UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`DR. SQUATCH, LLC
`Petitioner
`v.
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`__________
`
`IPR2024-01104
`Patent No. 11,540,999
`__________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 11,540,999
`
`
`
`
`
`

`

`I.
`II.
`III.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 3
`GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ..................... 5
`IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R.
`§ 42.104(b) AND RELIEF REQUESTED ...................................................... 5
`A. Grounds for the Challenged Claims ...................................................... 5
`B.
`The Challenges Presented Are Not Cumulative ................................... 6
`IV. BACKGROUND OF THE TECHNOLOGY .................................................. 7
`A. Deodorants vs. Antiperspirants ............................................................. 7
`B.
`Basics of Deodorants ............................................................................. 7
`i.
`Carrier Oils .................................................................................... 8
`ii. Structurants ................................................................................... 9
`iii. Fragrances ...................................................................................10
`iv. Antimicrobials .............................................................................10
`v. Hardness of Anhydrous Stick Compositions ..............................11
`The Move to Natural Deodorants ........................................................12
`i. Aluminum-Free ...........................................................................12
`ii. Silicone-free ................................................................................14
`iii. Natural Antimicrobials ................................................................14
`iv. Natural Fragrances ......................................................................15
`SUMMARY OF THE ’999 PATENT ...........................................................15
`A.
`The Claimed Subject Matter ...............................................................17
`B.
`Prosecution History .............................................................................18
`VI. PRIOR ART ...................................................................................................21
`A.
`Effective Prior Art Dates .....................................................................21
`VII. ARGUMENTS ..............................................................................................22
`A.
`Statement of the Law ...........................................................................22
`B.
`Level of Ordinary Skill in the Art .......................................................24
`C.
`Grounds of Unpatentability .................................................................24
`i. Ground 1 – Claims 1-7, 9-13, 15-18 are Obvious over
`Lesniak in view of Phinney and Bianchi ’518 ............................24
`
`C.
`
`V.
`
`
`
`i
`
`

`

`ii. Ground 2 – Claim 8 is Obvious Over Lesniak in view of
`Phinney, Bianchi ’518, and Lamb ...............................................37
`iii. Ground 3 – Claim 14 is Obvious Over Lesniak in view of
`Phinney, Bianchi ’518, and Bianchi ’254 ...................................40
`iv. Ground 4 – Claims 1-15, 17-18 are Obvious Over Native
`in view of Bianchi ’254 and Easy Homemade ...........................43
`v. Ground 5 – Claim 16 is Obvious Over Native in view of
`Bianchi ’254, Easy Homemade, and Millet ................................63
`VIII. CONCLUSION ..............................................................................................66
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Almirall, LLC v. Amneal Pharms. LLC,
`28 F.4th 265 (Fed. Cir. 2022) ....................................................................... 23, 24
`EI DuPont de Nemours & Co. v. Synvina CV,
`904 F.3d 996 (Fed. Cir. 2018) ............................................................................ 23
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 23
`PAR Pharm., Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .................................................................... 22, 23
`Persion Pharms. LLC v. Alvogen Malta Operations Ltd.,
`945 F.3d 1184 (Fed. Cir. 2019) .......................................................................... 30
`Statutes
`35 U.S.C. § 102(a)(1) ......................................................................................... 22, 23
`35 U.S.C. § 102(a)(2) ......................................................................................... 23, 25
`35 U.S.C. § 325(d) ................................................................................................... 21
`
`
`
`
`iii
`
`

`

`PETITIONER’S EXHIBITS
`
`Exhibit No.
`
`Description
`
`1001
`
`U.S. Patent No. 11,540,999 (“the ’999 Patent”)
`
`1002
`
`Declaration of Bozena B. Michniak-Kohn, PhD
`
`1003
`
`U.S. Patent No. 11,433,018 (“Lesniak”)
`
`1004
`
`U.S. Patent No. 9,314,412 (“Phinney”)
`
`1005
`
`John H. Lamb, Sodium Bicarbonate: An Excellent Deodorant, 7(3)
`J. INVESTIGATIVE DERMATOLOGY 131-33 (1946) (“Lamb”)
`
`1006
`
`U.S. Patent No. 6,048,518 (“Bianchi ’518”)
`
`1007
`
`Native Wayback Machine archives, captured May 26, 2016,
`November 23, 2016, November 1, 2015 respectively for:
`https:/www.nativecos.com
`https:/www.nativecos.com/product/deodorant/
`https:/www.nativecos.com
`(“Native”)
`
`1008
`
`U.S. Patent App. Pub. No. 2007/0166254 (“Bianchi ’254”)
`
`1009
`
`1010
`
`Wayback Machine archive, captured January 26, 2017, for
`http:/soapdelinews.com/2016/11/easy-homemade-deodorant-
`recipe.html (“Easy Homemade”)
`Angelica Peebles, P&G Has Acquired Native Natural Deodorant
`Brand, CNBC (Nov. 15, 2017, 5:34 P.M.),
`https://www.cnbc.com/2017/11/15/pg-has-acquired-native-natural-
`deodorant-brand.html (last visited May 28, 2024)
`
`iv
`
`
`
`
`
`

