Conopco, Inc. dba Unileverv.the Procter & Gamble Company

Patent Trial and Appeal Board

Feb 10, 2015

09558447 (P.T.A.B. Feb. 10, 2015)

Trials@uspto.gov Paper 62
Tel: 571-272-7822 Entered: February 10, 2015

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 IPR2013-00509
Patent 6,451,300 B1
_______________

Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
RAMA G. ELLURU, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.C.S. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Conopco, Inc. dba Unilever (“Petitioner”), filed a Petition requesting an
inter partes review of claims 1–25 of U.S. Patent No. 6,451,300 B1 (Ex. 1001, “the
’300 patent”). Paper 2 (“Pet.”). The Procter & Gamble Company (“Patent
Owner”) filed a Preliminary Response. Paper 8. In a Decision on Institution
(Paper 10, “Dec.”), we instituted trial on three grounds of unpatentability as set
forth in the chart below.
Reference Basis Claims Challenged
Kanebo
1
§ 102(b) 1, 2, 4, 5, 11, 13, 16, 17, and 20
Kanebo § 103 3, 18, and 25
Evans
2
§ 103 1, 12, 16, 19, and 24

Within the time periods allowed by our rules, Patent Owner filed a Response
and Petitioner filed a Reply. Paper 35 (“PO Resp.”); Paper 45 (“Reply”). The
parties also fully briefed Patent Owner’s Motion to Exclude Evidence. Paper 54
(“PO Mot. Ex.”); Paper 55 (“PO Mot. Ex. Resp.”); Paper 56 (“PO Mot. Ex.
Reply”).
A combined oral hearing was conducted on November 5, 2014, in this
proceeding and IPR2013-00505, which relates to U.S. Patent No. 6,974,569 B2,
(“the 505 Proceeding”), and involves the same parties. Paper 60 (“Tr.”).
Concurrently herewith, we issue a Final Written Decision in the 505 Proceeding.

1
Kanebo, JP 9-188614 (July 22, 1997) (English translation) (Ex. 1006).
2
Evans, WO 97/14405 (Apr. 24, 1997) (Ex. 1010).
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We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons set
forth below, we determine that Petitioner has demonstrated, by a preponderance of
the evidence, the unpatentability of claims 1–5, 11–13, 16–20, 24, and 25.
Specifically, a preponderance of the evidence demonstrates that:
(1) claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 are anticipated by Kanebo under
35 U.S.C. § 102(b);
(2) claims 3, 18, and 25 are unpatentable over Kanebo under 35 U.S.C.
§ 103; and
(3) claims 1, 12, 16, 19, and 24 are unpatentable over Evans under 35 U.S.C.
§ 103.
B. Related Proceedings
The ’300 patent is the subject of co-pending district court litigation initiated
after the filing of the Petition. See Procter & Gamble Co. v. Conopco, Inc., 1:13-
cv-00732-TSB (S.D. Ohio) (filed Oct. 10, 2013). Petitioner also filed a second
petition seeking inter partes review of claims 6–10, 14, 15, and 21–23 of the ’300
Patent, which we denied. IPR2014-00507, Paper 17 (denying review).
C. The ’300 Patent
The ’300 patent is directed to a shampoo composition and method for
providing a combination of anti-dandruff efficacy and hair conditioning. Ex. 1001,
2:20–22. According to the ’300 patent specification,
“[t]hese shampoos compositions 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 the
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composition, of at least one cationic polymer; (E) from 0.005% to
about 1.5%, by weight, of a polyalkylene glycol; and (F) water.”

