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Filed on behalf of Olaplex, Inc.
By: Matthew K. Blackburn
DIAMOND McCARTHY LLP
150 California St., Suite 2200
San Francisco, CA 94111
Tel: 415.692.5200
Fax: 415.263.9200
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________
L'ORÉAL USA, INC.,
Petitioner,
v.
OLAPLEX, INC.,
Patent Owner.
________________
Case PGR 2017-00012
Patent No. 9,498,419
________________
PATENT OWNER’S OPENING BRIEF ON REMANDPGR 2017-00012
Patent No. 9,498,419
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................................................................... ii
TABLE OF ABBREVIATIONS ............................................................................. iv
PATENT OWNER’S EXHIBIT LIST ......................................................................v
I. THE FEDERAL CIRCUIT’S DECISION AND MANDATE .......................1
II. GIVEN THE SUBSTANTIAL OBJECTIVE EVIDENCE AND WEAK
PRIMARY EVIDENCE, THE BOARD SHOULD FIND L'ORÉAL FAILED
TO SHOW THE ’419 CLAIMS ARE NOT PATENTABLE ...................................1
A. Objective Evidence Weighs Heavily in Favor of Non - Obviousness .......2
B. No Evidence Shows a POSA Would Have Been Motivated by Ogawa
or Kitabata Alone to Use Maleic Acid in a Bleaching Method ................4
C. At Best, Berkemer and KR’564 Are Weak Evidence of Motivation to
Select Maleic Acid for Use in a High-pH Bleaching Method ..................6
D. Objective Evidence Outweighs the Primary Evidence of Obviousness ...7
III. CONCLUSION................................................................................................8
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Patent No. 9,498,419
TABLE OF AUTHORITIES
Page(s)
Cases
Adv. Display Sys., Inc. v. Kent State Univ.,
212 F.3d 1272 (Fed. Cir. 2000)..............................................................................8
Applied Materials, Inc. v. Adv. Semiconductor Materials Am., Inc.,
98 F.3d 1563 (Fed. Cir. 1996)................................................................................2
In re Jones,
958 F.2d 347 (Fed. Cir. 1992)................................................................................5
Leo Pharm. Prods., Ltd. v. Rea,
726 F.3d 1346 (Fed. Cir. 2013)..............................................................................4
Liqwd, Inc. v. L'Oréal USA, Inc.,
941 F.3d 1133 (Fed. Cir. 2019)................................................................. 1, 3, 7, 8
Merck & Co. Inc. v. Biocraft Labs. Inc.,
874 F.2d 804 (Fed. Cir. 1989)................................................................................5
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559 (Fed. Cir. 1992)..............................................................................8
Specialty Composites v. Cabot Corp.,
845 F.2d 981 (Fed. Cir. 1988)................................................................................3
Stephen Slesinger, Inc. v. Disney Enters., Inc.,
702 F.3d 640 (Fed. Cir. 2012)................................................................................3
WBIP, LLC v. Kohler Co.,
829 F.3d 1317 (Fed. Cir. 2016)..........................................................................2, 3
Other Authorities
Final Written Decision, L'Oréal USA, Inc. v. Liqwd, Inc., PGR2017-00012,
Paper 102 (PTAB Jun. 27, 2018) ................................................................. passim
Institution Decision, L'Oréal USA, Inc. v. Liqwd, Inc., PGR2017-00012,
Paper 17 (PTAB Jul. 19, 2017) ..............................................................................4
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Patent No. 9,498,419
TABLE OF AUTHORITIES (continued)
Page(s)
Liqwd Inc’s Patent Owner Response Under 37 C.F.R. §42.220, L'Oréal
USA, Inc. v. Liqwd, Inc., PGR2017-00012, Paper 44 (PTAB Oct. 20,
2017)...................................................................................................................3, 7
Non-Confidential Appellee L'Oréal USA, Inc’s Response Brief, Liqwd, Inc.
v. L'Oréal USA, Inc., No. 18-2152, Doc. No. 38 (Fed. Cir. Nov. 14, 2018) .........3
Non-Confidential Reply Brief for Patent Owner-Appellant, Liqwd, Inc. v.
