`
`Filed on behalf of L’Oreal USA, Inc.
`
`By: Michelle E. O’Brien
`Timothy J. Murphy
`
`THE MARBURY LAW GROUP,
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191
`
`PLLC
`
`Tel: (703) 391-2900
`Fax: (703) 391-2901
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PETITION FOR POST-GRANT REVIEW
`OF U.S. PATENT NO. 9,498,419
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`TABLE OF CONTENTS
`
`I. Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ....................................................... 1
`
`II. Grounds for Standing (37 C.F.R. § 42.204(a)) .................................................... 3
`
`III.
`
`Identification of Challenge (37 C.F.R. § 42.204(b)) ........................................ 3
`
`A. Statutory Grounds for Challenge ...................................................................... 3
`
`IV. The ’419 Patent ................................................................................................. 4
`
`A. Overview of the ’419 patent ............................................................................. 4
`
`B. Level of Ordinary Skill in the Art .................................................................... 4
`
`C. Claim Construction ........................................................................................... 5
`
`1. “Hair coloring agent” ....................................................................................... 6
`
`2. “The mixture does not contain” ....................................................................20
`
`3. Summary of proposed claim construction ....................................................25
`
`V. Grounds of Rejection .........................................................................................28
`
`A. GROUND 1: Claims 1-10 are Indefinite Under 35 U.S.C. § 112(b) ............29
`
`1. Legal standard .............................................................................................29
`
`2. The exclusion of hair coloring agents from the bleaching formulation in
`claim 1 renders claims 1-10 indefinite ..............................................................30
`
`3. The term “the formulation” renders claims 4 and 5 indefinite ...................32
`
`B. GROUND 2: Claims 1-10 are Invalid Under 35 U.S.C. § 112(a) as Lacking
`Adequate Written Description Support ................................................................35
`
`1. Legal standard .............................................................................................35
`
`2. Claims 1-10 are not supported by the as-filed specification .......................36
`
`3. Claim 7 is not supported by the specification .............................................39
`
`C. GROUND 3: Claims 1-10 are Invalid Under 35 U.S.C. § 112(a) as Lacking
`Enablement ...........................................................................................................40
`
`1.
`
` Legal standard ............................................................................................40
`
`
`
`ii
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`2. The bleaching method of claims 1-10 is not enabled by the as-filed
`specification .......................................................................................................41
`
`a. The quantity of experimentation necessary .................................................44
`
`b. The amount of direction or guidance presented ..........................................44
`
`c. The presence or absence of working examples ...........................................45
`
`d. The nature of the invention .........................................................................45
`
`e. The state of the prior art ..............................................................................46
`
`f. The relative skill of those in the art .............................................................46
`
`g. The predictability or unpredictability of the art ..........................................47
`
`h. The breadth of the claims ............................................................................48
`
`VI. Scrivener Errors Cannot Be Overcome Through Claim Construction ..........49
`
`VII. Conclusion ......................................................................................................51
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`
`
`Cases
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`TABLE OF AUTHORITIES
`
`Allen Eng'g Corp. v. Bartell Indus.,
`299 F.3d 1336 (Fed. Cir. 2002) .....................................................................30
`
`
`
`Amgen, Inc. v. Chugai Pharm. Co.,
`927 F.2d 1200 (Fed. Cir. 1991) ....................................................................40
`
`
`
`Ariad Pharms., Inc. v. Eli Lily & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) ............................................................. 35, 38
`
`
`
`Becton Dickinson & Co. v. C.R. Bard Inc.,
`922 F.2d 792 (Fed. Cir. 1990) .......................................................................28
`
`
`
`Biovail Labs. Int'l SRL v. Intelgenx Corp.,
`2010 U.S. Dist. LEXIS 136465 (D. Del. Dec. 27, 2010) ..............................24
`
`
`
`Biovail Labs., Inc. v. Anchen Pharms., Inc.,
`2006 U.S. Dist. LEXIS 37996 (C.D. Cal. Feb. 8, 2006) ..............................24
`
`
`
`Bose Corp. v. JBL, Inc.,
