Non-Public Version – Protective Order Material
`Trials@uspto.gov
` Paper 78
`Tel: 571-272-7822
`Entered: July 30, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`L’ORÉAL USA, INC.,
`Petitioner,
`v.
`LIQWD, INC.,
`Patent Owner.
`
`Case PGR2018-00025
`Patent 9,668,954 B2
`
`
`
`
`
`
`
`
`
`Before TONI R. SCHEINER, CHRISTOPHER M. KAISER, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`MAJORS, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Claims 1–13, 19–23, 29, and 30 Shown to Be Unpatentable;
`Claims 14–16, 18, and 24–28 Not Shown to Be Unpatentable
`35 U.S.C. §§ 314, 318(a) and 37 C.F.R. §§ 42.4(a), 42.73
`
`ORDERS
`Denying-In-Part Petitioner’s Motion to Exclude (Paper 58) and
`Denying-In-Part Patent Owner’s Motion to Exclude (Paper 55)
`37 C.F.R. § 42.64(c)
`
`Granting Patent Owner’s Motions to Seal (Papers 24, 59, 69) and
`Granting Petitioner’s Motions to Seal (Papers 45, 62)
`37 C.F.R. §§ 42.14, 42.54
`
` Non-Public Version – Protective Order Material
`
`

`

`PGR2018-00025
`Patent 9,668,954 B2
`
`Non-Public Version – Protective Order Material
`
`I. INTRODUCTION
`
`A. Background
`L’Oréal USA, Inc. (“Petitioner”) filed a Petition requesting post-grant
`review of claims 1–30 of U.S. Patent No. 9,668,954 B2 (Ex. 1001, “the ’954
`patent”). Paper 3 (“Pet.”). Liqwd, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”). On August 9, 2018, we instituted
`post-grant review of the challenged claims (except claim 171) based on the
`grounds advanced in the Petition. Paper 12 (“Inst. Dec.”).
`During the trial, Patent Owner filed a Response. Paper 23 (“Resp.”).
`Petitioner filed a Reply to Patent Owner’s Response. Paper 46 (“Reply”).
`Patent Owner sought authorization to file a motion to strike the Reply for
`including allegedly new argument and evidence related to certain claims
`and, thus, for non-compliance with 37 C.F.R. § 42.23(b). We did not grant
`such authorization, but permitted the parties (Paper 51) to submit
`supplemental briefing (Papers 52, 53) on the issue of whether Petitioner had
`complied with Rule 42.23(b). We further allowed Patent Owner to file a
`Sur-Reply to address the allegedly untimely argument and evidence in the
`Reply. Paper 60 (“Sur-Reply”). Patent Owner filed Observations on Cross-
`Examination. Paper 56. Petitioner responded to those observations. Paper
`65. Petitioner also filed Observations on Exhibit 2056 from a related post-
`
`
`1 Based on a disclaimer of claim 17 under 35 U.S.C. § 253, the Board did
`not institute post-grant review of that claim. Inst. Dec. 3 n.1; 37 C.F.R.
`§ 42.207(e); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1357 (2018) (noting
`that “some [claims] may drop out thanks to the patent owner’s actions [e.g.,
`claims canceled by amendment].”); cf. In re Yamazaki, 702 F.3d 1327, 1332
`(“[W]e have interpreted § 253 to mean that after such disclaimer the patent
`is treated as though the disclaimed subject matter never existed.”) (citation
`and internal quotation marks omitted).
`2
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`grant review (an exhibit submitted as Exhibit 2084 in this proceeding).
`Paper 67; Paper 66, 4. Both parties also filed Motions to Exclude Evidence.
`Paper 58 (“Pet. Mot.”); Paper 55 (“PO Mot.”). The Board held an oral
`hearing on May 20, 2019. A transcript of that hearing is in the record.
`Paper 77.
`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.
`After considering the parties’ arguments and evidence on this record, we
`conclude that Petitioner has established by a preponderance of the evidence
`that each of claims 1–13, 19–23, 29, and 30 is unpatentable for obviousness.
`Petitioner has not, however, met its burden to establish by a preponderance
`of the evidence that claims 14–16, 18, and 24–28 are unpatentable.