L'Oréal USA, Inc., No. 18-2152, Doc. No. 41 (Fed. Cir. Nov. 28, 2018) .............3
Petition for Post-Grant Review of U.S. Patent 9,498,419, L'Oréal USA, Inc.
v. Liqwd, Inc., PGR2017-00012, Paper 2 (PTAB Jan. 31, 2017) ..........................4
Transcript of Oral Hearing, L'Oréal USA, Inc. v. Liqwd, Inc., PGR2017-
00012, Paper 98 (PTAB Apr. 11, 2018) ................................................................5
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Patent No. 9,498,419
TABLE OF ABBREVIATIONS
’419 patent Pressly et al. U.S. Patent No. 9,498,419 B2 (Ex. 1001)
German Patent Application Publ. No. 1,220,969 (L'Oréal’s supplied
Berkemer
translation at Ex. 1004)
Board Patent Trial and Appeal Board
DTPA Diethylenetriaminepentaacetic acid
EDTA Ethylenediaminetetraacetic acid
Final Written Decision in L'Oréal USA, Inc. v. Liqwd, Inc.,
FWD
PGR2017-00012, Paper 102 (PTAB Jun. 27, 2018)
Kitabata U.S. Patent Publ. No. 2002/0189034 (Ex. 1005)
Korean Patent Application Publ. No. 10-2006-0059564 (L'Oréal’s
KR’564
supplied partial translation at Ex. 1018)
L'Oréal Petitioner L'Oréal USA, Inc.
Ogawa U.S. Patent No. 7,044,986 (Ex. 1002)
Olaplex Patent owner Olaplex, Inc. and/or former patent owner Liqwd, Inc.
Post-Grant Review Petition in L'Oréal USA, Inc. v. Liqwd, Inc.,
Pet.
PGR2017-00012, Paper 2 (PTAB Jan. 31, 2017)
POSA Person of ordinary skill in the art
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Patent No. 9,498,419
PATENT OWNER’S EXHIBIT LIST
Exhibit Description
2001 Listing of claims 1 – 8 and 10 of U.S. Patent No. 9,498,419
Complaint filed January 5, 2017, in Liqwd, Inc. et al. v. L'Oréal USA,
2002
Inc., et al., Case No. 1:17 - cv - 00014 - SLR (D. Del.)
Plaintiffs’ Opening Brief in Support of Motion for Preliminary
Injunction, Redacted - Public version, filed January 18, 2017, in Liqwd,
2003
Inc. et al. v. L'Oréal USA, Inc., et al., Case No. 1:17 - cv - 0014 - SLR
(D. Del.)
August 25, 2016 Third Party Submission regarding Singleton U.S.
2004 Patent No. 5,221,286 and Berkemer German Laid - Open Application
DE 1 220 969
August 29, 2016 Third Party Submission regarding Ogawa U.S. Patent
2005
No. 7,044,986
September 14, 2016 Third Party Submission regarding Singleton U.S.
2006 Patent No. 5,221,286, Kitabata U.S. Patent Publ. No. 2002/0189034,
and Berkemer German Laid - Open Application DE 1 220 969
September 23, 2016 Third Party Submission regarding Wahler PCT
2007
Publication No. WO2014/207097
2008 October 13, 2016 Supplemental Notice of Allowance
Complaint filed November 22, 2016, in Liqwd, Inc. et al. v. L'Oréal
2009
USA, Inc., et al., Case No. 2:16 - cv - 08708 (C.D. Cal.)
