IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`CONOPCO INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
`U.S. Patent No. 6,649,155 to Dunlop et al.
`Issue Date: November 18, 2003
`Title: Anti-Dandruff and Conditioning Shampoos Containing
`Certain Cationic Polymers
`
`_____________________
`
`Inter Partes Review No. Unassigned
`_____________________
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,649,155 Under 35 U.S.C.
`§§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`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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`Petition for Inter Partes Review of USPN 6,649,155
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`C.
`
`E.
`
`TABLE OF CONTENTS
`I.
`INTRODUCTION .......................................................................................... 1
`
`II.
`OVERVIEW ................................................................................................... 1
`
` GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL III.
`
`STATEMENTS ......................................................................................................... 1
`
` MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ..................................... 2 IV.
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`V.
`
`REASONS THEREFOR (37 C.F.R. § 42.22(a)) ...................................................... 3
`
` CLAIM CONSTRUCTION ........................................................................... 3 VI.
`
` PERSON OF SKILL IN THE ART & STATE OF THE ART ...................... 5 VII.
`
` Identification of Challenge (37 C.F.R. § 42.104(b)) .................................... 13 VIII.
`A. Ground 1: Cothran anticipates claims 1-11, 19, and 20. .....................13
`B.
`Ground 2: Claims 1, 4-11, 19, and 20 would have been
`obvious to a POSA over Cothran and Sime. .......................................26
`Ground 3: Claims 2-3 and 12-18 would have been obvious
`over Cothran in view of Evans. ...........................................................32
`D. Ground 4: Claims 21-23 would have been obvious over
`Cothran in view of Bar-Shalom. .........................................................40
`Grounds 5-7: Claims 1-23 would have been obvious over the
`combinations of Cothran and Sime, Evans, or Bar-Shalom,
`in further view of Cosmedia. ...............................................................43
`Ground 8: Uchiyama anticipates claims 2-3 and 12-18. .....................45
`F.
`G. Ground 9: Claims 2-3 and 12-18 would have been obvious
`over Uchiyama. ...................................................................................54
`
` Objective Indicia of Nonobviousness ........................................................... 57 IX.
`Conclusion .................................................................................................... 60
`X.
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a)) ...................... 1
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`Petition for Inter Partes Review of USPN 6,649,155
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`I.
`
`
`INTRODUCTION
`
`Conopco, Inc. seeks cancellation of claims 1-23 of U.S. Pat. No. 6,649,155
`
`(EX 1001), which is owned by the Proctor & Gamble Company ("P&G").
`
` OVERVIEW II.
`
`
`The challenged claims of the '155 patent are unpatentable over the prior art.
`
`Because Conopco is, at a minimum, reasonably likely to prevail in showing
`
`unpatentability, trial should be instituted on all of the challenged claims.
`
`The shampoo compositions recited in the '155 patent claims (comprising an
`
`anionic surfactant, non-volatile conditioning agent, anti-dandruff particulate, and
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`cationic guar derivative with a molecular weight 50,000 to 700,000 and charge
`
`density 0.05 to 1.0 meq/g, each in a specified percent amount) are simply an
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`obvious reformulation of known shampoo compositions containing known
`
`components in known amounts. And the ‘155 patent’s claimed methods also would
`
`have been obvious prior to the patent's earliest possible priority date ("EPD").
`
` GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL III.
`
`
`STATEMENTS
`Conopco certifies that (1) the '155 patent is available for IPR and (2)
`
`Conopco is not barred or estopped from requesting IPR of any claim of the '155
`
`patent. This Petition is filed in accordance with 37 CFR § 42.106(a). Concurrently
`
`filed herewith is a Power of Attorney and an Exhibit List per § 42.10(b) and
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`Petition for Inter Partes Review of USPN 6,649,155
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`§ 42.63(e), respectively. The required fee is paid via online credit card payment.
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`The Office is authorized to charge fee deficiencies and credit overpayments to
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`Deposit Acct. No. 19-0036 (Customer ID No. 45324).
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` MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) IV.
`
`
`Each Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)): CONOPCO, INC. DBA
`
`UNILEVER; UNILEVER, PLC; UNILEVER NV.
