Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 17
`Entered: July 7, 2014
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`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 IPR2014-00507
`Patent 6,451,300 B1
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`Tel: 571-272-7822
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`Paper 17
`Entered: July 7, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CONOPCO, INC. dba UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`_______________
`
`Case IPR2014-00507
`Patent 6,451,300 B1
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`
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`
`
`
`Case IPR2014-00507
`Patent 6,451,300 B1
`
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`I. INTRODUCTION
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`Unilever filed a Petition for an inter partes review of claims 6-10, 14, 15,
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`and 21-23 of U.S. Patent No. 6,451,300 B1 (Ex. 1001, “the ’300 patent”). Paper 2
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`(“the Petition” or “Pet.”). The Procter & Gamble Company (“P&G”), the owner of
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`the ’300 patent, timely filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314. Based on the specific facts presented,
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`we exercise our discretion, and deny review under 35 U.S.C. § 325(d).
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`
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`A. Related Matter: Case IPR2013-00509 (“the 509 proceeding”)
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`Unilever filed an earlier Petition that sought an inter partes review of
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`claims 1-25 of the ’300 patent. Conopco, Inc. dba Unilever v. The Procter &
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`Gamble Co., Case IPR2013-00509 (“IPR2013-00509”), Paper 4 (“the 509
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`Petition” or “509 Pet.”). We granted review of claims 1-5, 11-13, 16-20, 24, and
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`25, and denied review of claims 6-10, 14, 15, and 21-23. IPR2013-00509,
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`Paper 10 (“509 Dec. on Inst.”). Unilever filed an unsuccessful Request for
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`Rehearing, seeking reconsideration of our decision denying review of claims 6, 14,
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`and 15. IPR2-13-00509, Paper 12) (Request for Rehearing).
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`Unilever then filed the instant Petition, challenging the patentability of each
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`claim that was denied review in the 509 proceeding. Pet. 1. Unilever concurrently
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`filed a Motion for Joinder requesting that we join the instant Petition with the 509
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`proceeding. Paper 3 (“Joinder Mot.”).
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`
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`B. The ’300 Patent (Ex. 1001)
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`The ’300 patent is directed to a shampoo composition and method for
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`providing a combination of anti-dandruff efficacy and conditioning. Ex. 1001,
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`2:20-22. According to the ’300 patent Specification, “[t]hese shampoos comprise:
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`Case IPR2014-00507
`Patent 6,451,300 B1
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`(A) from about 5% to about 50%, by weight, of an anionic surfactant; (B) from
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`about 0.01% to about 10%, by weight, of a non-volatile conditioning agent;
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`(C) from about 0.1% to about 4%, by weight, of an anti-dandruff particulate;
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`(D) from about 0.02% to about 5%, by weight, of at least one cationic polymer;
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`(E) from 0.005% to about 1.5%, by weight, of a polyalkylene glycol; and
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`(F) water.” Id. at 2:22-30. The Specification further defines the polyalkylene
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`glycol. Id. at 2:30-33.
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`The Specification sets forth five examples of the inventive shampoo
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`composition. Id. at 31:50-33:45. The Specification also describes a method for
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`applying the shampoo to the hair and scalp, which preferably has been wetted with
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`water, in an amount that is effective to confer anti-dandruff efficacy and hair
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`conditioning; the shampoo is thereafter rinsed off. Id. at 2:34-37; 31:24-28.
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`
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`C. Illustrative Claim
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`Claim 10, which depends from claims 1 and 2, is illustrative of the claimed
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`subject matter. Those claims are reproduced below.
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`A shampoo composition comprising:
`1.
`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 at least
`one cationic polymer;
`e) from 0.005% to about 1.5%, by weight of the composition, of a
`polyalkylene glycol corresponding to the formula:
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`Case IPR2014-00507
`Patent 6,451,300 B1
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`i) wherein R is selected from the group consisting of hydrogen,
`methyl and mixtures thereof;
`ii) wherein n is an integer having an average value from about 1,500
`to about 120,000; and
`f) water.
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`A shampoo composition according to claim 1, wherein said at least
`2.
`one cationic polymer component is selected from the group consisting of
`guar derivatives, cellulose derivatives, and mixtures thereof.