`274 F. 3d 1354 (Fed. Cir. 2001). ...................................................................30
`
`
`Boston Sci. Corp., et al. v. Johnson & Johnson, Inc.,
`647 F.3d 1353 (Fed. Cir. 2011). ...................................................................36
`
`
`Chef America, Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371, (Fed. Cir. 2004) ................................................. 26, 27, 49, 50
`
`
`Computer Docking Station Corp. v. Dell, Inc.,
`519 F.3d 1366, 1375 (Fed. Cir. 2008) ...........................................................19
`
`
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003) .....................................................................16
`
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131(2016) ..................................................................................... 5
`
`
`
`
`
`iv
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`Datamize LLC v. Plumtree Software, Inc.,
`417 F.3d 1342 (Fed. Cir. 2005) ....................................................................18
`
`
`Imaginal Systematic, LLC v. Leggett & Platt, Inc.,
`805 F.3d 1102 (Fed. Cir. 2015) .................................................. 15, 23, 26, 27
`
`
`In re Oetiker,
`951 F. 2d 1267 (Fed. Cir. 1991) ...................................................................30
`
`
`In re Packard,
`751 F.3d 1307 (Fed. Cir. 2014) ............................................................. 29, 30
`
`
`In re Papesch,
`315 F.2d 381 (C.C.P.A. 1963) .......................................................................14
`
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ......................................................................... 5
`
`
`In re Wands,
`858 F.2d 731(Fed. Cir. 1988). ................................................................ 40, 48
`
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ........................................................................ 5
`
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014) ....................................................................18
`
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ..................................................................................18
`
`
`Omega Eng'g, Inc. v. Raytek Corp.,
`334 F.3d 1314, (Fed.Cir.2003) .....................................................................16
`
`
`Process Control Corp. v. Hydreclaim Corp.,
`190 F.3d 1350 (Fed. Cir. 1999) ........................................................ 26, 30, 49
`
`
`Storage Tech. Corp. v. Cisco Sys., Inc.,
`329 F.3d 823 (Fed. Cir.2003) .......................................................................16
`
`
`Telebrands Corp. v. Tinnus Enters., LLC,
`
`
`
`v
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`No. PGR2015-00018, paper 7 (P.T.A.B. Jan. 4, 2016) ................................29
`
`
`Thorner v. Sony Computer Entm’t Am., LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ....................................................................16
`
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ....................................................................... 5
`
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) ....................................................................30
`
`
`Vasudevan Software, Inc. v. MicroStrategy, Inc.,
`782 F.3d 671 (Fed. Cir. 2015) ......................................................................16
`
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996). ......................................................................24
`
`
`Wyeth & Cordis Corp. v. Abbott Labs.,
`720 F.3d 1380 (Fed. Cir. 2013) ....................................................................40
`
`
`
`Statutes
`
`35 U.S.C. § 112 ................................................................................................ passim
`35 U.S.C. § 119(e) ..................................................................................................... 4
`
`
`
`Rules
`
`37 C.F.R. § 42.8(a)(1) ................................................................................................ 1
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 2
`37 C.F.R. § 42.10(a) ................................................................................................... 2
`37 C.F.R. § 42.10(b) .................................................................................................. 2
`37 C.F.R. § 42.204(a) ................................................................................................. 3
`37 C.F.R. § 42.204(b) ................................................................................................ 3
`
`Other
`Manual of Patent Examination Procedure (“M.P.E.P.”) (Nov. 2015) .............. 38, 39
`
`
`
`
`vi
`
`

`

`
`
`
`
`Exhibit
`No.
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`EXHIBIT LIST
`
`Description
`
`1001 U.S. Patent No. 9,498,419
`
`1002 U.S. Application Serial No. 15/087,415 as filed March 31, 2016
`
`1003 U.S. Provisional Patent Application No. 61/994,709
`
`1004
`
`Letter submitted September 19, 2016, in prosecution of related U.K.
`Patent Application No. 1513932.2
`
`1005 Response to Office Action submitted August 23, 2016
`
`1006 Declaration of Arun Nandagiri (“Nandagiri Declaration”)
`
`1007 Complaint filed November 22, 2016, in Liqwd, Inc. et al. v. L’Oréal
`USA, Inc. et al., Case No. 2:16-cv-08708 (C.D. Cal.)