Id. at 2:22–30. The specification further defines the polyalkylene glycol. Id. at
2:30–33. The specification also sets forth five examples of the claimed shampoo
composition. Id. at 31:50–33:45. The specification describes a method for
applying the shampoo to the hair and scalp, which preferably has been wetted with
water, in an amount that is effective to confer anti-dandruff efficacy and hair
conditioning; the shampoo thereafter is rinsed off. Id. at 2:34–37, 31:24–28.
D. Illustrative Claim
The independent claims—claims 1 and 19—specify a shampoo composition
comprising an anionic surfactant, a non-volatile conditioning agent, an anti-
dandruff particulate, a cationic polymer, and a polyalkylene glycol. Weight-
percent ranges are specified for the components.
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 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:

i) wherein R is selected from the group consisting of hydrogen,
methyl and mixtures thereof;
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ii) wherein n is an integer having an average value from about 1,500
to about 120,000; and
f) water.
II. ANALYSIS
A. Claim Construction
In an inter partes review proceeding, we give claim terms in unexpired
patents their broadest reasonable interpretation in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Under that standard, we
assign claim terms their ordinary and customary meaning, as understood by a
person of ordinary skill in the art, in the context of the entire patent disclosure. In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If an inventor acts
as his or her own lexicographer, the definition must be set forth in the specification
with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
The independent claims—claim 1 and 19—specify a shampoo composition
comprising each required ingredient in an amount that falls within specified
weight-percent ranges. Neither party advances a special meaning for any claim
term. Claims 13 and 19 require a “zinc salt of 1-hydroxy-2-pyridinethione.”
Petitioner argues, and Patent Owner does not contest effectively, that the terms
“zinc salt of 1-hydroxy-2-pyridinethione” and “zinc pyrithione” interchangeably
refer to the same chemical component. Pet. 5 (citing Ex. 1001, 16:55–59, 32:30–
51 & n.4; Ex. 1003 ¶ 17); see generally PO Resp. On this record, we construe each
claim term according to its ordinary and customary meaning, consistent with the
specification, and determine that no term needs further interpretation for the
purpose of rendering this Final Written Decision.
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B. Anticipation of Claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 by Kanebo
Petitioner’s claim charts, substantive arguments, and supporting Declaration
of Arun Nandagiri
3
show sufficiently that Kanebo in Example 10 describes a
shampoo composition comprised of components in weight-percent ranges that
meet the limitations of claims 1, 2, 4, 5, 11, 13, 16, 17, and 20.
4
Pet. 10–18;
Ex. 1003 ¶¶ 35–47, 50–60, 62–63; Ex. 1006 ¶ 37 (Kanebo Example 10).
Regarding claim 13, which depends from claim 1 and further requires that
“said anti-dandruff particulate is a zinc salt of 1-hydroxy-2-pyridinethione,” we
find that the “zinc pyrithione” in Kanebo’s Example 10 (Ex. 1006 ¶ 37) is a
synonym for the zinc salt required by claim 13. Pet. 12, 14; Ex. 1003 ¶¶ 39, 40;
see Pet. 5 (citing Ex. 1001, 16:55–59, 32:30–51 & n.4; Ex. 1003 ¶ 17). For
example, the two terms are used interchangeably in the specification of the ’300
patent, which identifies both as the same chemical compound, designated as
“ZPT.” Ex. 1001, 16:55–59, 31:41–45, 32:30–51 & n.4; see Ex. 1003 ¶¶ 17, 56–
57 (explaining the disclosures, relating to ZPT, in the ’300 patent).
Claim 20, moreover, recites “[a] method for providing anti-dandruff efficacy
and conditioning hair” and requires “a) wetting said hair with water; b) applying to