`
`Notice of Related Matters (37 C.F.R. § 42.8(b)(2)): Judicial matters:
`
`Procter & Gamble Co. v. Conopco Inc., 13-cv-00732, U.S. District Court,
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`Southern District of Ohio. Administrative matters: Cases IPR2013-00505 and
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`IPR2014-00506 for U.S. Pat. No. 6,974,569; Cases IPR2013-00509 and2014-
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`00507 for U.S. Pat. No. 6,451,300. The '569 patent and '300 patent each issued
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`from a distinct application having overlapping inventors and claiming priority to
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`distinct applications filed on the same day as the provisional application to which
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`the '155 patent claims priority. Trial was previously denied in case IPR2013-00510
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`for the '155 patent based on grounds other than those presented below.
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`Designation of Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)):
`
`Lead Counsel
`Eldora L. Ellison (Reg. No. 39,967)
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.772.8508 (telephone)
`
`Back-Up Counsel
`Robert Greene Sterne (Reg. No. 28,912)
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.772.8555 (telephone)
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`Petition for Inter Partes Review of USPN 6,649,155
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`Back-Up Counsel
`Lead Counsel
`202.371.2540 (facsimile)
`202.371.2540 (facsimile)
`rsterne-PTAB@skgf.com
`eellison-PTAB@skgf.com
`Notice of Service Information (37 C.F.R. § 42.8(b)(4)): Please direct all
`
`correspondence to lead counsel at the above address. Petitioner consents to email
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`service at: eellison-PTAB@skgf.com and rsterne-PTAB@skgf.com.
`
`V.
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a))
`
`Conopco requests IPR and cancellation of claims 1-23. Conopco's full
`
`statement of the reasons for the relief requested is set forth in § VIII below. In
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`support of the proposed grounds for unpatentability, this Petition is accompanied
`
`by a declaration of technical expert Mr. Arun Nandagiri, which explains the
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`meaning of claim terms, the state of the art and what the art would have conveyed
`
`to a POSA. EX 1043, e.g., ¶¶17-30. Mr. Nandagiri is qualified as an expert based
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`on more than 30 years' experience in the shampoo industry supervising the
`
`formulation of shampoos and conditioners. EX 1043 ¶5-11.
`
` CLAIM CONSTRUCTION VI.
`
`
`The broadest reasonable interpretation ("BRI") for the claim term "cationic
`
`guar derivative" encompasses a cationic derivative of a guar gum and a cationic
`
`derivative of a polygalactomannan guar gum. A POSA understood that the terms
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`guar gum and polygalctomannan guar gum were interchangeable. EX 1044, 22:27-
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`29; EX 1028, 2:53-57; EX 1043, ¶18.1
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`The BRI for the claim term "anti-dandruff particulate is a zinc salt of 1-
`
`hydroxy-2-pyridinethione" encompasses "zinc pyrithione." The '155 patent states
`
`that the preferred anti-dandruff agent is the zinc salt of 1-hydroxy-2-
`
`pyridinethione, which is "known as 'zinc pyridinethione' or 'ZPT'." EX 1001,
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`17:17-24. The Example formulations use the term "zinc pyrithione" and state in a
`
`footnote "ZPT having an average particle size of 2.5 μm." EX 1001, 33:35-47, fn.
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`3. When referring to the anti-dandruff agent later in the '155 patent, the term "zinc
`
`pyrithione" is used. EX 1001, 28:11-13. Thus, as confirmed by Mr. Nandagiri, the
`
`'155 patent uses the terms "zinc salt of 1-hydroxy-2-pyridinethione," "ZPT," and
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`"zinc pyrithione" as all referring to the same chemical compound. EX 1043, ¶19.
`
`A POSA would have understood that: (i) the claimed shampoo compositions
`
`may include components in addition to those explicitly required and (ii) the claims
`
`do not require any particular level of effectiveness of the claimed shampoo
`
`
`1 For exhibits that are PCT publications, citations are to page numbers that
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`Conopco added to the bottom of each page, starting with the face page. For all
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`exhibits except the expert declaration, citations to paragraph numbers are for all
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`paragraphs on a page, including both full and partial paragraphs.
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`Petition for Inter Partes Review of USPN 6,649,155
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`compositions (e.g., surfactant, antidandruff, or conditioning effectiveness). EX
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`1043, ¶17-20.
