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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`L’OREAL USA, LLC,
`Petitioner,
`
`v.
`
`LIQWD, INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00025
`Patent 9,668,954 B2
`____________
`
`Record of Oral Hearing
`Held: May 20, 2019
`____________
`
`
`
`Before TONI R. SCHEINER, CHRISTOPHER M. KAISER, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`
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`Case PGR2018-00025
`Patent 9,668,954 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHELLE E. O’BRIEN, ESQUIRE
`TIMOTHY J. MURPHY, ESQUIRE
`The Marbury Law Group, PLLC
`11800 Sunrise Valley, PLLC 15th Floor
`Reston, Virginia 20191
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MATTHEW BLACKBURN, ESQUIRE
`Diamond McCarthy LLP
`150 California Street, Suite 220
`San Francisco, CA 94111
`
`RIVKA D. MONHEIT, ESQUIRE
`Pabst Patent Group
`1545 Peachtree Street NE, Suite 320
`Atlanta, Georgia 30309
`
`
`
`
`The above-entitled matter came on for hearing on Monday, May 20,
`
`2019, commencing at 12:58 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`Patent 9,668,954 B2
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`P R O C E E D I N G S
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` MR. DILL: All rise.
`JUDGE SCHEINER: Please be seated. Well, good afternoon,
`everyone. This is a little different. We have -- I’m the only one here today.
`Judges Majors and Kaiser are in Denver.
`So let’s see. Before we get started, well, first we are going to have a
`role call and then I have a few things to say out confidential information that
`may or may not be disclosed. So and if -- I’ll give you some specific
`instructions about that in a second.
`So why don’t we take care of introductions first. And then I'll, we are
`going to go over a few ground rules so that nothing is inadvertently
`disclosed that shouldn’t be. And -- okay. So I’d ask petitioner to please
`introduce yourselves and thank you.
`MS. O'BRIEN: Michelle O’Brien on behalf of petitioner, L'Oreal
`USC -- USA and with me is Timothy Murphy, also for L’Oreal USA.
`JUDGE SCHEINER: Welcome. And are any of the observers here
`with you?
`MS. O'BRIEN: Yes.
`JUDGE SCHEINER: Okay.
`MS. O'BRIEN: So we have Dr. Bautista from L'Oreal USA.
`JUDGE SCHEINER: Welcome.
`MS. O'BRIEN: And Joe Palys as well.
`JUDGE SCHEINER: Okay.
`MS. O'BRIEN: And our IT help.
`JUDGE SCHEINER: Thank you. And for patent owner please?
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`Patent 9,668,954 B2
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`MR. BLACKBURN: I’m Matthew Blackburn with Diamond
`McCarthy on behalf of patent owner. With me is Rivka Monheit.
`JUDGE SCHEINER: Welcome.
`MR. BLACKBURN: From Pabst Patent group and sitting to her left
`is Carlos Zuniga who is an advisor with the same firm and then we also have
`Tiffany Walden who is the general counsel of patent owner. And then way
`in the back is my daughter Maura --
`JUDGE SCHEINER: Okay.
`MR. BLACKBURN: -- who is helping me today.
`JUDGE SCHEINER: Your helper. All right. So may I ask the
`gentleman in the back, are you here as a member of the public?
`SPEAKER: Yes, I am.
`JUDGE SCHEINER: Okay. So the reason I am asking you is
`because there is a protective order in place in this case and if we approach
`confidential information we, I’m afraid we will have to ask you so step out
`please. Yes, sir.
`MR. PALYS: Hi, Your Honor, I'm Joseph Palys, I’m counsel for
`L’Oreal USA in the district court litigation.
`JUDGE SCHEINER: Okay.
`MR. PALYS: I am not signed on to the protective order that’s in this
`proceeding.
`JUDGE SCHEINER: Okay. So you also --
`MR. PALYS: So if --
`JUDGE SCHEINER: -- will have --
`MR. PALYS: Is that’s --
`JUDGE SCHEINER: -- if we approach --
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`MR. PALYS: Exactly, Your Honor.