`
`B. Related Matters
`The parties identify several related petitions for post-grant review
`including PGR2018-00023 and PGR2018-00024, which were filed at the
`same time as the present Petition and also challenged the patentability of
`claims 1–30 of the ’954 patent, but on different grounds. Pet. 9–11; Prelim.
`Resp. 1. We denied institution of review in those proceedings. L’Oréal
`USA, Inc. v. Liqwd, Inc., Case PGR2017-00023, slip op. at 2–4, 37 (PTAB
`Aug. 10, 2018) (Paper 9); L’Oréal USA, Inc. v. Liqwd, Inc., Case PGR2017-
`00024, slip op. at 2–4, 25 (PTAB Aug. 10, 2018) (Paper 12).2
`
`
`2 In PGR2018-00023 and PGR2018-00024, Petitioner challenged the claims
`based on anticipation and obviousness (relying on different prior art and/or
`combinations than presented here) and further challenged the claims for lack
`of written description and for indefiniteness.
`3
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`Petitioner also identifies PGR2017-00011 and PGR2017-00012
`relating to prior challenges to the claims of U.S. Patent No. 9,498,419 (“the
`’419 patent”), which patent issued from the grand-parent application to the
`’954 patent. Pet. 10. The Board declined to institute review in PGR2017-
`00011 (Paper 24), but instituted review in PGR2017-00012 and entered a
`Final Written Decision on June 27, 2018, concluding that the challenged
`claims of the ’419 patent were unpatentable. L’Oreal USA, Inc. v. Liqwd,
`Inc., 2017 WL 3085428 (PTAB July 19, 2017); PGR2017-00012, Paper 102.
`That Final Decision is on appeal at the Federal Circuit. Liqwd, Inc. v.
`L’Oreal USA, Inc., No. 2018-2152 (Fed. Cir.).3
`Petitioner also identifies Liqwd, Inc. v. L’Oreal USA, Inc., No. 1:17-
`cv-00014 (D. Del.), as a pending infringement suit related to the ’419 and
`’954 patents. Pet. 10–11.
`
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–30 of the ’954 patent are
`unpatentable based on the grounds set forth in the table below (Pet. 14–15).
`As noted above (supra n.1), claim 17 was disclaimed and, therefore,
`Petitioner’s challenge to that claim is not substantively addressed in this
`Final Written Decision.
`
`
`3 The ’419 patent was also the subject of an even earlier appeal related to a
`denial of a preliminary injunction sought by Patent Owner and its exclusive
`licensee (Olaplex LLC). Liqwd, Inc. v. L’Oreal USA, Inc., No. 2017-2295,
`2018 WL 480759, at *1 (Fed. Cir. Jan. 16, 2018).
`4
`
`Non-Public Version – Protective Order Material
`
`

`

`PGR2018-00025
`Patent 9,668,954 B2
`Statutory
`Ground4
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`Non-Public Version – Protective Order Material
`
`Basis
`
`Challenged Claims
`
`1–19, 21, and 23–30
`20 and 22
`1–19, 21, and 23–30
`
`20 and 22
`
`Pratt5 and Tanabe6
`Pratt, Tanabe, and Stone7
`Pratt, Tanabe, Berkemer,8 and
`KR ’5649
`Pratt, Tanabe, Berkemer, KR ’564,
`and Stone
`
`
`Petitioner relies on declarations from R. Randall Wickett, Ph.D.,
`among other evidence. Ex. 1012 (“Wickett Decl.”); Ex. 1062 (“Wickett
`Reply Decl.”). Patent Owner responds with a declaration from Edward T.
`Borish, Ph.D. (Ex. 2072 (“Borish Decl.”)) and a declaration from Liqwd’s
`founder, Dean Christal (Ex. 2046 (“Christal Decl.”)), among other evidence.
`
`
`4 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 ’954
`patent issued was filed after that date, our citations to Title 35 are to its post-
`AIA version.
`5 Pratt et al., US 2012/0024309 A1, published Feb. 2, 2012 (Ex. 1009,
`“Pratt”).
`6 Tanabe et al., US 6,358,502 B1, issued Mar. 19, 2002 (Ex. 1007,
`“Tanabe”).
`7 Stone et al., US 2013/0034515 A1, published Feb. 7, 2013 (Ex. 1008,
`“Stone”).