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`All other terms of all challenged claims are presumed to take on their
`
`ordinary and customary meanings. Conopco reserves its right to propose a different
`
`claim construction in a different forum, such as in district court where a different
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`claim construction standard is used. Additionally, Conopco reserves its right to
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`raise any and all invalidity defenses in district court, including indefiniteness under
`
`Section 112.
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` PERSON OF SKILL IN THE ART & STATE OF THE ART VII.
`
`
`POSA: A person of ordinary skill in the art ("POSA") is a hypothetical
`
`person who is presumed to be aware of all pertinent art, thinks along conventional
`
`wisdom in the art, and is a person of ordinary creativity. A person of ordinary skill
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`in the art of antidandruff and conditioning shampoos would have had knowledge of
`
`the scientific literature concerning use of surfactants and conditioners as of May 3,
`
`1999. A POSA as of May 3, 1999, would typically have (i) a Ph.D. or M.S. degree
`
`in pharmacy, physical chemistry (or a related field) with at least 2 years of
`
`experience in the development of shampoo formulations or (ii) a B.S. in pharmacy,
`
`physical chemistry (or a related field) with significant practical experience (4 or
`
`more years) in the development of shampoo formulations. A POSA may work as
`
`part of a multi-disciplinary team and draw upon not only his or her own skills, but
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`Petition for Inter Partes Review of USPN 6,649,155
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`also take advantage of certain specialized skills of others in the team, to solve a
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`given problem. For example, a formulator having significant practical experience
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`in the development of antidandruff and conditioning shampoos, a colloidal chemist
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`and a surfactant specialist can be part of the team. EX 1043, ¶13.
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`State of the Art: As is discussed below, the state of the art in formulating
`
`shampoos and conditioners was advanced before the EPD of May 3, 1999. The
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`ingredients and their functions in these formulations were well known. Likewise,
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`the amounts needed to obtain these functions were well known. EX 1043, ¶22-48.
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`Consumer demand influenced shampoo and conditioner formulation.
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`Consumers, before May 3, 1999, desired clean hair that was shiny, easily
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`combable, and that lacked “fly away” (static). Shampoos and conditioning agents
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`imparted these attributes to hair. Shampoos removed sebaceous oil (produced by
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`the scalp) and other soils, such as the cationic polymers contained in hair products,
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`from hair and scalp. EX 1045, 3:¶2; EX 1047, 33:¶1, 40:¶6 to 41:¶1; 45:¶1; EX
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`1054, 123:¶3 “Soils From Hair Preparations”, 124:¶2; EX 1054, 123. But
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`shampoos often left hair dry, dull, hard to comb, and full of static. EX 1042, 1:8-
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`15. Conditioners added moisture, improved shine and combability, and reduced
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`static. EX 1042, 1:15-31; EX 1047, 45:¶1. EX 1042, 1:8-46; EX 1049, 2-4; EX
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`1040, item 5; EX 1045, 3:31 to 4:2.
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`Because consumers preferred different levels of cleansing, conditioning, and
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`other attributes (based in part on hair type), manufacturers recognized well before
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`the EPD that they should offer shampoos and conditioners providing different
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`levels of these attributes. EX 1047, 35:¶1, 45:¶4; EX 1047, 36:¶2-3. For example,
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`formulations were made for, e.g., normal, dry, oily, damaged, grey, and fine hair,
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`and for hair with dandruff. EX 1032, 85-86:Sect. IV.A.:item 5; EX 1032, 73:¶3;
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`EX 1047, 34:¶1, 35:¶1, 43:¶4. As examples of different levels of conditioning,
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`some consumers (e.g., those with dry hair) desired more conditioning, while others
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`(e.g., those with oily or fine hair) wanted less. EX 1032, 73:¶3; EX 1047, 34:¶1,
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`35:¶1, 43:¶4. Hence, formulators commonly factored in hair type when producing
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`new compositions. EX 1032, 85-86:Sect. IV.A.
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`And, in general, a POSA avoided over-conditioning because the result was a
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`feeling that the hair was soiled. EX 1044, 4:6-7 (“undesirable, slimy feel”); EX
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`1045, 4:3-6 (“Many of these [conditioning] actives have the disadvantage of
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`leaving the hair feeling soiled or coated. . . . ”); 1047, 45:¶4 (Other problems have
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`been some purported incidents of ‘overconditioning’ for some hair types.”); EX
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`1028, 1:64 to 2:6 (“such deposition of substantial amounts of cationic polymer is
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`not always desired by the user. . . “).
