 6
`
`and 19 require a “zinc salt of 1-hydroxy-2-pyridinethione.” Petitioner argues, and
`
`Patent Owner does not effectively contest at this stage of the proceeding, that the
`
`terms “zinc salt of 1-hydroxy-2-pyridinethione” and “zinc pyrithione”
`
`interchangeably refer to the same chemical component. Pet. 6 (citing Ex. 1001
`
`17:17-24; 28:11-13; 33:35-47). The evidence of record supports Petitioner’s
`
`position on that point. Id. On this record, we construe each claim term according
`
`to its ordinary and customary meaning, consistent with the specification, and
`
`determine that no term needs further interpretation for our purposes in deciding
`
`whether to institute trial.
`
`
`
`B. Prior Art Disclosures of Cationic Guar Derivatives
`
`
`
`Each of claims 1-23 requires a shampoo composition comprising a cationic
`
`guar derivative in a specified weight-percent range. The claims also specify
`
`molecular weight and charge density ranges for the cationic guar derivative.
`
`Claim 1 requires a cationic guar derivative in a range from about 0.02% to
`
`about 5% based on weight of the composition. That derivative further must have a
`
`molecular weight from about 50,000 to about 700,000 and a charge density from
`
`about 0.05 meq/g to about 1.0 meq/g. As explained below, Petitioner does not
`
`show sufficiently that the applied art anticipates or makes obvious the subject
`
`matter of at least one claim of the ’155 patent, and in particular, the limitations
`
`imposed on the cationic guar derivative.
`
` 6
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`Case IPR2013-00510
`Patent 6,649,155 B1
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`1. Anticipation by Bowser
`
`Petitioner argues that Bowser identifies JAGUAR™ C15 as a cationic guar
`
`derivative suitable for use in shampoo compositions. Pet. 12, 14; see Ex. 1009
`
`5:17. Petitioner directs us to no persuasive evidence, however, that Bowser
`
`expressly discloses the molecular weight of JAGUAR™ C15. Nor does Petitioner
`
`advance any persuasive objective evidence—for example, experimental data—
`
`tending to establish the molecular weight of Bowser’s JAGUAR™ C15. Instead,
`
`Petitioner argues that Bowser’s JAGUAR™ C15 inherently meets the molecular
`
`weight limitations of the independent claims because a different patent—issued to
`
`Bartolo7—discloses that JAGUAR™ C15 has a molecular weight of 200,000 ±
`
`75,000. Pet. 12, 14.
`
`“To establish inherency, the extrinsic evidence ‘must make clear that the
`
`missing descriptive matter is necessarily present in the thing described in the
`
`reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency is not
`
`proven “by probabilities or possibilities. The mere fact that a certain thing may
`
`result from a given set of circumstances is not sufficient.” Id. (quotation omitted).
`
`The information presented does not show sufficiently that Bowser’s reference to
`
`JAGUAR™ C15 inherently describes a cationic guar derivative having a molecular
`
`weight that falls within the range required by any challenged claim.
`
`Bartolo’s filing date of December 30, 1991, is more than four years earlier
`
`than Bowser’s filing date of July 9, 1996. Compare Ex. 1009 with Ex. 1012.
`
`Petitioner comes forward with no information from which we can reasonably
`
`conclude that the product sold in 1991 under the JAGUAR™ C15 trade name
`
`necessarily exhibits the same molecular weight as the product sold under that trade
`
`
`7 US 5,202,048 (Apr. 13, 1993) (Ex. 1012).
`
` 7
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`Case IPR2013-00510
`Patent 6,649,155 B1
`
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`name in 1996. For example, Petitioner identifies no regulation or industry custom,
`
`in force from 1991 to 1996, which prohibits suppliers from modifying that property
`
`of the component without also changing the trade name under which it is sold.
`
`On this record, the information presented is insufficient to establish that
`
`Bowser anticipates any claim of the ’155 patent.
`
`
`
`
`
`2. Anticipation by Reid
`
`Petitioner similarly argues that Reid identifies JAGUAR™ C15 as a cationic
`
`guar derivative suitable for use in shampoo compositions. Pet. 32, 35-36; Ex. 1018
`
`3:9-25. Petitioner contends that Reid anticipates independent claims 1 and 19,
`
`which limit the charge density of the cationic guar derivative. Petitioner, however,
`
`identifies no persuasive evidence tending to establish the charge density of Reid’s
`
`JAGUAR™ C15. Pet. 31-32.
`
`Petitioner does not address the charge density limitation in the claim charts
`
`or the substantive argument set forth in the Petition. Id. at 31-38; see especially id.
`
`at 32 (claim chart, pinpointing no disclosure in Reid that satisfies the claim 1 or 19
`
`limitation relating to charge density). Given Petitioner’s failure to address that
`
`limitation in the Petition, we deny the ground based on anticipation by Reid.