`JUDGE SCHEINER: Okay.
`MR. PALYS: I’m not sure if I might just sign on as we sit here today
`but we will cross that bridge.
`JUDGE SCHEINER: I believe that is not up to me.
`MR. PALYS: Okay.
`JUDGE SCHEINER: So I may ask you to leave --
`MR. PALYS: Just let me know.
`JUDGE SCHEINER: -- if -- to step out. Not to leave, but to step
`outside if we approach confidential information.
`MR. PALYS: Will do, Your Honor. Thank you.
`JUDGE SCHEINER: Okay, thank you. Thank you for letting me
`know
`SPEAKER: Yes.
`JUDGE SCHEINER: Okay. So once we get started, you each will
`have a total, each side will have a total of 60 minutes and I will ask you now
`if you would like to reserve any of that time? You may reach reserve up to
`15 minutes.
`MS. O'BRIEN: Yes, Your Honor, I would like to reserve 15 minutes.
`JUDGE SCHEINER: Okay.
`MS. O'BRIEN: For petitioner.
`JUDGE SCHEINER: Okay.
`MR. BLACKBURN: And I would also like to serve 15 minutes --
`JUDGE SCHEINER: 15 minutes.
`MR. BLACKBURN: -- for patent owner.
`JUDGE SCHEINER: Okay.
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`MR. BLACKBURN: And before we get too far off of confidential
`information, when I was reviewing our slides that we submitted to the
`Board, there was a Slide 17 that quoted from PGR2017-00012 of finding and
`that finding is actually sealed in that proceeding. So in the slide that I plan
`to show today, there is actually a redacted box over top of the quote --
`JUDGE SCHEINER: Oh, excellent.
`MR. BLACKBURN: -- and I won’t be quoting from that. So I don’t
`plan to get into the confidential information.
`JUDGE SCHEINER: Excellent, okay. So what I would like to ask
`you to do if at all possible if you are going to approach confidential
`information to please let us know ahead of time. And try to -- if possible to
`segregate it to one part of your presentation so we are not asking people to
`step out, come back in, step out and so forth.
`So I think the other thing I would like to ask you to do because we
`have two of our Judges are and let me introduce them. This is Judge
`Timothy Majors over here to my right and Judge Christopher Kaiser to my
`left.
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`And they will be able to see you and hear you when you’re at the
`podium and speaking into the microphone but I would ask you to identify
`the slides in your demonstratives because they cannot -- they don’t see what
`we see on this screen. They will be looking at electronic copies on their
`monitors. So and we also would appreciate that because the, our court
`reporter needs that information as well to as we work through the transcript.
`So without further ado, I’m going to start the clock for 45 minutes
`and, petitioner, you may begin whenever you -- I won’t start until you’re
`ready to begin but give me a moment just to get this timer set.
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`And actually I need a moment because I need to pull my screen up
`too. I’m sorry I was talking and I forgot to do that. This will only take a
`second. And I guess I should ask, Judges Majors and Kaiser, can you hear
`us all right?
`JUDGE MAJORS: I can hear you fine.
`JUDGE SCHEINER: Okay, thank you. This is new for me so bear
`with me. All right. We are, are you -- if you’re ready I will start the timer.
`MS. O'BRIEN: I’m ready, thank you, Your Honor.
`JUDGE SCHEINER: Okay.
`MS. O'BRIEN: Good afternoon, Your Honors, and may it please the
`Board. The 954 patent claims very broadly recite a method for bleaching
`hair comprising three steps, each of which were well known in hair
`bleaching well before the earliest possible priority date of the patent.
`Besides being described in Pratt, the first step, mixing a bleach
`powder and developer to form a bleaching formulation is described
`throughout several of patent owners own exhibits and patent owners
`witnesses admitted that this step was well known even earlier than the
`1980's.
`There is no dispute in this proceeding that this first step was known.
`There is also no dispute in this proceeding that the third step, applying the
`formulation to the hair was also known.
