Trials@uspto.gov
`Tel: 571-272-7822
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`PUBLIC VERSION
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`Paper 119
`Entered: December 9, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`L’ORÉAL USA, INC.,
`Petitioner,
`v.
`LIQWD, INC.,
`Patent Owner.
`
`Case PGR2017-00012
`Patent 9,498,419 B2
`
`
`
`
`
`
`
`
`
`Before LORA M. GREEN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
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`PUBLIC VERSION
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`Tel: 571-272-7822
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`PUBLIC VERSION
`
`Paper 119
`Entered: December 9, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`L’ORÉAL USA, INC.,
`Petitioner,
`v.
`LIQWD, INC.,
`Patent Owner.
`
`Case PGR2017-00012
`Patent 9,498,419 B2
`
`
`
`
`
`
`
`
`
`Before LORA M. GREEN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
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`INTRODUCTION
`
`A. Background
`L’Oréal USA, Inc. (“Petitioner”) filed a Petition requesting post-grant
`review of claims 1–8 and 10 of U.S. Patent No. 9,498,419 B2 (Ex. 1001,
`“the ’419 patent”). Paper 2 (“Pet.”). Liqwd, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”). We instituted trial on two
`of the grounds asserted in the Petition. Paper 17 (“Inst. Dec.”). After the
`Supreme Court’s decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018),
`we also instituted on the remaining ground presented in the Petition. Paper
`97.
`
`After we instituted trial, Patent Owner filed a Response (Paper 44,
`“PO Resp.”), and Petitioner filed a Reply (Paper 55). Patent Owner filed
`Observations on Cross-Examination of Petitioner’s Reply Witnesses. Paper
`77 (“PO Obs.”). Patent Owner filed a Supplemental Response addressing
`the ground added to the trial after SAS, and Petitioner filed a Supplemental
`Reply. Paper 100 (“Supp. Resp.”); Paper 101 (“Supp. Reply”). In addition,
`both parties filed Motions to Exclude Evidence. Paper 72 (“PO Mot.”);
`Paper 73 (“Pet. Mot.”). On the request of both parties, we held an oral
`hearing, and the transcript of that hearing is in the record. Paper 98.
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. We
`conclude that Petitioner has established by a preponderance of the evidence
`that each of claims 1–8 and 10 of the ’419 patent is unpatentable.
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`B. Related Matters
`The parties identify Liqwd, Inc. v. L’Oreal USA, Inc., No. 1:17-cv-
`00014 (D. Del.), as a pending infringement suit asserting the ’419 patent.
`Pet. 8; Paper 4, 1. The ’419 patent also was challenged in a separate petition
`for post-grant review, which was assigned case number PGR2017-00011.
`We denied institution of review in that proceeding. L’Oréal USA, Inc. v.
`Liqwd, Inc., Case PGR2017-00011, slip op. at 16 (PTAB July 19, 2017)
`(Paper 24).
`
`C. The Asserted Grounds of Unpatentability
`We instituted trial on the following grounds, which are all of the
`grounds presented in the Petition (Inst. Dec. 27; Paper 97, 3; see Pet. 25–87):
`Statutory
`Basis
`Challenged Claims
`Ground1
`§ 102
`
`1–6, 8, and 10
`
`Ogawa2
`
`
`1 The relevant post-grant review provisions of the America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), took effect on March 16,
`2013. 125 Stat. at 293, 311. Because the application from which the ’419
`patent issued was filed after that date, our citations to Title 35 are to its post-
`AIA version. Section 4(c) of the AIA re-designated 35 U.S.C. §§ 112(1), (2)
`as 35 U.S.C. §§ 112 (a), (b), respectively, effective September 16, 2012.
`125 Stat. at 296–297.
`2 Ogawa et al., U.S. Patent No. 7,044,986 B2, issued May 16, 2006 (Ex.
`1002, “Ogawa”).