3
Petitioner’s witness, Dr. Nandagiri, has over 30 years of experience formulating
shampoos, and in that capacity, has “been personally involved in the formulation
of hundreds of hair care products.” Ex. 1003 ¶ 4. Dr. Nandagiri has significant
experience formulating and testing both conditioning and anti-dandruff shampoos.
Id. ¶¶ 5–7, 9. Dr. Nandagiri has the requisite familiarity with shampoo formulation
and testing to opine on the views of a hypothetical person of ordinary skill in the
art. See id. ¶¶ 4-10. We find his testimony credible and persuasive.
4
In our decision to institute, we expressly denied trial as to claim 3 based on
anticipation by Kanebo. Dec. 9–10. We decline to consider Petitioner’s further
argument, stated in the Reply brief, that claim 3 is anticipated by Kanebo. Reply 2.
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said hair an effective amount of a shampoo composition according to claim 1; and
c) rinsing said shampoo composition from said hair using water.” Ex. 1001,
35:11–17. Kanebo discloses an evaluation of the composition of Example 10 that
involves assessing “usability upon rinsing.” Ex. 1006 ¶ 38. Kanebo further
discloses a method for evaluating shampoo that involves hair that is “washed . . .
followed by rinsing.” Ex. 1006 ¶ 21; see Ex. 1003 ¶¶ 62–63.
Patent Owner advances no arguments or evidence responsive to the
anticipation ground based on Kanebo. See PO Resp. 12–13 (electing to exclude the
anticipation ground from the statement of issues); see generally id. (limiting
argument to obviousness grounds based on Kanebo and Evans). Furthermore,
Patent Owner’s witness, Dr. Robert Y. Lochhead, states no opinion about the
underlying facts surrounding the anticipation ground, nor does he opine upon the
ultimate conclusion that Kanebo teaches each and every limitation of the claims
challenged in the anticipation ground. Ex. 2015 ¶ 27 (sole paragraph that
addresses anticipation, stating general principles of law); id. ¶¶ 32, 67 (limiting
opinions to the obviousness grounds set for trial).
5

