Paper 21
`
`Entered: October 20, 2014
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`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 IPR2014-00628
`Patent 6,649,155 B1
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Declining Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I.
`
`BACKGROUND
`Conopco, Inc. dba Unilever (“Unilever”) filed a Corrected Petition
`requesting inter partes review of claims 1–23 of U.S. Patent No. 6,649,155
`B1 (Ex. 1001, “the ’155 patent”). Paper 5 (“Pet.”). The Procter & Gamble
`Company (“P&G”) filed a Patent Owner Preliminary Response. Paper 17
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`
`
`
`Entered: October 20, 2014
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`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 IPR2014-00628
`Patent 6,649,155 B1
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Declining Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I.
`
`BACKGROUND
`Conopco, Inc. dba Unilever (“Unilever”) filed a Corrected Petition
`requesting inter partes review of claims 1–23 of U.S. Patent No. 6,649,155
`B1 (Ex. 1001, “the ’155 patent”). Paper 5 (“Pet.”). The Procter & Gamble
`Company (“P&G”) filed a Patent Owner Preliminary Response. Paper 17
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`
`
`
`Case IPR2014-00628
`Patent 6,649,155 B1
`
`provides that an inter partes review may, but not must, be instituted if “there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`based on the particular circumstances presented in this case, we decline to
`institute review. See 35 U.S.C. §§ 314(a), 325(d).
`
`
`A. Related Proceedings
`Unilever is a named defendant in a district court case involving
`the ’155 patent. Procter & Gamble Co. v. Conopco Inc., 13-cv-00732 (S.D.
`Ohio); see Pet. 2 (statement of related cases). Unilever filed, and we
`rejected, an earlier petition for inter partes review of claims 1–23 of the ’155
`patent (“the 510 Petition”). IPR2013-00510, Paper 2 at 3; see Pet. 2.
`
`
`B. The ’155 Patent (Ex. 1001)
`The ’155 patent relates 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.
`
`
`
`2
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`Case IPR2014-00628
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`
`Each challenged claim requires a combination of shampoo ingredients
`that includes a cationic guar derivative having a molecular weight and
`charge density that falls within specified ranges. 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.
`
`
`Illustrative Claims
`C.
`Unilever 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;
`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, claim 19
`requires that the 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
`
`
`
`3
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`Case IPR2014-00628
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`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).
`
`
`issued August 6, 1991
`
`D. Prior Art Relied Upon
`Unilever relies upon the following prior art references:
`Cothran et al., WO 96/32919, published October 24, 1916
`(Ex. 1044) (“Cothran”).
`
`Sime, US Patent 5,037,818,
`(Ex. 1028) (“Sime”).
`
`Evans et al., WO 97/14405, published April 24, 1997
`(Ex. 1010) (“Evans”).
`
`Bar-Shalom et al., US Patent 5,618,798, issued April 8, 1997
`(Ex. 1034) (“Bar-Shalom”).
`
`Cosmedia® Guar C 261, Product Data Sheet, Rev.
`January 3, 1997, Reg. 9 (Ex. 1040) (“Cosmedia”).
`
`Uchiyama et al., WO 97/14406, published April 24, 1997
`(Ex. 1045) (“Uchiyama”).
`
`
`E. The Asserted Grounds of Unpatentability
`Unilever challenges the patentability of claims 1–23 of the ’155 patent
`on the grounds set forth in the chart below. See Pet. ii.1
`
`
`
`
`1 Unilever’s chart of grounds (Pet. 13) is inconsistent with its table of
`contents (Pet. ii) and argument (Pet. 43–44). We identify the grounds as
`presented in the table of contents and argument.
`
`
`
`4
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`Case IPR2014-00628
`Patent 6,649,155 B1
`
`
`Reference(s)
`
`Cothran
`
`Cothran and Sime
`
`Cothran and Evans
`
`Cothran and Bar-Shalom
`Cothran, Sime, and
`Cosmedia
`Cothran, Evans, and
`Cosmedia
`Cothran, Bar-Shalom, and
`Cosmedia
`Uchiyama
`
`Uchiyama
`
`Basis
`
`§ 102(b)
`
`§ 103
`
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`§ 102(b)
`
`§ 103
`
`Claims challenged
`
`1–11, 19, and 20
`
`1, 4–11, 19, and 20
`
`2–3 and 12–18
`
`21–23
`1, 4–11, 19, and 20
`
`23– and 12–18
`
`21–23
`
`2–3 and 12–18
`
`2–3 and 121–8
`
`
`
`
`II. ANALYSIS
`The Board has discretion to decline to institute an inter partes review.