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`Basis
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`Challenged Claims
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`1–8 and 10
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`1–8 and 10
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`Statutory
`Ground1
`§ 103
`
`§ 103
`
`Ogawa, Berkemer, 3 and
`KR ’5644
`Kitabata, 5 Berkemer, and
`KR ’564
`D. The ’419 Patent
`The ’419 patent “generally relates to formulations and methods for
`treating keratin in hair, skin, or nails, and in particular for strengthening
`and/or repairing hair during or after a coloring or permanent wave
`treatment.” Ex. 1001, 1:16–19. Certain treatments of hair, including dyeing
`and bleaching, can result in the disulfide bonds of the hair’s keratin being
`broken, and the ’419 patent expresses “a need for hair formulations and
`treatments that repair and/or strengthen keratin in hair damaged [by these
`treatments].” Id. at 1:31–2:44. The ’419 patent “provide[s] improved
`formulations and methods for repairing and/or strengthening damaged hair.”
`Id. at 2:49–51. The formulations of the ’419 patent “may be applied
`simultaneously with the hair coloring formulation or subsequently to the
`application of the hair coloring formulation.” Id. at 17:32–34. These
`formulations are described as containing “an active agent” that may be any
`
`
`3 Berkemer, German Patent Application Publication No. 1,220,969,
`published July 14, 1966 (Ex. 1003) (certified translation provided as Ex.
`1004, “Berkemer”).
`4 Korean Patent Application Publication No. 10-2006-0059564, published
`2006 (Ex. 1006) (certified partial translation provided as Ex. 1018,
`“KR ’564”).
`5 Kitabata et al., US 2002/0189034 A1, published Dec. 19, 2002 (Ex. 1005,
`“Kitabata”).
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`of a large number of compounds, including maleic acid or salts thereof. Id.
`at 7:42–11:18.
`
`E. Illustrative Claim
`Of the challenged claims of the ’419 patent, claim 1 is independent
`and illustrative. It recites:
`
`1. A method for bleaching hair comprising:
`(a) mixing a formulation comprising an active agent with a
`bleaching formulation, wherein the active agent has the
`formula:
`
`
`
`or salts thereof;
`and
`(b) applying the mixture to the hair;
`wherein the active agent in the mixture is at a concentration
`ranging from about 0.1% by weight to about 50% by weight;
`and
`wherein the mixture does not contain a hair coloring agent.
`Ex. 1001, 25:42–26:5.
`
`ANALYSIS
`
`A. Claim Construction
`In a post-grant review, we construe claim terms in an unexpired patent
`according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.200(b).
`Claim terms also are given their ordinary and customary meaning, as would
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`be understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`In the Institution Decision, we construed “wherein the mixture does
`not contain a hair coloring agent” as “wherein the mixture applied to the hair
`does not have a colorant or pigment that is customarily used in hair care
`products, which changes the color or tone of the hair it is applied to based on
`visual inspection.” Inst. Dec. 5–6. We based that construction on a
`definition the applicant offered during prosecution of the ’419 patent.
`Ex. 1010, 7.
`Although neither party proposes a construction different from ours in
`the Response or the Reply, the parties disagree about the scope and
`application of that construction. Specifically, Patent Owner interprets our
`construction as including an effective-amount limitation, in that the presence
`in small amounts of ingredients that are not customary hair-coloring agents
`but could color hair if they happened to be present in larger amounts does
`not convert a mixture into a mixture containing a hair coloring agent. PO
`Resp. 9–10. Petitioner, however, argues that, to the extent our construction
`and the representation made during prosecution that led to our construction
`might be interpreted as including such an effective-amount limitation, it is
`inappropriate to allow the patent applicant to “enlarge the claims” beyond
`the scope of disclosure in the specification of the ’419 patent. Reply 22
`(quoting Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir.
`2003)).