`
`1008 U.S. Patent No. 7,044,986 to Ogawa (“Ogawa”)
`
`1009 U.S. Patent Publication No. 2002/0189034 to Kitabata (“Kitabata”)
`
`1010
`
`Thomas Clausen et al., Hair Preparations, in ULLMAN’S ENCYCLOPEDIA
`OF INDUSTRIAL CHEMISTRY (July 15, 2006),
`http://onlinelibrary.wiley.com/doi/10.1002/14356007.a12_571.pub2
`
`1011 U.S. Patent No. 9,326,926
`
`1012
`
`Plaintiff’s Opening Brief in Support of Motion for Preliminary
`Injunction, Redacted-Public version, filed January 18, 2017, in Liqwd,
`Inc. et al. v. L’Oréal USA, Inc. et al., Case No. 1:17-cv-00014 (D. Del.)
`
`1013 Webster’s Third International New Dictionary 40 (3d. ed. 2002)
`
`1014 Declaration of Edward T. Borish, Ph.D. in Support of Olaplex’s Motion
`for a Preliminary Injunction in Liqwd, Inc. et al. v. L’Oréal USA, Inc. et
`al., Case No. 1:17-cv-00014 (D. Del.) (“Borish Declaration”)
`
`
`
`vii
`
`

`

`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`1015 Curriculum Vitae of Arun Nandagiri
`
`1016
`
`JOHN CORBETT, HAIR COLORANTS: CHEMISTRY AND TOXICOLOGY 1–54
`(1998)
`
`
`
`viii
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`L’Oreal USA, Inc. (“Petitioner”) petitions for post-grant review of claims
`
`1–10 of U.S. Patent 9,498,419 to Pressly et al., entitled “Keratin Treatment
`
`Formulations and Methods” (“the ‘419 patent,” Ex. 1001).
`
`I. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`
`
`
`
`
`
`
`
`
`REAL PARTY IN INTEREST:
`
`The real parties-in-interest are L’Oréal USA, Inc. and L’Oréal SA.
`
`RELATED MATTERS:
`
`Liqwd, Inc. et al. v. L’Oréal USA, Inc. et al., Case 2:16-cv-08708, filed on
`
`November 22, 2016 in United States District Court for the Central District of
`
`California, includes a complaint for patent infringement of the ‘419 patent. The
`
`complaint was dismissed without prejudice on January 5, 2017.
`
`
`
`Liqwd, Inc. et al. v. L’Oréal USA, Inc. et al., Case 1:17-cv-00014, filed on
`
`January 5, 2017, in United States District Court for the District of Delaware,
`
`includes a complaint for patent infringement of the ‘419 patent.
`
`
`
`An additional Petition for Post Grant Review of the ‘419 patent is being filed
`
`concurrently with this Petition.
`
`
`
`U.S. Patent Application 15/290,593 is pending and claims priority to the
`
`‘419 patent.
`
`
`
`
`
`1
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`LEAD AND BACKUP COUNSEL:
`
`Pursuant to 37 C.F.R. § 42.8(b)(3) and 37 C.F.R. § 42.10(a), Petitioner
`
`appoints:
`
`Michelle E. O’Brien (Reg. 46,203) as its lead counsel;
`
`Timothy J. Murphy (Reg. 62,585) as its back-up counsel.
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney is being filed with this
`
`designation of counsel.
`
`
`
`SERVICE INFORMATION:
`
`Petitioner provides the following service information for designated counsel:
`
`Lead Counsel
`
`Michelle E. O’Brien (Reg. 46,203)
`The Marbury Law Group, PLLC
`11800 Sunrise Valley Drive, 15th Floor
`Reston, VA 20191
`Tel.: (703) 391-2900
`Fax.: (703) 391-2901
`Email: mobrien@marburylaw.com
`
`
`
`
`Back-up Counsel
`
`Timothy J. Murphy (Reg. 62,585)
`The Marbury Law Group, PLLC
`11800 Sunrise Valley Drive, 15th Floor
`Reston, VA 20191
`Tel.: (703) 391-2900
`Fax.: (703) 391-2901
`Email: tjmurphy@marburylaw.com
`
`Petitioner consents to electronic service by email to the email addresses:
`
`mobrien@marburylaw.com;
`
`tjmurphy@marburylaw.com; and
`
`pat-docketing@marburylaw.com
`
`2
`
`
`
`
`
`

`

`
`
`
`
`
`
`II. Grounds for Standing (37 C.F.R. § 42.204(a))
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`Petitioner certifies that the ’419 patent is available for post-grant review.
