UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`CONOPCO, INC. d/b/a UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`_________________________
`
`
`Case IPR2014-00507
`Patent 6,451,300
`
`_________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
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`

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`TABLE OF CONTENTS
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`
`Page
`
`2.
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND OF THE ’300 PATENT .................................................... 3
`II.
`III. THE BOARD SHOULD DECLINE TO CONSIDER MOST, IF NOT
`ALL, OF THE GROUNDS AND REFERENCES IN THE INSTANT
`PETITION BECAUSE THEY ARE REDUNDANT AND
`CUMULATIVE .............................................................................................. 5
`A. Many Grounds Are Cumulative Of A Prior Office Proceeding .......... 5
`B. Unilever Presents Redundant Grounds In The Instant Petition ......... 10
`1. Many Of Unilever’s Asserted Grounds Are Horizontally
`Redundant ................................................................................ 12
`Grounds 2 And 4 Proposed For Claim 6 Suffer From
`Vertical Redundancy ................................................................ 15
`IV. THE BOARD SHOULD REJECT THE INSTANT PETITION
`BECAUSE UNILEVER FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT THE CLAIMS CHALLENGED ARE
`UNPATENTABLE ....................................................................................... 21
`A.
`Claim Construction............................................................................. 22
`B.
`The Board Should Deny Each Ground Because A POSA Would
`Have No Motivation To Modify Kanebo Or Evans ........................... 24
`1.
`Kanebo And Evans Focus On Solving Different
`Problems ................................................................................... 24
`Unilever Does Not Identify Any Flaws In Kanebo And
`Evans ........................................................................................ 26
`The Board Should Deny Grounds 1, 4, And 7 Because
`Unilever’s References Teach Away From Making The Claimed
`Compositions ...................................................................................... 27
`1.
`The Board Should Deny Ground 4 Because Sime
`Teaches Away From The Claimed Invention .......................... 28
`The Board Should Deny Grounds 1 And 7 Because
`Cothran Conflicts With Kanebo And Evans ............................ 29
`
`C.
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`2.
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`2.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
`
`D.
`
`E.
`
`F.
`
`2.
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`2.
`
`3.
`
`4.
`
`The Board Should Deny Grounds 2, 4, 5, And 8 Because
`Unilever Has Failed To Present Sufficient Evidence Of A
`Motivation To Combine The Asserted References ............................ 32
`1.
`The Board Should Deny Ground 2, 4, And 8 Because
`Cseh Is Not Directed To An Anti-Dandruff Shampoo ............ 32
`The Board Should Deny Ground 5 Because Kalla Is Not
`Directed To Conditioning ........................................................ 34
`The Board Should Deny Grounds 2, 3, 4, And 8 Because
`Unilever’s Asserted References Are Insufficient To Prove The
`Molecular Weight Ranges Of The Challenged Claims ...................... 36
`1.
`Unilever Provides No Evidence Of The Authenticity Of
`C261SPEC ............................................................................... 37
`Unilever Fails To Prove That The Molecular Weights Of
`The Cited Products Have Not Changed ................................... 39
`Cosmedia® Guar C261 And Jaguar® C15 Do Not Meet
`The Claimed Guar Derivative Molecular Weight
`Limitation ................................................................................. 40
`The Board Should Reject Ground 8 As To Claims 8 And
`9 Because Cseh And C261SPEC Do Not Relate To The
`Molecular Weight Of A Cationic Cellulose Derivative .......... 43
`The Board Should Deny Grounds 1, 4, 7, And 8 Because The
`Ranges Recited In The Challenged Claims Would Not Have
`Been Obvious To A POSA In Light Of The Broadly Disclosed
`Ranges Of The Asserted References .................................................. 44
`1.
`Cothran’s Broadly Disclosed Ranges Do Not Render
`Obvious The Ranges In Claims 6-10 ....................................... 44
`The Ranges Disclosed In Evans Are Also Too Broad To
`Invalidate Claims 6-10 ............................................................. 47
`The Board Should Deny Ground 4 Because The Claimed
`Range Would Not Have Been Obvious To A POSA In
`Light Of The Broadly Disclosed Ranges In Sime ................... 47
`
`2.