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`We are persuaded that Patent Owner is correct. The Federal Circuit
`has construed “hair coloring agent” in the ’419 patent in the related
`litigation, and its construction is “a customary hair-coloring composition that
`is present in the mixture in an amount that, when the mixture is applied to
`hair, results in hair coloring, judged in the usual way—by visual inspection.”
`Reply 21 n.2 (quoting Liqwd, Inc. v. L'Oreal USA, Inc., No. 2017-2295, slip
`op. at 5–6 (Fed. Cir. Jan. 16, 2018)). Petitioner urges us to reject this
`construction in favor of a construction that defines “hair coloring agent” as
`any composition capable of coloring hair and present in some amount within
`the mixture applied to the hair, regardless of whether it is present in the
`mixture in a sufficient amount to bring about any visually apparent change
`in hair color. Id. at 21–22.
`Petitioner’s interpretation of a mixture containing a hair coloring
`agent includes any mixture that contains any amount of any agent that is
`capable of coloring hair, even if that agent is not present in sufficient
`amounts to color hair. That construction is broader than Patent Owner’s
`construction, because Patent Owner’s construction includes only mixtures
`that contain sufficient amounts of an agent to color hair. But the challenged
`claims place this term in a negative limitation: “wherein the mixture does
`not contain a hair coloring agent.” Ex. 1001, 26:4–5 (emphasis added). The
`claims exclude mixtures that contain hair coloring agents. Therefore, by
`giving a broader construction to a mixture containing a hair coloring agent,
`Petitioner’s proposed construction gives the challenged claims a narrower
`scope than those claims would have under the Federal Circuit’s Phillips-type
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`construction. That precludes us from adopting Petitioner’s proposed
`construction.
`Under our rules, “[a] claim in an unexpired patent . . . shall be given
`its broadest reasonable construction . . . .” 37 C.F.R. § 42.200(b) (emphasis
`added). Although we usually speak of construing claim terms rather than the
`claims themselves, our rules make clear that it is the claim as a whole, and
`not the scope of any individual claim term, that is to be given its broadest
`reasonable interpretation. The broadest reasonable construction of a claim
`may or may not be the same as the Phillips-type construction given that
`claim in district court proceedings. When the two types of construction
`differ, however, the broadest reasonable construction cannot be narrower
`than the Phillips-type construction. See In re CSB-Sys. Int’l, Inc., 832 F.3d
`1335, 1341 (Fed. Cir. 2016) (“if anything, the Phillips standard would result
`in a more narrow claim scope” than the broadest reasonable interpretation
`(emphasis in original)). Faced with a choice between the Federal Circuit’s
`Phillips-type construction of the challenged claims and the narrower claim
`scope Petitioner proposes, our rules require us to choose the former.
`Accordingly, we maintain the construction of “wherein the mixture
`does not contain a hair coloring agent” that we adopted in our Institution
`Decision. We construe “wherein the mixture does not contain a hair
`coloring agent” as “wherein the mixture applied to the hair does not have a
`colorant or pigment that is customarily used in hair care products, which
`changes the color or tone of the hair it is applied to based on visual
`inspection.”
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`B. Asserted Anticipation by Ogawa
`Petitioner asserts that claims 1–6, 8, and 10 of the ’419 patent are
`unpatentable under 35 U.S.C. § 102 as anticipated by Ogawa. Pet. 25–45.
`
`1. Ogawa
`Ogawa relates to “[h]air dye compositions” that “do not give off an
`intensely irritating odor and have low irritating property.” Ex. 1002, at [57].
`The “hair dye composition” of Ogawa comprises “a chelating agent” that has
`“no particular limitation . . . insofar as it has the ability to chelate metal
`ions . . . and is commonly used in cosmetic preparations.” Id. at 2:1–14,
`2:61–3:3. Examples of such chelating agents include “ethylenediaminetetra-
`acetic acid, . . . ascorbic acid, [and] maleic acid,” among other compounds.
`Id. Ogawa’s compositions may or may not contain oxidation dye
`intermediates; when they do not, they are referred to as “hair bleaches.” Id.