`
`U.S. Application 15/087,415 (“the ‘415 application”), which issued as the ’419
`
`patent, was filed on March 31, 2016, claiming priority to U.S. Provisional Patent
`
`Application 61/994,709, filed May 16, 2014, and thus was properly examined
`
`under the first inventor to file provisions of the America Invents Act (AIA). The
`
`’419 patent issued on November 22, 2016, which is less than nine months before
`
`the filing date of this petition. Petitioner also certifies that it is not barred or
`
`estopped from requesting this post-grant review on the grounds identified herein.
`
`III.
`
`Identification of Challenge (37 C.F.R. § 42.204(b))
`
`A. Statutory Grounds for Challenge
`
`Petitioner requests review of claims 1-10 on the following three grounds:
`
`GROUND 1: Claims 1-10 are invalid under 35 U.S.C. § 112(b) as
`
`indefinite.
`
`GROUND 2: Claims 1-10 are invalid under 35 U.S.C. § 112(a) as lacking
`
`adequate written description.
`
`GROUND 3: Claims 1-10 are invalid under 35 U.S.C. § 112(a) as not
`
`enabled.
`
`
`
`
`
`3
`
`

`

`
`
`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`IV. The ’419 Patent
`
`A. Overview of the ’419 patent
`
`The ’419 patent, which issued from the ‘415 application, is a continuation of
`
`U.S. Patent 9,326,926 (“the ‘926 patent”), filed May 15, 2015, as U.S. Application
`
`14/713,885, claiming priority under 35 U.S.C. § 119(e) to U.S. Provisional
`
`Application 61/994,709, filed May 16, 20141.
`
`
`
`The claims of the ’419 patent are generally directed to methods for
`
`bleaching hair comprising mixing a bleaching formulation with a formulation
`
`comprising an active agent, and applying the resulting mixture to hair. The active
`
`agent is defined as maleic acid and salts of maleic acid. The claims limit the
`
`amount of active agent in the mixture to about 0.1% to about 50%, and expressly
`
`exclude a hair coloring agent from the mixture.
`
`B. Level of Ordinary Skill in the Art
`
`
`
`The level of a person having ordinary skill in the art (“PHOSITA”) at the
`
`time of the earliest priority date of the ‘419 patent was that of someone with at
`
`least an Associate’s degree in chemistry, chemical engineering, or a related field,
`
`and at least 5–7 years of laboratory experience with formulation and testing of hair
`
` Petitioner does not concede that any of claims 1-10 of the ‘419 patent is entitled to
`
`1
`
`the priority date of Provisional Application 61/994,709, and reserves the right to
`
`challenge priority.
`
`
`
`4
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`care products, with special emphasis on reactive products; or someone with a Ph.D.
`
`in chemistry, chemical engineering, or a related field and with at least minimal
`
`prior laboratory experience with formulation and testing of hair care products.
`
`(Ex. 1006 ¶ 24.)
`
`C. Claim Construction
`
`
`
`In a post-grant review, claim terms in an unexpired patent are given their
`
`broadest reasonable interpretation (“BRI”) in light of the specification of the patent
`
`in which they appear. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`
`(2016). “Under a broadest reasonable interpretation, words of the claim must be
`
`given their plain meaning, unless such meaning is inconsistent with the
`
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d
`
`1056, 1062 (Fed. Cir. 2016). An inventor may prevent such an interpretation by
`
`providing a definition of the term in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`However, where an inventor does not act as his own lexicographer and give any
`
`claim term a special definition, different from its recognized meaning to one with
`
`ordinary skill, the words of the claim will be given their plain meaning unless the
`
`plain meaning is inconsistent with the specification. See In re Zletz, 893 F.2d 319,
`
`321 (Fed. Cir. 1989).