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`A POSA therefore would have varied the components of antidandruff (AD)
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`conditioning shampoos, such as the amount and types of cleansing, AD, and
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`conditioning agents, as part of a process for routinely optimizing compositions for,
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`e.g., cleansing, AD, and conditioning efficacy. EX 1010, ¶3; EX 1028, 5:19-28,
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`5:50-56; EX 1044, 27:14-20; EX 1032, 96:Formulating Prototypes to 98:¶2; EX
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`1041, 4:¶3; EX 1047, 45:¶2-4, 49:¶3 to 51:¶3, 54:¶1 (following the chemical
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`structure); EX 1001, 32:4-17.
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`Conditioning shampoos were known. Shampoos having good conditioning
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`properties were known before the EPD and were favored by consumers who
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`wanted the convenience of using a single composition for cleaning and
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`conditioning, rather than two separate compositions. EX 1010, 3:¶2; EX 1044,
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`2:11-21; EX 1043, ¶27-44; EX 1045, 3:31 to 4:2; EX 1001, 1:37-49. A POSA also
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`knew that the conditioning effect of a conditioning shampoo depended on the type
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`and amount of conditioning agent in the formulation. EX 1028, 1:57 to 2:23, 2:43-
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`55; EX 1045, 4:3-15.
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`It was known, for example, that cationic polymers such as cationic guar
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`derivatives are conditioning agents in two respects: they are deposited onto hair as
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`conditioning agents on their own, and they help deposit other conditioning agents
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`(such as silicones) onto the hair to contribute to a conditioned feel. EX 1032, 68:¶5
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`to 69:¶1; EX 1054, 141:5-6. A POSA also knew that the deposition (and thus
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`conditioning effect) of cationic guar derivatives depended on their charge density
`
`(CD) and molecular weight (MW), as the ‘155 patent acknowledges. EX 1001,
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`18:25-41; EX 1028, 4:47-54; EX 1032, 75:¶2 & 6, 76:3, 97:¶5; EX 1055, 201:¶4 &
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`6, 206:¶5; EX 1054, 140:¶5 to 141:¶1. Thus, it was known that cationic guar
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`derivatives having a relatively low CD did not deposit onto hair to the same extent
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`as those having a higher CD. Id. (especially EX 1028, 4:47-54; EX 1032, 75:¶2).
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`Likewise, it was known that cationic guar derivatives having a relatively low MW
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`did not deposit onto hair as much as those with a higher MW. Id. (especially EX
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`1055, 201:¶6).
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`It was also known that the deposition onto hair of cationic polymers was
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`increased in compositions containing anionic surfactants due to the formation of
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`complexes (coacervates) between the polymer and the surfactant. EX 1055, 205:2;
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`EX 1028, 1:57-64; EX 1001, 18:25-53. Formation of these complexes was known
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`to be the result of the positive-negative charge attraction between these two
`
`molecule types. EX 1028, 1:37-57.
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`Antidandruff, conditioning shampoos were known. Antidandruff (AD),
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`conditioning shampoos also fulfilled consumer demand for at least 10 years before
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`the EPD, as shown by, for example, Cothran (EX 1044), Evans (EX 1010), Sime
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`(1028), Uchiyama (1045), Kalla (1041), and Reid (EX 1018), e.g., EX 1028, 6:11-
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`23; EX 1018, 5:10-15; EX 1001, 1:30-48. These shampoos contained AD agents,
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`such as ZPT, that were known to have antifungal activity. EX 1028, 6:11-23; EX
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`1001, 1:30-48; EX 1051, title & abstract.
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`Ingredients of AD conditioning shampoos, their amounts, and their
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`functions were known in the art. A POSA would have known which components
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`of shampoos acted as surfactants (cleansers and foaming agents), conditioning
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`agents, AD agents, antimicrobial and antifungal agents, suspending agents (for
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`keeping water-insoluble ingredients like conditioning and AD agents in suspension
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`before use), spreading agents, shine-enhancing agents, deposition agents
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`(depositing AD and conditioning agents onto hair and scalp), and thickening
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`agents. EX 1043, ¶31-37.