`35 U.S.C. § 314(a). One factor the Board may take into account when
`exercising that discretion is whether “the same or substantially the same
`prior art or arguments previously were presented to the Office.” 35 U.S.C.
`§ 325(d) (“[i]n determining whether to institute or order a proceeding” for
`inter partes review, “the Director may take into account” that factor, and
`“reject the petition” on that basis).
`Unilever seeks inter partes review of claims 1–23 of the ’155 patent
`for a second time. Pet. 1; see IPR2013-00510, Paper 9 (review declined).
`Unilever does not address § 325(d) or compare the prior art or arguments
`
`
`
`5
`
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`Case IPR2014-00628
`Patent 6,649,155 B1
`
`applied in the instant Petition to those raised previously in the 510 Petition.
`Unilever avers, however, that it “is not barred or estopped from requesting”
`review “of any claim of the ’155 patent.” Pet. 1.
`P&G responds that § 325(d) supports rejecting the instant Petition.
`Prelim. Resp. 1–2. Specifically, P&G argues that “Unilever relies on the
`same arguments that the Board considered and rejected in the” 510 Petition.
`Id. at 5. P&G argues also that the instant Petition relies on prior art that is
`“cumulative and duplicative” of art raised in the 510 petition. Id. In P&G’s
`view, institution of review in this case would encourage petitioners to file
`serial petitions against the same patent claims to gain “an unwarranted and
`unfair procedural advantage in pending infringement litigation.” Id.
`We have compared the prior art and arguments raised in the instant
`Petition to those raised in the 510 Petition. Based on the information
`presented, we are persuaded that the instant Petition raises, at minimum,
`“substantially the same . . . arguments” that “previously were presented to
`the Office” in the 510 Petition. 35 U.S.C. § 325(d). That is one of several
`circumstances that inform our decision to decline to institute review. See 35
`U.S.C. § 314(a) (institution of review is discretionary, not mandatory).
`
`Grounds Based on Anticipation
`A.
`In the 510 Petition, Unilever raised anticipation grounds based on
`
`Bowser2 or Reid.3 IPR2013-00510, Paper 2 at 10, 31. In the instant
`Petition, Unilever raises anticipation grounds based on Cothran or
`Uchiyama. Pet. 13, 45. Although the instant Petition and the 510 Petition
`
`
`2 US Patent 5,723,112, issued March 3, 1998 (IPR2013-00510, Ex. 1009).
`3 US Patent 5,085,857, issued February 4, 1992 (IPR2013-00510, Ex. 1018).
`
`
`
`6
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`Case IPR2014-00628
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`rely upon different prior art references, for the reasons that follow, we are
`persuaded that both petitions apply that art to make out “substantially the
`same” argument regarding anticipation. 35 U.S.C. § 325(d) (Board has
`discretion to reject a petition that raises “substantially the same prior art or
`arguments” as an earlier-filed petition) (emphasis added).
`The ’155 patent claims are directed to a shampoo composition
`comprising a plurality of ingredients. Both petitions contain argument
`focused on a particular ingredient—the cationic guar derivative—and,
`specifically, on two characteristics of that ingredient—the molecular weight
`and charge density. An argument common to both petitions is that the
`applied art teaches a cationic guar derivative that meets the molecular weight
`and charge density limitations of the ’155 patent claims.
`Claim 1 requires a combination of shampoo ingredients that includes a
`“cationic guar derivative” having “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.” In the 510 Petition, Unilever argued that Bowser or Reid, by
`referencing a material identified by the trade name Jaguar® C15, teaches a
`cationic guar derivative that meets those molecular weight and charge
`density ranges. IPR2013-00510, Paper 2 at 10, 14–15 (for Bowser); id. at
`32, 35–36 (for Reid). Unilever identified no disclosure in Bowser or Reid
`that established the molecular weight or charge density of the material
`identified as Jaguar® C15, but argued that the material inherently would
`have met the specified ranges. Id. We denied that first request for review
`because Unilever did not show sufficiently that the material identified as
`Jaguar® C15 necessarily possessed a molecular weight or charge density
`
`
`
`7
`
`
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`Case IPR2014-00628
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`
`that satisfies the limitations of the challenged claims. IPR2013-00510,
`Paper 9 at 7–9.