`Rather the dispute here centers on whether a skilled artisan would
`have added a formulation comprising maleic acid to the bleaching
`formulation before applying it to hair.
`However, maleic acid was known for use in hair bleaches well before
`the earliest possible priority date of the 954 patent including as a pH adjuster
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`such as described in Pratt as well as Singleton, Exhibit 1034 in this
`proceeding. And also as a chelator as described in Ogawa Exhibit 1010 in
`this proceeding.
`Additionally, maleic acid was known to reduce, prevent and repair
`damage to hair caused by bleaching when applied either after the bleaching
`process as described by Berkemer or as an additive in a bleaching mixture as
`described by KR ‘564 as the Board correctly found in PGR2017-00012.
`Turning to the references and the instituted grounds, Slide 3. Pratt
`provides a solution to reduce damage to hair caused by bleaching. Pratt’s
`solution incorporates a conditioning composition C, his third composition
`which contains a cationic or cationizable compound into a bleaching
`formulation.
`Slide 4, which comprises a bleach powder, paragraph 16 in a
`developer such as hydrogen peroxide. Paragraph 38. Patent owners expert
`Dr. Borish admits that Pratt’s composition C is a conditioner in composition.
`Pratt’s composition C has a specific pH preferable ranging from 3 to 6
`and most preferably from 3 to 5. In order to achieve this pH, Pratt teaches
`that maleic acid can be used in his composition C as a pH adjuster.
`Pratt also teaches ratios from mixing his compositions A, B and C in
`order to achieve a pH of 8 to 12 or preferably 9 to 11. In other words, Pratt
`himself teaches a skilled artisan how to mix his acidic composition C with
`an alkaline bleaching formulation in order to prepare a bleaching mixture.
`Further, as patent owner’s expert, Dr. Borish, has confirmed, a skilled
`artisan is able to adjust the pH of the bleaching mixture in order to bleach
`hair.
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`Turning to Slide 5. Tanabe discloses that his composition improves
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`the properties of hair. Tanabe's composition which patent owner and its
`expert admit is also a conditioning composition includes as required
`components both an acid and a cationic compound.
`Acid is acid Tanabe recites maleic acid as one of only three preferred
`acids. As his cationic compound Tanabe disclose that those compounds
`falling within the scope of his formula 1 which overlap with Pratt’s cationic
`compound will be successful.
`As we see on Slide 6, Tanabe discloses that his conditioning
`composition may have a pH ranging from 2 to 6 with a pH of 2.5 to 3.5
`preferred. This pH overlaps that of Pratt’s composition C. And as set forth
`in the petition at pages 30 to 31, Tanabe's composition C and Pratt’s
`composition C overlap in many other respects as well.
`Turning to Slide 7. As noted earlier, patent owners expert Dr. Borish
`confirms that both Pratt’s composition C and Tanabe's compositions are
`conditioners.
`And as shown on Slide 8 in the related PGR 2017-00012 proceeding,
`both petitioners expert, Mr. Nandigari and patent owners witness, Mr.
`Dispenza agreed that adding conditioners to a bleaching formulation was a
`well-known method of minimizing damage to the hair caused by a bleaching
`process.
`Further, slide 9 shows that patent owner’s exhibits in this case confirm
`that this was a known way to reduce hair damage from bleaching. In other
`words --
`JUDGE MAJORS: Ms. O'Brien?
`MS. O'BRIEN: Yes.
`JUDGE MAJORS: I guess the question is in looking at patent owners
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`arguments, it seems that the crux of their argument is that if Pratt already
`includes a conditioning component, its component C, why did the skilled
`person even need to go to Tanabe and to use its conditioning composition in
`particular with the higher amounts of maleic acid when it just looking at
`your slides here, it would seem that at least or that patent owners argument is
`that you are not expecting to get any additional benefit by doing that. Pratt
`is sufficient in and of itself.
`MS. O'BRIEN: Well, Tanabe discloses that his compositions impart
`additional improved properties and a skilled artisan would have expected
`that those properties of Tanabe's composition C when used in place of
`Pratt’s, I’m sorry, Tanabe's conditioning composition when used in place of
`Pratt’s composition C would likewise impart those additional properties.