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`10. A shampoo composition according to claim 2, wherein said cellulose
`derivatives have a charge density from about 0.2 meq/g to about 0.6 meq/g.
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`D. The Asserted Grounds of Unpatentability
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`In the instant petition, Unilever challenges claims 6-10, 14, 15, and 21-23 of
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`the ’300 patent based on the following asserted grounds of unpatentability:
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`Reference[s]
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`Kanebo1 and Cothran2
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`Kanebo, Cseh,3 and Cosmedia4
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`Kanebo, Reid,5 and Bartolo6
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`Basis
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`§ 103
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`§ 103
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`§ 103
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`Claims challenged
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`6-10
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`6
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`6, 8, 9
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`Kanebo, Cseh, Sime,7 and Cosmedia
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`§ 103
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`6
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`1 Kanebo JP 09-188614 (July 22, 1997) (English translation) (Ex. 1006).
`2 Cothran WO 96/32919 (Oct. 24, 1996) (Ex. 1044).
`3 Cseh US 4,676,978 (June 30, 1997) (Ex. 1042).
`4 Cosmedia® Guar C261 (Product Data Sheet) (Ex. 1040).
`5 Reid US 5,085,857 (Feb. 4, 1992) (Ex. 1018).
`6 Bartolo US 5,202,048 (April 13, 1993) (Ex. 1012).
`7 Sime US 5,037,818 (Aug. 6, 1991) (Ex. 1028).
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`Case IPR2014-00507
`Patent 6,451,300 B1
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`Reference[s]
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`Kanebo, Cardin,8 and Kalla9
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`Kanebo and Bar-Shalom10
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`Evans11 and Cothran
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`Evans, Cseh, and Cosmedia
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`Basis
`
`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Claims challenged
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`14, 15, 22
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`21, 23
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`10
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`6, 8, 9
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`II. ANALYSIS
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`§ 314(a) as follows:
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`THRESHOLD -- The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`the petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.
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`As set forth in 35 U.S.C. § 325(d), the Director, and by extension the Board,
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`has broad discretion to deny a petition that raises substantially the same prior art or
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`arguments previously presented to the Office. That statutory provision provides as
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`follows:
`
`In determining whether to institute or order a proceeding under this chapter,
`chapter 30, or chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially the same
`prior art or arguments previously were presented to the Office.
`
`
`8 Cardin US 5,104,645 (Apr. 14, 1992) (Ex. 1014).
`9 Kalla WO 97/026854 (July 31, 1997) (Ex. 1031).
`10 Bar-Shalom US 5,618,798 (Apr. 8, 1997) (Ex. 1034).
`11 Evans WO 97/14405 (Apr. 24, 1997) (Ex. 1010).
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`Case IPR2014-00507
`Patent 6,451,300 B1
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`The instant Petition challenges each claim that was denied review in
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`the 509 proceeding. Compare 509 Pet. 6-7 with Pet. 9-10 (both raising
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`obviousness challenges against claims 6-10, 14, 15, and 21-23); see 509 Dec. on
`
`Inst. 18 (denying review of those claims). The instant Petition relies on eleven
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`pieces of prior art: four that were raised in the 509 Petition (Kanebo, Cardin,
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`Evans, and Bartolo) and seven that are new to this proceeding (Cothran, Cseh,
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`Cosmedia, Reid, Sime, Kalla, and Bar-Shalom). Compare 509 Pet. 9-10 with
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`Pet. 8; 509 Pet. 1, 21, 32, 37 with Pet. 8 (for Bartolo). Unilever, however, presents
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`no argument or evidence that the seven newly cited references were not known or
`
`available to it at the time of filing of the 509 Petition. Moreover, six grounds rely
`
`on Kanebo, a reference previously presented in the 509 Petition. The two
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`remaining grounds rely on Evans, a reference previously presented in the 509
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`Petition. Compare 509 Pet. 9-10 with Pet. 10. On this record, we exercise our
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`discretion and “reject the petition” because “the same or substantially the same
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`prior art” previously was “presented to the Office” in the 509 proceeding.
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`35 U.S.C. § 325(d).
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`An additional rationale supports our decision. We are persuaded that
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`arguments raised in the instant Petition are “substantially the same” as those
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`“previously [] presented to the Office” in the 509 proceeding. Id. Unilever’s
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`treatment of claim 10 is illustrative. Claim 10 includes all the limitations of
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`claims 1 and 2 and, further, requires cellulose derivatives within a specified charge
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`density range.