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`For example, many types of surfactant were known, including anionic
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`surfactants. EX 1044, 6-10; EX 1045, 5-8. Nonvolatile silicones were known to act
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`as conditioners. EX 1045, 15:4-19. As discussed above, ZPT was known to be an
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`AD and antifungal agent. Ethylene glycol distearate and ethylene glycol
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`monostearate were known to suspend other shampoo ingredients. EX 1010, 23:¶2-
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`3. Polyalkylene glycols were known to improve lather and increase the
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`spreadability of other shampoo components. EX 1010, 1: title & abstract, 21:¶4;
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`EX 1043, ¶31, 32. High-refractive-index, non-volatile silicones were known to
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`enhance shine, especially when used with spreading agents. EX 1044, 17:22-28;
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`EX 1043, ¶33.
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`In addition to being conditioning and deposition agents, cationic polymers
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`such as cationic guar derivatives and cationic cellulose derivatives (e.g.,
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`polyquaternium-10) were known to be suspending (including suspension
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`stabilizing) and thickening agents. EX 1044, 19:10-20, 22:1-34; EX 1032,
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`74:“Cationic Polymers”, 75:¶4, 76:¶3. And, as deposition agents, they were known
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`to deposit insoluble shampoo components like AD agents and conditioning silicone
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`onto hair and scalp. EX 1028, 1:7-15, 5:19-25; EX 1041, 3:¶3 & 5 to 4:¶1; EX
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`1043, ¶35-37.
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`Useful concentration ranges of these components in AD, conditioning
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`shampoos and processes of formulating such shampoos were also well known
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`before the EPD. EX 1043, ¶26-38. Cothran, Evans, and Uchiyama, for example,
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`disclose AD conditioning shampoos and show a wide range of component amounts
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`that were effective. EX 1044, 19:10-15, 27:814-20, 36:claims 1-3; 29:¶2, 34:claims
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`1-4; EX 1045, 27:9-13, 31-32:claims 1-2; EX 1043, ¶35-37. They also disclose
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`that cationic guar derivatives having a wide range of MWs and CDs were effective
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`as conditioning, stabilizing, and deposition agents, as is discussed below. EX 1044,
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`19:25-36, 22:27-29; EX 1045, 20:25-32, 23:1-3; EX 1010, 6:¶1-2, 27:¶2.
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`Cationic guar derivatives with MWs of about 2,000 to about 3,000,000
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`and CDs of about 0.1 meq/g to about 4.0 meq/g were known for use in
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`shampoos. EX 1043, ¶38-39. Cationic guar derivatives with MWs of about 2,000
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`to about 3,000,000 and CDs of about 0.1 meq/g to about 4.0 meq/g were known for
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`use in shampoos before the EPD. EX 1044, 19:25-36, 22:27-29; EX 1045, 20:25-
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`32, 23:1-3; EX 1010, 6:¶1-2, 27:¶2; EX 1041, 16:¶2-3; EX 1028, 2:13-22, 2:39-42,
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`2:53-55. Cationic guars having these MWs and CDs also were commercially
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`available. For example, guar hydroxylpropyl trimonium chloride (e.g., Cosmedia®
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`Guar C 261) was available and had a MW of about 220,000 and a CD of 0.4
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`meq/g. EX1040, items 1 & 6; EX 1053, 3:30-43; EX 1043, 38, 146-150. Likewise,
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`a cationic guar having MW of about 200,000 and CD of 0.71 meq/g was available
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`from Aqualon before the EPD. EX 1001, 33:33-34, 33:43-45; EX 1043, ¶38-39.
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`Making and testing AD conditioning shampoos was routine. Making and
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`testing AD conditioning shampoo compositions was routine. EX 1028, 4:54-65,
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`5:45-55, 6:36 to 7:17; EX 1032, 96:last ¶ to 97:¶3. As discussed above, consumer
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`preferences and routine optimization each would have led a POSA to decrease or
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`increase the amount, or change the type, of conditioning and other agents in
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`shampoos. EX 1043, ¶42-44. Making and testing these varied formulations was
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`routine by May 3, 1999. EX 1028, 4:54-65, 5:45-55, 6:36 to 7:17; EX 1032,
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`96:last ¶ to 97:¶3. And a POSA would have had a reasonable expectation of being
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`able to successfully produce a shampoo having cleansing, antidandruff, and
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`conditioning efficacy. EX 1028, 4:54-65, 5:45-55, 6:36 to 7:17; EX 1032, 96:last ¶
`
`to 97:¶3; EX 1043, ¶45-53.