`The --
`JUDGE MAJORS: Okay. And to that I just again playing on patent
`owners arguments, they said that’s not necessarily the case because the
`skilled person reading Tanabe would think that its conditioner needs to be
`maintained at an acidic pH in order to have the benefits as to the mechanical
`and optical properties. Why is that argument incorrect?
`MS. O'BRIEN: Well, I think Pratt’s teaching alone confirms that
`when you add a cationic compound into his, as an acidic composition into
`his alkaline bleaching formulation, you get beneficial results.
`And I don’t think that there is any reason in the record why one of
`skill in the art would not expect that Tanabe's composition which has an
`overlapping cationic compound would not provide those benefits in using it
`in place of Pratt’s composition C.
`The expert -- the patent owner and its expert agree that Pratt’s
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`composition C is a conditioning composition and that Tanabe's composition
`is a conditioning composition.
`And it is well accepted in patent law that substituting known
`equivalents is prima facie obvious. And at a minimum, it would have been
`obvious to try to substitute Tanabe’s composition into Pratt’s composition C
`in order to attempt to obtain the benefits of Tanabe in Pratt’s composition C.
`JUDGE MAJORS: Although here, in addition to substituting, you’re
`also having to choose I guess the maleic acid concentrations at the upper
`edges of the disclosed ranges in order to get the overlap that petitioner is
`advancing here. Is that right?
`MS. O'BRIEN: Well, and in Tanabe it is one of only three preferred
`acids and so the need to choose it is very minimized. But further, both
`Berkemer and KR ’564 provide a skilled artisan with that motivation to
`choose maleic acid and to use it in Tanabe's disclosed ranges with the further
`expectation that the benefits associated with Berkemer and KR ’564 would
`likewise be seen in Pratt’s composition. All of these compositions are all
`directed to improving the properties of the hair.
`JUDGE MAJORS: You can continue.
`MS. O'BRIEN: Okay, thank you, Your Honor. As shown on Slide 10
`and as explained by Dr. Wickett in Exhibit 1012 and as set forth in the
`petition, the Pratt, Tanabe composition containing an amount of maleic acid
`-- contains an amount of maleic acid that broadly overlaps the very wide
`range of 0.1 to 50 percent recited in the claims.
`For all of these reasons that Pratt discloses that maleic acid can be
`used as his -- as a pH adjustor in his composition C, that Tanabe which is
`equivalent, the patent owners expert agrees is an equivalent conditioning
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`composition to Pratt’s composition C discloses maleic acid as one of only
`three preferred acids. And finally, that it was known at the time that using a
`condition in a bleaching process would reduce damage to hair.
`A skilled artisan would have been motivated to prepare Pratt’s
`bleaching composition with Tanabe’s composition using maleic acid with a
`reasonable expectation of success.
`And as I said just a moment ago, the skilled artisan would have been
`further motivated to select maleic acid specifically from Pratt and Tanabe
`based on the teachings of KR ’564. Slide 12. That adding --
`JUDGE MAJORS: Ms. O'Brien, can I interrupt you for a second?
`I’m sorry. But before you go off of Slide 10, in petitioner’s papers they said
`or argued somewhere that there was not only overlap but there was an
`identical, just looking at page 12 of the reply. It is identical to the amount
`recited in the 954 claims.
`Comparing that to table 10 here on I’m sorry, page 10 on your
`demonstratives, is 0.429, is that the highest we get even assuming we take
`the most favorable Pratt ratio, most favorable to petitioner's case and the top
`amount of 5 percent. Do you understand my question?
`MS. O'BRIEN: I think you are asking me whether this bottom range
`of .122 to .429 is the highest amount based on the various disclosed mixing
`ratios?
`JUDGE MAJORS: Correct.