`8 Berkemer, German Patent Application Publication No. 1,220,969,
`published July 14, 1966 (Ex. 1003) (certified translation provided as
`Ex. 1004, “Berkemer”).
`9 Korean Patent Application Publication No. 10-2006-0059564, published
`2006 (Ex. 1005) (certified translation provided as Ex. 1006, “KR ’564”).
`5
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`D. The ’954 Patent
`The ’954 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, 1:19–22. Certain treatments of hair, including dyeing
`and bleaching, can result in the disulfide bonds of the hair’s keratin being
`broken, and the ’954 patent expresses “a need for hair formulations and
`treatments that repair and/or strengthen keratin in hair damaged [by dyeing
`and bleaching].” Id. at 1:33–2:45. According to the ’954 patent, “it is an
`object of this invention to provide improved formulations and methods for
`repairing and/or strengthening damaged hair.” Id. at 2:50–52. The
`formulations of the ’954 patent “may be applied simultaneously with the hair
`coloring formulation or subsequently to the application of the hair coloring
`formulation.” Id. at 17:31–33. These formulations are described as
`containing “an active agent,” which may be any of a large number of
`compounds, including maleic acid. Id. at 7:42–11:18.
`The ’954 patent describes various working examples where a
`highlighting formulation is applied to hair simultaneously (as part of a
`mixture) with an active agent formulation. See, e.g., Ex. 1001, 22:38–23:17
`(Example 3 (adding an active agent formulation comprising maleic acid to a
`highlighting formulation comprising a bleach powder and developer to form
`a mixture)). The ’954 patent also describes comparing characteristics of the
`hair so treated with hair treated with the highlighting formulation alone (i.e.,
`without the active agent). Id.
`
`6
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`E. Illustrative Claim
`The ’954 patent includes one independent claim, claim 1. That
`challenged claim is illustrative and recites:
`
`1. A method for bleaching hair comprising:
`(a) mixing a bleach powder and a developer to form a bleaching
`formulation;
`(b) mixing an active agent formulation comprising an active
`agent with the bleaching formulation to form a mixture, wherein
`the active agent is maleic acid; and
`(c) 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.
`Ex. 1001, 25:57–67.
`
`II. ANALYSIS
`A. Person of Ordinary Skill in the Art
`Petitioner proposes that a skilled artisan is “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 care products.” Pet. 20. Petitioner also proposes that the skilled artisan
`may be “someone with a Ph.D. in chemistry, chemical engineering, or a
`related field with at least minimal prior laboratory experience with
`formulation and testing of hair care products.” Id. (citing Ex. 1012 ¶ 34).
`According to Patent Owner, “a POSITA . . . would have at least the
`qualifications of or equivalent to a college degree in chemistry or an
`associated degree, together with several years of work experience.” Resp.
`13 (citing Ex. 2072 ¶ 28).
`For this Decision, we adopt Petitioner’s proposal. We do not,
`however, discern a material difference between the proposals that would
`7
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`affect our analysis. We also find that the relied-upon prior art demonstrates
`the level of skill in the art at the time of the invention. Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
`findings regarding ordinary skill level are not required where the prior art
`reflects an appropriate level and a need for testimony is not shown).
`
`B. 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).10
`Claim terms also are given their ordinary and customary meaning, as would
`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). We need only construe terms in controversy, and only to the extent
`necessary to resolve that controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`We recap here the claim construction issues raised at institution. At
`that stage, Petitioner proposed alternative constructions in the three
`concurrently filed petitions challenging the claims of the ’954 patent
`(PGR2018-00023, PGR2018-00024, and PGR2018-00025). In PGR2018-
`00023, Petitioner proposed what it coined the “acid interpretation.”
`PGR2018-00023, Paper 1, 27–33. By contrast, in PGR2018-00024 and in
`
`
`10 The Final Rule changing the claim construction standard in PGR
`proceedings does not apply here, as the Petition was filed before the rule’s
`effective date, November 13, 2018. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,344 (Oct. 11, 2018).