`

`1011
`
`1012
`
`1013
`
`Rachel Lapidos, P&G Has Acquired Cult-Fave Deodorant Brand
`Native, WELL+GOOD (Nov. 17, 2017),
`https://www.wellandgood.com/pg-acquired-natural-deodorant-
`brand-native/ (last visited May 29, 2024)
`Alex Bitter, P&G Buys Deodorant Brand Native for Undisclosed
`Sum, S&P GLOBAL (Nov. 15, 2017, 5:31 PM)
`https://www.spglobal.com/marketintelligence/en/news-
`insights/trending/DWXgoreaSsTDRfJ0RDSMEg2 (last visited May
`29, 2024)
`KARL LADEN ET AL., ANTIPERSPIRANTS AND DEODORANTS (Karl
`Laden ed., 2nd ed. 1999)
`
`1014
`
`U.S. Patent App. Pub. No. 2005/0142085
`
`1015
`
`Int’l Patent App. Pub. No. WO 2012/098189
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`SoapDeliNews Wayback Machine archive, captured April 17, 2013,
`for https:/soapdelinews.com/2013/03/natural-handmade-lavender-
`patchouli-deodorant-recipe-with-printable-labels.html
`SoapDeliNews Wayback Machine archive, captured July 23, 2016,
`for http:/soapdelinews.com/2016/07/natural-neem-oil-deodorant-
`recipe.html
`SoapDeliNews Wayback Machine archive, captured October 19,
`2012, for http:/soapdelinews.com/2012/10/diy-natural-homemade-
`deodorant-recipe.html
`LORRAINE WHITE, HOMEMADE DEODORANT 32 EASY TO MAKE ALL
`NATURAL & ORGANIC DEODORANT & BODY SPRAY RECIPES (2014)
`Homemade Deodorant, THE CRUNCHY URBANITE (Nov. 24, 2013)
`https://thecrunchyurbanite.com/2013/11/24/homemade-deodorant/
`(last visited May 29, 2024)
`Piyatip Khuntayaporn & Jiraphong Suksiriworapong, Efficacy of
`Essential Oil Formulations Against Malodor Causing Bacteria,
`44(4) PHARM. SCIS. ASIA 209-16 (2017)
`Laura G. Corral, et al., A Research Note Antimicrobial Activity of
`Sodium Bicarbonate, 53(3) J. FOOD SCI. 981-82 (1988)
`
`
`
`v
`
`

`

`1023
`
`1024
`
`Pamela Emanoil, Customers Itching for Personal Care Alternatives,
`Apr. 2006 NAT. FOODS MERCHANDISER 40-42 (2006)
`Mohammed A. Shahtalebi et al., Deodorant Effects of a Sage
`Extract Stick: Antibacterial Activity and Sensory Evaluation of
`Axillary Deodorancy, 18(10) J. RSCH. MED. SCI. 833-39 (2013)
`
`1025
`
`U.S. Patent No. 5,585,092
`
`1026
`
`U.S. Patent No. 9,610,237
`
`1027
`
`U.S. Patent App. Pub. No. 2014/0199252
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`James Lambert, Silicone Safety and the Cosmetic Industry, 126(11)
`Cosms. & Toiletries 810-15 (2011)
`Julia Pasquet et al., The Contribution of Zinc Ions to the
`Antimicrobial Activity of Zinc Oxide, 457 COLLOIDS & SURFACES:
`PHYSICOCHEMICAL & ENG’G ASPECTS 263-74 (2014)
`Rodrigo Carvalho, Hydroxyisohexyl 3-Cyclohexene Carboxaldehyde
`(Lyral®) as Allergen: Experience from a Contact Dermatitis Unit,
`30(3) CUTANEOUS & OCULAR TOXICOLOGY 249-50 (2011)
`Maria V. Heisterberg, et al., Deodorants are the Leading Cause of
`Allergic Contact Dermatitis to Fragrance Ingredients, 64 CONTACT
`DERMATITIS 258-64 (2011)
`J. Handley & D. Burrows, Allergic Contact Dermatitis from the
`Synthetic Fragrances Lyral and Acetyl Cedrene in Separate
`Underarm Deodorant Preparations, 31 CONTACT DERMATITIS 288-
`90 (1994)
`Prosecution History Excerpts of U.S. Patent Application No.
`17/194,437 (’999 file history)
`Prosecution History Excerpts of U.S. Patent Application No.
`17/961,089
`Prosecution History Excerpts of U.S. Provisional Patent Application
`No. 62/527,180
`
`
`
`vi
`
`