`
`
`
`5
`
`

`

`
`
`
`
`
`
`Petitioner contends that the claim terms of the ‘419 patent should be given
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`their plain and ordinary meaning as understood by a person of ordinary skill in the
`
`art at the time the application was filed, consistent with the disclosure. Indeed,
`
`Patent Owner has taken the same position in a pending matter involving Patent
`
`Owner’s allegations of infringement of the ‘419 patent. In a brief filed in support
`
`of its motion for preliminary injunction in the related U.S. District Court for the
`
`District of Delaware action (“PI Brief”), Patent Owner argues that “the words used
`
`in ‘419 patent claim 1 have well-understood meanings . . . . Nothing in the patent,
`
`or its file history, requires deviation from the ordinary meanings.” (Ex. 1012 at 8–
`
`9.)
`
`Petitioner reserves the right to present different constructions in another
`
`forum where a different claim construction standard applies, or in another
`
`proceeding.
`
`1. “Hair coloring agent”
`
`
`
`Every claim of the ‘419 patent expressly excludes the presence of any “hair
`
`coloring agent” from the mixture.
`
`The term “hair coloring agent” appears only once in the specification of the
`
`‘419 patent, where it is listed as an optional component in a laundry list of possible
`
`excipients for use in the active agent formulation. (Ex. 1001, Col. 11, line 24.)
`
`Therefore, the term “hair coloring” should be interpreted according to its plain
`
`
`
`6
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`meaning as would have been understood by the PHOSITA in 2014, consistent with
`
`the as-filed specification as a whole. The ‘419 patent, however, does not give the
`
`term “hair coloring agent” a special definition, different from its recognized
`
`meaning as would be understood by those of skill in the art. Accordingly, the term
`
`should be given its ordinary meaning consistent with the BRI standard.
`
`Specifically, as explained below, the term “hair coloring agent” should be
`
`construed under the BRI standard as “any substance that alters or changes, or is
`
`capable of altering or changing, the color of hair.”
`
`a. “Hair Coloring”
`
`As an initial matter, the specification of the ‘419 patent does not expressly
`
`define what is meant by “hair coloring.”
`
`As used by those skilled in the art, “hair coloring” was understood in 2014 to
`
`refer to processes that deposit dyes, pigments, or other substances onto the hair to
`
`change hair color (i.e., hair dyeing), as well as processes that destroy pigment to
`
`change hair color (i.e., hair bleaching or highlighting). (Ex. 1006 ¶¶ 14–15.)
`
`Therefore, “hair coloring,” as understood by those of skill in the art in 2014,
`
`included both hair dyeing and hair bleaching, both of which processes were
`
`directed to altering or changing the color of hair. (Ex. 1006 ¶ 29.)
`
`The ‘419 patent, when taken as a whole, similarly uses the term “hair
`
`coloring” consistent with this common understanding in the art, referring to both
`
`
`
`7
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`hair dyeing and hair bleaching or highlighting as “hair coloring” throughout. (Ex.
`
`1006 ¶¶ 30–31.) As such, “hair coloring” should be interpreted as altering or
`
`changing the color of hair, as discussed below.
`
`i. Specification describes both hair dyeing and hair bleaching as “coloring”
`
`
`
`The specification repeatedly refers to processes that alter or change the color
`
`of hair as “coloring,” including dyeing (which includes processes that change hair
`
`color by depositing dyes, pigments, or other substances onto the hair), bleaching
`
`(which includes processes that change hair color by destroying pigment in the
`
`hair), and highlighting (which refers to bleaching sections of the hair instead of the
`
`entire head, and therefore includes the use of bleaching agents2). (Ex. 1006 ¶ 30.)
`
`For example, the specification states that:
`
`
`
`Formulations, kits and methods for restoring hair that has been
`
`broken during a hair coloring or permanent wave treatment are
`
`disclosed. The formulations have similar benefits when used with
`
`different color chemical processes, such as bleaching, highlights,
`
`lowlights, semi-permanent, demi-permanent, and permanent color.
`
`
`2 Since both highlighting and bleaching processes use bleaching agents for
`
`obtaining the same result, they will be referred to independently herein when
`
`necessary for comprehension; otherwise, they will be referred collectively to as
`
`“bleaching” for ease of reference.
`
`
`
`8
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
` (Ex. 1001, col. 1 ln. 65–col. 2 ln. 3 (emphasis added).) In other words, the ‘419
`
`patent categorizes bleaching, highlighting, lowlighting, and hair dyeing together
`
`under “hair coloring” and “color chemical processes,” without distinction.
