`571-272-7822
`
`
`
`
`
`
`
`Paper: 108
`Entered: January 23, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`L’ORÉAL USA, INC.,
`Petitioner,
`v.
`LIQWD, INC.,
`Patent Owner.
`____________
`
`PGR2017-00012
`Patent 9,498,419 B2
`____________
`
`
`
`Before CHRISTOPHER M. KAISER, MICHELLE N. ANKENBRAND,
`and DAVID COTTA, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`PGR2017-00012
`Patent 9,498,419 B2
`
`
`
`In our Final Written Decision, we concluded that claims 1–8 and 10 of
`the ’419 patent would have been obvious. Paper 102, 48–49. After we
`issued that decision, Patent Owner appealed to the United States Court of
`Appeals for the Federal Circuit. Paper 103. The Federal Circuit vacated our
`obviousness determination and remanded the case with instructions to
`“consider [the finding that Petitioner copied Patent Owner’s confidential
`information] and weigh it appropriately in [our] obviousness analysis.”
`Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1139 (Fed. Cir. 2019).
`After the Federal Circuit issued its mandate, we held a conference call
`with the parties to discuss procedures for resolving the issues arising from
`the remand of this case. During the conference call, both parties agreed that
`there is no need to introduce new evidence or for the Board to hold a new
`hearing.
`The parties disagreed, however, as to whether we should allow
`additional briefing and, if so, how long the briefs should be and when and in
`what order they should be filed. Petitioner proposed a single round of
`briefing, with the parties filing simultaneous briefs of no more than eight
`pages each, directed to the issue of the appropriate weight we should give
`the finding of copying in our analysis of whether the subject matter of the
`challenged claims would have been obvious over the prior art. Patent Owner
`argued instead that no briefing was necessary. Should we decide to allow
`briefing, Patent Owner argued that the briefs should be limited to two pages.
`Because Patent Owner was concerned that Petitioner might raise
`inappropriate issues in its brief, Patent Owner proposed having Petitioner
`file its brief first, with Patent Owner having the opportunity to respond.
`
`2
`
`
`
`PGR2017-00012
`Patent 9,498,419 B2
`
`
`
`The question the Federal Circuit’s opinion poses—whether the
`challenged claims would have been obvious when weighing the evidence
`supporting obviousness and the finding that legally relevant copying
`occurred—is not one that we feel permits easy resolution in the abstract.
`Accordingly, the question would benefit from some briefing from both
`parties directed to how to weigh the evidence in a case like this one, where
`some evidence supports a conclusion of obviousness and other evidence
`opposes such a conclusion. For this reason, we will authorize the parties to
`file remand briefs in this case.
`We adopt Petitioner’s suggestion to authorize both parties to file
`briefs of up to eight pages, with the briefs to be filed simultaneously. The
`briefs will be due no later than February 13, 2020. The panel would
`appreciate any guidance the parties may be able to offer regarding how to
`weigh the divergent evidence on the obviousness issue.
`We also adopt Patent Owner’s suggestion to authorize response briefs
`addressing any issue raised in the opposing party’s opening briefs. The
`response briefs will be due no later than February 27, 2020, and they may
`not exceed five pages each.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that each party may file an opening remand brief not
`exceeding eight pages no later than February 13, 2020, with the brief to
`address at least how to weigh the divergent evidence on the obviousness
`issue; and
`
`3
`
`
`
`PGR2017-00012
`Patent 9,498,419 B2
`
`
`
`FURTHER ORDERED that each party may file a responsive remand
`brief not exceeding five pages no later than February 27, 2020, with the brief
`limited to addressing any issues raised in the opposing party’s opening brief.
`
`4
`
`
`
`PGR2017-00012
`Patent 9,498,419 B2
`
`
`PETITIONERS:
`Michelle E. O’Brien
`Timothy J. Murphy
`THE MARBURY LAW GROUP, PLLC
`mobrien@marburylaw.com
`tjmurphy@marburylaw.com
`
`
`PATENT OWNER:
`Matthew K. Blackburn
`DIAMOND MCCARTHY LLP
`mblackburn@diamondmccarthy.com
`
`Rivka Monheit
`PABST PATENT GROUP LLP
`rivka@pabstpatent.com
`
`5
`
`
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