`at 3:28–35. Regardless of whether the compositions are for hair dyeing or
`for hair bleaching, they take the form of “a first dye pack or a first bleach
`pack” that is “mix[ed] . . . with an oxidizing agent upon use.” Id. at 4:23–
`39. Consistent with these disclosures, Ogawa discloses mixing a “first
`bleach pack” comprising 0.5 weight percent ascorbic acid and 0.3 weight
`percent tetrasodium ethylenediaminetetraacetate with “a second pack”
`comprising hydrogen peroxide. Id. at 6:20–25, 7:3–31. Ogawa discloses
`that this mixture was applied to hair. Id. at 5:40–46 (disclosing applying
`mixture to “a black tress,” then ranking “[t]he lightness of the tress”), 7:7–9
`(disclosing ranking mixture of Example 3 “[i]n a manner similar to Example
`1”). In claim 1, Ogawa discloses applying to hair a mixture of a first pack
`comprising an unspecified chelating agent and a second pack comprising
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`hydrogen peroxide. Id. at 7:44–8:16. Ogawa separately claims the method
`of claim 1 with the chelating agent specified as any of ten compounds or any
`salt of any of those ten compounds, where one compound is maleic acid. Id.
`at 8:34–39. Finally, Ogawa separately claims the method of claim 1 with the
`unspecified chelating agent present in the first pack at a concentration
`between 0.01 and 10 weight percent. Id. at 8:28–30.
`
`2. Analysis
`Petitioner argues that “Ogawa discloses each and every element of
`claims 1–6, 8, and 10 of the ’419 patent, such that a [person of ordinary skill
`in the art] could practice the claimed method without undue
`experimentation.” Pet. 25; Supp. Reply 1 (“Ogawa identically discloses and
`enables the methods of claims 1-6, 8, and 10 of the ‘419 patent, and
`therefore anticipates those claims.”).
`We are not persuaded that Petitioner has shown sufficiently that
`Ogawa discloses all the limitations of any of the claims of the ’419 patent,
`arranged as in the claims of the ’419 patent. See Therasense, Inc. v. Becton,
`Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIn, Inc.
`v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Here, all the claims
`of the ’419 patent recite (1) an active agent formulation comprising maleic
`acid or salts thereof at a concentration between about 0.1 weight percent and
`about 50 weight percent, (2) mixing the active agent formulation with a
`bleaching formulation, and (3) applying the mixture to hair, because these
`are all limitations of claim 1, and all the other claims depend from claim 1.
`Ex. 1001, 25:42–26:53. Ogawa does teach all of these limitations. Pet. 27–
`37; Ex. 1002, 2:61–3:3 (listing maleic acid among other chelating agents);
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`3:4–7 (specifying concentration of unspecified chelating agent as between
`0.01 and 10 weight percent); 6:20–26 (defining bleaching formulation
`having hydrogen peroxide); 7:1–31 (applying mixture of bleaching
`formulation and formulation containing chelating agents other than maleic
`acid to hair). But we agree with Patent Owner that finding this disclosure
`requires combining one portion of Ogawa that discloses applying to hair
`mixtures of formulations containing chelating agents and hydrogen peroxide
`with another portion of Ogawa disclosing maleic acid and its salts among a
`list of chelating agents, and then combining those disclosures with another
`portion of Ogawa that discloses that an unspecified chelating agent may be
`present in a particular range of concentrations. See Supp. Resp. 1–2, 7. For
`anticipation, “it is not enough that the prior art reference . . . includes
`multiple, distinct teachings that the artisan might somehow combine to
`achieve the claimed invention.” Net MoneyIn, 545 F.3d at 1371. Petitioner
`has not shown sufficiently that a person of ordinary skill in the art would “at
`once envisage” the process that could be carried out by combining these
`distinct teachings of Ogawa. See In re Petering, 301 F.2d 676, 681 (CCPA
`1962). Accordingly, we conclude that Petitioner has not demonstrated by a
`preponderance of the evidence that claims 1–6, 8, and 10 of the ’419 patent
`are anticipated by Ogawa.