5
Exhibit 2015 is a declaration of Patent Owner’s witness, Dr. Robert Y.
Lochhead, filed July 25, 2014. Dr. Lochhead has been employed in academia for
about 25 years and has significant experience practicing and teaching in the field of
polymer chemistry. Ex. 2015 ¶¶ 6–7, 9. We are persuaded that Dr. Lochhead is an
expert in polymer chemistry. His level of experience directly related to
formulating shampoos, however, is less clear. He states that “some” of the 24
patents and applications in which he is named as an inventor “relate to shampoo
compositions.” Id. ¶ 8. He states that he has “consulted widely for the personal
care industry, particularly in fields of chemistry, polymer chemistry, and other
industrial chemical applications.” Id. ¶ 11. He also states that he has “authored
alone, or with colleagues, a number of articles and book chapters” that relate to
shampoo formulations, without identifying particular individual contributions that
he made to that work. Id. ¶ 12.
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We have considered the evidence of the whole record, and conclude that a
preponderance of the evidence supports a conclusion that claims 1, 2, 4, 5, 11, 13,
16, 17, and 20 are anticipated by Kanebo under 35 U.S.C. § 102(b).
C. Obviousness of Claims 3, 18, and 25 over Kanebo
We first turn to claim 3, which indirectly depends from claim 1. Ex. 1001,
34:5–7. Claim 1 requires “at least one cationic polymer,” and claim 2, which
depends from claim 1, further requires a cationic polymer that is selected from a
group defined as “guar derivatives, cellulose derivatives, and mixtures thereof.”
Id. at 33:55; 34:1–5. Claim 3 depends from claim 2, and limits the recited “guar
derivatives” to “guar hydroxypropyltrimonium chloride.” Id. at 34:5–7. Kanebo’s
Example 10 teaches each component of the shampoo composition required by
claim 3, but for that specified guar derivative. Ex. 1006 ¶ 37.
A preponderance of the evidence persuades us that cationic polymers are
included in shampoo formulations to “help achieve conditioning efficacy”; in fact,
Patent Owner’s own witness recognizes that function of cationic polymers in
shampoo compositions. Ex. 2015 ¶ 52 (citing Ex. 1006 ¶ 14); see Pet. 15–17;
Ex. 1003 ¶¶ 48–49, 62–63; Ex. 1034 ¶¶ 29–30. Petitioner advances evidence
(Ex. 1003 ¶ 49) that the specific cationic polymer (guar hydroxypropyltrimonium
chloride) required by claim 3 is a component in Kanebo’s Example 8 (Ex. 1006
¶ 31 n.*2), and, further, that the specified guar derivative is an art-recognized,
interchangeable alternative for the cationic polymer (the cationized cellulose
derivative) employed in Kanebo’s Example 10. Pet. 15–16; see Ex. 1006 ¶ 14
(preferred cationic polymers include cationized cellulose derivative and cationized
guar gum derivative), ¶ 37 (disclosing use of cationized cellulose derivative in
Example 10); see also Ex. 1003 ¶ 49 (explaining Kanebo’s disclosure); Ex. 1034
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¶¶ 29–32 (explaining interchangeability of cationic polymers in Kanebo’s
Examples 8 and 10). Based on the whole record developed during trial, we are
persuaded that Kanebo on its face evidences the interchangeability of the specified
guar derivative (disclosed in Example 8) for the cationized cellulose derivative
(disclosed in Example 10).
Patent Owner counters that the guar and cellulose derivatives disclosed in
Kanebo were not recognized as interchangeable components in a shampoo
formulation. Ex. 2015 ¶¶ 49–55. Specifically, Patent Owner advances the
testimony of Dr. Lochhead, who points out that Kanebo’s Example 8, which
includes the specified guar derivative, does not include also an anti-dandruff agent.
Dr. Lochhead, however, provides no persuasive reason why that fact diminishes a
conclusion that the guar derivative of Example 8 would have been recognized as
interchangeable with the cationized cellulose of Kanebo’s Example 10 for the
common function of improved conditioning. Id. ¶ 52.
Dr. Lochhead states also that the shampoo of Kanebo’s Example 10 already
exhibits “excellent” conditioning properties; therefore, one would not have been
prompted to add (or swap in) to that formulation another cationic polymer, such as
the specified guar derivative disclosed in Example 8. Id. ¶ 53. That argument is
unpersuasive because, where two known alternatives are interchangeable for a
desired function, an express suggestion to substitute one for the other is not needed
to render a substitution obvious. In re Fout, 675 F.2d 297, 301 (CCPA 1982); In
re Siebentritt, 372 F.2d 566, 568 (CCPA 1967); see KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (indicating that a claim is obvious if it is no “more than
the predictable use of prior art elements according to their established functions,”
even without an express suggestion to combine).
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Dr. Lochhead also suggests that Petitioner was required, in the Petition, to
establish that the proposed substitution “would have resulted in a composition that
forms a coacervate upon aqueous dilution.” Ex. 2015 ¶ 54. Petitioner replies,
persuasively, that none of the claims require a coacervate. Reply 7. In any event,
a preponderance of the evidence persuades us that “cationic guar and cellulose
derivatives were recognized deposition aids that had been in use for decades prior
to the ’300 patent,” and that “their interchangeability and functions in [anti-
dandruff] conditioning shampoos” were known at the time of the invention.
Reply 4; Ex. 1034 ¶ 31; see also id. ¶¶ 29–32 (opinions of Dr. Nandagiri, and
objective support cited therein, regarding the interchangeability of the two cationic
polymers). On that point, we credit Dr. Nandagiri’s testimony, “that coacervates
formed from anionic surfactants and guar or cellulose derivatives were discovered
in the 1970s and 1980s,” and that the guar derivative disclosed in Kanebo’s
Example 8, and required by claim 3, “was particularly well known and widely used
in shampoos prior to the ‘300 patent.” Ex. 1034 ¶¶ 31–32 (and objective support
cited therein).
Based on the evidence of record, we conclude that a person of ordinary skill
in the art would have understood that the guar derivative in Kanebo’s Example 8
(and specified in claim 3) is an interchangeable alternative for the cellulose
derivative disclosed in Kanebo’s Example 10. Pet. 16. A preponderance of the
evidence persuades us, therefore, that the subject matter of claim 3 would have
been obvious over Kanebo.
We next turn to claims 18 and 25, which require ethylene glycol distearate
(“EGDS”) as a suspending agent. The crux of the dispute surrounding those
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claims is whether one would have been prompted to substitute EGDS for the
ethylene glycol dimyristate (“EGDM”), which is disclosed as a pearlescent agent
in Kanebo’s Example 10. Ex. 1006 ¶ 37. A preponderance of the evidence shows
that EGDS and EDGM were known at the time of the invention, not only as
equivalent pearlescent agents, but also as equivalent suspending agents. Ex. 1034
¶ 34. Both ingredients appear in lists of preferred glycerol esters in Kanebo’s
general disclosure (Ex. 1006 ¶ 16), and in the ’300 patent specification (Ex. 1001
26:12–16). Pet. 17 (citing Ex. 1003 ¶ 61).
We have considered Patent Owner’s evidence, advanced in support of the
argument that EGDS and EDGM would not have been recognized as
interchangeable in a shampoo formulation. PO Opp. 16–19. On that point,
however, we credit the testimony of Petitioner’s witness, Dr. Nandagiri, over that
of Patent Owner’s witness, Dr. Lochhead. Compare Ex. 1003 ¶ 61 (Dr.
Nandagiri’s declaration testimony), with Ex. 2015 ¶ 45 (Dr. Lochhead’s
declaration testimony).
6
Both ingredients are linear fatty acid glycol diesters—
EGDS is used in six of Kanebo’s shampoo formulations, whereas EDGM is used
in five—thus underscoring their interchangeability. Reply 4–5; Ex. 1006 ¶¶ 16,
31, 37–38; Ex. 1034 ¶ 33. A preponderance of the evidence persuades us that it
would have been obvious at the time of the invention to substitute EGDS for