`

`1036
`
`Schueller, R., & Romanowski, P., Multifunctional cosmetics (2003)
`
`1037
`
`Siquet, F., & Devleeschouwer, M. J., Antibacterial agents and
`preservatives, Handbook of Cosmetic Science and Technology
`(2009)
`
`1038
`
`Fed. Reg. Vol. 60, No. 176 (Sept. 12, 1995)
`
`1039
`
`1040
`
`Compendium of Food Additive Specifications, FNP 52 Add 13
`(2005)
`Complaint For Patent Infringement (ECF No.1) from The Procter &
`Gamble Co. v. Dr. Squatch, LLC, Case No. 2:24-cv-04711 (C.D.
`Cal.)
`
`1041
`
`U.S. Patent No. 4,049,792
`
`1042
`
`JOHN A. DEAN, LANGE’S HANDBOOK OF CHEMISTRY (John A. Dean
`ed., 15th ed. 1999)
`
`1043
`
`U.S. Patent No. 4,919,934
`
`1044
`
`U.S. Patent App. Pub. No. 2018/0168954 (“Millet”)
`
`1045
`
`U.S. Patent No. 11,497,706
`
`1046
`
`21 C.F.R. § 720.4(d) (1992)
`
`1047
`
`U.S. Patent No. 6,123,932
`
`1048
`
`Curriculum Vitae of Bozena B. Michniak-Kohn, Ph.D.
`
`1049
`
`Int’l Patent App. Pub. No. WO 2012/098189
`
`
`
`vii
`
`

`

`1050
`
`SAMUEL P. SADTLER ET AL., A TEXT-BOOK OF CHEMISTRY
`INTENDED FOR THE USE OF PHARMACEUTICAL AND MEDICAL
`STUDENTS (5th ed. 1918)
`
`
`
`
`
`viii
`
`
`
`
`
`

`

`CLAIM LISTING
`
`1.
`
`A deodorant stick comprising:
`
`a. at least one antimicrobial comprising magnesium hydroxide; and
`
`b. a primary structurant with a melting point of at least about 50° C.; and
`
`said stick being free of an aluminum salt; and
`
`said stick having a hardness from about 80 mm*10 to about 140 mm*10, as
`
`measured by penetration with ASTM D-1321 needle.
`
`
`
`2.
`
`
`
`3.
`
`
`
`4.
`
`
`
`5.
`
`
`
`
`
`The deodorant stick of claim 1, wherein the antimicrobial is a powder with a
`
`water solubility of at most about 90 g/L at 25°C.
`
`The deodorant stick of claim 1, wherein the deodorant stick is substantially
`
`free of baking soda.
`
`The deodorant stick of claim 1, wherein the deodorant stick is substantially
`
`free of synthetic fragrance.
`
`The deodorant stick of any claim 1, wherein the deodorant stick is
`
`substantially free of silicones.
`
`ix
`
`

`

`6.
`
`The deodorant stick of claim 1, wherein the deodorant stick comprises from
`
`0% to 5% silicones.
`
`
`
`7.
`
`
`
`8.
`
`
`
`9.
`
`
`
`The deodorant stick of claim 1, comprising at least about 25% of a liquid
`
`triglyceride.
`
`The deodorant stick of claim 1, further comprising an additional
`
`antimicrobial comprising baking soda.
`
`The deodorant stick of claim 1, wherein the stick comprises from about 8%
`
`to about 20% of the primary structurant.
`
`10. The deodorant stick of claim 1, wherein the primary structurant has a
`
`melting point from about 50° C. to 75° C.
`
`
`
`11. The deodorant stick of claim 1, comprising less than 5% of secondary
`
`structurants having a melting point above 60° C.
`
`
`
`
`
`x
`
`