`
`3.
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`-ii-
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`4.
`
`G.
`
`
`
`The Nandagiri Declaration Is Conclusory And Does Not
`Support Unilever’s Obviousness Assertions............................ 49
`The Board Should Deny Ground 6 Because A POSA Would
`Have No Motivation To Combine Kanebo And Bar-Shalom
`With A Reasonable Expectation Of Success ..................................... 50
`V. OBJECTIVE INDICIA OF NON-OBVIOUSNESS .................................... 52
`VI. CONCLUSION ............................................................................................. 52
`
`
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`-iii-
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`

`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Amgen Inc. v. F. Hoffmann-La Roche Ltd.,
`580 F.3d 1340 (Fed. Cir. 2009) .......................................................................... 22
`
`Page
`
`Amkor Tech., Inc. v. Tessera, Inc.,
`No. IPR2013-00242, Paper No. 37, Decision Institution of Inter Partes
`Review (P.T.A.B. Oct. 11, 2013) ....................................................................... 11
`
`Berk-Tek LLC v. Belden Techs. Inc.,
`No. IPR2013-00057, Paper No. 21, Decision on Request for Rehearing
`(P.T.A.B. May 14, 2013) .................................................................................... 11
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 26
`
`Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) .............................................................. 46, 47, 48
`
`Hewlett-Packard Co. v. MCM Portfolio, LLC,
`No. IPR2013-00217, Paper No. 10, Decision Institution of Inter Partes
`Review (P.T.A.B. Sept. 10, 2013) ....................................................................... 49
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 23
`
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ............................................................................ 21
`
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) .......................................................................... 27
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 21
`
`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .......................................................................... 26
`
`
`
`
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`-iv-
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`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`No. CBM2012-00003, Paper No. 7, Order (Redundant Grounds)
`(P.T.A.B. Oct. 25, 2012) ..............................................................................passim
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`No. CBM2012-00003, Paper No. 9, Response to Order (Redundant
`Grounds) (P.T.A.B. Nov. 1, 2012) ..................................................................... 15
`
`Oracle Corp. v. Clouding IP, LLC,
`No. IPR2013-00075, Paper No. 8, Decision Institution of Inter Partes
`Review (P.T.A.B. May 3, 2013) ......................................................................... 11
`
`Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .......................................................................... 27
`
`STATUTES
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.20(c) ................................................................................................. 21
`
`37 C.F.R. § 42.23(a) .................................................................................................. vi
`
`37 C.F.R. § 42.100(b) .............................................................................................. 22
`
`37 C.F.R. § 42.101(b) ................................................................................................ 9
`
`37 C.F.R. § 42.104(b) .............................................................................................. 21
`
`37 C.F.R. § 42.108(c) ........................................................................................... 2, 21
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl) .................. 6
`
`
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`-v-
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`

`Statement of Material Facts in Dispute
`
`Case IPR2014-00507
`Patent 6,451,300
`
`
`
`
`Petitioner, Conopco, Inc. d/b/a Unilever (hereinafter, “Unilever”), did not
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`submit a statement of material facts in its Petition. Accordingly, no response is
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`due pursuant to 37 C.F.R. § 42.23(a), and no facts are admitted.
`
`
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`-vi-
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`

`

`INTRODUCTION
`The Board already denied inter partes review of the claims of U.S. Patent
`
`Case IPR2014-00507
`Patent 6,451,300
`
`
`I.
`
`No. 6,451,300 (“the ’300 patent”) that are the subject of this petition. Unsatisfied
`
`with the Board’s decision, Unilever filed this second petition, essentially
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`presenting the same arguments to the Board but hoping for a different result. The
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`issues presented in this petition are similar to those the Board already rejected,
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`with Unilever simply replacing some references with different ones (all of which
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`were available to Unilever at the time of the filing of the original petition).
`
`Unilever now relies on art and arguments that did not pass muster when it
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`presented its “best case” in the first petition.