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` Identification of Challenge (37 C.F.R. § 42.104(b)) VIII.
`IPR is requested on the grounds listed in the index below. Per 37 C.F.R.
`
`§ 42.6(d), copies of the references are filed herewith.
`
`Ground Pre-AIA
`35 U.S.C.
`§102(b)
`§103
`§103
`§103
`§103
`§103
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`1
`2
`3
`4
`5
`6
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`7
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`8
`9
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`
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`§103
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`§102(b)
`§103
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`Index of Reference(s)
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`'155 patent claims
`
`Cothran
`Cothran and Sime
`Cothran and Evans
`Cothran and Bar-Shalom
`Cothran and Cosmedia
`Cothran, Cosmedia, and
`Evans
`Cothran, Cosmedia, and
`Bar-Shalom
`Uchiyama
`Uchiyama
`
`1-11, 19, and 20
`1, 4-11, 19, and 20
`2-3 and 12-18
`21-23
`1, 4-11, 19, and 20
`2-3 and 12-18
`
`21-23
`
`2-3 and 12-18
`2-3 and 12-18
`
`Cothran and Uchiyama each disclose every element of the claims noted
`
`above for §102(b), arranged as claimed, and enabled to a POSA, in light of the
`
`general knowledge in the art. And the prior art references listed above for §103
`
`render obvious the noted claims. Mr. Nandagiri's declaration provides a thorough
`
`discussion of the state of the art at the time of this alleged "invention." EX 1043,
`
`¶¶22-61. All of the claims lack patentability.
`
`A. Ground 1: Cothran anticipates claims 1-11, 19, and 20.
`Cothran (EX 1044) anticipates claims 1-11, 19, and 20. Cothran is prior art
`
`to the '155 patent under 35 U.S.C. §102(b). EX 1044; EX 1043, § XI.
`
`
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`Petition for Inter Partes Review of USPN 6,649,155
`
`Cothran claims and discloses the shampoo compositions of claims 1 and
`
`19:
`
`'155 patent claims
`1. A shampoo
`19. A shampoo
`composition
`composition
`comprising:
`comprising:
`a) from about
`a) from about
`5% to about
`10% to about
`50%, by weight
`25%, by weight
`of the
`of the
`composition, of
`composition, of
`an anionic
`an anionic
`surfactant;
`surfactant;
`
`b) from about
`0.01% to about
`10%, by weight
`of the
`composition, of a
`non-volatile
`conditioning
`agent;
`
`b) from about
`0.01% to about
`10%, by weight
`of the
`composition, of
`an insoluble,
`non-volatile
`silicone
`conditioning
`agent;
`
`c) from about
`c) from about
`
`2 Bold text is added emphases.
`
`Cothran’s (EX 1044) Disclosure
`Claim 1 of Cothran recites: "1. A conditioning
`shampoo2 composition comprising . . . ." (EX
`1044, 36:claim 1 preamble.)
`Claim 1 of Cothran recites: "1. A conditioning
`shampoo composition comprising . . . (a)
`from 8% to 40%, by weight, of detersive
`surfactant, said composition containing at
`least 5%, by weight, of anionic detersive
`surfactant” (EX 1044, 36:claim 1 preamble,
`claim 1(a).)
`
`Claim 5 of Cothran depends from all preceding
`claims and recites "8-25%, by weight," of
`anionic surfactant. (EX 1044, 36:claim 5.)
`Claim 1 of Cothran recites: "1. A conditioning
`shampoo composition comprising . . . (b)
`from 0.05% to 5%, by weight, of an insoluble
`silicone conditioning agent, said conditioning
`agent being the form of dispersed droplets of
`insoluble silicone . . .” (EX 1044, 36:claim
`1(b).)
`Claim 3 of Cothran recites: “wherein said
`insoluble silicone conditioning agent is
`polydimethylsiloxane.” (EX 1044, 36:claim
`3.)
`Cothran states: “The silicone conditioning
`agent will preferably be nonvolatile. The term
`‘nonvolatile’ as used herein shall mean that the
`material has a boiling point of at least about
`260°C . . .” (EX 1044, 16:9-12.)