`
`C. Asserted Obviousness over Ogawa, Berkemer, and KR ’564
`Petitioner asserts that claims 1–8 and 10 of the ’419 patent are
`unpatentable under 35 U.S.C. § 103 as obvious over the combination of
`Ogawa, Berkemer, and KR ’564. Pet. 45–69.
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`1. Berkemer
`Berkemer “relates to a method for improving structurally damaged
`hair, in which the surface of the lusterless, unattractive hair is permanently
`smoothed and consolidated” by treating the hair “with the solution of a
`maleic acid or substitution products thereof.” Ex. 1004, 2:7–14. Berkemer
`teaches that “[h]air that is repeatedly subject to . . . bleaching . . . becomes
`lusterless and dull.” Id. at 1:24–32. Berkemer’s treatment of hair with
`maleic acid or a substitution product thereof is disclosed as “lead[ing] to an
`astonishing structural improvement of the hair surface,” which is “a
`substantial advance in comparison with the [previously] known methods” of
`improving the light reflection of the surface of hair, such as treating the hair
`with tannic, lactic, or citric acid. Id. at 1:34–2:5, 2:19–20, 3:23–24.
`
`2. KR ’564
`KR ’564 “relates to a hair treatment agent comprising mild acid,”
`which “has the advantages of alleviating and preventing damage caused by
`chemical treatments such as . . . bleaching.” Ex. 1018, 1. The “mild acid” is
`disclosed as “lactic acid, citric acid, malic acid, oxalic acid, acetic acid,
`tartaric acid, adipic acid, succinic acid, maleic acid, glutamic acid, fumaric
`acid, pyruvic acid, gluconic acid, citric acid [sic], picric acid, aspartic acid,
`terebic acid and the like.” Id. at 3. “[T]he type of organic acid . . . may be
`selected within a wide range . . . .” Id. Further, KR ’564 teaches that the
`mild acid treatment agent “may be preliminarily added to a permanent wave
`agent, dyeing agent and the like as an additive for various hair treatment
`solvents.” Id.
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`3. Analysis
`a. Claim 1
`Claim 1 recites a two-step method requiring first making a mixture of
`two formulations and then applying that mixture to hair. Ex. 1001, 25:42–
`26:5. The mixture must “not contain a hair coloring agent,” and it must
`contain an active agent “at a concentration ranging from about 0.1% by
`weight to about 50% by weight.” Id. The active agent must be initially
`present in one formulation, with a bleaching agent present in the other of the
`two formulations that are mixed to make the mixture, and the active agent
`must be maleic acid or a salt thereof. Id.
`Petitioner has made a sufficient showing that Ogawa teaches or
`suggests all of the limitations recited in claim 1 when maleic acid is used as
`the chelating agent in the mixture of Ogawa’s Example 3. Ex. 1002, 5:40–
`46, 6:20–25, 7:1–31. Example 3 teaches mixing equal parts by weight of
`“the formulation shown in Table 4” and “the formulation shown in Table 2.”
`Id. at 7:3–7. One formulation contains the chelating agents tetrasodium
`ethylenediaminetetraacetate and ascorbic acid, and the other formulation
`contains hydrogen peroxide. Id. at 6:20–25, 7:11–31. Neither formulation
`includes a colorant or pigment. Id.; id. at 7:3 (describing “the formulation
`shown in Table 4” as a “bleach pack”). The mixture contains 0.4 weight
`percent of the chelating agents, and Ogawa teaches applying the mixture to
`hair. Id. at 5:40–46, 7:11–31. Elsewhere, Ogawa teaches that the chelating
`agent also may be maleic acid or any of seven other compounds, rather than
`the salt of ethylenediaminetetraacetic acid or the ascorbic acid that is
`disclosed in Example 3. Id. at 2:61–3:3.