`
`The Board should deny the Instant Petition in its entirety because of
`
`procedural and substantive defects. First, Unilever presents the Board with many
`
`of the same arguments that the Board considered and rejected in Unilever’s earlier
`
`petition on the ’300 patent (Exh. 2003, Petition in IPR2013-00509, hereinafter “the
`
`First Petition”). These arguments are cumulative under 35 U.S.C. § 325(d).
`
`Having failed once, and having filed a motion for reconsideration on certain of
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`these arguments, Unilever should not be allowed to burden the Board and P&G
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`with grounds repetitive of those in the First Petition. In addition, Unilever argues
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`multiple alternate grounds for many of the challenged claims, and provides no
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`meaningful distinction between them. This runs counter to a petitioner’s
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`Patent 6,451,300
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`obligation to present only its best case in a petition for inter partes review. The
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`Board should decline to consider these redundant and cumulative grounds and
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`arguments.
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`Second, in order for the Board to grant the Instant Petition, Unilever must
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`prove that there is a reasonable likelihood that at least one of the claims challenged
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`in the petition is unpatentable. See 37 C.F.R. § 42.108(c). For several different
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`reasons, the Instant Petition fails to meet this standard for any of the challenged
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`claims. For example, Unilever: (1) relies on art that teaches away from the
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`claimed invention; (2) relies on expert testimony that is conclusory; and (3) fails to
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`provide sufficient reasons for combining references. If the Board identifies any
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`grounds of the Instant Petition that are not redundant or cumulative, it should be
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`denied because Unilever has failed to meet its threshold burden to prove that there
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`is a reasonable likelihood that at least one of the claims challenged in the petition is
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`unpatentable.
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`Finally, the Board should weigh the implications of granting the Instant
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`Petition. Granting Unilever’s petition will encourage petitioners to continue to file
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`petitions to delay any final decision on the challenged patents. If the Board
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`permits the filing of serial petitions on the same patent, petitioners will be
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`motivated to file in a piecemeal manner. Such a practice is an inefficient use of
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`resources and will substantially prejudice patent owners, who will have no way to
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`Patent 6,451,300
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`stop the flow of repetitive petitions short of filing litigation, assuming sufficient
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`grounds even exist to do so. Further, petitioners will have no incentive to present
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`their “best case” in the first petition. Congress enacted Section 325(d) to prevent
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`this type of gamesmanship.
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`For the foregoing reasons, the Board should reject the Instant Petition in its
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`entirety.1
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`II. BACKGROUND OF THE ’300 PATENT
`The ’300 patent relates to shampoo compositions that provide a superior
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`combination of anti-dandruff and conditioning efficacy. At the time of the
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`invention of the ’300 patent, there was a consumer need for a shampoo with a
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`superior combination of anti-dandruff efficacy and conditioning performance as
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`compared to available products. Exh. 1001, ’300 patent at 1:47-50. This
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`combination was difficult to achieve. Id. at 1:50-51. The patent teaches that to
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`obtain such a shampoo, the composition should comprise certain anionic
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`surfactants, conditioning agents, anti-dandruff particulates, cationic polymers,
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`1 Should the Board institute proceedings in this matter, Patent Owner does
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`not concede the legitimacy of any arguments in the Instant Petition that are not
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`specifically addressed herein. Patent Owner expressly reserves the right to rebut
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`any such arguments in its Patent Owner Response.
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`polyalkylene glycol and water. Id. at 2:51-53. A central concept of the patent is
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`that the type and level of polyalkylene glycol used in the composition influences
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`anti-dandruff efficacy and conditioning. See id. at 2:53-58 (“the anionic surfactant
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`and cationic polymers form a coacervate, and the type and level of polyalkylene
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`glycol employed will influence the amount of anti-dandruff particulates that are
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`bioavailable. This is important for anti-dandruff efficacy and conditioning.”).
