In its Decision, the Board denied the Petition as to each of challenged claims 1-23 of the ’155 patent. The ’155 patent relates to a shampoo composition providing a combination of anti-dandruff efficacy and conditioning.
The instant proceeding marked the second time that Petitioners had sought inter partes review of claims 1–23 of the ’155 patent. In deciding whether to institute inter partes review of these claims, the Board noted that it could take into account “whether the same or substantially the same prior art or arguments previously were presented to the Office,” and reject the Petition on that basis. The Board went on to state that the Petition in the instant proceeding at least raises substantially the same arguments that were presented to the Board in the Petition for previous IPR2013-00510.
The references relied upon in the previous ’510 Petition included Bowser and Reid, whereas the instant Petition relies on Cothran or Uchiyama. Although these Petitions asserted different prior art references, the Board found that both Petitions made out “substantially the same” anticipation and obviousness arguments. For example, both Petitions argued that its references each taught a cationic guar derivative having the molecular weight and charge density features claimed in the ’155 patent.
Thus, one of the factors that the Board took into account in denying institution was substantial similarity of arguments in the instant to those presented previously in the ’510 IPR. Other factors included similar, if not substantially the same, prior art as compared that previously presented in the ’510 IPR; and the fact that Petitioner did not contend that the remaining prior art references asserted in the instant Petition were either unknown or unavailable at the time the earlier ’510 Petition was filed.
Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2014-00628 Paper 21: Decision Declining Institution of Inter Partes Review
Dated: October 20, 2014 Patent: 6,649,155 B1
Before: Lora M. Green, Grace Karaffa Obermann, and Rama G. Elluru
Written by: Obermann
Related Proceedings: Procter & Gamble Co. v. Conopco Inc., 13-cv-00732 (S.D. Ohio); IPR2013-00510