CONFIDENTIAL — Patent Owner’s Discovery Requests to Petitioner,
2010
dated August 29, 2017
Delaware District Court’s Order in Liqwd, Inc. et al. v. L'Oréal USA,
2011 Inc., 17 - 14 - SLR (D. Del.), dated July 6, 2017, which denied Patent
Owner’s Request for a Preliminary Injunction
2012 CONFIDENTIAL — E - mail Communication
2013 Petitioner’s Advertisements mentioning maleic acid in their products
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Patent No. 9,498,419
PATENT OWNER’S EXHIBIT LIST (continued)
Exhibit Description
Delaware District Court’s Order in Liqwd, Inc. et al. v. L'Oréal USA,
2014 Inc., 17 - 14 - SLR (D. Del.), dated February 13, 2017, which set briefing
and discovery schedule for Preliminary Injunction motion
Patent Owner’s 1st Amended Rule 30(b)(6) Deposition Notice in
2015 Liqwd, Inc. et al. v. L'Oréal USA, Inc., 17 - 14 - SLR (D. Del.), dated
May 2, 2017
E - mail string between counsel regarding Patent Owner’s Request for
2016
Additional Discovery
CONFIDENTIAL/REDACTED Version of Patent Owner’s Motion
2017
for Additional Discovery (un - redacted is Paper 27)
CONFIDENTIAL/REDACTED Version of Patent Owner’s
2018
Discovery Requests to Petitioner (un - redacted is Exhibit 2010)
REDACTED version of Paper 37 Order re Conduct of Proceedings,
2019
dated Sept. 27, 2017
2020 REDACTED version of Ex 3001 Email String re Routine Discovery
2021 Declaration of Thomas Dispenza
2022 CONFIDENTIAL — Declaration of Eric Pressly, Ph.D.
2023 CONFIDENTIAL — Declaration of Dean Christal
2024 Copy of U.S. Patent Appl. Ser. No. 14/713,885, filed May 15, 2015
2025 CONFIDENTIAL — Declaration of Edward T. Borish, Ph.D.
2026 Curriculum Vitae Of Edward T. Borish, Ph.D.
Brown, K. C., Chapter 7 “Hair Coloring” in HAIR AND HAIR CARE
2027
(Dale H. Johnson, ed., 1997)
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Patent No. 9,498,419
PATENT OWNER’S EXHIBIT LIST (continued)
Exhibit Description
FMC Webinar, “The Science of Persulfate Activation” (April 24,
2013), available at
2028 http://www.peroxychem.com/media/24107/FMC_The_Science_of_Pers
ulfate_Activation_webinar - 4 - 24 - 13_Final.pdf (last visited
10/16/2017)
Bolduc, C. et al., “Hair Care Products: Waving, Straightening,
2029 Conditioning, and Coloring,” Clinics in Dermatology 19:431 – 436
(2001)
Chp. 6: Interactions of Shampoos and Creme Rinses from ROBBINS,
2030
C.R., Chemical & Physical Behavior of Human Hair (5th Ed. 2012)
2031 Label for Redken Curvaceous conditioner
2032 Label for Matrix Biolage Advanced shampoo
2033 Label for Pureology (a L'Oréal brand) Strength Cure conditioner
2034 Vertellus Safety Data Sheet for Maleic Acid (2011)
2035 Matrix Bond Ultim8 Bottle Instructions and Ingredient List
2036 Matrix Bond Ultim8 Package Instructions
2037 Analyze, Inc. Report regarding Maleic Acid Concentrations
2038 CONFIDENTIAL — L'Oréal Testing Document (PX100)
2039 CONFIDENTIAL — L'Oréal Testing Document (PX108)
CONFIDENTIAL — Rule 30b6 Deposition testimony of Kimberly
2040
Dreher, May 22, 2017
2041 Redken pH - BONDER Instructions and Ingredient List
2042 Redken pH - BONDER Package Instructions
2043 L'Oréal Professionnel Smartbond Instructions and Ingredient List
2044 L'Oréal Professionnel Smartbond Package Instructions
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Patent No. 9,498,419
PATENT OWNER’S EXHIBIT LIST (continued)
Exhibit Description
Chp. 5: Bleaching and Oxidation of Human Hair from ROBBINS, C.R.,
2045
Chemical & Physical Behavior of Human Hair (5th Ed. 2012)
2046 Deposition transcript of Arun Nandagiri, dated October 6, 2017
REDACTED Version of Ex. 2022 (Eric Pressly Declaration, dated
2047
October 19, 2017)
REDACTED Version of Ex. 2023 (Dean Christal Declaration, dated
2048
October 18, 2017)