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`Patent Owner argues that none of Ogawa, Berkemer, or KR ’564
`teaches or suggests using maleic acid in a mixture with a bleaching
`formulation. PO Resp. 22–25. But, as discussed below in Section C.3.f,
`Petitioner has shown sufficiently that Ogawa itself provides a reason to use
`maleic acid in its bleaching treatment, and that Berkemer and KR ’564
`provide an additional reason why a person of ordinary skill in the art would
`have chosen Ogawa’s maleic acid over Ogawa’s other chelating agents.
`Accordingly, we conclude that Petitioner has made a sufficient showing that
`the combination of Ogawa, Berkemer, and KR ’564 teaches or suggests
`using maleic acid in place of the tetrasodium ethylenediaminetetraacetate
`and ascorbic acid in the bleaching treatment of Ogawa’s Example 3.
`Although neither Ogawa’s Example 3, nor either Berkemer or KR
`’564, teaches or suggests any concentration or range of concentrations for
`maleic acid specifically, the chelating agents are present in the mixture in a
`combined amount of 0.4% by weight of the mixture, which falls within the
`range of claim 1. Ex. 1002, 7:1–31. Ogawa, moreover, discloses elsewhere
`that “a chelating agent” can be “maleic acid” and “may be incorporated
`preferably in a proportion of from[ ]0.01 to 10 wt.%” of the first
`formulation. Id. at 2:61–3:5. Because Example 3 teaches mixing the first
`formulation with an equal weight of the second formulation, the disclosed
`range of maleic acid concentrations in the mixture of Example 3 would be
`0.005 to 5 weight percent, which overlaps the claimed range of 0.1 to 50
`weight percent. Accordingly, we determine that Petitioner has shown by a
`preponderance of the evidence that the combination of Ogawa, Berkemer,
`and KR ’564 teaches or suggests the limitations of claim 1.
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`b. Claims 2–6
`Petitioner argues that Ogawa teaches or suggests the limitations that
`dependent claims 2–6 add to independent claim 1. Pet. 56–63 (citing
`Ex. 1002, 2:64–3:7, 4:43–57, 6:20–26, 7:1–31, 8:28–30; Ex. 1008 ¶¶ 164–
`171, 174–181, 186–192, 195–202, 204; Ex. 1012, 17). Patent Owner does
`not dispute Petitioner’s arguments with respect to these claims. PO Resp.
`98–99. We have reviewed Petitioner’s arguments and the underlying
`evidence cited in support, and we are persuaded that the evidence of record
`sufficiently establishes that the combination of Ogawa, Berkemer, and KR
`’564 teaches or suggests all the limitations of claims 2–6.
`
`c. Claim 7
`Claim 7 depends from claim 1 and recites a limitation requiring that
`the step of “applying the mixture to the hair” be “repeated one or more
`times.” Ex. 1001, 25:42–26:5, 26:30–31. Petitioner argues that it was
`“known in the art” to apply hair bleaching treatments “with a brush in order
`to minimize contact with the skin” and that application with a brush requires
`multiple repetitions, “because a brush is not able to effectively deliver the
`bleaching formulation to more than a small portion of hair at a time.”
`Pet. 64 (citing Ex. 1008 ¶ 206; Ex. 1012, 17). Patent Owner argues that it is
`improper for Petitioner to rely on Exhibit 1012, which is not one of the three
`references (Ogawa, Berkemer, and KR ’564) that form the basis for
`Petitioner’s asserted ground of unpatentability, and Petitioner fails to
`identify any portion of those references that teaches or suggests the
`limitation of claim 7. PO Resp. 98–99.