`MS. O'BRIEN: So while Pratt is not limited to those ratios, those are
`exemplary ratios that he gives and although I am sorry, I don’t recall off the
`top of my head if there are other ratios that he gives that are higher, these are
`certainly the ones that we pointed to obviously to show that there was
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`overlap. And I think --
`JUDGE MAJORS: I guess put different, is there any evidence in the
`record of teachings in the art to say let’s use 5 percent, 10 percent, 20
`percent maleic acid in a bleaching composition?
`MS. O'BRIEN: So I will have to go back and double check with the
`amounts are in Berkemer and KR ’564 and the Ogawa reference, but there
`certainly are ranges that are broader than up to .429 percent.
`Off the top of my head I think KR ’564 may have been up to 10
`percent. I might be mistaken though. Ogawa is also up to 10 percent so the
`references that are in the record certainly suggest that you can use it in a
`much broader range than what we are showing here on Slide 10.
`JUDGE MAJORS: Okay. Thank you.
`MS. O'BRIEN: Certainly. So just the final point on Slide 12 and 13,
`is that that as I said just a moment ago, Berkemer and KR ’564 based on the
`teachings that the use of maleic acid both as a post treatment as well as an
`additive in a bleaching mixture would have motivated the skilled artisan to
`select maleic acid specifically from Tanabe for use in Pratt particularly
`because it's also disclosed for use in Pratt with the expectation that those
`same benefits would be seen in that combination.
`Turning to Slide 14, the breakage claims, Claims 14 to 16, 18 and 24
`to 28 depend from either Claim 13 which depends from Claim 12 that is
`ultimately depends from Claim 1 or from Claim 1. And these breakage
`claims are invalid for multiple reasons.
`First, patent owner waived any argument that these claims are
`separately patentable for -- from Claim 1 by not arguing that separately. In
`paper 9, the patent owner preliminary response pages 37 to 39 and 45 to 47
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`patent owner argued that dependent claims were separately patentable.
`After institution, in paper 13, the scheduling order at page three, Your
`Honors specified that for due date one, the patent owner response quote the
`patent owner has cautioned that any arguments for patentability not raised in
`the response will be waived. End quote.
`Despite this warning, in its response paper 23, patent owner spent 76
`pages arguing the patentability of Claim 1 accompanied by a 191 page
`declaration also arguing only the patentability of Claim 1.
`On page 77, patent owner simply states that because it does not
`believe petitioner satisfied its burden for establishing the obviousness of
`Claim 1 the dependent claims are therefore patentable.
`In other words, patent owner did not provide any arguments or
`evidence regarding the separate patentability of any dependent claim. For
`this reason alone, the claims just stand or fall together.
`Second, as petitioner explained in the petition, Claims 1, 21 and 13
`from which Claims 14 to 16, 18 and 24 to 28 depend, would have been
`obvious based on the Pratt, Tanabe or Pratt, Tanabe, Berkemer, KR ’564
`combinations in view of the articulated motivation and reasonable
`expectation of success.
`Each of the breakage claims merely recites an amount of decrease in
`breakage without adding any additional steps to the process recited in the
`claims from which they depend.
`In other words, each of the Claims 14 to 16, 18 and 24 to 28 merely
`recite an intended effect of the process from which those claims depend.
`However as the Federal Circuit has confirmed, in Teva v. Sandoz 906 F 3rd
`1013 citing BMS, claim language that does not result in a manipulative
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`difference in the steps of the claim is not further limiting.
`In other words, since the language of Claims 14 to 16, 18 and 24 to 28
`does not further limit the process of the claims from which they depend but
`rather merely recites the intended effect of that process of those claims, they
`cannot be separately patentable under Teva v. Sandoz.
`Likewise, under In re: Kao, because the specification itself at column
`18 lines 27 to 31 requires that it is the active agent only that results in the
`reduced breakage, the reduced breakage itself is not an additional
`requirement imposed by the claims but rather a property necessarily present
`in the process of the claims from which it depends.
`JUDGE MAJORS: Ms. O’Brien?
`MS. O'BRIEN: Yes.
`JUDGE MAJORS: On the breakage claims, before we move off of
`these, I guess the issue and I’m sure patent owner is going to disagree with
`your argument as to waiver but I’ll leave that to Mr. Blackburn.