REDACTED Version of Ex. 2025 (Edward Borish Declaration, dated
2049
October 20, 2017)
REDACTED Version of Paper 44 (Liqwd Patent Owner Response,
2050
dated October 20, 2017)
2051 Printout of website http://Brialab.com (dated February 28, 2018)
H.N. Po et al., “The Henderson - Hasselbalch Equation: Its History and
2052
Limitation,” J. of Chem. Educ., 78 (11):1499 - 1503 (2001)
2053 Deposition transcript of David Sherman, dated October 12, 2017
2054 Deposition transcript of Jina Bang, dated October 11, 2017
2055 Deposition transcript of Arun Nandagiri, dated March 2, 2018
CONFIDENTIAL — Deposition transcript of Melanie Crim, dated
2056
March 6, 2018
2057 Deposition transcript of Arun Nandagiri, dated March 14, 2018
Signature page and errata of Thomas Dispenza for December 27, 2017
2058
deposition transcript
Signature page and errata of Edward Borish, Ph.D. for January 5, 2018
2059
deposition transcript
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Patent No. 9,498,419
PATENT OWNER’S EXHIBIT LIST (continued)
Exhibit Description
REDACTED Version of Paper 70 (Patent Owner’s Observations on
2060 Cross - Examination of Petitioner’s Reply Witnesses Nandagiri and
Crim)
REDACTED Version of Paper 72 (Patent Owner’s Motion to Exclude
2061
Petitioner’s Inadmissible Evidence)
Patent Owner’s Submission of Supplemental Evidence Under 37 C.F.R.
2062
§ 42.64(b)(2), served November 13, 2017
Blackburn Declaration Regarding Exhibits 2028, 2031 – 2037, and
2063
2041 – 2044, served November 13, 2017
2064 Redken pH - BONDER Package Instructions
REDACTED Version of Paper 77 (Corrected Patent Owner’s Motion
2065 for Observations on Cross - Examination of Petitioner’s Reply
Witnesses Nandagiri and Crim)
REDACTED Version of Paper 85 (Patent Owner’s Reply in Support of
2066 its Motion to Exclude Petitioner’s Evidence Pursuant to 37 C.F.R.
§ 42.64(c))
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Patent No. 9,498,419
Olaplex submits this brief pursuant to the Board’s Order (Paper 108). When
the obviousness question is analyzed anew under the Federal Circuit’s mandate
(which directed consideration of L'Oréal’s copying from Olaplex rather than
developing independently L'Oréal’s own process using information from the prior
art), this Board should find that claims 1 – 8 and 10 of the ’419 patent are not
obvious. To conclude otherwise in the face of this powerful evidence would give in
to improper hindsight and ex post reasoning.
I. THE FEDERAL CIRCUIT’S DECISION AND MANDATE
The Federal Circuit affirmed the Board’s prior factual finding that L'Oréal
deliberately copied Olaplex’s patented method of using maleic acid during hair
bleaching by requesting and obtaining access to Olaplex’s non-public information
and copying it, rather than because of L'Oréal’s independent development. Liqwd,
Inc. v. L'Oréal USA, Inc., 941 F.3d 1133, 1138 – 39 (Fed. Cir. 2019) (citing FWD
at 29 – 30). The Federal Circuit held that the Board erred when it deemed the
copying finding legally irrelevant, and therefore vacated the Board’s prior decision
and remanded the case back to the Board with instructions to consider and give
appropriate weight to L'Oréal’s copying. Id. at 1139.
II. GIVEN THE SUBSTANTIAL OBJECTIVE EVIDENCE AND WEAK
PRIMARY EVIDENCE, THE BOARD SHOULD FIND L'ORÉAL
FAILED TO SHOW THE ’419 CLAIMS ARE NOT PATENTABLE
Evidence of all Graham factors must be weighed de novo to assess if the
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invention as a whole was obvious. Applied Materials, Inc. v. Adv. Semiconductor
Materials Am., Inc., 98 F.3d 1563, 1570 (Fed. Cir. 1996). Objective indicia play an
especially important role and “guard against the statutorily proscribed hindsight
reasoning.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).