`
`The ’300 patent has two independent claims, 1 and 19, which recite
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`shampoo compositions comprising certain components:
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`1. A shampoo composition comprising:
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`a) from about 5% to about 50%, by weight of the
`composition, of an anionic surfactant;
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`b) from about 0.01% to about 10%, by weight of the
`composition, of a non-volatile conditioning agent;
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`c) from about 0.1% to about 4%, by weight of the
`composition, of an anti-dandruff particulate;
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`d) from about 0.02% to about 5%, by weight of the
`composition, of at least one cationic polymer;
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`e) from 0.005% to about 1.5%, by weight of the
`composition, of a polyalkylene glycol corresponding to
`the formula:
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`i) wherein R is selected from the group consisting of
`hydrogen, methyl and mixtures thereof,
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`ii) wherein n is an integer having an average value
`from about 1,500 to about 120,000;
`
`f) water.
`
`Each of the challenged claims ultimately depends from claim 1.
`
`III. THE BOARD SHOULD DECLINE TO CONSIDER MOST, IF NOT
`ALL, OF THE GROUNDS AND REFERENCES IN THE INSTANT
`PETITION BECAUSE THEY ARE REDUNDANT AND
`CUMULATIVE
`
`In its two petitions challenging the ’300 patent, Unilever has asserted
`
`multiple alternative grounds for all claims, and it has provided no meaningful
`
`distinction between them. Additionally, Unilever relies heavily on the same art
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`and arguments that the Board considered and rejected in the First Petition.
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`Accordingly, the Board should decline to consider these redundant and cumulative
`
`grounds.
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`A. Many Grounds Are Cumulative Of A Prior Office Proceeding
`The Instant Petition relies on substantially the same arguments that the
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`Board considered and rejected in the First Petition. Under Section 325(d), the
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`Board should deny petitions that challenge a patent based on previously-rejected
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`grounds and cumulative and duplicative art, otherwise petitioners will be given an
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`unwarranted and unfair procedural advantage in pending infringement litigation.
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`See 35 U.S.C. § 325(d).
`
`Section 325(d) authorizes the Office to reject petitions or grounds for inter
`
`partes review that seek to reargue positions previously lost:
`
`In determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, the
`Director may take into account whether, and reject the
`petition or request because, the same or substantially the
`same prior art or arguments previously were presented to
`the Office.
`
`35 U.S.C. § 325(d) (emphasis added). The legislative history of Section 325(d)
`
`confirms that this is exactly what Congress intended. For instance, Senator Jon
`
`Kyl stated that Section 325(d) “allows the Patent Office to reject any request for a
`
`proceeding, including a request for ex parte reexamination, if the same or
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`substantially the same prior art or arguments previously were presented to the
`
`Office with respect to that patent.” 157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011)
`
`(Statement of Sen. Kyl). The Board should reject the Instant Petition because the
`
`Office already considered many of the asserted arguments.
`
`In the Instant Petition, Unilever makes essentially the same arguments that
`
`the Board rejected in its institution decision regarding the First Petition. The
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`Board fully considered these arguments, and it should not allow Unilever to
`
`reargue them in this petition. As an example, in Ground 3 of the First Petition,
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`Unilever contended that claim 15 was obvious over Kanebo in view of Cardin. See
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`Exh. 2003 at 50-52. Claim 15 depends from claim 1 and adds a limitation that
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`“said anti-dandruff particulate has a [sic] average particulate size of about 2.5 µm.”
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`Unilever argued that Kanebo teaches each element of claim 15 with the exception
`
`of the average particulate size of the anti-dandruff particulate, which Unilever
`
`contended Cardin allegedly discloses. Id. The Board rejected this ground because,
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`among other reasons, Unilever provided “conclusory argument” in support of the
`
`combination. Exh. 2004, IPR2013-00509, Paper No. 10, Decision, Institution of
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`Inter Partes Review at 15-16.
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`Armed with the Board’s guidance as to the flaws in the First Petition,
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`Unilever once again attempts to invalidate claim 15 with a combination of
`
`references involving Kanebo. See Instant Petition at 43-45. Ground 5 of the
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`Instant Petition presents essentially the same combination of references as Ground
`
`3 of the First Petition. Specifically, Unilever asserts that claim 15 would have
`
`been obvious over Kanebo in view of Cardin and Kalla. Instant Petition at 34-37.