6
Dr. Nandagiri has worked extensively in the field of shampoo formulation and
testing for over 30 years. Ex. 1003 ¶¶ 4–10; Ex. 1004 (curriculum vitae). Patent
Owner directs us to no persuasive evidence that Dr. Lochhead has had any
significant experience formulating or testing shampoos after about 1990. Ex. 2015
¶¶ 5–12; Ex. 2016 (curriculum vitae). Where their testimony conflicts, we find
that Dr. Nandagiri’s opinions, regarding the state of the art in 1999, are more
credible than those of Dr. Lochhead. See supra notes 3, 5.

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EDGM in the shampoo composition described in Kanebo’s Example 10 and,
thereby, attain the subject matter of claims 18 and 25. Pet. 17, 19; Ex. 1001,
26:12–16; Ex. 1003 ¶ 61; Ex. 1006 ¶¶ 16, 37; Ex. 1034 ¶¶ 33–36.
In Patent Owner’s view, Petitioner fails to show sufficiently why an ordinary
artisan would have been prompted to make the proposed substitutions of
ingredients in Kanebo. PO Resp. 13–14. The only substitutions necessary,
however, involve the exchange, or swapping, of interchangeable ingredients, which
were known to serve the same function in a shampoo formulation. Where two
known alternatives are interchangeable for a desired function, an express
suggestion to substitute one for the other is not needed to render a substitution
obvious. In re Fout, 675 F.2d at 301; In re Siebentritt, 372 F.2d at 568; see KSR
Int’l Co., 550 U.S. at 417. That same settled principle of patent law undercuts
Patent Owner’s further argument—that the obviousness ground “fail[s] because
[Petitioner] points to no flaws or shortcomings in the disclosure of Kanebo that
would have motivated [a person of ordinary skill in the art] to modify it.”
PO Resp. 15.
Patent Owner’s further argument, that Kanebo and the ’300 patent focus on
solving different problems, is not supported by a preponderance of the evidence.
PO Resp. 14–15. Kanebo’s Example 10 discloses an anti-dandruff, conditioning
shampoo formula; thus, Patent Owner’s suggestion that Kanebo falls outside the
range of relevant prior art is unpersuasive. Ex. 1006 ¶ 37 (Kanebo’s Example 10).
Based on the evidence of the whole record, we are persuaded that Petitioner
has shown by a preponderance of the evidence that the subject matter of claims 3,
18, and 25 would have been obvious over Kanebo.