`In the instant Petition, Unilever similarly argues that Cothran or
`Uchiyama teaches a cationic guar derivative that meets the specified
`molecular weight and charge density ranges. Pet. 15–16 (claim chart for
`Cothran); id. at 47 (claim chart for Uchiyama). Unilever relies on Cothran’s
`disclosure of a “cationic polymer,” which may include a cationic guar
`derivative, defined by molecular weight and charge density ranges that
`overlap the specified ranges. Id. at 15 (claim chart, citing Ex. 1044
`at 36:15–20). In a separate anticipation ground, Unilever relies on
`Uchiyama for a disclosure of cationic polymers defined by broad molecular
`weight and charge density ranges that subsume or overlap the ranges
`specified in the challenged claims. Id. at 47 (claim chart, citing Ex. 1045 at
`20:25–27, 30–32). In other words, as P&G points out, the instant Petition
`relies on Cothran and Uchiyama “for the disclosure of broad ranges of
`molecular weights and charge densities of cationic polymers.” Prelim.
`Resp. 7 (citing Pet. 15, 47).
`We recognize that the prior art disclosures relied upon in the two
`petitions are not identical. Whereas the 510 Petition focused on a particular
`compound—specifically, Jaguar® C15—for a disclosure of a cationic guar
`derivative that satisfies the molecular weight and charge density limitations,
`the instant Petition focuses on a general disclosure of cationic polymers,
`which may include a cationic guar derivative, defined by molecular weight
`and charge density ranges that overlap or subsume the specified ranges.
`Compare IPR2013-00510, Paper 2 at 10, 14–15, 32, 35–36 with Pet. 15–16,
`47.
`
`
`
`8
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`Case IPR2014-00628
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`
`
`Based on the information presented, however, we are persuaded by
`P&G’s argument that both petitions apply the prior art references to support
`substantially the same argument: “Although Unilever now relies on
`different references, its argument remains the same: The Board should
`assume that the cited references meet the claimed cationic guar limitations,
`even though they provide no disclosure of particular materials that actually
`meet” the molecular weight and charge density limitations recited in the
`challenged claims. Prelim. Resp. 7–8. On this record, we determine that the
`anticipation grounds presented in the two petitions are based on
`“substantially the same” argument; namely, that the prior art identifies, with
`anticipatory specificity, a cationic guar derivative having a molecular weight
`and charge density that meet the specified ranges. 35 U.S.C. § 325(d).
`
`
`B. Grounds Based on Obviousness
`Similarly, for the grounds based on obviousness, both petitions are
`
`based on “substantially the same” argument that a person of ordinary skill in
`the art would have been led to select a cationic guar derivative, having the
`required molecular weight and charge density, for use in the inventive
`shampoo composition. Id. As explained above, the 510 Petition relied on
`the disclosure of a specific guar derivative—Jaguar® C15—for the requisite
`molecular weight and charge densities; whereas the instant Petition relies on
`a general disclosure of cationic polymers, which may include a cationic guar
`derivative, defined by molecular weight and charge density ranges that
`overlap or subsume the specified ranges.
`Here again, we recognize that the prior art disclosures relied upon are
`somewhat different in the two petitions. The statute, however, states that a
`
`
`
`9
`
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`Case IPR2014-00628
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`
`petition may be rejected when “substantially the same prior art or arguments
`previously were presented to the Office.” 35 U.S.C. § 325 (d) (emphasis
`added). The statute expressly contemplates denial of review when the art
`applied in two petitions is different, but the arguments are “substantially the
`same.” Id. Although substantial similarity of argument, standing alone, is
`sufficient reason for a denial under § 325(d), several other circumstances,
`explained below, further influence our decision to decline review.
`
`The Circumstances Favor Declining Review
`C.
`We have considered the papers filed in this proceeding, as well as the
`papers filed in the request for inter partes review in IPR2013-00510. Based
`on the circumstances before us, we decline to institute review. 35 U.S.C.
`§ 314(a) (institution is discretionary, not mandatory). We approach our
`discretion to decline review on a case-by-case basis. As explained above,
`one circumstance that supports our decision declining to institute review is
`that the instant Petition raises “substantially the same” arguments as the 510
`Petition. 35 U.S.C. § 325(d).