`8
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`this Petition, Petitioner advanced a so-called “salt interpretation.” Pet. 21–
`22 (“[I]n the event the Board disagrees with the acid interpretation and finds
`that the claims should be interpreted to include salts of maleic acid (‘salt
`interpretation’), . . . Petitioner sets forth below the bases for unpatentability
`of the claims under a salt interpretation.”).
`We disagreed with Petitioner’s proposed “acid interpretation” for the
`reasons explained in the decision denying institution in PGR2018-00023.
`PGR2018-00023, Paper 9, 6–16; see also Inst. Dec. 6–9. We concluded that
`the claims of the ’954 patent did not exclude salts of maleic acid from
`forming when the free acid is mixed with an alkaline bleaching formulation
`because that interpretation would exclude all the ’954 patent’s preferred
`embodiments and working examples. Id. We also concluded: (i) that
`“bleach powder” as recited in claim 1 requires a dry particulate composition
`(i.e., powder) comprising at least a persulfate and an alkali; and (ii) that
`“bleaching formulation,” as recited in claim 1, requires a mixture of bleach
`powder and developer that provides a sufficiently alkaline pH so that the
`bleaching formulation, when mixed with the active agent formulation and
`applied to the hair, can remove color from and lighten the hair. Id.
`We briefly summarize why the bleach powder includes an alkali, and
`why the bleaching formulation must provide a sufficiently alkaline pH to
`lighten hair. As Petitioner’s expert explains:
`Bleaching
`is
`typically carried out under alkaline
`conditions. Such alkaline conditions are also used in other
`chemical hair treatments such as dyeing, permanent waving,
`straightening, etc. . . . Under alkaline conditions, the hair swells
`allowing the chemical treatment [i.e., agents that destroy the
`melanin pigment and lighten the hair] to penetrate the hair cuticle
`into the cortex.
`
`9
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`
`Ex. 1012 ¶ 21; Pet. 17 (“To accomplish [bleaching/lightening], the oxidizing
`agent was typically mixed prior to application with an alkaline agent in order
`to form a bleaching mixture at alkaline pH.”). The ’954 patent’s examples
`describe bleach powder products that are powdered alkaline compositions
`containing persulfate salts. Ex. 1001, 22:38–24:18 (Examples 3–5); see also
`Ex. 2010 (Joico Bleach Powder label with ingredients); Ex. 2011 (Clairol
`Professional Basic White powder lightener with ingredients). And this
`interpretation appears consistent with how bleach powders are described
`elsewhere in the art. See, e.g., Ex. 1011, 17 (describing bleach powder as
`including “peroxodisulfate” and “an alkalizing agent”); Ex. 2012 ¶ 5 (bleach
`powder “contains persulfate salts and alkaline agent(s), which act as
`accelerators of the bleaching process.”)).
`There is no example or description in the ’954 patent of a bleach
`powder without an alkali, or of any method of lightening hair with a
`bleaching formulation having an acidic pH. Indeed, evidence of record
`demonstrates that it is conventionally known that bleaching or lightening of
`the hair is ineffective without an alkalizing agent and an alkaline pH.
`Pet. 22; see, e.g., Ex. 1010, 1:46–49 (describing insufficient bleaching power
`below pH 8.5); Ex. 2008 ¶ 42 (“A pH of greater acidity than 9.0 will tend to
`give a poor bleaching effect and also reduce the dyeing effect.”).
`Patent Owner did not dispute Petitioner’s “salt interpretation”
`advanced in the Petition. Resp. 21–22. Nor does Patent Owner (or
`Petitioner) propose any express construction for other claims or claim
`limitations here—either at institution or through trial. Id.; Pet. 20–22. We
`again (and for consistency with our decisions in related proceedings) adopt
`
`10
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`the constructions above, but note that those constructions do not appear to be
`decisive relative to the grounds here. Based on the evidence and argument
`presented during trial, and as discussed below, there appears to be no dispute
`that Pratt teaches a bleach powder and bleaching formulation, that Pratt’s
`formulations are sufficiently alkaline to lighten the hair, and that numerous
`references teach the use of maleic acid (or its salts) in hair care formulations.
`
`C. Priority
`The ’954 patent issued from U.S. Patent Application No. 15/415,464
`(“the ’464 Application” (Ex. 1033)), which was filed on January 25, 2017.