The primary evidence (the first three Graham factors) is, at best for L'Oréal,
scanty.1 The Board previously found all elements of claim 1 were disclosed in
Ogawa or Kitabata, but only when maleic acid is selected for use in the disclosed
methods. FWD at 13, 33. The Board said “the most important issue is whether
Berkemer and KR’564 would have provided a [POSA] with an additional reason to
choose maleic acid” from the large chemical lists of Ogawa and Kitabata. Id. at 39.
Little in the prior art suggests selecting maleic acid. Such evidence might arguably
support an obviousness finding but only when the prior art is considered in
isolation. Now that the finding that L'Oréal copied must be considered, and since
such objective evidence is the most powerful sort of evidence, the Board should
find that L'Oréal has not met its burden to show the challenged claims are obvious.
A. OBJECTIVE EVIDENCE WEIGHS HEAVILY IN FAVOR OF NON - OBVIOUSNESS
The objective evidence strongly favors patentability. First and most
1
Olaplex reserves the right to argue on appeal that even the prior art alone cannot
support a finding of obviousness.
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Patent No. 9,498,419
importantly, the Board found and the Circuit affirmed that “L’Oréal copied
[Olaplex]’s patented method of using maleic acid.” Liqwd, 941 F.3d at 1139. The
Board did not find insufficient nexus between L'Oréal’s copying and the
’419 patent. The copied unpublished patent application (Ex. 2024) discloses the
specifically claimed process. See WBIP, 829 F.3d at 1329 (nexus presumed if
“objective evidence is tied to a specific [process] and that [process] ‘is the
invention disclosed and claimed.’”); see also Paper 44 at 96 (collecting evidence).
In the appeal, L’Oréal again advanced a lack-of-nexus argument, which
Olaplex contested. Liqwd, Inc. v. L'Oréal USA, Inc., No. 18-2152, Doc. Nos. 38 (at
53) and 41 (at 13). The Federal Circuit’s decision acknowledged nexus is required
and the remand instructions do not mention it, thus implicitly and necessarily
agreeing with Olaplex that nexus exists and rejecting L'Oréal’s contrary argument.
See Liqwd, 941 F.3d at 1138 – 39; see Stephen Slesinger, Inc. v. Disney Enters.,
Inc., 702 F.3d 640, 645 (Fed. Cir. 2012) (implicit determination given issue-
preclusive effect). Therefore, L'Oréal’s deliberate choice to copy Olaplex’s non-
public technology strongly favors non-obviousness. See Specialty Composites v.
Cabot Corp., 845 F.2d 981, 985 (Fed. Cir. 1988) (“evidence that [patent
challenger] closely copied the invention” was “indicative of unobviousness”)
(internal quotation marks omitted); WBIP, 829 F.3d at 1336 (“The fact that a
competitor copied technology suggests it would not have been obvious.”)
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Patent No. 9,498,419
Second, there was a multi-decade delay between when L'Oréal says a POSA
allegedly was motivated to use maleic acid in hair bleaching (1966) and when that
actually happened (2014). More than a decade passed between Ogawa’s and
Kitabata’s publications and the’419 ancestral application filing. Yet no one, other
than the ’419 patent inventors, thought to add maleic acid into a high-pH bleaching
method to address bleach damage. This powerfully demonstrates that a POSA was
not actually motivated to select maleic acid. See Paper 17 at 18, 26 (delay between
Berkemer publication and Ogawa/Kitabata publication “creates a genuine dispute
of material fact” whether a POSA had reason to combine references); Leo Pharm.
Prods., Ltd. v. Rea, 726 F.3d 1346, 1359 (Fed. Cir. 2013) (two-year delay between
prior art and patent filing persuasive evidence of non-obviousness).