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`In the 509 Petition, Unilever argued that Evans discloses each limitation of
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`claim 10, except for the limitation relating to the charge density, arguing that
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`Case IPR2014-00507
`Patent 6,451,300 B1
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`Coffindaffer12 suggests that missing feature. 509 Pet. 43, 48-49. We found lacking
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`any persuasive evidence of a reason to combine those references. 509 Dec. on
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`Inst. 15-16. Unilever now contends that claim 10 would have been obvious over
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`Evans and Cothran. Pet. 42-47, 53-54. In both petitions, Unilever advances
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`“substantially the same” argument—namely, that claim 10 would have been
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`obvious over Evans in view of other art disclosing cellulose derivatives that
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`overlap or fall within the specified charge density range. 35 U.S.C. § 325(d).
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`Similarly, claim 15 includes all the limitations of claim 1 and, further,
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`requires an anti-dandruff particulate having an “average particulate size of
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`about 2.5 µm.” In the 509 Petition, Unilever argued that Kanebo discloses each
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`limitation of claim 15, except for the limitation relating to “average particulate
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`size,” arguing that Cardin discloses that missing feature. 509 Pet. 50-52. We
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`denied review on the ground that Unilever provided only “conclusory arguments”
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`supporting the proposed combination of prior art. 509 Dec. on Inst. 15-16.
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`Unilever now contends that claim 15 would have been obvious over Kanebo,
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`Cardin, and Kalla. Pet. 34-37. Unilever relies on Kalla in support of its reason to
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`combine, and in particular, for a disclosure of advantages of using the platelet
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`particle form of 1-hydroxy-2pyridinethione salts, having the specified particle size
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`range, as the antimicrobial agent in a shampoo composition. Pet. 36-37. On this
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`record, Unilever advances “substantially the same” argument that was previously
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`asserted in the 509 Petition. 35 U.S.C. § 325(d); compare 509 Pet. 50-52 with
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`Pet. 34-37.
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`
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`We have considered all of the papers filed in both proceedings. Based on
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`the information presented, we are persuaded that the instant Petition uses our prior
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`12 Coffindaffer US 5,624,666 (April 29, 1997).
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`Case IPR2014-00507
`Patent 6,451,300 B1
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`Decision on Institution to bolster challenges that were advanced, unsuccessfully, in
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`the 509 Petition. Specifically, Unilever argues that the instant Petition “obviates
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`purported deficiencies” illuminated in our prior decision. Joinder Mot. 8. P&G,
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`on the other hand, contends that Unilever seeks to revive and augment challenges
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`that were rejected in the 509 proceeding, “[a]rmed with the Board’s guidance as to
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`the flaws in the [509 Petition].” Prelim. Resp. 7. On this record, we determine that
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`the instant Petition presents “the same or substantially the same prior art or
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`arguments” that were advanced in the 509 Petition. 35 U.S.C. § 325(d).
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`Unilever has not presented considerations that tip the balance in favor of
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`review. Given that we already have considered the same or substantially the same
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`prior art or arguments in connection with the challenged claims, we deny the
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`request for an inter partes review under § 325(d). We deny the motion for joinder
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`as moot.
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`It is
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`III. ORDER
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`ORDERED that the Petition is denied at to all challenged claims of
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`the ’300 patent;
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`FURTHER ORDERED that Unilever’s Motion for Joinder with IPR2013-
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`00509 is denied as moot.
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`Case IPR2014-00507
`Patent 6,451,300 B1
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`PETITIONER:
`
`Eldora Ellison
`Eellison-PTAB@skgf.com
`
`Robert Sterne
`Rsterne-PTAB@skgf.com
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`
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`PATENT OWNER:
`
`David Maiorana
`dmaiorana@jonesday.com
`
`John Biernacki
`jvbiernacki@jonesday.com
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`Michael Weinstein
`mweinstein@jonesday.com
`
`Steven Miller
`Miller.sw@pg.com
`
`Kim Zerby
`Zerby.kw@pg.com
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`Carl Roof
`Roof.cj@pg.com
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`Angela Haughey
`Haughey.a@pg.com
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