`Ex. 1001, 1:4–15. The ’464 Application is a continuation of U.S. Patent
`Application No. 15/290,593 (Ex. 1032), which is a continuation of U.S.
`Patent Application No. 15/087,415 (Ex. 1031), which is a continuation of
`U.S. Application No. 14/713,885 (Ex. 1030), which claims the benefit of
`U.S. Provisional Patent Application No. 61/994,709 filed May 16, 2014
`(“the ’709 Provisional Application” (Ex. 1020)). Ex. 1001, 1:4–15.
`Petitioner did not, in this Petition, affirmatively challenge the priority
`date of the ’954 patent’s claims.11 Rather, Petitioner stated only that it “does
`
`
`11 In PGR2018-00023 and PGR2018-00024, Petitioner did expressly
`challenge the priority of, and sufficiency of the supporting written
`description for, the claims of the ’954 patent. In those petitions, the priority
`issue arose in relation to Petitioner’s challenge to the claims as anticipated
`by the publication of an application in the ’954 patent’s priority chain. See
`PGR2018-00023, slip op. at 18–23 (Paper 9) (denying institution and finding
`that the challenged claim language was adequately supported in the priority
`applications); PGR2018-00024, slip op. at 11–16 (Paper 12) (same). We
`rejected Petitioner’s priority arguments related to the anticipation challenge
`and rejected Petitioner’s similar arguments that were the basis of a § 112(a)
`written description challenge. See IPR2018-00024, slip op. at 22–23 (Paper
`12). To the extent that priority of the claims arose during trial briefing in
`11
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`not concede that the ’954 patent claims are entitled to any claim of priority”
`to the filing dates of the earlier applications in its priority chain. Pet. 10 n.2;
`see id. at 12 (“Petitioner does not concede that the ’954 patent is entitled to
`priority earlier than the filing date, earlier than i.e. January 25, 2017.”).
`Moreover, Petitioner asserted, “the Board need not address this [priority]
`issue for purposes of this proceeding given that the prior art relied on
`predates the May 16, 2014, alleged priority date.” Pet. 12–13.
`Patent Owner, in its Response, asserts that the ’954 patent claims are
`entitled to a priority date at least as early as May 15, 2015 or May 16, 2014.
`Resp. 13. Those dates correspond, respectively, to the filing dates of U.S.
`Patent Application No. 14/713,885 (Ex. 1030) and the ’709 Provisional
`Application (Ex. 1020). Citing disclosures in the ’954 patent and priority
`applications, Patent Owner contends that the claimed subject matter is
`described in the earlier applications and the ’954 patent itself. Resp. 16–21.
`Patent Owner puts particular emphasis on disclosures in the ’954 patent and
`earlier applications that allegedly provide descriptive support for the
`limitation of claim 1 reciting “wherein the active agent in the mixture is at a
`concentration ranging from about 0.1% by weight to about 50% by weight.”
`Resp. 16–20. Patent Owner emphasizes those disclosures and that claim
`limitation to address Dr. Wickett’s opinion that “the specification of the
`
`
`this proceeding, the arguments turn on substantially the same issue as was
`considered in the related petitions (i.e., whether the priority applications
`supported the “about” language in claim 1’s limitation reciting “wherein the
`active agent in the mixture is at a concentration ranging from about 0.1% by
`weight to about 50% by weight”). Ex. 1001, 25:65–67 (emphases added);
`Reply 6–7; Resp. 13–21.
`
`12
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`‘954 patent (or any application it claims priority to) does not disclose a range
`of maleic acid using the term ‘about.’” Ex. 1012 ¶¶ 40–41; Resp. 13–20.
`In addition to arguing that the claims are entitled to the earlier priority
`dates, Patent Owner contends that “the Board has already rejected the
`priority challenge made by Petitioner’s declarant” and that Petitioner
`“waived [its] ability to challenge the May 16, 2014 priority date” by not
`raising the issue in the Petition. Resp. 14–15 (citing L’Oréal, Case
`PGR2018-00024, slip op. at 11–16 (PTAB Aug. 10, 2018) (Paper 12);
`Polaris Wireless, Inc. v. Trueposition, Inc., Case IPR2013-00323, 2013 WL
`8563953, *17 (PTAB Nov. 15, 2013)). We first address these contentions.