`

`12. A method of making the deodorant stick of claim 1, comprising the steps of
`
`combining the deodorant components in an open tank system, mixing the
`
`components, heating the components, and cooling the components.
`
`
`
`13. The deodorant stick of claim 1, further comprising less than 8% of
`
`secondary structurants having a melting point at least about 60° C.
`
`
`
`14. The deodorant stick of claim 1, wherein the primary structurant is stearyl
`
`alcohol.
`
`
`
`15. The deodorant stick of claim 1, further comprising shea butter.
`
`
`
`16. The deodorant stick of claim 1, further comprising tapioca starch.
`
`
`
`17. The deodorant stick of claim 1, comprising at least about 25%
`
`caprylic/capric triglyceride.
`
`
`
`18. The deodorant stick of claim 1, comprising at least about 25% of a
`
`triglyceride.
`
`
`
`
`
`xi
`
`

`

`Pursuant to 35 U.S.C. §§ 311-19 and 37 C.F.R. § 42.1 et seq., Dr. Squatch,
`
`LLC (“Dr. Squatch”) requests inter partes review (“IPR”) of claims 1-18 of U.S.
`
`Patent No. 11,540,999 (“the ’999 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311-
`
`19 and 37 C.F.R. § 42.1 et seq. The ’999 Patent is subject to AIA 35 U.S.C. §§ 102
`
`and 103.
`
`MANDATORY NOTICES
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8 (b)(1))
`
`Petitioner certifies that Dr. Squatch, LLC is the real party-in-interest.
`
`B. Related Matters (37 C.F.R. § (b)(2))
`
`The ’999 Patent is currently involved in the following proceeding: The
`
`Procter & Gamble Co. v. Dr. Squatch, LLC, Case No. 2:24-cv-04711 (C.D. Cal.).
`
`
`
`1
`
`

`

`C. Counsel and Service Information (37 C.F.R. § 42.8(b)(3) and (4))
`
`Lead Counsel
`Justin J. Oliver (Reg. No. 44,986)
`JOliver@Venable.com
`VENABLE LLP
`600 Massachusetts Ave., NW
`Washington, DC 20001
`T 202-721-5423
`F 202-344-8300
`
`
`Backup Counsel
`Sarah S. Brooks (Reg. No. 57,071)
`SSBrooks@Venable.com
`VENABLE LLP
`2049 Century Park East, Suite 2300
`Los Angeles, CA 90067
`T 310-229-0408
`F 310-229-9901
`
`
`Petitioner consents to electronic service of documents by email at:
`
`DrSquatch-IPRs@Venable.com.
`
`D.
`
`Payment of Fees Under 37 C.F.R. §§ 42.15(a) & 42.103
`
`The required fees are submitted herewith in accordance with 37 C.F.R.
`
`§§ 42.103(a) and 42.15(a). If any additional fees are due during this proceeding, the
`
`Office is authorized to charge such fees to Deposit Account No. 22-0261. Any
`
`overpayment or refund of fees may also be deposited in this Deposit Account.
`
`
`
`2
`
`

`

`I.
`
`INTRODUCTION
`
`The ’999 Patent claims known deodorant stick compositions to capture basic
`
`concepts used in known “natural” deodorants. The ’999 Patent’s sole independent
`
`claim recites a deodorant stick with: (1) an “antimicrobial comprising magnesium
`
`hydroxide”; (2) “a primary structurant with a melting point of at least about 50°
`
`Celsius”; and (3) “a hardness from about 80 mm*10 to about 140 mm*10.” The ’999
`
`Patent expressly acknowledged the pre-existence of similar deodorant sticks. In fact,
`
`it admits that a then-“currently marketed” aluminum-free deodorant stick (described
`
`as a “comparative” example in the specification) contained many ingredients recited
`
`in claim 1. This comparative example substantially matches the prior art published
`
`ingredient list for the Native deodorant applied below.
`
`The distinction noted in the ’999 patent relative to the prior art is the recited
`
`hardness range. However, the claimed hardness range was known since at least the
`
`1990’s to be the “typical” hardness used for stick deodorants to achieve “consumer
`
`acceptance.” Ex. 1006, 2:56-58, 6:23-29. Moreover, as a POSA long understood, the
`
`“typical” hardness range for a stick deodorant could be obtained simply by adjusting
`
`the amount of structurant used in the composition, making hardness an issue of
`
`routine optimization.
`
`Claim 1 also recites that the composition is free of an aluminum salt.
`
`Dependent claims also recite exclusions related to, e.g., synthetic fragrance and
`
`
`
`3
`
`