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`While Unilever has now added Kalla to the combination of Ground 3 in the First
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`Petition, Unilever’s argument remains the same: Kanebo allegedly teaches each
`
`element of claim 15 except the average particulate size of the anti-dandruff
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`Case IPR2014-00507
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`particulate, which Cardin allegedly discloses. Unilever’s claim chart for Ground 5
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`in the Instant Petition reveals that it does not rely on Kalla for any disclosure
`
`related to claim 15. See Instant Petition at 35-36.2
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`In a similar fashion, apparently unsatisfied with the Board’s rejection of its
`
`proposed grounds to invalidate claim 10 in the First Petition, Unilever chose to
`
`present the Board with essentially the same combination of references in the
`
`Instant Petition. Claim 10 recites that the shampoo composition includes cellulose
`
`derivatives having “a charge density from about 0.2 meq/g to about 0.6 meq/g.” In
`
`Ground 7 of the First Petition, Unilever contended that Evans teaches each element
`
`of claim 10 except cellulose derivatives within the claimed range, which it
`
`contended Coffindaffer allegedly discloses. Exh. 2003 at 48-49. The Board
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`rejected this proposed combination. See Exh. 2004 at 15-16.
`
`Ground 7 of the Instant Petition presents essentially the same combination of
`
`references as Ground 7 of the First Petition. Specifically, Unilever asserts that
`
`claim 10 would have been obvious over Evans in view of Cothran. Instant Petition
`
`at 53-54. While Unilever has substituted Cothran for Coffindaffer as a secondary
`
`
`2 For the same reasons, Unilever’s arguments for the alleged invalidity of
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`claims 14 and 22 in Ground 5 in the Instant Petition are also cumulative of Ground
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`3 in the First Petition.
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`reference, its argument remains the same: Evans allegedly teaches each element of
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`claim 10 except cellulose derivatives within claimed charge density range, which
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`the secondary reference allegedly discloses.
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`The Board should decline Unilever’s attempts to reargue the same grounds
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`that the Board rejected in the First Petition. While Unilever now presents
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`combinations of references slightly different from those in the First Petition, its
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`grounds are based on the same reasoning and the same alleged teachings for the
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`alleged invalidation of the challenged claims. In addition, the secondary references
`
`Unilever introduces in the Instant Petition were available to Unilever at the time it
`
`filed the First Petition. Indeed, Sime and Kalla, on which Unilever relies in
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`Grounds 4 and 5 respectively, are listed on the face of the ’300 patent. If the Board
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`accepts these types of redundant, repetitive grounds, it will encourage parties to
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`engage in a pattern of serial IPR filing. Parties will file petition after petition,
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`making the same arguments as to the same claims, in continued attempts to get
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`claims into IPR. Such a practice will overburden the Board with cumulative and
`
`redundant petitions. It is also prejudicial to patent owners who would have to
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`continually defend against repetitive IPR challenges. The only way for patent
`
`owners to stop the flow of these IPR challenges would be to file litigation, to the
`
`extent that such an option was warranted. See 37 C.F.R. § 42.101(b). The Board
`
`should stop petitioners from filing cumulative petitions such as the Instant Petition.
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`Case IPR2014-00507
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`Unilever’s attempts to present the same arguments in a second petition that
`
`the Board previously rejected in the first petition do not comport with the
`
`legislative intent of Section 325(d), and the Board should deny the Instant Petition
`
`as to these cumulative grounds.
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`B. Unilever Presents Redundant Grounds In The Instant Petition
`Not only does Unilever rely on grounds cumulative of the First Petition, it
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`also argues in the Instant Petition multiple alternative grounds of invalidity for
`
`many of the challenged claims. For example, for claim 6, Unilever argues six
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`alternate grounds. The use of redundant art in an IPR petition contradicts
`
`regulatory and statutory mandates, and the Board should not consider redundant
`
`grounds. The Board made such a ruling in its Order (Redundant Grounds) in
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`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., No. CBM2012-00003,
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`Paper No. 7, Order (Redundant Grounds) at 1-2 (P.T.A.B. Oct. 25, 2012). In that
`
`Order, the Board identified numerous references that the petitioner applied in a
`
`redundant manner. The Board noted that the petitioner applied the redundant
`
`references “without relative distinction,” such that the petitioner did not indicate
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`whether any of the redundant references were any better or worse than the others.