`We agree with Patent Owner that the Board (in related proceedings)
`has already considered and rejected Petitioner’s contention that claim 1 is
`lacking descriptive support in the priority applications. See L’Oréal, Case
`PGR2018-00023, slip op. at 18–23 (Paper 9); L’Oréal, PGR2018-00024,
`slip op. at 11–16 (Paper 12). Further below we discuss the reasons why we
`rejected Petitioner’s contention previously, and why we do so here as well.
`We do not, however, agree with Patent Owner’s contention that
`Petitioner waived any challenge to the priority of the ’954 patent’s claims.
`Patent Owner cites the Board’s decision in Polaris Wireless to support its
`waiver argument. But that case did not address waiver. And, insofar as
`Polaris Wireless is read to suggest that priority issues must first be raised by
`a petitioner in its petition, the Board has since expressly distinguished
`Polaris Wireless on that precise point. See Core Survival, Inc. v. S & S
`Precision, LLC, Case PGR2015-00022, 2016 WL 791751 (PTAB Feb. 19,
`2016) (describing the cited language in Polaris Wireless as dicta and finding
`“Patent Owner fails to direct us to, and we not discern independently, any
`
`13
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`support in Polaris Wireless for the proposition that a Petitioner has any
`initial burden to contest entitlement to a provisional filing date”). Indeed,
`the Board in Core Survival goes on to explain that “the law is clear that there
`is no initial burden on Petitioner to rebut a provisional date” and that “[a]s
`Dynamic Drinkware makes clear, the initial burden of production for
`showing an earlier priority date rests with the patent owner, not the
`petitioner.” Id. (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1379–80 (Fed. Cir. 2015).
`Moreover, even if we agreed that, where a petitioner challenges a
`patent claim as being anticipated by an earlier application/publication in that
`patent’s own priority chain (a challenge presented in Polaris Wireless), that
`some initial burden is borne by petitioner to identify what claimed features
`are missing in the ancestral applications, that is not the context in which
`priority arises here. To the contrary, to the extent priority issues arose in this
`proceeding they stemmed from Patent Owner’s arguments on objective
`indicia of nonobviousness—in particular, to a contention that “[p]rior to the
`’954 patent priority date (May 16, 2014), no one had been able to meet . . .
`[an alleged long-felt] need.” Resp. 7. On such indicia, it is Patent Owner
`who bears the initial burden of production. Galderma Labs., L.P. v. Tolmar,
`Inc., 737 F.3d 731, 737–38 (Fed. Cir. 2013); accord Dynamic Drinkware,
`800 F.3d at 1380 (holding that burden of production is on Patent Owner for
`priority date issues). And, Petitioner responds that if the ’954 patent claims
`are not entitled to a May 16, 2014, priority date, any alleged long-felt need
`was already met by the “Olaplex” product, which product was
`commercialized in late 2014. Reply 24–25; Ex. 2046 ¶¶ 6–7.
`
`14
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`For the reasons above, we are unpersuaded that Petitioner waived any
`contest to the priority of the ’954 patent’s claims. It was, thus, appropriate
`for Petitioner to provide counter argument on the priority issues in its Reply
`to further respond to alleged objective indicia of nonobviousness advanced
`by Patent Owner after trial was instituted. Reply 6–8. As noted, Patent
`Owner’s argument on such indicia is predicated, at least in part, on the
`asserted priority date of the ’954 patent.
`Turning to the merits of the priority arguments, Petitioner contends
`that “PO’s insertion of the term ‘about’ into . . . claim [1] improperly
`expanded the scope of the claims beyond the ‘up to 50%’ limit disclosed in
`the specification.” Reply 7. According to Petitioner, the parties’ experts
`agree that the term “about” expands “the scope of the endpoints of the range
`by ±10%.” Id. Yet, Petitioner argues, “an amount of active agent in the
`mixture up to 55% is not supported under 35 U.S.C. §112(a) in any
`application to which the ‘954 patent claims priority.” Id.