`

`silicones. As was appreciated by a person of ordinary skill in the art (“POSA”), the
`
`concept of more health-conscious ingredient lists (e.g., excluding aluminum salts,
`
`silicone, etc.) had been known in the field (and preferred) before the critical date.
`
`The prior art applied below exposes the claimed subject matter’s lack of
`
`inventiveness. Lesniak renders obvious all claims when combined with Phinney and
`
`Bianchi ’518. Lesniak sets forth most of the features of the claimed deodorant stick.
`
`Indeed, in a later application in the same family, the examiner applied Lesniak as an
`
`anticipatory reference against claims reciting many features recited in the present
`
`claims. Phinney teaches that magnesium hydroxide powder should be added as an
`
`antimicrobial for enhanced efficacy. Bianchi ’518 teaches that the claimed hardness
`
`range was known and needed for consumer acceptance.
`
`This Petition also relies on an ingredient list for a stick deodorant, which
`
`published before the critical date. That deodorant is from a company—Native—that
`
`Patent Owner acquired after the publication of the ingredient list, but before the
`
`critical date. Ex. 1007, 11; Ex. 1010, 1-2. Patent Owner stated that the reason for
`
`the acquisition was, in part, to reach customers who are “deliberate about what they
`
`put on their bodies.” Ex. 1011, 2-3; Ex. 1012, 1. Further, the published ingredient
`
`list substantially matches the ’999 Patent’s comparative example, which is admitted
`
`in the ’999 Patent to be “currently marketed” at the time of filing. The published
`
`Native ingredient list renders obvious all claims when combined with Bianchi ’254,
`
`
`
`4
`
`

`

`and Easy Homemade (an independent formulator’s publicly available website page
`
`describing natural deodorants). Specifically, while Native lists the ingredients in
`
`order of relative concentration, without quantitative amounts, Bianchi ’254 (1) sets
`
`forth preferred quantified amounts of those ingredients in typical deodorant sticks
`
`and (2) teaches the claimed hardness range was known and preferred. Easy
`
`Homemade teaches that baking soda, the antimicrobial in Native, can be substituted
`
`with magnesium hydroxide, a non-irritating alternative.
`
`Thus, as established in more detail below, the ’999 Patent claims nothing more
`
`than well-known characteristics of deodorant sticks.
`
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’999 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR. This petition is being filed within
`
`one year of Petitioner being served with the above-identified complaint.
`
`III.
`
`IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R. § 42.104(b)
`AND RELIEF REQUESTED
`A. Grounds for the Challenged Claims
`
`Petitioner requests (i) review of claims 1-18 of the ’999 Patent on the grounds
`
`set forth below and (ii) that those claims be found unpatentable.
`
`
`
`5
`
`

`

`Ground
`1
`
`2
`
`3
`
`4
`
`5
`
`Claim(s)
`1-7, 9-13,
`15-18
`8
`
`Basis for Unpatentability
`Obvious over Lesniak (Ex. 1003) in view of Phinney
`(Ex. 1004) and Bianchi ’518 (Ex. 1006)
`Obvious over Lesniak in view of Phinney, Bianchi
`’518, and Lamb (Ex. 1005)
`Obvious over Lesniak in view of Phinney, Bianchi
`’518, and Bianchi ’254 (Ex. 1008)
`1-15, 17-18 Obvious over Native (Ex. 1007) in view of Bianchi
`’254 and Easy Homemade (Ex. 1009)
`Obvious over Native in view of Bianchi ’254, Easy
`Homemade, and Millet (Ex. 1044)
`
`14
`
`16
`
`B. The Challenges Presented Are Not Cumulative
`
`The grounds for unpatentability presented in this petition are not cumulative
`
`to prosecution of the ’999 Patent. Lesniak and Phinney were of record during
`
`prosecution of the underlying application,1 but not applied or addressed during
`
`prosecution. As discussed in more detail below, Lesniak was subsequently applied
`
`by the same examiner in prosecution of a later application in the family in a manner
`
`consistent with the application in this Petition. Other applied references were not
`
`considered during prosecution.
`
`
`1 Lesniak’s specification also published as U.S. Patent Pub. No. 2017/0252288 and
`WO 2016/048425. References to Lesniak encompass the application of the
`specification published in other forms. Phinney’s specification published as U.S.
`Patent Pub. No. 2017/0271517.
`
`
`
`6
`
`

