Ontel Products Corp v. Guy A Shaked Investments Ltd

1. Case Identification

• Case #: IPR2020-01728
• Patent #: 9,591,906
• Filed: September 30, 2020
• Petitioner(s): Ontel Products, Corp.
• Patent Owner(s): Guy A. Shaked Investments Ltd.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Hair Straightening Brush
• Brief Description: The ’906 patent describes a heated hairbrush designed for safety and functionality. The invention centers on a specific arrangement of heated elements, heat-insulating spacers located on top of the heating elements to protect the scalp, and a set of peripheral heat-insulating spacers around the hair-treating area to protect the user's hands. A key feature is that the peripheral spacers are shorter than the spacers located on top of the heating elements.

3. Grounds for Unpatentability

Ground 1: Anticipation over Choi - Claims 1, 5, 8, 12, and 13 are anticipated under 35 U.S.C. §102 by Choi.

• Prior Art Relied Upon: Choi (WO 2011078593).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that a full English translation of Choi, which was not before the examiner, discloses every element of independent claim 1. Choi teaches a heated hairbrush with "heat transfer units" (the claimed "heating elements") and "heat shield units" (the claimed "insulating spacers") configured on top of the heating elements to prevent scalp burns. Critically, Choi also discloses "protective units" (the claimed "peripheral spacers") bordering the heating elements. Petitioner asserted that figures in Choi clearly show these peripheral protective units are shorter than the heat shield units, thus meeting the key spatial relationship limitation of claim 1.
  • Key Aspects: The central thesis of this ground, and the petition as a whole, is that the examiner was only provided with an abstract of Choi during prosecution and thus overlooked these explicit teachings which were dispositive for allowance.

Ground 2: Obviousness over Choi and Gress - Claims 10 and 14-18 are obvious over Choi alone or optionally in view of Gress.

• Prior Art Relied Upon: Choi (WO 2011078593) and Gress (Patent 4,217,915).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Choi by adding Gress to address limitations in dependent claims. Gress was cited for teaching stiff plastic bristles that do not significantly bend during use (addressing claim 10's "stiff" spacers) and for teaching a one-piece construction where heating elements are integrally cast with a heating plate (addressing claim 15's "integrated" elements). Petitioner argued that Choi's spacers inherently possess some stiffness to function, making them obvious over Choi alone.
  • Motivation to Combine: A POSITA would combine the teachings of Gress with Choi to improve predictable performance and safety, as stiff bristles (taught by Gress) better ensure a constant, safe distance from the scalp. Furthermore, a POSITA would be motivated to adopt Gress’s integral casting method to reduce manufacturing costs and complexity compared to Choi’s multi-part assembly.
  • Expectation of Success: Combining these known features from the same field (heated hairbrushes) would have yielded predictable results.

Ground 3: Obviousness over Choi and Read - Claims 2, 3, and 6 are obvious over Choi in view of Read.

• Prior Art Relied Upon: Choi (WO 2011078593) and Read ("Designing a Better Hair Straightener").

• Core Argument for this Ground:

  • Prior Art Mapping: This ground asserted that it would have been obvious to modify Choi’s design using specific parameters taught by Read. Dependent claim 2 requires a spacer-to-scalp distance between 1 mm and 30 mm; Read was alleged to teach a distance of a half-inch (12.7 mm), falling within this range. Dependent claim 3 requires a heating element density between 0.2 and 15 per cm²; Petitioner calculated Read's density at 2.249 per cm², also within the claimed range. For claim 6, Read was cited for teaching heating elements with internal heat sources (a nickel-chromium wire inside the bristle).
  • Motivation to Combine: A POSITA, starting with the basic design of Choi, would look to other prior art in the field like Read to optimize known design variables such as spacer height and element density. This would be a matter of routine experimentation to find the most effective configuration. Modifying Choi to use Read’s internal heaters would be an obvious design choice to create a lighter, more efficient brush.
  • Expectation of Success: Modifying Choi by applying the specific, known, and tested parameters from Read would have been a straightforward implementation with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Choi with Mercier (to teach variable bristle density) and Choi with Ida (to teach silicone-capped spacers and peripheral spacers surrounding the entire hair treating area). These grounds relied on similar arguments of combining known features to achieve predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §314(a) (Fintiv factors) and §325(d).
• Against Fintiv Denial (§314(a)): Petitioner contended that the parallel district court litigation was in its infancy, with no trial date set and significant discovery remaining. It was argued that a stay was likely, and Petitioner stipulated to withdraw any overlapping grounds from the court case if IPR is instituted, thus promoting efficiency and avoiding duplicative efforts.
• Against §325(d) Denial: The core argument was that the examiner materially erred during prosecution because they were never provided with complete English translations of the key foreign prior art, specifically Choi and Ida. Petitioner asserted that the examiner only had access to abstracts and drawings, from which the dispositive teachings (e.g., the relative height of spacers in Choi) were not apparent. Because the art was not substantively evaluated, Petitioner argued the Board should consider the grounds on their merits.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’906 patent as unpatentable.