Takeaway: The Board was persuaded that a claimed shampoo composition including both compositional elements and property elements represented by index values would have been obvious based on prior art containing an example having all of the compositional elements and the natural desire of an artisan to optimize for known desired properties of shampoo, when the specified index values were found to be proxies for the optimized properties.

In its Final Written Decision, the Board determined that the Petitioner demonstrated by a preponderance of the evidence that all of the instituted claims (claims 1-12, 15, 17-19, 23, 26, 28-30, and 32) are unpatentable. The ’569 patent relates generally to a shampoo composition and method for providing a combination of anti-dandruff efficacy and hair conditioning.

The Board began with claim construction. The independent claims specify a composition comprising certain shampoo ingredients, in amounts that fall within specified weight-percent ranges. The independent claims further specify that the shampoo composition must meet certain minimum values for four indices, namely an anti-dandruff efficacy index, first and second conditioning indices, and a minimal inhibitory concentration index. The specification sets forth experimental methods that can be used to determine values of the four specified indices. Petitioner and Patent Owner disagree on whether the four specified indices carry a requirement to use the particular experimental methods set forth in the written description to attain the specified shampoo composition.

Petitioner argues that the four indices are proxies for four optimized beneficial shampoo properties that, at the time of the invention, were well-known as desirable in a shampoo composition. Thus, Petitioner argues that a person exercising ordinary skill in the art would have had the desire, and the ability, to improve the composition of Kanebo’s Example 10 by manipulating, and optimizing for, those four known, beneficial properties, and that an artisan, thereby, would have arrived at a shampoo composition meeting both the compositional and index value limitations.

Patent Owner argues that the ’569 patent “specifically provides that the indices must be determined using the methods disclosed in the specification.” The Board disagreed with Patent Owner, finding that the claims are directed to a shampoo composition, and do not require subjecting that composition to the experimental methods disclosed in the specification for evaluating the four indices. Also, the Board found that it is sufficient that a person of ordinary skill in the art would have had the desire, and the tools, to formulate a shampoo in which the four properties are optimized; an awareness of meeting the index values is not required. The Board also agreed with Petitioner that the index values are proxies for a shampoo that has been optimized for corresponding beneficial shampoo properties.

Based on this claim construction, and on the basis that an artisan has a natural desire to improve known shampoo formulas, the Board determined that an artisan, exercising ordinary skill, would have arrived at the claimed composition when optimizing a shampoo composition meeting the compositional elements of the claims for all four of the desirable properties that are represented by the four index values specified in the claims. Specifically, the Board stated that a preponderance of the evidence persuaded it that it would have been obvious to select the four beneficial shampoo properties, represented by the four specified indices, from among the finite universe (i.e. 21 different parameters) of known desirable shampoo properties. The Board also found that one of ordinary skill in the art at the time of the invention also had the tools and acumen to simultaneously optimize for the four properties in Kanebo’s Example 10 shampoo, because tests, other than those recited in the ’569 patent, were known in the art that would have permitted one to optimize for those properties.

The Board also determined that Patent Owner did not show sufficiently that the claimed shampoo exhibits “superior” results that would have been unexpected by one of ordinary skill in the art. Patent Owner produced evidence of alleged superior results provided in a report based on work performed in 1979, but failed to provide sufficient evidence that the superior results would have been truly unexpected by an ordinary artisan at the time of the invention in 1999. Instead, the Board was persuaded by a preponderance of the evidence that one would have expected that a shampoo, optimized for four beneficial properties, would work better than a shampoo that was not optimized for those properties.

Patent Owner also provided evidence that certain products, embodying the invention, have enjoyed commercial success and satisfied a long-felt but unmet need in the marketplace. The Board was not persuaded by any of the evidence of secondary considerations. The Board was not persuaded that Patent Owner had shown an adequate nexus between the claimed invention and the alleged commercial success. Patent Owner relied solely on a single sentence by Dr. Lochhead to support its nexus argument, which stated: “Based on my training and nearly 40 years of experience, it is my opinion that the commercial success of [Patent Owner’s] Head & Shoulders® products that embody the claims of the ’569 patent is due to the claimed features of the ’569 patent, which represent the consumer desired properties of the superior combination of the anti-dandruff efficacy and conditioning performance.” Patent Owner failed to provide any explanation of how the Head & Shoulders® products embody the challenged claims; nor any detail of why the unique characteristics of the claimed shampoo composition drove sales. In determining whether nexus is established, the Board only looked to the Patent Owner’s Response and not information presented in a supporting declaration, but not discussed sufficiently in Patent Owner’s Response, because doing so would circumvent the page limit rules. The Board also found that Patent Owner’s alleged long felt need evidence suffered the same deficiencies with regard to establishing a nexus. Accordingly, the Board was not persuaded that the evidence of secondary considerations overcame the obviousness ground.

Conopco, Inc. dba Unilever v. The Proctor & Gamble Company, IPR2013-00505
Paper 69: Final Written Decision
Dated: February 10, 2015
Patent 6,974,569 B2
Before: Lora M. Green, Grace Karaffa Obermann, and Rama G. Elluru
Written by: Obermann
Related Proceedings: Procter & Gamble Co. v. Conopco, Inc., 1:13-cv-00732-TSB (S.D. Ohio); IPR 2014-00506