`

`IV. BACKGROUND OF THE TECHNOLOGY
`
`A. Deodorants vs. Antiperspirants
`
`Deodorants form a category of cosmetic products that were developed to mask
`
`and/or counteract the buildup of unwanted human body odor. Ex. 1013, 169-83,
`
`189-95. Deodorants typically contain antimicrobials and/or fragrances to inhibit the
`
`formation and perception of malodor. Id., 201.
`
`Antiperspirants are a subcategory of deodorants. Like deodorants, they were
`
`known to contain fragrances and/or antimicrobials, but they also included additional
`
`active ingredients such as aluminum or zinc salts that may block sweat pores in the
`
`skin. Ex. 1006, 3:5-11; Ex. 1014, ¶¶[0020]-[0026]; Ex. 1003, 3:39-4:21, 8:46-48,
`
`10:27; Ex. 1015, 5; Ex. 1049, 3-4; Ex. 1049, 3-4; Ex. 1008, ¶[0064]; Ex. 1013, 73,
`
`215. The blocking of sweat pores was known to reduce moisture and nutrients from
`
`glandular secretion, and ultimately curb the bacterial growth and metabolism
`
`responsible for malodorous compounds. Ex. 1013, 73; Ex. 1002, ¶¶32-33.
`
`B.
`
`Basics of Deodorants
`
`By the time of the purported invention, it was understood that anhydrous stick
`
`compositions were versatile and could be utilized in the development of deodorants
`
`(including antiperspirants). Ex. 1014, ¶[0008]. Anhydrous stick compositions were
`
`known to contain a wide range of ingredients, and typically contained a few well-
`
`established components described below. Ex. 1002, ¶¶34-36.
`
`
`
`7
`
`