`
`As another example, the specification specifically classifies “highlighting”
`
`as “coloring”: “The hair coloring formulation may be a highlighting
`
`formulation, such as formed by mixing bleach powder and developer.” (Ex, 1001,
`
`col. 16 ll. 56–58 (emphasis added).) Thus, the ‘419 patent unmistakably describes
`
`“hair coloring” to include hair dyeing, which is known to deposit dyes, pigments,
`
`and/or other substances onto the hair, and hair bleaching, which is known to
`
`destroy pigment in the hair.
`
`
`
`The disclosure of the ‘419 patent specification as-filed, when read as a
`
`whole, is therefore consistent with Petitioner’s position that “hair coloring” should
`
`be interpreted according to its plain meaning as altering or changing the color or
`
`of hair, regardless of whether the alteration or change in the color of the hair is due
`
`to the deposition of dyes, pigments, or other substances onto the hair, or the
`
`destruction of pigment in the hair. (Ex. 1006 ¶¶ 30–31.)
`
`ii. Prosecution history supports “hair coloring” as including both hair
`dyeing and hair bleaching
`
`
`
`During prosecution of the application that led to the ‘419 patent, Patent
`
`Owner relied on the as-filed application that referred to both hair dyeing agents and
`
`
`
`9
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`bleaching agents as support for the language excluding “a hair coloring agent”
`
`from the claims. Patent Owner’s arguments and reliance on portions of the as-filed
`
`‘419 application directed to both hair dyeing and hair bleaching further supports
`
`Petitioner’s position that the term “hair coloring” should be interpreted as altering
`
`or changing the color of hair.
`
`For example, in the Amendment in which Patent Owner amended claim 1 to
`
`exclude “a hair coloring agent” in response to an office action, Patent Owner
`
`pointed to, inter alia, original claim 20 as written description support for the
`
`amendment. (Ex. 1005 at 7.) Original claim 20 reads: “The method of claim 8,
`
`wherein the hair coloring agent is selected from the group consisting of
`
`highlighting agents, permanent coloring agents, demi-permanent coloring
`
`agents, and semi-permanent coloring agents.” (Ex. 1002, claim 20 (emphasis
`
`added).) In other words, during prosecution, Patent Owner relied on claim 20 of
`
`the as-filed application, which recited that a “hair coloring agent” could be a hair
`
`highlighting agent (i.e., a hair bleaching agent, which changes hair color by
`
`destroying pigment in the hair) as well as a hair dyeing agent (which changes hair
`
`color by depositing dyes, pigments, or other substances onto the hair), to support
`
`the amendment excluding “a hair coloring agent” from the mixture used in the
`
`method recited in the claims. No distinction in Patent Owner’s remarks was made
`
`
`
`10
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`regarding the hair bleaching agents or hair dyeing agents recited in original claim
`
`20.
`
`In addition, Patent Owner pointed to page 26, line 15 through page 27, line
`
`27 of the as-filed specification to support the exclusion of a “hair coloring agent”
`
`from the claims. (Ex. 1005 at 7.) This portion of the as-filed application discusses
`
`hair bleaching, highlighting, and dyeing. (Ex. 1002, at 26:15–27:27.) Again, no
`
`distinction in Patent Owner’s remarks was made regarding the disclosure of
`
`bleaching or dyeing in the cited portion of page 26, line 15 through page 27, line
`
`27 of the as-filed application. In fact, this cited portion of the specification
`
`specifically classifies a highlighting formulation as a hair coloring formulation.
`
`Accordingly, Patent Owner’s statements during prosecution support
`
`Petitioner’s position that “hair coloring” should be interpreted as altering or
`
`changing the color of hair, regardless of whether the alteration or change is due to
`
`hair dyeing or hair bleaching.
`
`iii. Patent Owner’s statements in related proceedings support
`“hair coloring” as including both hair dyeing and hair bleaching
`
`Patent Owner has taken the position that bleaching and highlighting are
`
`synonymous in other proceedings involving both the ‘419 patent and
`
`corresponding family members. For example, during prosecution of U.K. Patent
`
`Application No. 1513932.2, Patent Owner asserted priority for a bleaching method
`
`
`
`11
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`by citing Example 3 of Provisional Application 61/994,709 (to which the ‘419
`
`patent claims priority), which is specifically directed to a highlighting method.
