ColGate Palmolive Co v. Noble InNOvatIONs NC LLC

1. Case Identification

• Case #: IPR2023-01254
• Patent #: 8,881,332
• Filed: July 26, 2023
• Petitioner(s): Colgate-Palmolive Company
• Patent Owner(s): Noble Innovations NC L.L.C.
• Challenged Claims: 1, 2, and 5-18

2. Patent Overview

• Title: Toothbrush with Capsule Retaining Elements
• Brief Description: The ’332 patent discloses a toothbrush with a head that includes a "capsule receiving zone" for holding a single-dose oral care capsule. The invention's key feature is the use of "angled capsule retaining elements," such as bristles, configured to hold the capsule in place and simplify brushing for users, particularly children.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 5-18 are obvious over Wolcott and Davidson.

• Prior Art Relied Upon: Wolcott (Patent 2,262,982) and Davidson (Patent 2,307,493).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wolcott disclosed a toothbrush with all the core features of the ’332 patent, including a "dentifrice receiving pocket" (a recess) surrounded by retaining bristles, some of which are angled to retain a solid dentifrice pellet. Davidson was cited for its disclosure of a "centrally located receiving area" in the form of a well, which holds dentifrice by suction.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to incorporate Davidson's well into Wolcott's toothbrush design. Petitioner contended that since Wolcott's primary goal was to securely retain a pellet, adding Davidson's well would predictably enhance this retention, particularly by adding suction and reducing the chance of the pellet falling out if the brush is inverted.
  • Expectation of Success: The combination involved applying a known retention feature (a well) to a similar device (a toothbrush with a pellet holder) to achieve a predictable improvement in retention, leading to a high expectation of success.

Ground 2: Claims 1, 2, and 5-18 are obvious over Young and Davidson.

• Prior Art Relied Upon: Young (Patent 1,995,374) and Davidson (Patent 2,307,493).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Young taught a "dentifrice holding toothbrush" with multiple embodiments for retaining a pellet, including pockets formed by resilient bristles that could be front-loaded. As in Ground 1, Davidson provided the concept of a well formed in the brush head to aid retention. The combination of Young and Davidson was argued to teach a toothbrush with a recess defined in the front surface and surrounded by angled bristles.
  • Motivation to Combine: A POSITA, seeking to improve the pellet retention of Young's toothbrush, would have looked to analogous art like Davidson. Petitioner argued a POSITA would have been motivated to modify Young's front-loading embodiment by incorporating Davidson's well into the center of the brush head to provide suction and more securely hold the pellet.
  • Expectation of Success: This combination was presented as a simple substitution of one known retention mechanism (a well) into another known toothbrush design to achieve the expected benefit of improved pellet stability.

Ground 3: Claims are obvious over Sorrentino, contingent on claim construction and priority date findings.

• Prior Art Relied Upon: Sorrentino (Patent 8,240,937), with Fitz-Gibbon (Patent 1,346,536) in an alternative combination.

• Core Argument for this Ground:

  • Prior Art Mapping: This ground is predicated on Petitioner's argument that the ’332 patent is not entitled to its claimed priority date, making Sorrentino (filed January 2008) available as prior art. Petitioner argued that Sorrentino disclosed a toothbrush with a "cavity" or "basin" (a recess) and "curved retaining members" to hold an oral care capsule. These curved members were asserted to be an obvious equivalent to the claimed "angled" elements. If the term "angled capsule retaining elements" is interpreted as means-plus-function, Petitioner argued it would be obvious to use the angled bristles taught by Fitz-Gibbon to perform the retaining function in Sorrentino's device.
  • Motivation to Combine (for Sorrentino and Fitz-Gibbon): A POSITA would have been motivated to replace Sorrentino’s injection-molded curved prongs and bristle block with the conventional angled bristles taught by Fitz-Gibbon. This modification would create a cheaper, more conventional, and easier-to-manufacture version of the toothbrush while still retaining the capsule.
  • Key Aspects: The viability of this ground rests entirely on the success of the priority date challenge detailed in Section 5.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 1, 2, and 5-18 based on combinations of Wolcott, Davidson, and Fitz-Gibbon, and of Young, Davidson, and Fitz-Gibbon, relying on similar motivations to further enhance pellet retention by tilting the bristles inward as taught by Fitz-Gibbon.

4. Key Claim Construction Positions

• Term: "angled capsule retaining elements" (claims 1, 2, 5-18)
• Petitioner's Proposed Construction: Petitioner argued this term should be construed as a means-plus-function limitation under pre-AIA §112, sixth paragraph.
  • Function: Retaining an oral care capsule in a capsule receiving zone.
  • Corresponding Structure: The only structure disclosed in the '332 patent specification for performing this function is "angled bristles."
• Importance: This construction is critical to two alternative arguments. First, if adopted, it limits the claim scope to angled bristles, strengthening obviousness arguments using prior art like Fitz-Gibbon. Second, if not adopted, Petitioner argued the term is broader than the "angled bristles" disclosed in the parent application, which would invalidate the patent's priority claim and make the Sorrentino reference available as prior art.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: Petitioner's central technical contention was that the ’332 patent is not entitled to its claimed priority date of August 17, 2007, from its parent '627 application. The effective filing date, Petitioner asserted, should be April 11, 2008.
• Basis for Contention: Petitioner argued that numerous claim limitations were added during prosecution and lack adequate written description support in the parent application. These limitations include, among others, elements being "elevated above the recess," arranged on "diametrically opposing sides," and having specific angular separations of "at least 108 degrees" and "at least 144 degrees."
• Relevance: Establishing the later effective date is crucial for making Sorrentino (filed January 24, 2008) available as §102(e) prior art. The patent examiner had previously acknowledged that Sorrentino disclosed the claimed invention but dismissed it because of the '332 patent's earlier priority date.

6. Arguments Regarding Discretionary Denial

• §325(d) Factors: Petitioner argued against discretionary denial because the asserted prior art and arguments are not the same or substantially the same as those considered during prosecution. It was argued that Wolcott, Davidson, Young, and Fitz-Gibbon were never substantively analyzed by the examiner. While Sorrentino was identified, it was improperly set aside based on a priority date that Petitioner contended is invalid due to the introduction of new matter.
• Fintiv Factors: Petitioner asserted that the Fintiv factors favor institution, stating its intent to file a motion to stay the co-pending district court litigation. It noted the early stage of the litigation, with a trial date not yet set, and stipulated that it would not pursue in district court any invalidity grounds raised or that reasonably could have been raised in the IPR.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, and 5-18 of Patent 8,881,332 as unpatentable under 35 U.S.C. §103.