`Cothran states: "Particulate antidandruff
`
`
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`Petition for Inter Partes Review of USPN 6,649,155
`
`'155 patent claims
`0.1% to about
`0.3% to about
`4%, by weight
`2%, by weight
`of the
`of the
`composition, of
`composition, of a
`an anti-dandruff
`zinc salt of 1-
`particulate;
`hydroxy-2-
`pyridinethione;
`
`d) from about
`0.02% to about
`5%, by weight
`of the
`composition, of a
`cationic guar
`derivative;
`
`d) from about
`0.1% to about
`5%, by weight
`of the
`composition, of a
`cationic guar
`derivative,
`
`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
`
`i) wherein said
`cationic guar
`derivative has a
`molecular weight
`from about
`100,000 to about
`400,000; and
`ii) wherein said
`cationic guar
`derivative has a
`charge density
`from about 0.4
`meq/g to about
`1.0 meq/g;
`
`Cothran’s (EX 1044) Disclosure
`agents include, for example, . . . pyridinethione
`salts. Preferred are heavy metal salts of 1-
`hydroxy-2-pyridinethione and selenium
`disulfide. . . . In general, particulate
`antidandruff agents can be present at levels
`of about 0.1% to about 5%, preferably from
`about 0.3% to about 2%, by weight of the
`composition." (EX 1044, 28:9-18.)
`Cothran states: “Preferred pyridinethione
`antidandruff agents are water insoluble 1-
`hydroxy-2-pyridinethione salts. . . .The most
`preferred active is the zinc salt of 1-hydroxy-
`2-pyridinethione, often referred to as zinc
`pyridinethione (ZPT).” (EX 1044, 28:9-14.)
`Claim 1 of Cothran recites: "1. A conditioning
`shampoo composition comprising . . . (c) from
`0.01% to 1%, by weight, of a stabilizing
`agent for said silicone conditioning agent, said
`stabilizing agent being a shampoo soluble
`cationic polymer . . .” (EX 1044, 36:1-9.)
`Cothran states: “Other cationic polymers
`that can be used include cationic guar gum
`derivatives, such as guar hydroxypropyl-
`trimonium chloride." (EX 1044, 22:27-28.)
`Claim 1 of Cothran recites: "1. A conditioning
`shampoo composition comprising . . . (c) from
`0.01% to 1%, by weight, of a stabilizing
`agent for said silicone conditioning agent, said
`stabilizing agent being a shampoo soluble
`cationic polymer . . ." (EX 1044, 36:claim
`1(c).)
`Claim 2 of Cothran recites: “2. A shampoo
`composition as in Claim 1, wherein said
`composition comprises at least 10%, by
`weight, of said detersive surfactant, and
`wherein said cationic polymer has a weight
`average molecular weight of at least 200,000
`and a charge density of at least 0.3 meq/g,
`
`
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`

`
`'155 patent claims
`1.0 meq/g;
`
`e) water.
`
`e) water.
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`Petition for Inter Partes Review of USPN 6,649,155
`
`Cothran’s (EX 1044) Disclosure
`and further wherein said cationic polymer has
`a weight average molecular weight of from
`400,000 to 2,000,000 and a charge density of
`from 0.6 meq/g to 4 meq/g." (EX 1044,
`36:15-20.)
`Cothran states: “Other cationic polymers that
`can be used include cationic guar gum
`derivatives, such as guar hydroxypropyl-
`trimonium chloride." (EX 1044, 22:27-28.)
`
`Claim 1 of Cothran recites: "1. A conditioning
`shampoo composition comprising . . . (d) . . .
`water . . ." (EX 1044, 36:claim 1(d).)
`
`Cothran claims and discloses shampoo compositions having all of the
`
`components recited in claims 1 and 19. EX 1043, ¶68-78. As shown in the claim
`
`chart above, Cothran’s claim 5 (which depends from Cothran’s claim’s 1-4),
`
`coupled with Cothran’s specification, recites shampoos that meet all of the
`
`limitations of each of claims 1 and 19.