`
`(See Ex. 1004, at 2; Ex. 1003, at 31.) As such, Patent Owner implicitly admitted
`
`that bleaching and highlighting are synonymous.
`
`Additionally, in the PI Brief, Patent Owner states that “the ‘419 patent uses
`
`the word ‘bleaching’ with reference to hair in its plain and ordinary way:
`
`lightening.” (Ex. 1012 at 8–9.) Importantly, both bleaching and highlighting are
`
`known processes for lightening the hair, using bleaching agents. (Ex. 1006 ¶¶ 14–
`
`15, 33.)
`
`Accordingly, Patent Owner’s statements in multiple related proceedings
`
`likewise support Petitioner’s position that “hair coloring” should be interpreted as
`
`altering or changing the color of hair, regardless of whether the alteration or
`
`change is due to hair dyeing or hair bleaching.
`
`b. “Agent”
`
`The specification of the ‘419 patent does not expressly define what is meant
`
`by the term “agent.”
`
`In 2014, one of skill in the art would have understood the term “agent”
`
`generally to refer to any substance that is capable of producing an effect, as well
`
`any substance that does produce such an effect. (Ex. 1006 ¶¶ 36–38.) Indeed,
`
`Webster’s Third International New Dictionary (2002) defines the term “agent” as
`
`
`
`12
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`“a substance capable of producing a chemical reaction or a physical or biological
`
`effect; an active principle.” (Ex. 1013; Ex. 1006 ¶ 36.)
`
`Consistent with this general understanding and usage of the term “agent,” in
`
`2014 the skilled artisan would have understood “agent” used with respect to hair
`
`coloring to mean any substance that is capable of producing the effect of altering
`
`or changing the color of the hair, or that does in fact produce the effect of altering
`
`or changing the color of the hair. (Ex. 1006 ¶¶ 36–38.) For example, according to
`
`the express teaching of the ‘419 patent, this would include agents used in
`
`highlighting, bleaching, permanent, demi-permanent, semi-permanent, and
`
`temporary coloring formulations. (Ex. 1001, col. 1 ll. 23–30.)
`
`Additionally, the ‘419 patent uses the term “agent” when referring to other
`
`components in various formulations, in a manner consistent with such an
`
`interpretation. Specifically, the ‘419 patent defines certain “agents” in terms of
`
`what the agents are capable of doing, and other “agents” in terms of the function
`
`they actually perform. Both uses are consistent with the plain meaning of the term
`
`“agent” as something that either produces, or is capable of producing, an intended
`
`effect.
`
`For example, the ‘419 patent defines “surfactants” as “surface-active agents
`
`that are able to reduce the surface tension of water and cause the hair formulation
`
`to slip across or onto the skin or hair.” (Ex. 1001, col. 11, ll. 53–54 (emphasis
`
`
`
`13
`
`

`

`
`
`
`
`
`
`
`
`Petition for Post-Grant Review of
`U.S. Patent No. 9,498,419
`
`added).) As another example, the ‘419 patent defines “reducing agent” as
`
`“capable of reducing disulfide bonds in hair to produce free thiol groups.” (Ex.
`
`1001, col. 20 ll. 1–3, 18–21 (emphasis added).) In a further example, the ‘419
`
`patent defines “opacifying agent” as “added to the formulations to make it
`
`opaque.” (Ex. 1001, col. 14, ll. 31–33.) Thus, the ‘419 patent uses the term
`
`“agent” consistent with the plain meaning as would have been understood by the
`
`skilled artisan in 2014, i.e., meaning any substance that is capable of producing an
`
`effect, as well any substance that does produce such effect.
`
`Further, it is a well-accepted tenet of patent law that “a compound and all of
`
`its properties are inseparable.” See In re Papesch, 315 F.2d 381, 391 (C.C.P.A.
`
`1963) (emphasis added).
`
`In view of the above, Petitioner submits that any agent that alters the color
`
`of hair, or is capable of altering the color of hair, would be considered a “hair
`
`coloring agent” under a proper BRI construction.
`
`c. Patent Owner’s remarks do not otherwise define “hair coloring agent”
`
`In discussing the amendments to the claims, Patent Owner stated that “[t]he
`
`term ‘hair coloring agent’ refers to a col