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`We are not persuaded by Patent Owner’s argument that it is improper
`for Petitioner to rely on Exhibit 1012. First, Petitioner identified Exhibit
`1012 in the Petition, so it is incorrect to say that Exhibit 1012 did not form
`part of the basis for Petitioner’s asserted ground of unpatentability. Pet. 64
`(citing Ex. 1012, 17). Second, we “may consider a prior art reference to
`show the state of the art at the time of the invention, regardless of whether
`that reference was cited in [our] institution decision.” Genzyme Therapeutic
`Prods. Ltd. P’ship v. Biomarin Pharma. Inc., 825 F.3d 1360, 1369 (Fed. Cir.
`2016). Here, Petitioner proffers Exhibit 1012 as evidence of the state of the
`art, and the exhibit was cited both in the Petition and in our Institution
`Decision, so we clearly may rely on it. Pet. 64 (“. . . as known in the art,
`hair bleaches are typically applied with a brush . . .”); Inst. Dec. 16 (citing
`Ex. 1012, 17).
`The evidence of record shows that “paste bleaches are normally
`prepared just before use and applied with a brush; skin contact is
`minimized.” Ex. 1012, 17. There also is evidence that applying a bleaching
`treatment with a brush requires applying it “more than one time to the hair in
`order to cover more than a small portion of the hair.” Ex. 1008 ¶ 206.
`Patent Owner does not dispute this evidence. Accordingly, it is immaterial
`that none of Ogawa, Berkemer, and KR ’564 teaches or suggests this
`limitation. As such, we determine that Petitioner has shown by a
`preponderance of the evidence that the combination of Ogawa, Berkemer,
`and KR ’564, when read in view of the state of the art at the time of the ’419
`patent, teaches or suggests the additional limitation of claim 7.
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`d. Claim 8
`Claim 8 depends from claim 1 and recites a limitation requiring a third
`step to the claimed method, with that third step being “rinsing, shampooing,
`or conditioning the hair, or a combination thereof,” and with the third step
`occurring after the “applying the mixture to the hair” step. Ex. 1001, 25:42–
`26:5, 26:32–35. Petitioner relies on Ogawa to teach or suggest this
`limitation. Pet. 65–66 (citing Ex. 1002, 4:32–39, 8:25–27; Ex. 1008 ¶¶ 164–
`171, 208–209).
`Patent Owner does not dispute that Ogawa teaches rinsing or washing
`its bleaching mixture off the hair after it is applied, but Patent Owner notes
`that Berkemer teaches leaving its composition on the hair without rinsing it
`out. PO Resp. 99 (citing Ex. 1004, 2:3–5, 2:19–23, 3:32–4:15). We are not
`persuaded that the fact that Berkemer teaches leaving its treatment on the
`hair would have dissuaded the person of ordinary skill in the art from
`following Ogawa’s teaching to rinse out its treatment. As discussed above,
`Ogawa teaches using maleic acid in its treatment, and Petitioner relies on
`Berkemer only to provide an additional reason why the person of ordinary
`skill in the art would have chosen Ogawa’s maleic acid over the other
`possible chelating agents Ogawa suggests. A person of ordinary skill in the
`art, following Ogawa’s process would have understood that, after the
`mixture was applied to the hair and left “for 1 to 50 minutes, . . . the mixture
`[would be] washed off” or that “the applied formulation [would be] removed
`from the hair by washing the hair.” Ex. 1002, 4:32–39, 8:25–27. This
`would still be true if the person of ordinary skill in the art had relied on
`Berkemer’s teachings to choose maleic acid from among the chelating
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`agents Ogawa suggests. As such, we determine that Petitioner has shown by
`a preponderance of the evidence that the combination of Ogawa, Berkemer,
`KR ’564, and the state of the art at the time of the ’419 patent teaches or
`suggests the additional limitation of claim 8.
`
`e. Claim 10
`Petitioner argues that Ogawa teaches or suggests the limitations that
`dependent claim 10 adds to independent claim 1. Pet. 66–67 (citing
`Ex. 1002, 4:32–39, 7:44–8:16; Ex. 1008 ¶¶ 164–171, 211). Patent Owner
`does not dispute Petitioner’s arguments with respect to this claim. PO Resp.
