PediaTriC Hair Solutions Corp v. LaRada Sciences Inc

1. Case Identification

• Case #: IPR2019-01229
• Patent #: 7,789,902
• Filed: June 20, 2019
• Petitioner(s): Pediatric Hair Solutions Corporation
• Patent Owner(s): University of Utah Research Foundation
• Challenged Claims: 1-12 and 14-27

2. Patent Overview

• Title: Ectoparasite Eradication Method and Device
• Brief Description: The ’902 patent discloses a method and device for eradicating ectoparasites, such as head lice, by applying heated air at specified temperature and airflow ranges directly to an animal's scalp to achieve a high mortality rate.

3. Grounds for Unpatentability

Ground 1: Obviousness over Toshio, Kobayashi, and Maese - Claims 1-10, 14-18, and 21-25 are obvious over Toshio in view of Kobayashi and further in view of Maese.

• Prior Art Relied Upon: Toshio (Japanese Patent Application Publication No. 2004-202175), Kobayashi (a 1995 article in the Japanese Journal of Sanitary Zoology), and Maese (Patent 4,794,225).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Toshio, disclosed the core concept of the ’902 patent: a device for treating head lice by applying hot air directly to the scalp. Toshio’s device utilized narrow pipes to blow heated air onto the scalp, satisfying the limitation of direct application. However, Toshio did not specify the precise temperature and airflow parameters required by the claims. To remedy this, Petitioner asserted that Kobayashi, a study on the thermotolerance of lice, taught that applying heated air from a conventional hair dryer at temperatures of 55°C and 60°C—which fall within the claimed range of 54°C to 65°C—resulted in a 100% mortality rate for lice and their eggs. To supply the claimed airflow range of 25-125 cfm, Petitioner relied on Maese, which disclosed a conventional handheld hair dryer that produced an airflow of up to 45 cfm, falling squarely within the claimed range.
  • Motivation to Combine: A POSITA starting with Toshio’s device for killing head lice would be motivated to find the most effective operating parameters. Petitioner contended that a POSITA would consult a study like Kobayashi to determine the optimal temperatures for killing lice. Upon learning from Kobayashi that a conventional hair dryer was effective, the POSITA would be motivated to use the known airflow rates of such dryers, as taught by Maese, to replicate Kobayashi’s successful results in the context of Toshio's direct-application device. The goal was to achieve a reliable and high mortality rate, which the combination provided.
  • Expectation of Success: Petitioner argued there was a high expectation of success because the combination involved applying known, effective parameters (temperature from Kobayashi, airflow from Maese) to a known type of device (a direct hot-air applicator from Toshio) to achieve the predictable result of killing lice.

Ground 2: Obviousness over Toshio, Kobayashi, Maese, and Anderson - Claims 11, 12, 19, 20, 26, and 27 are obvious over the combination of Ground 1 further in view of Anderson.

• Prior Art Relied Upon: Toshio, Kobayashi, Maese, and Anderson (Patent 6,086,682).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims that additionally require "utilizing a device to separate and lift hair," specified as a "comb device." Petitioner argued that Anderson disclosed a handheld vacuum device for lice removal that incorporated a nit comb with teeth to dislodge lice and nits from the hair and scalp. The core combination of Toshio, Kobayashi, and Maese provided all other limitations of the independent claims from which these claims depend.
  • Motivation to Combine: Petitioner asserted that a POSITA would be motivated to add Anderson's comb to the Toshio-based device to enhance its efficacy. Kobayashi observed that lice exhibit escape behavior when exposed to heat, potentially burrowing under hair and avoiding the hot air stream. A POSITA would recognize this problem and seek a solution. Anderson’s comb, designed to dislodge lice, provided a known solution to improve performance by physically moving lice from protected areas into the path of the treatment. Adding Anderson's comb to the Toshio device would therefore prevent lice from escaping the heat, increasing the likelihood of a 100% mortality rate.
  • Expectation of Success: Petitioner argued success was highly predictable, as it involved incorporating a known component (a comb for dislodging lice) into a device to solve a known problem (lice evasion), thereby improving the device's intended function in a well-understood manner.

4. Key Claim Construction Positions

• Petitioner proposed a construction for the phrase "the heated air is applied directly to the animal's...scalp such that at least a substantial portion of the heated air is forced directly at the animal's...scalp."
  • Petitioner argued this phrase should be construed to mean that "substantially all or most of the heated air is applied toward the scalp." This construction was based on arguments made during prosecution to distinguish the prior art reference Dolev, which used deflectors to intentionally divert heated air away from the scalp. Petitioner asserted this construction was critical to show that Toshio, which taught blowing air onto the scalp, met the claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the petition presented prior art and arguments substantially different from those considered during prosecution. Petitioner contended that the Examiner allowed the claims by finding that the prior art of record (Dolev) failed to disclose the claimed temperature/airflow ranges and taught away from directing heated air at the scalp. The current petition, however, relies on a new primary reference (Toshio) that explicitly teaches blowing air on the scalp, and combines it with references (Kobayashi, Maese) that supply the exact temperature and airflow ranges the Examiner found missing. Furthermore, although Kobayashi was cited in an IDS, it was never substantively applied or discussed by the Examiner.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-12 and 14-27 of the ’902 patent as unpatentable.