B. NO EVIDENCE SHOWS A POSA WOULD HAVE BEEN MOTIVATED BY OGAWA
OR KITABATA ALONE TO USE MALEIC ACID IN A BLEACHING METHOD
L'Oréal’s Petition relies on both Berkemer and KR’564 to allegedly suggest
changing Ogawa’s Example 3 by replacing two chelating agents (EDTA and
ascorbic acid) with equal weights of maleic acid or to select maleic acid as
Kitabata’s pH adjuster. Pet., 50 – 54, 74 – 75. The FWD changes tack and says
Ogawa or Kitabata by itself “provides a reason to use maleic acid in its bleaching
treatment.” FWD at 14, 32, 34. However, the Board acknowledged evidence that
(1) at high pH (as used during bleaching) charges on hair fibers would repel maleic
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Patent No. 9,498,419
acid and (2) “maleic acid itself is a skin sensitizer and can cause allergic reactions”
and (3) “mixing maleic acid with oxidizers can be dangerous.” FWD at 22 – 23, 33.
This would have dissuaded a POSA from selecting maleic acid for use in high-pH
hair bleaching. Also, no witness testified that a POSA would have found in Ogawa
or Kitabata a reason to select maleic acid for use in hair bleaching methods.
Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (cited in the FWD at 20) is inapposite because the chemical lists in Ogawa
and Kitabata are quite broad. See In re Jones, 958 F.2d 347, 350 (Fed. Cir.
1992) (“declin[ing] to extract from Merck the rule that … regardless of how broad,
a disclosure of a chemical genus renders obvious any species that happens to fall
within it”). Ogawa says the chelating agent is not limited, illustrates maleic acid as
one of ten chelating agent acids “and their salts” (greatly increasing the potential
candidates), and it is not preferred. Ex. 1002, 2:1 – 14, 2:64 – 3:3; see also FWD at
9; Ex. 2025, ¶95; Paper 98 at Tr. 11:15 – 12:2. Ogawa’s Example 3 uses multiple
chelators (EDTA and ascorbic acid) further adding to potential chelator candidates,
leaving a POSA to choose from “a potentially very large set” of chelators.
Ex. 2025, ¶95. Ogawa’s claim 8 mentions maleic acid, but in a “method of dyeing
hair” (not in hair bleaching). Ex. 1002, 8:34 – 39. Kitabata mentions maleic acid as
one of a large number of “polycarboxylic acid and their salts” pH-adjusters.
Ex. 1005, ¶¶35, 39; Ex. 2046, Tr. 108:20 – 111:24; Ex. 2025, ¶100. Neither
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Patent No. 9,498,419
reference identifies any benefit if maleic acid were added to hair bleach.
Further, contrary to L'Oréal’s EDTA-replacement theory, a POSA would
have understood that Ogawa’s technology requires EDTA as the chelator.
Specifically, Ogawa’s example 1 and comparative example 1 differ only in that the
latter omits EDTA (but has another chelator) and gives poor results. Ex. 1002,
5:47 – 6:17; Ex. 1026, Tr. 158:12 – 160:10; Ex. 2046, Tr. 76:19 – 77:21. If EDTA
was unavailable for use with Ogawa, a POSA would have tried DTPA and if that
did not work, would have stopped. Ex. 1026, Tr. 163:12 – 164:16. Thus, Ogawa
itself actually shows why L'Oréal’s proposed change would not have been made.
C. AT BEST, BERKEMER AND KR’564 ARE WEAK EVIDENCE OF MOTIVATION TO
SELECT MALEIC ACID FOR USE IN A HIGH-PH BLEACHING METHOD
The Board acknowledged “a similar weight of evidence” supports
Berkemer’s benefits being limited to low pH, but said a POSA “would have
been … led to adjust the pH of the bleaching process to achieve the desired
results.” FWD at 22; see also Ex. 1004, 2:30 – 37 (maleic acid counteracts
oxidation necessary for bleaching by reacting with peroxides); and Ex. 2046 at
Tr. 106:14 – 107:17 (POSA would not know if maleic acid would remain in
Ogawa’s mixture when applied to the hair). Berkemer uses maleic acid only at low
pH. Ex. 1004, 3:11 – 12 (pH 1.9 – 4); see also Ex. 1018-3 (KR’564 uses mild acid
at pH 4 – 5). If a POSA had increased the pH in order to bleach hair, no evidence
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Patent No. 9,498,419
shows a POSA would have expected the same benefit to occur at high pH while
bleaching hair. This reduces or removes the reason to select maleic acid.