`
`Petitioner generally asserts that Reid discloses every limitation of the
`
`challenged claims, citing evidence that includes paragraph 93 of the Declaration of
`
`Arun Nandagiri. Id. at 35-37 (citing Ex. 1003 ¶¶ 90-94). That evidence includes
`
`Mr. Nandagiri’s testimony, nowhere discussed in the Petition, that Reid inherently
`
`discloses the specified charge density. Ex. 1003 ¶ 93. We decline to consider
`
`information presented in a supporting declaration, but not discussed in a petition,
`
`because, among other reasons, doing so would encourage the use of declarations to
`
`circumvent the page limits that apply to petitions. Along those lines, our rules
`
` 8
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`Case IPR2013-00510
`Patent 6,649,155 B1
`
`
`prohibit arguments made in a supporting document from being incorporated by
`
`reference into a petition. See 37 C.F.R. § 42.6(a)(3).
`
`On this record, the information presented is insufficient to establish that
`
`Reid anticipates any claim of the ’155 patent.
`
`
`
`
`
`3. Obviousness over Evans
`
`Petitioner raises several other grounds based on obviousness over Evans
`
`alone or in combination with one or more other prior art references. Each of those
`
`grounds rests on Petitioner’s view that Evans discloses a cationic guar derivative
`
`satisfying the weight-percent, molecular weight, and charge density ranges set
`
`forth in the challenged claims. We deny those grounds because Petitioner does not
`
`show sufficiently that Evans includes such a disclosure.
`
`For the weight-percent limitation, Petitioner focuses on Evan’s disclosure of
`
`a suspending agent, such as hydroxyproply guar gum, in a range from about 0.1%
`
`to about 10% by weight of the composition. Pet. 48 (claim chart, citing Ex. 1010
`
`21, 23). Petitioner directs us to no persuasive evidence that this guar gum is
`
`cationic as required by the independent claims. Id. In fact, Petitioner relies on an
`
`entirely different disclosure, relating to an entirely different chemical species, as
`
`evidence that Evans discloses a cationic guar derivative meeting the specified
`
`molecular weight and charge density ranges. Id. (claim chart, citing Ex. 1010 24).
`
`The independent claims require a cationic guar derivative that meets all three
`
`ranges (weight-percent, molecular weight, and charge density). Ex. 1001
`
`(claims 1, 19) (referring to a single “said cationic guar derivative”). Petitioner
`
`does not explain why a skilled artisan would have applied the weight-percent range
`
`that Evans discloses for the suspending agent (Ex. 1010 21) to the entirely different
`
`component that Evans—and Petitioner—identifies as the cationic guar derivative
`
` 9
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`Case IPR2013-00510
`Patent 6,649,155 B1
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`(Ex. 1010 24). Pet. 48 (claim chart, relying on Evan’s disclosure of “cationic guar
`
`gum derivatives” (emphasis omitted) for a component that meets the specified
`
`molecular weight and charge density ranges (citing Ex. 1010 24) and Evan’s
`
`disclosure of “suitable suspending agents” for a component that meets the specified
`
`weight-percent range (citing Ex. 1010 21, 23)).
`
`On this record, Petitioner fails to show that Evans would have suggested the
`
`use of a cationic guar derivative meeting the weight-percent, molecular weight, and
`
`charge density ranges specified in any challenged claim. Accordingly, we decline
`
`to institute an inter partes review of any claim on the grounds based on Evans.
`
`
`
`4. Other Obviousness Grounds
`
`Each of the other obviousness grounds raised in the Petition depends on
`
`argument that Bowser or Reid, by reference to JAGUAR™ C15, discloses a
`
`cationic guar derivative having a molecular weight and charge density that falls
`
`within the ranges specified in the challenged claims. For the reasons stated above,
`
`Petitioner does not show sufficiently that either Bowser or Reid discloses a
`
`cationic guar derivative that satisfies the molecular weight and charge density
`
`limitations of any claim. None of the additional references advanced by Petitioner
`
`cures that deficiency. On this record, we are not persuaded that there is a
`
`reasonable likelihood that Petitioner would prevail in showing that any claim of
`
`the ’155 patent is unpatentable based on any of those other obviousness grounds.
`
`
`
`III. CONCLUSION
`
`
`
`Based on the information presented, we are not persuaded that there is a
`
`reasonable likelihood that Petitioner would prevail at trial with respect to at least
`
`one claim of the ’155 patent.
`
`
`
`10
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`Case IPR2013-00510
`Patent 6,649,155 B1
`
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`IV. ORDER
`
` It is
`
`ORDERED that the Petition is denied as to all challenged claims and no trial
`
`is instituted.
`
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`11
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`12
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`Case IPR2013-00510
`Patent 6,649,155 B1
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`
`
`
`PETITIONER:
`
`Eldora Ellison
`eellison@skgf.com
`
`Robert Sterne
`rsterne-PTAB@skgf.com
`
`PATENT OWNER:
`
`David Maiorana
`dmaiorana@JonesDay.com
`
`John Biernacki
`jvbiernacki@jonesday.com
`
`Michael Weinstein
`msweinstein@jonesday.com
`
`Steven Miller
`miller.sw@pg.com
`
`Kim Zerby
`zerby.kw@pg.com
`
`Carl Roof
`roof.cj@pg.com
`
`Angela Haughey
`haughey.a@pg.com
`
`Calvin Griffith
`cpgriffith@jonesday.com
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