`I guess the trouble that at least for my part that I’m having is how do
`we know, where is the evidence in this record to show that the actual
`limitations of the breakage claims are being satisfied and if -- as you pointed
`out, the claims that there are various dependencies from each other but
`Claim 1 for example has a very broad range of maleic acid.
`It could very well be the case that the breakage limitations would be
`for example say at least 50 percent. But that is only provided when you
`include maleic acid at 16, 17, 18 percent. I’m just making these numbers up.
`But that would still be consistent with the idea of the performing the
`manipulating steps of Claim 1 but there is a functionality recited in the
`breakage claims and how do we know on this record that the Pratt Tanabe
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`combination here is actually satisfying those functional limitations?
`Separate and apart from what a skilled person might expect and when
`you consider the arguments and as I read them, the argument is in effect
`well, you’d expect some reduction in breakage if you are using conditioners.
`But my question is where is the evidence in the record to say when
`you combine Pratt and Tanabe as proposed by petitioner that you are in fact
`going to get, not as a mere possibility, you are in fact going to get reduction
`of these breakage limitations.
`MS. O'BRIEN: Well, I’ll address the point about the conditioner
`separately because that was going to be in my next point and I’ll get to that
`as soon as I answer sort of the two points that I think are responsible to your
`question.
`The first is that the specification itself and again this is column 18,
`lines 27 to 31 makes clear that 100 percent of the attributed benefit of
`reduction in breakage is dependent on whether the active agent is present or
`is not. It’s -- the recited amounts after treatment with the active agent
`compared to untreated hair from the same individual.
`So the presence or active -- presence or absence of the active agent in
`the recited amounts is what patent owner conveys is what provides the
`reduced breakage effect.
`And I think then if you look at the claims from which they depend,
`whether its Claim 1 which the Claims 24 to 28 depend directly from or 14 to
`16 and 18 which ultimately depend back through 13, 12 and 1, there are no
`added steps that would provide a, I’m sorry, I’m want to go back to the
`language of the case. That would provide a manipulative difference in the
`steps of the claim that would necessarily provide a difference in the
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`breakage.
`So if you have for example Claim 14 which depends from Claim 13
`and you have at least 5 percent, then Claim 15 which depends from 13 and
`you have at least 10 percent, and so on, there is no manipulative difference
`in the steps. All that is being claimed here is that if you follow the process
`of Claim 1 you will as an intended effect ultimately achieve the claimed
`breakage.
`And I think that this is as a question of law directly on point either the
`Teva v. Sandoz case or the In re Kao case and final sort of case I think that is
`also controlling here and that has to be considered is the King
`Pharmaceuticals case which In re Kao cites to and that's 616 F 3rd 1267.
`Where the Fed Circuit says that discovering or claiming a new benefit of an
`old process cannot make that process patentable again.
`I think that its ultimately the fact that the claims recite nothing more
`than an inherent property or natural result or intended effect of the process
`that is claimed is sufficient for Your Honors to find that the claims, the
`breakage claims are unpatentable based on their dependence on another
`claim that is also unpatentable without reciting further manipulative steps.
`So moving on to Slide 15, we wanted to also address patent owner’s
`argument that the reply was not proper in scope and we don’t agree that the
`reply was not proper in scope. Petitioner’s reply points to patent owner’s
`own evidence that adding a conditioner to a bleaching formulation would
`necessarily decrease breakage by the amounts recited in the claims.
`This was not a new argument but rather expanded on the evidence of
`record supplied by patent owner confirming the unpatentability of those
`claims for the reason that was argued in the petition. I.e. the use of a
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`conditioner in a bleaching formulation, in Pratt’s bleaching formulation, or
`the combination of Pratt and Tanabe would as a natural result provide the
`recited amounts of reduction in breakage.
`In -- as discussed previously, petitioner's position was that it would
`have been obvious to substitute Tanabe’s conditioner for Pratt’s conditioning
`composition. The evidence shown in Slide 18 which patent owner supplied
`simply demonstrates that this is the natural result.