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`Id. at 8 (emphasis added). For example, regarding the petitioner’s application of
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`multiple references to various claims of the patent at issue, the Board explained
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`that “none of Kosaka, Black Magic, and Pettersen is stated by Petitioner to be a
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`10
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`Case IPR2014-00507
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`better reference than the other two references.” Id. at 9. The Board thus
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`recognized
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`that
`
`the alleged
`
`teachings were cumulative and essentially
`
`interchangeable because the petitioner did not “articulate any relative strength [or
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`weakness] for any one of the three references.” Id. Consequently, the Board
`
`required the petitioner to choose only one of the three references. Id. at 9-10.
`
`The Board has ruled in a similar manner in other decisions. See Berk-Tek
`
`LLC v. Belden Techs. Inc., No. IPR2013-00057, Paper No. 21, Decision on
`
`Request for Rehearing at 4-5 (P.T.A.B. May 14, 2013) (“If the petitioner makes no
`
`meaningful distinction between certain grounds, the Board may exercise discretion
`
`by acting on one or more grounds and regard the others as redundant”… “allowing
`
`multiple grounds without meaningful distinction by the petitioner is contrary to the
`
`legislative intent”); Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00075, Paper
`
`No. 8, Decision Institution of Inter Partes Review at 13-14 (P.T.A.B. May 3, 2013)
`
`(denying various grounds of unpatentability because they were redundant); Amkor
`
`Tech., Inc. v. Tessera, Inc., No. IPR2013-00242, Paper No. 37, Decision Institution
`
`of Inter Partes Review at 32-33 (P.T.A.B. Oct. 11, 2013) (same).
`
`In the Instant Petition, Unilever applies references in a cumulative and
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`redundant manner, without providing any meaningful distinction between them.
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`The Board should decline to consider Unilever’s redundant grounds and references.
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`1. Many Of Unilever’s Asserted Grounds Are Horizontally
`Redundant
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`Horizontal redundancy exists when multiple similar references are applied,
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`not in combination to complement each other, but rather as distinct and separate
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`alternatives. Liberty Mutual, CBM2012-00003, Paper No. 7, Order at 3. When a
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`petitioner uses such distinct and separate alternatives to allegedly address the same
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`claim limitations, and does not explain why one reference more closely satisfies
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`the claim limitation at issue in some respects than another reference, the petitioner
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`has applied the references in a redundant manner. Id. The Board defined
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`horizontal redundancy as follows:
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`[Horizontal redundancy] involves a plurality of prior art
`references applied not in combination to complement
`each other but as distinct and separate alternatives. All of
`the myriad references relied on provide essentially the
`same teaching to meet the same claim limitation, and the
`associated arguments do not explain why one reference
`more closely satisfies the claim limitation at issue in
`some respects than another reference, and vice versa.
`Because the references are not identical, each reference
`has to be better in some respect or else the references are
`collectively horizontally redundant.
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`Id. at 3.
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`The Board’s unwillingness to consider references presented in a horizontally
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`redundant manner demonstrates its aversion to art that is cumulative of other art
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`presented to it, where the multiple references are essentially interchangeable and
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`used to allegedly disclose the same claim features. In Liberty Mutual, the Board
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`declined to consider numerous proposed grounds, finding them to include art that
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`was horizontally redundant. See generally id. at 4-12.