`To determine if the claims of the ’954 patent are entitled to the
`priority benefit of the ’709 Provisional Application’s filing date (May 16,
`2014), we ask whether that application provides written descriptive support
`for those claims.12 As explained by the Federal Circuit, “whether a prior
`application meets the ‘written description’ requirement with respect to later-
`
`
`12 We compare the disputed limitations (e.g., “wherein the active agent in the
`mixture is at a concentration ranging from about 0.1% by weight to about
`50% by weight”) in the ’954 patent’s claims to the disclosure of the ’709
`Provisional Application (Ex. 1020), recognizing that the other intervening
`applications (Exs. 1030–1032) share in all material respects a specification
`with the ’709 Provisional Application and ’954 patent, and include the same
`key disclosures.
`
`15
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`filed claims, the prior application need not describe the claimed subject
`matter in exactly the same terms as used in the claims.” Eiselstein v. Frank,
`52 F.3d 1035, 1039 (Fed. Cir. 1995). Instead, the description of the prior
`application “must simply indicate to persons of skill in the art that as of the
`earlier date the applicant had invented what is now claimed.” Id.; see also
`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)
`(“Precisely how close the original description must come to comply with the
`requirement of § 112 must be determined on a case-by-case basis.”).
`We find, on the record before us, that the disclosure of the ’954 patent
`and its ancestral applications provide sufficient written descriptive support
`for the active agent concentration as recited in claim 1. We explain below.
`As Patent Owner points out, the ’954 patent and its priority
`applications recite at least the following key disclosure:
`For highlighting applications, prior to use, a sufficient
`volume of a liquid active agent formulation is mixed with a
`sufficient volume of a highlighting formulation to form a
`highlighting mixture having the desired concentration of active
`agent. Typical concentrations of the active agent in the
`highlighting mixture range from small amounts, such as
`approximately at least 0.01% (by wt), preferably at least 0.1%
`(by wt), to large amounts, such as up to 50% (by wt). Preferably
`the highlighting mixture contains the active agent in a
`concentration ranging from 0.1% (by wt) to 5% (by wt), more
`preferably from 0.1% (by wt) to 3% (wt). While greater
`concentrations of active agent could be present in the
`highlighting mixture, they are generally not needed to achieve
`the desired results.
`
`Ex. 1001, 16:27–40; Ex. 1020, 21:10–19; Resp. 16–17.
`According to Patent Owner and Dr. Borish, this paragraph indicates
`“that imprecise or approximate numerical limitations are being described.”
`
`16
`
`Non-Public Version – Protective Order Material
`
`

`

`Non-Public Version – Protective Order Material
`
`PGR2018-00025
`Patent 9,668,954 B2
`Resp. 17; Ex. 2072 ¶ 98. That is so, Patent Owner contends, because the
`disclosure uses qualifiers like “typical” and “such as” to describe the active
`agent concentrations. Resp. 17. Moreover, Patent Owner contends, “the
`passage says lesser and greater concentrations of the active agent are
`permitted” because the term “‘approximately’ modifies the lowest endpoint”
`of 0.01%, and the passage further discloses that “greater concentrations . . .
`could be present,” thus indicating that the upper concentration of 50% is not
`a fixed limit. Id. at 18. Patent Owner further contends that other portions of
`the specification reinforce that the concentrations of active agent are not
`absolute, but reflect approximations. See, e.g., Resp. 18–19 (“The ’954
`patent teaches that ‘the liquid active agent formulation’ (i.e., the formulation
`mixed with the bleaching formulation to form the mixture as in claim 1),
`‘may contain any suitable concentration of active agent in a suitable carrier,
`typically a diluent.’”) (quoting Ex. 1001:16:16–18); Ex. 1020, 21:1–3; see
`also Ex. 1001, 7:27–28 (“The active agent is typically present in an amount
`ranging from about 0.01 wt % to about 50 wt % of the formulation”);
`Ex. 1020, 9:28–29 (same).
`The Federal Circuit’s decision in Eiselstein is instructive in resolving
`the present priority dispute. In Eiselstein, the relevant claim limitation
`recited “from about 45% to about 55%” of nickel in an alloy, yet the
`specification described the alloy as containing various metals (e.g.,
`chromium, iron) with the “balance essentially nickel in a weight proportion
`of 45% to 55% of the alloy.” Eiselstein, 52 F.3d at 1039 (emphasis
`omitted). Thus, similar to here, the claim used the term “about,” whereas a
`relevant