`For all of these reasons, the breakage claims are not separately
`patentable from Claim 1 or from the claims from which they depend.
`So turning to Slide 19. As the Board has correctly held on objective
`indicia, the burden of production lies with patent owner in the Galderma
`case. In order to meet its burden, In re Kao requires that patent owner
`establish that the offered objective indicia is based on something both
`claimed and importantly novel in the claim. Otherwise, the patent owner
`fails to satisfy the nexus requirement and the burden never shifts to
`petitioner.
`As shown on Slide 20, in this case, patent owner improperly attempts
`to establish nexus by trying to connect the use of maleic acid in hair
`bleaching generally to the 954 claims.
`But as pointed out previously, Slide 21, the use of maleic acid in hair
`bleaching as a pH adjustor, a chelator and even to prevent breakage was
`known in the prior art. Therefore the use of maleic acid and bleaching
`cannot establish the required nexus under In re Kao.
`Furthermore, a bleaching product using maleic acid was in fact sold
`under the name Catzy. On Slide 22, the Catzy product information is seen.
`Indeed, this product used maleic acid and a bleaching process.
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`Although patent owner suggested in paper 55 that the product did not
`exist, Slide 23, on Slide 24 we can see in the related UK proceeding, patent
`owner itself procured and even relied on evidence that the product was in
`fact produced and included maleic acid.
`The next few slides I’m going to go skip ahead a bit. Kim and Ogawa
`also show that the use of maleic acid and a bleaching process was known, 25
`through 30.
`So I’m going to jump head to Slide 31 because I see that I’m running
`short on time. In addition to the fact that maleic acid and a bleaching
`process was not novel and therefore cannot establish nexus, patent owner
`has not established that it is entitled to any presumption of nexus.
`Patent owner argues that petitioner’s products quote when used as
`petitioner instructs follows the 954 method exactly. This is false.
`Petitioners own expert confirms that a step of adding is not equivalent to a
`step of mixing.
`The 954 claims require that the active agent formulation is mixed with
`the bleaching formulation but as we can see on Slides 32 to 34, patent owner
`has only alleged that petitioner instructs to add step 1 to the bleaching
`formulation.
`Since patent owner’s expert has testified that mixing requires
`something more than adding, patent owner is not entitled to a presumption of
`nexus for at least this reason.
`Finally, turning to Slide 35, patent owners attempt to show that
`petitioner’s products meet various elements of the claims also fail. As an
`initial matter, Exhibit 2049 must get disregarded because it failed to meet the
`Board’s requirement of being accompanied by a declaration under Board
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`rule 42.65b.
`Further, as can be seen on pages Slides 36 to 37, Exhibit 2049 should
`be excluded for the additional reason that on its face it is unreliable.
`Slide 36 shows it is missing at least one page, page 1 and it appears
`that at least one spectral data sheet, I86040 is also missing.
`Slide 37 also shows that tone of the spectral data sheets was obtained
`or at least signed on 12/16/16, the day after the report was submitted on
`12/15/16.
`JUDGE MAJORS: Ms. O'Brien --
`MS. O'BRIEN: Yes.
`JUDGE MAJORS: -- did petitioner object to Exhibit 2049 --
`MS. O'BRIEN: Yes.
`JUDGE MAJORS: -- based on rule 42.65?
`MS. O'BRIEN: Yes, we did. No, oh. We noted it in the reply, Your
`Honor, and requested that it be disregarded because it did not comply with
`the rule. And --
` JUDGE MAJORS: Okay. But not within five days of the service of
`the patent owner response?
`MS. O'BRIEN: So we understood that that would be a challenge to
`the sufficiency and that it was appropriate for a motion to exclude.
`JUDGE MAJORS: Are you aware of any authority going to the
`question of whether the Board’s enforcement of its rule such as rule 42.65
`whether that requires that an objection be made based on that rule in order to
`preserve it?
`MS. O'BRIEN: I don’t know the answer to that, Your Honor. I
`would be happy to look --
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