`
`Cothran’s claimed shampoos contain ingredients in amounts that overlap
`
`with or subsume each of the concentration ranges recited in claims 1 and 19 for the
`
`anionic surfactant, non-volatile conditioning agent, AD particulate, and cationic
`
`guar derivative. For example, the ‘155 patent’s claim 1 requires about 5 to about
`
`50% anionic surfactant. A POSA would have understood that the recitation in
`
`claim 1 of Cothran of “from 8% to 40%, by weight, of detersive surfactant, said
`
`composition containing at least 5%, by weight, of anionic detersive surfactant” to
`
`
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`Petition for Inter Partes Review of USPN 6,649,155
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`require “5 to 40% of anionic surfactant.” EX 1043, 71. Cothran’s claim 5 depends
`
`from Cothran’s claims 1-4 and requires 8% to 25% anionic detersive surfactant.
`
`And the cationic guar derivatives in Cothran's shampoo compositions have
`
`MW and CD ranges that overlap with each of claims 1 and 19. Regarding the MW
`
`in Cothran's claim 2 (for the generic “cationic polymer” of claim 1), a POSA
`
`immediately would have envisioned that the range of “at least 200,000” (for the
`
`generic category of cationic polymers), when applied to Cothran’s specification’s
`
`cationic guar derivatives, to have an upper limit of about 3,000,000. EX 1044,
`
`19:10-31 & 22:27-32; EX 1043, 73. This is so because a POSA knew that cationic
`
`guar derivatives are produced from natural guar, which was known to have a
`
`maximum MW of about 1,300,000. EX 1054, 132:Table 2. A POSA also knew that
`
`the addition of cationic groups to natural guar increases the MW to a maximum of
`
`about 3,000,000. EX 1043, 73; EX 1041, 16:¶3; 1028, 2:39-42 & 2:53-68. Thus,
`
`Cothran disclosed, to a POSA, a cationic guar derivative with a MW of 200,000 to
`
`about 3,000,000.
`
`A POSA also would have found Cothran’s disclosure to be enabling in light
`
`of general knowledge in the art, as methods of making shampoo compositions were
`
`well known, and only ordinary skill was needed to make such compositions. EX
`
`1043, 74. For example, preparing Cothran’s shampoo that anticipates claims 1 and
`
`19 merely involves conventional formulation techniques, which would have
`
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`Petition for Inter Partes Review of USPN 6,649,155
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`required only ordinary skill. EX 1043, 76. Indeed, the ‘155 patent’s shampoo
`
`compositions can be prepared using conventional methods, as the patent
`
`acknowledges. EX1 001, 32:4-17.
`
`The ranges for the ‘155 patent’s shampoo compositions are not critical
`
`or considerably different from those in Cothran. The ranges recited in claims 1
`
`and 19 are not critical or considerably different from Cothran’s ranges. EX 1043,
`
`75. It is "an elementary principle of patent law that when, as by a recitation of
`
`ranges or otherwise, a claim covers several compositions, the claim is 'anticipated'
`
`if one of them is in the prior art." Titanium Metals, 778 F.2d 775 at 782. And, in
`
`the absence of extenuating circumstances, a prior art range that overlaps or entirely
`
`subsumes a claimed range anticipates that claimed range. Id. To establish
`
`patentability, a patentee must show that the claimed range was "critical" or that
`
`there was a considerable difference between the range taught in the prior art and
`
`the claimed range. See ClearValue, Inc. v. Pearl River Polymers, 668 F.3d at 1344-
`
`45 (Fed. Cir. 2012).
`
`Here, claims 1 and 19 recite shampoo components in ranges overlapping
`
`with or subsumed by Cothran’s ranges, and each component functions in the same
`
`way that Cothran’s shampoo components function. EX 1044, 36:claims 1-4; EX
`
`1001, 34:45-59, 36:7-24. The claims do not require any particular level of
`
`cleansing, AD efficacy, or conditioning (or deposition) efficacy. Nor do they
`
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`Petition for Inter Partes Review of USPN 6,649,155
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`require an improvement over Cothran’s shampoo compositions. EX 1043, ¶75-76.
`
`Thus, the claims do not include any limitation about which the recited ranges can
`
`be found to be critical or substantially different.
`
`P&G argued during prosecution that the recited guar's low molecular weight
`
`of about 50,000 to about 700,000 was "critical" for "creating a clean feeling of
`
`hair." EX 1002, 108-111. P&G’s evidence consisted of a “clean feel performance”
`
`comparison of two shampoos: the “prior art” shampoo, which con