KR’564 says any mild organic acid neutralizes alkali in hair and expresses
no preference for maleic acid. Paper 44 at 30 (citing Ex. 2025, ¶167 and Ex. 2046,
Tr. 223:10 – 22); Ex. 1018-1, -2. It cannot motivate the selection of maleic acid.
Thus, evidence on the first three Graham factors is meager.
D. OBJECTIVE EVIDENCE OUTWEIGHS THE PRIMARY EVIDENCE OF OBVIOUSNESS
Given that L'Oréal bears the burden of persuasion, that the prior art by itself
was a close call, and that the copying finding must be considered, the Board should
now find that the ’419 patent claims are not obvious. Other than improper
hindsight, there was no reason to use maleic acid in hair bleaching, which explains
the 48-year gap between the ’419 patent priority date and Berkemer’s publication.
A remand to the Board was necessary here because of the weak primary
evidence of obviousness, in particular regarding the selection of maleic acid (see
Sections II.B – C, above) and the strong objective evidence of copying, which
makes a difference and demonstrates patentability. See Liqwd, 941 F.3d at 1139
(remanding to “the Board for further analysis,” with instruction to weigh copying
finding appropriately).
Such copying evidence is “compelling” when (1) the “[copied] device was
virtually an identical replica of the claimed invention” and (2) the infringer copied
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Patent No. 9,498,419
the patentee’s formula and disassembled a prototype, and “merits even greater
weight” when the copier failed to develop independently the claimed invention.
Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285 – 86 (Fed. Cir.
2000); Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1574 – 75 (Fed. Cir. 1992) (competitors’ failure to develop the patented
invention suggested nonobviousness). Similarly, here, the Board found L'Oréal
selected maleic acid as the key ingredient in three different hair bleach additive
products because it copied Olaplex’s non-public information, rather than because
of L’Oréal’s independent development. Liqwd, 941 F.3d at 1138 – 39 (citing FWD
at 29 – 30).
III. CONCLUSION
The Board should confirm claims 1 – 8 and 10 of the ’419 patent are
patentable.
Dated: February 13, 2020 Respectfully Submitted,
By: /Matthew K. Blackburn/
Matthew K. Blackburn (Reg. No. 47,428)
DIAMOND McCARTHY LLP
150 California Street, Suite 2200
San Francisco, CA 94111
Tel: 415.692.5202
Rivka D. Monheit (Reg. No. 48,731)
PABST PATENT GROUP LLP
1545 Peachtree St. NE, Suite 320
Atlanta, GA 30309
Tel: 404.879.2152
Attorneys for Patent Owner Olaplex, Inc.
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Patent No. 9,498,419
CERTIFICATE OF SERVICE
I certify that the foregoing PATENT OWNER’S OPENING BRIEF ON
REMAND is being filed via PTAB E2E, and was served by e - mail on February
13, 2020 in its entirety on the following:
Michelle E. O’Brien
Timothy J. Murphy
THE MARBURY LAW GROUP, PLLC
11800 Sunrise Valley Drive, 15th Floor
Reston, VA 20191
Tel: (703) 391 - 2900
Fax: (703) 391 - 2901
Email: mobrien@marburylaw.com
Email: tjmurphy@marburylaw.com
Email: pat - docketing@marburylaw.com
Attorneys for Petitioner L'Oréal USA, Inc.
Dated: February 13, 2020 /Matthew K. Blackburn/
Matthew K. Blackburn
(Reg. No. 47,428)You can also read