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D. Obviousness of Claims 1, 12, 16, 19, and 24 over Evans
Petitioner’s claim charts, substantive arguments, and Declaration of
Dr. Nandagiri show sufficiently that claims 1, 12, 16, 19, and 24 would have been
obvious over Evans. Pet. 38–46; Ex. 1003 ¶¶ 84–90 (and citations therein to
Ex. 1010 (Evans)).
7
In particular, Petitioner directs us to credible evidence from
which we find that Evans discloses a shampoo formulation comprising components
in ranges that meet, are subsumed by, or overlap the ranges specified in those
claims. Pet. 38–46. Patent Owner raises no evidence that casts any reasonable
doubt on that finding. PO Resp. 22–23. We conclude that, to the extent that the
weight-percent range stated in those claims for any shampoo ingredient is critical,
a desire to identify in Evans’s composition the optimal or workable range, by
routine experimentation, would have led a skilled artisan to the specified range.
Pet. 41–42 (citing Ex. 1003 ¶ 86).
Patent Owner raises two arguments in an attempt to counter that conclusion.
We find both unpersuasive. First, Patent Owner submits that Evans solves a
problem unrelated to the anti-dandruff efficacy that is of concern in the ’300
patent. PO Resp. 22–23. Yet, Patent Owner observes that Evans discloses the use
of optional anti-dandruff agents in a conditioning shampoo. Id. at 23; Ex. 1010,
28–29
8
(Evans, disclosing “anti-dandruff aids” and “antidandruff agents such as
pyridinethione salts”). On this record, we are persuaded that a preponderance of
evidence supports a finding that Evans addresses anti-dandruff efficacy, and is
within the scope of the relevant prior art.