`98–99. We have reviewed Petitioner’s arguments and the underlying
`evidence cited in support, and we are persuaded that the evidence of record
`sufficiently establishes that the combination of Ogawa, Berkemer, and KR
`’564 teaches or suggests the additional limitations of claim 10.
`
`f. Reason to Combine
`Petitioner relies on the disclosure of Ogawa to teach or suggest all the
`limitations of claims 1–8 and 10. Pet. 46. As discussed above, Ogawa
`teaches using any of a number of chelating agents, one of which is the
`maleic acid6 the claims of the ’419 patent require. Petitioner argues that the
`teachings of Berkemer and KR ’564 would have provided a person of
`ordinary skill in the art with a motivation to choose “maleic acid [over
`
`
`6 We use “maleic acid” as shorthand for “maleic acid or salts thereof.” The
`claims of the ’419 patent do not require maleic acid specifically; instead,
`they require either maleic acid “or salts thereof.” Ex. 1001, 25:44–53.
`Similarly, Ogawa teaches both organic acids, including maleic acid, and
`“salts thereof” as chelating agents. Ex. 1002, 2:61–3:1.
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`Ogawa’s other options] as the chelating agent in the methods for bleaching
`hair disclosed in Ogawa.” Id.
`Patent Owner argues that Berkemer and KR ’564 would not have
`motivated this choice for several reasons. First, Patent Owner argues that
`Berkemer’s benefits are limited to a treatment carried out at low pH, while
`Ogawa teaches that the pH must be high during bleaching. PO Resp. 26–27.
`Second, Patent Owner argues that using Berkemer’s acid treatment would
`neutralize the alkaline environment created by following Ogawa’s bleaching
`method, rendering both methods ineffective. Id. Third, Patent Owner
`argues that a person of ordinary skill in the art would not have expected
`Berkemer’s maleic acid to bond with hair fibers during a bleaching
`treatment, because the high pH of the bleaching process is above the
`isoelectric point of the hair, causing the hair fibers to repel “negatively
`charged molecules, such as maleic acid/substitution products.” Id. at 27.
`Fourth, Patent Owner argues that Berkemer teaches away from using maleic
`acid in a bleaching treatment like that described in Ogawa, because either
`the maleic acid or the alkaline bleaching environment would end up
`neutralized, depending on how much maleic acid was added. Id. at 28–29.
`Fifth, Patent Owner argues that Berkemer’s benefits are limited to a leave-on
`treatment, so a person of ordinary skill in the art would not have had a
`reason to use Berkemer’s maleic acid in a temporary application such as
`Ogawa’s bleaching treatment. Id. at 29–30. Sixth, Patent Owner argues that
`KR ’564 does not remedy Berkemer’s deficiencies, because KR ’564 does
`not express any preference for maleic acid over either the other options it
`teaches or those that Ogawa teaches, and it has some of the same
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`deficiencies as Berkemer, including teaching use at a low pH and not
`teaching a bleaching formulation. Id. at 30–31. Seventh, Patent Owner
`argues that a person of ordinary skill in the art would not have used maleic
`acid in a bleaching treatment because of safety concerns, including that
`“maleic acid should not be used with oxidizers,” such as those present in
`Ogawa’s bleaching treatment, as well as that maleic acid “is a known skin
`sensitizer and can cause allergic reactions.” Id. at 31–32. Finally, Patent
`Owner argues that the passage of “nearly a decade” since the publication of
`KR ’564 without anyone combining the teachings of Ogawa, Berkemer, and
`KR ’564 is evidence that a person of ordinary skill in the art would not have
`had a reason to make such a combination. Id. at 32.
`In deciding whether the preponderance of the evidence supports
`Petitioner’s position, we note that Ogawa itself teaches using maleic acid in
`its method. Ogawa identifies maleic acid as one of only ten specifically
`named organic acids that are illustrative of the chelating agents that may be
`used. Ex. 1002, 2:61–3:1. In addition, O
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