`

`i.
`
`Carrier Oils
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`Liquid carriers were known components of stick deodorant and antiperspirant
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`compositions prior to the purported invention. These materials could (1) function as
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`emollients (skin conditioning agents that help maintain hydration); (2) help reduce
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`undesirable visible residue (whitening) upon application of the composition to the
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`skin; and/or (3) solubilize or disperse active ingredients such as the astringent
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`metallic salts in antiperspirants. Ex. 1014, ¶¶[0002], [0037], [0050]; Ex. 1008,
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`¶¶[0046], [0050]; Ex. 1006, 4:22-26; Ex. 1013, 330-31. It was known that existing
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`anhydrous liquids (used in personal care applications) could be used as carriers in
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`stick compositions. Ex. 1014, ¶¶[0037], [0044]. While silicone oils (synthetic
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`polymers) were often used as liquid carriers in traditional stick compositions (Ex.
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`1006, 4:9-15; Ex. 1014, ¶¶[0038]-[0043], [0046]), non-silicone oils had also been
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`identified as useful. Ex. 1008, ¶¶[0015], [0017], [0043]-[0054]. Glyceryl esters of
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`fatty acids, or triglycerides such as capric/caprylic triglycerides, had specifically
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`been recognized as suitable (non-silicone) carrier oils of natural origin. Ex. 1008,
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`¶[0050]; Ex. 1003, 2:38-39, 9:45-46.
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`It was known that the carrier oil component of a stick deodorant could be a
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`silicone oil, natural oil, and combinations thereof. E.g., Ex. 1008, ¶¶[0013]-[0020],
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`[0038]-[0054]; Ex. 1007, 11; Ex. 1016, 6-7; Ex. 1017, 5-7; Ex. 1018, 5-6. The total
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`amount of carrier oil could be, for example, about 40-80% by weight of the stick
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`composition and, where mixtures of silicone and natural oils, each could comprise,
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`e.g., 20-40% by weight of the total stick composition. Ex. 1008, ¶¶[0013]-[0020],
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`[0038]-[0054]. A POSA would have understood that whether to use a silicone oil or
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`natural oil (or a combination)—and what oil amount to use—was simply a design
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`choice. Ex. 1002, ¶¶37-38.
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`ii.
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`Structurants
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`Typically, structurants were known to be materials solid at ambient conditions
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`that were added to stick compositions to solidify the carrier oil. Ex. 1008, ¶[0057];
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`Ex. 1014, ¶¶[0028]-[0029]; Ex. 1001, 5:1-5.
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`Structurants with different melting point temperatures were used, often in
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`combination, to adjust properties of the stick including hardness. Ex. 1014, ¶[0029];
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`Ex. 1015, 19-24; Ex. 1049; Ex. 1001, 3:62-67, 5:45-48; Ex. 1013, 331. Known
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`examples of structurants included waxes (waxy materials), organic solids, modified
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`silicone solids, crystalline or other gellants, and combinations thereof. Ex. 1014,
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`¶[0029]. Long chain fatty alcohols such as stearyl alcohol had been recognized and
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`used as preferred structurants. Id., ¶[0030]; Ex. 1007, 11; Ex. 1008, ¶¶[0001],
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`[0019], [0058]-[0059], [0071]; Ex. 1013, 247. Arrowroot powder was also known
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`to thicken stick compositions.2 Ex. 1019, 5, 11-15, 17-19, 23; Ex. 1020, 2-5.
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`2 From its infringement complaint, Petitioner understands Patent Owner’s position
`to be that arrowroot powder, listed in Native’s ingredient list, does not count as a
`structurant. Ex. 1040, 4 (identifying stearyl alcohol, but not arrowroot powder, as a
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`Structurants were known to comprise, for example, 3-35% by weight of the total
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`stick composition. Ex. 1014, ¶[0028]; Ex. 1002, ¶¶39-41.
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`iii. Fragrances
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`Fragrances were commonly incorporated into deodorants and antiperspirants
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`to mask axillary malodors or odors from the product base. Ex. 1013, 194-201, 250-
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`51. Some natural or essential oil fragrances had also been known to possess
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`antimicrobial activity. Ex. 1013, 195-96; Ex. 1021, 209, 211-12; Ex. 1002, ¶42.
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`iv. Antimicrobials
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`Numerous antimicrobials were included as active ingredients in deodorants
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`and antiperspirants to prevent axillary odor by eliminating the bacteria responsible
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`for formation of odorous compounds. Ex. 1013, 171-83. Sodium bicarbonate (i.e.,
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`baking soda), in particular, had long been used in deodorants and antiperspirants and
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`was thought to deodorize via chemical modification of odorous compounds, i.e.,
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`reacting with the acidic compounds responsible for malodor to form non-volatile
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`salts. Id., 190, 347; Ex. 1005, 133. It was also understood that baking soda had
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`antimicrobial and/or adsorptive properties as well. Ex. 1013, 190; Ex. 1022, 981-
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`82; Ex. 1005, 133. Some users reported that baking soda in deodorant sticks irritated
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`structurant). Thus, Petitioner relies upon Patent Owner’s position in this regard for
`purposes of the IPR only. Petitioner reserves the right to present positions in any
`related litigation on this point that may differ from Patent Owner’s position on the
`“primary structurant” (i.e., Petitioner may argue in the alternative, in litigation, that
`arrowroot powder does count as a structurant).
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`their skin. Ex. 1017, 5-6; Ex. 1009, 6. Magnesium hydroxide, another antimicrobial,
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`had been used as a substitute for baking soda and was not found to cause the same
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`type of skin irritation. Ex. 1017, 5-8; Ex. 1009, 6, 9; Ex. 1004, 5:52-60, 6:9-12, 6:31-
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`34, 8:40-44; Ex. 1002, ¶43.
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`v. Hardness of Anhydrous Stick Compositions
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`Hardness was a known physical parameter affecting consumer acceptance that
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`was measured and controlled during the development of stick compositions. Ex.