`The instant Petition also raises similar, if not “substantially the same,”
`prior art previously “presented to the Office.” Id. (denial may be appropriate
`when a challenge raises “substantially the same prior art” that “previously
`[was] presented to the Office”). On that point, P&G observes that Sime and
`the U.S. counterpart to Cothran are listed on the face of the ’155 patent;
`those references, therefore, “previously were presented to the Office.” Id.;
`Ex. 1001 at 1; see Prelim. Resp. 7. Both references significantly feature in
`the instant Petition. See, e.g., Pet. ii (applying Cothran in seven of nine
`grounds); see id. at 27–32, 43–45 (discussing Sime at length). The instant
`
`
`
`10
`
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`Case IPR2014-00628
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`
`Petition also reasserts Evans, a reference highlighted in Unilever’s earlier,
`unsuccessful request for inter partes review. See Pet. 9, 11, 32–41, 43–45
`(discussing Evans at length in this proceeding); compare IPR2014-00510,
`Paper 2 at 45–58 (devoting about thirteen pages to grounds based on Evans
`in the prior proceeding).
`Additional factors support our decision declining to institute review.
`Unilever does not argue that the other references applied in the instant
`Petition—Cosmedia, Bar-Shalom, or Uchiyama—were unknown or
`unavailable at the time of filing the 510 Petition. That fact supports a
`reasonable inference that those references were known and available to
`Unilever when it requested review the first time. Prelim. Resp. 1, 7. On this
`record, the interests of fairness, economy, and efficiency support declining
`review—a result that discourages the filing of a first petition that holds back
`prior art for use in successive attacks, should the first petition be denied. See
`id. at 1 (the instant Petition “simply swap[s] in new references, all of which
`were available to Unilever” at the time of filing of the 510 Petition; Unilever
`should have “presented its ‘best case’ in the first petition”).
`In that regard, P&G raises a legitimate concern that Unilever will
`continue to mount serial attacks against the ’155 patent claims, until a
`ground is advanced that results in the institution of review. Id. at 1–2
`(arguing that Unilever, “[u]nsatisfied with the” first result, is “hoping for a
`different result” in this proceeding). On that point, we find relevant that the
`instant Petition raises multiple grounds against each challenged patent claim:
`Five against claims 2 and 3; four against claims 12–18; three against
`claims 1, 4–11, 19, and 20; and two against claims 21, 22, and 23. See id.
`at 16–19 (chart of grounds). That multi-pronged attack follows our rejection
`
`
`
`11
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`Case IPR2014-00628
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`
`of numerous grounds that were raised in the 510 Petition. See IPR2013-
`00510 (Paper 2) (asserting, for example, thirteen grounds of unpatentability
`against claims 1–5, 7, 9–11, 19, 20, and 22). P&G’s concern that it will
`“have to continually defend against repetitive [] challenges” to the same
`patent claims is not without merit, given the multiplicity of grounds applied
`in each petition. Prelim. Resp. 9.
`On this record, we are persuaded that our resources are better spent
`addressing matters other than Unilever’s second attempt to raise a plurality
`of duplicative grounds against the same patent claims. See Heckler v.
`Chaney, 470 U.S. 821, 831 (1985) (when deciding whether to take action in
`a particular matter, an agency must determine whether its resources are best
`spent on one matter or another). Unilever provides no persuasive reason
`why we should institute inter partes review in light of the above facts.
`Based on the circumstances before us, therefore, we exercise our discretion
`and decline to institute review. 35 U.S.C. §§ 314(a), 325(d).
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’155 patent.
`
`
`
`
`
`
`12
`
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`Case IPR2014-00628
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`
`
`PETITIONER:
`Joseph P. Mera
`Michael R. Houston
`Jeanne M. Gills
`FOLEY & LARDNER LLP
`jmera-pgp@foley.com
`mhouston@foley.com
`jmgills@foley.com
`
`
`
`
`
`PATENT OWNER:
`David M. Maiorana
`John V. Biernacki
`Michael S. Weinstein
`JONES DAY
`dmaiorana@jonesday.com
`jvbiernacki@jonesday.com
`msweinstein@jonesday.com
`
`Steven W. Miller
`Carl J. Roof
`Angela K. Haughey
`THE PROCTER & GAMBLE COMPANY
`miller.sw@pg.com
`roof.cj@pg.com
`haughey.a@pg.com
`
`13
`
`
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