7
Here again, where their testimony conflicts, we find that Dr. Nandagiri’s
opinions are more credible than those of Dr. Lochhead. See supra notes 3, 5, 6.
8
We refer to the numbers centered on the bottom of the pages of this exhibit.
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Second, Patent Owner submits that one would arrive at the subject matter of
claims 1, 12, 16, 19, and 24 only “by cherry picking from various disclosures of
Evans with the aid of hindsight.” PO Resp. 24. In particular, Patent Owner takes
issue with the fact that some of the ingredients required by the challenged claims
are described as optional in Evans. Id. at 25–27. Those arguments are not
persuasive in light of the record developed at trial. Specifically, we agree with
Petitioner that the disclosure of Evans is not limited to its working examples; nor is
Evans’s disclosure “isolated or unrelated” to a patent, incorporated therein by
reference—that is, U.S. Patent No. 3,962,418 (“the ’418 patent”)—which
“identifies cationized cellulose derivatives as useful cationic polymers in
amounts . . . encompassed by” the limitations of claim 1 and 19. Reply 9 (and
citations to the record therein); Pet. 39–40 (claim chart); Ex. 1010, 25:6–9 (Evans,
incorporating by reference the description of suitable cellulose ethers provided in
the ’418 patent); Ex. 1011, 3:5–9 (the ’418 patent, disclosing suitable cellulose
ethers that meet the limitations of claims 1 and 19); Ex. 1034 ¶ 43 (explaining the
significance of the disclosures of Evans and the ’418 patent, from the viewpoint of
a person of ordinary skill in the art at the time of the invention).
We determine that the shampoo composition specified in the challenged
claims is an obvious variant of the shampoo disclosed in Evans, and contributes no
“more than the predictable use of prior art elements according to their established
functions.” KSR Int’l Co., 550 U.S. at 417; cf. In re Mayne, 104 F.3d 1339, 1340
(Fed. Cir. 1997) (substitution of one known element for a known equivalent is
prima facie obvious). Based on the evidence of the whole record, we conclude that
claims 1, 12, 16, 19, and 24 are unpatentable as obvious over Evans under 35
U.S.C. § 103.
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E. Patent Owner’s Motion to Exclude
The party moving to exclude evidence bears the burden of proving that it is
entitled to the relief requested—namely, that the material sought to be excluded is
inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c),
42.62(a).
Patent Owner seeks to exclude evidence that, in Patent Owner’s view,
violates our rule against incorporation by reference, exceeds the permissible scope
of reply or rebuttal evidence, and raises new issues or belatedly presents evidence.
PO Mot. Ex. 1; see generally id. at 1–6. To the extent that any such violations
have occurred, we decline to consider such evidence in reaching our decision.
A motion to exclude, however, is not an appropriate vehicle for challenging
a reply, or a reply’s supporting evidence, as exceeding the scope of a proper
reply. Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-
00002, slip op. at 62 (PTAB Jan. 23, 2014) (Paper 66); Norman Int’l, Inc. v.
Andrew Toti Testamentary Trust, Case IPR2014-00283, slip op. at 2 (PTAB Jan.
22, 2015) (Paper 33). The purpose of a motion to exclude is to challenge
admissibility of evidence. See Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,767 (Aug. 14, 2012); Paper 41, 1–2.
We have considered, but find unpersuasive, Patent Owner’s additional
arguments as to the authenticity of Exhibit 1040. PO Mot. Ex. 6–8. Exhibit 1040
was authenticated by its author, Dr. Lochhead, during his deposition. See PO Mot.
Ex. Resp. 8; Ex. 1037, 56:25–57:21.
At Petitioner’s request, and based on the representation that they were filed
in “inadvertent error,” we order expunged from the record Exhibits 1045, 1051,
and 1060. PO Mot. Ex. Resp. 9.
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We have fully considered the positions of the parties relating to the
remaining evidentiary issues. See generally PO Mot. Ex.; PO Mot. Ex. Resp.; PO
Mot. Ex. Reply. For reasons stated by Petitioner, we decline to exclude evidence
in this proceeding. PO Mot. Ex. Resp. 1–10.
Accordingly, Patent Owner’s Motion to Exclude Evidence is denied.
Exhibits 1045, 1061, and 1060 are expunged from the record.
III. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1–5, 11–13, 16–20, 24, and 25 of the ’300 patent are unpatentable as
follows:
(1) claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 are anticipated by Kanebo under
35 U.S.C. § 102(b);
(2) claims 3, 18, and 25 are unpatentable over Kanebo under 35 U.S.C.
§ 103; and
(3) claims 1, 12, 16, 19, and 24 are unpatentable over Evans under 35 U.S.C.
§ 103.
IV. ORDER
It is
ORDERED that claims 1–5, 11–13, 16–20, 24, and 25 of the ’300 patent are
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude Evidence is
denied;
FURTHER ORDERED that Exhibits 1045, 1061, and 1060 are expunged
from the record; and
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FURTHER ORDERED that, because this is a Final Written Decision, the
parties to the proceeding seeking judicial review of the decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.

IPR2013-00509
Patent 6,451,300 B1

18

For Petitioner:

Joseph Meara
Michael Houston
Jeanne Gills
FOLEY & LARDNER LLP
jmeara-PGP@foley.com
mhouston@foley.com
jmgills@foley.com

For Patent Owner:

David Maiorana
John V. Biernacki
Michael Weinstein
JONES DAY
dmaiorana@jonesday.com
jvbiernacki@jonesday.com
trgoots@jonesday.com
msweinstein@jonesday.com

Steven Miller
Carl Roof
Angela Haughey
THE PROCTER & GAMBLE COMPANY
miller.sw@pg.com
roof.cj@pg.com
haughey.a@pg.com