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`1006, 6:23-25; Ex. 1014, ¶[0003]. Hardness was known to be closely related to other
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`product attributes such as strength against breakage, storage stability, and product
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`aesthetics (e.g., smooth application/gliding on the skin, and drier skin feel after use).
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`Ex. 1014, ¶[0003]. Formulators endeavored to develop compositions that had
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`“satisfactory strength and hardness while exhibiting aesthetically pleasing
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`attributes.” Id., ¶¶[0003]-[0005]. Since long before the ’999 Patent, it was known
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`that formulations that contained too large an amount of structurant(s) could result in
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`overly hard structures that were “too brittle” and/or “cosmetically unacceptable.”
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`Id., ¶[0003].
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`One test that was used to measure hardness of a stick composition was the
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`needle penetration test. Ex. 1006, 2:56-58, 6:23-29; Ex. 1008, ¶[0026]. A higher
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`value corresponds to a softer stick. Ex. 1008, ¶[0026]. Well before the ’999 Patent,
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`it was known that the hardness of “typical” stick compositions using an ASTM D-
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`11
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`1321 needle penetration test ranged from about 7.0 mm to about 14.0 mm,3 and that
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`products with hardness that fell outside that range would “typically generate low
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`consumer acceptance ratings.” Ex. 1006, 2:56-58, 6:23-29.
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`Formulators were aware that the hardness of a stick composition could be
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`controlled by adjusting the concentration or type of liquid carrier and/or structurant
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`(e.g., more structurant, balancing waxes with high and low melting points, etc.). Ex.
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`1014, ¶[0037] (“Such [liquid carrier] concentration will vary depending upon
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`variables such as desired product hardness . . . .”); Ex. 1001, 3:62-67, 5:45-48, 6:39-
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`40, 7:50-53. For example, U.S. Patent 4,049,792, a patent assigned to Patent Owner
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`which is incorporated by reference in the ’999 Patent (Ex. 1001, 10:60-64) states:
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`The low melting point wax can be used as an adjunct to the high melting
`point wax to provide structure and as an emollient. The low melting
`point wax can also be used to adjust the feel of the stick. One skilled in
`the art will easily be able to make a product which feels more brittle,
`soft, slippery, sticky, rough, etc., by blending various suitable high
`melting point and low melting point waxes.
`
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`Ex. 1041, 4:37-44 (emphasis added). A greater amount of structurants was known
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`to result in harder sticks, while a lesser amount was known to result in softer sticks.
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`Ex. 1014, ¶¶[0003], [0028]-[0029]; Ex. 1002, ¶¶44-46.
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`C. The Move to Natural Deodorants
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`i.
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`Aluminum-Free
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`3 This range is the same as from about 70 mm*10 to about 140 mm*10 stated in the
`’999 Patent. Ex. 1001, 12:66-13:1 (explaining that 80 mm*10 is the same as 8 mm).
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`By the time of the purported invention, it was known that many consumers
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`were seeking cosmetic products that were natural or otherwise free of potentially
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`harmful ingredients. Ex. 1010, 2; Ex. 1012, 1; Ex. 1023, 40-41. As a result of the
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`connection with safety and health, the term “natural” in the deodorant category
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`became associated not only with the inclusion of natural ingredients, but also the
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`absence of aluminum, which some believed was correlated to an increased risk of
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`Alzheimer’s disease, breast cancer, and/or prostate cancer. Ex. 1024, 833; Ex. 1013,
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`215, 332; Ex. 1023, 40; Ex. 1007, 5, 8, 11.
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`Aluminum-free deodorant sticks were well documented before the filing of
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`the ’999 Patent. In fact, independent formulators had shared recipes online for
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`homemade deodorants that were all-natural and free of aluminum. See Ex. 1020;
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`Ex. 1018; Ex. 1016; Ex. 1017. In response to the trend, cosmetic companies had
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`also launched deodorant products addressing those consumer preferences. For
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`example, the deodorant company Native had developed and marketed natural,
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`aluminum-free deodorant sticks as early as 2016.4 Ex. 1007, 5, 11; Ex. 1002, ¶¶47-
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`48.
`
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`4 Comparative Formula 1 in the ’999 Patent, which is described in the specification
`as a “currently marked product,” contains the same nine most predominant
`ingredients by weight as Native’s 2016 natural, aluminum-free deodorant stick. Ex.
`1007, 5, 11; Ex. 1001, 3:1-45, Table 1; 5:18-19 (indicating “hydrogenated castor oil”
`and “castor wax” are interchangeable and refer to the same material). Patent Owner
`acquired Native after the commercial introduction of the Native deodorants but
`before the effective filing date of the ’999 Patent. Ex. 1007, 11; Ex. 1010, 1-2.
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`ii.
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`Silicone-free
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`The move to natural deodorant formulations also involved the removal of
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`certain synthetic ingredients, such as silicones, from stick compositions. Consumers
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`preferred silicone-free formulations due
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`to real or perceived health and
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`environmental risks related to silicones. Ex. 1026, 1:41-57. For example, silicone
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`and its degradants had potential links to autoimmune system deficiencies in women
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`with silicone breast implants as well as other disorders. Id. Some publications
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`suggested that silicones could cause environmental harms, such as bioaccumulation
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`and environmental toxicity. Id.; Ex. 1027, ¶¶[0003]-[0004]; Ex. 1028, 814-15.
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`As discussed in Section IV.B.ii.a, the liquid carrier in traditional stick
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`compositions could be comprised of both synthetic silicone oils and natural, non-
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`silicone oils, like triglycerides. Natural deodorant stick formulations, including
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`Native’s 2016 deod