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`Unilever’s proposed grounds of invalidity for claim 6 are an example of this
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`redundancy. Unilever relies on six combinations of references as allegedly
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`rendering this claim obvious: (1) Kanebo and Cothran; (2) Kanebo, Cseh, and
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`c261SPEC; (3) Kanebo, Reid, and Bartolo; (4) Kanebo, Cseh, Sime, and
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`c261SPEC; (5) Evans and Cothran; and (6) Evans, Cseh, and c261SPEC. See
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`Instant Petition at 13-15, 22-24, 27-29, 32-34, 47-49, and 57-58.
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`Unilever’s explanations of the alleged disclosures of these references as
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`applied to claim 6 are substantively the same, confirming the redundant nature of
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`the combinations. In each of these combinations, Unilever contends that the
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`primary reference (i.e. Kanebo or Evans) purportedly meets all of the limitations of
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`claim 6, except for disclosure of the claimed molecular weight range of the guar
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`derivatives. And in each of these combinations, Unilever relies on one or more
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`secondary references (i.e. Cothran, Cseh, Reid, and Sime) to allegedly provide this
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`missing disclosure. Even where not identical, as applied to claim 6, Unilever cites
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`the references as allegedly disclosing similar aspects used to accomplish similar
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`objectives.
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`Unilever’s attempts to explain why these grounds are not redundant fail.
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`Unilever does not articulate any relative strengths or weaknesses for these
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`combinations, but merely attempts to show that the combinations are not identical.
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`For example, Unilever argues that Ground 2 is not redundant over Ground 1
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`“because Cseh provides a teaching of a specific cationic guar gum, Cosmedia®
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`Guar C261, which was known to have a MW of approximately 222,000 g/mol.”
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`Instant Petition at 21. Unilever does not explain, however, why Cseh’s disclosure
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`makes the combination of Ground 2 better or worse than those of Grounds 1, 3, 4,
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`7, or 8. As for Ground 3, Unilever contends that it is “not redundant over Ground
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`1 or 2 because Reid provides a teaching of the MWs of specific cationic cellulose
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`derivative and guar gum derivative.” Instant Petition at 24. Unilever fails to
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`describe how or why Reid’s disclosure of cationic guar derivatives is stronger or
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`weaker than that of Cothran, Cseh, or Sime. Unilever explains that Ground 7 “is
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`not redundant over Ground 1, as Evans provides a different disclosure of cationic
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`polymers, including a preferred MW range and a preferred charge density range.”
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`Instant Petition at 42. Unilever fails to describe how or why Evans’ disclosure of
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`cationic polymer is stronger or weaker than that of Cothran in Ground 1, which
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`also provides a range of molecular weight and charge density of the cationic
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`polymer. Additionally, Unilever fails to address Ground 7’s redundancy with
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`Grounds 2-4, and 8. Unilever’s explanation of redundancy with respect to Ground
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`8 is deficient for the same reason as Ground 7. Finally, Unilever does not even
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`attempt to explain away the redundancy of Ground 4, nor could it, given that the
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`only difference between it and Ground 2 is the unnecessary addition of Sime.
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`References may still be applied in a redundant manner even if their
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`teachings are not identical. See, e.g., Liberty Mutual Ins. Co. v. Progressive
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`Casualty Ins. Co., No. CBM2012-00003, Paper No. 9, Response to Order
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`(Redundant Grounds) at 5 (P.T.A.B. Nov. 1, 2012). Even assuming for the sake of
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`argument that Unilever’s asserted combinations may not be identical, Unilever has
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`nevertheless applied them in a redundant manner: Unilever uses the references to
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`allegedly account for the same features of the ’300 patent and does not explain
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`why each combination is better or worse than the others. Unilever applies its
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`asserted combinations in a horizontally redundant manner. The Board should
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`decline to consider the redundant grounds.
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`2. Grounds 2 And 4 Proposed For Claim 6 Suffer From
`Vertical Redundancy
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`The Board has identified a second type of redundancy called vertical
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`redundancy. Vertical redundancy exists when additional references are added to a
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`base reference or combination of references without any apparent or explained
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`need for the addition (i.e., the base reference or combination of references is
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`already alleged to disclose all elements of the claim, and no weaknesses are
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`identified for the base reference or combination of references). See, e.g., Liberty
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`Mutua