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 and Oral Care Capsule Dispenser
• Brief Description: The ’332 patent discloses a toothbrush designed to hold a single-use oral care capsule. The toothbrush head includes a central "capsule receiving zone" surrounded by a plurality of angled bristles configured to retain the capsule for use.

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 all key elements of the independent claims, including a toothbrush with a "dentifrice receiving pocket" (a recess) surrounded by bristle tufts containing both vertical and angled bristles that retain a dentifrice pellet. Davidson taught a toothbrush with a centrally located well for receiving dentifrice that provides a suction effect to better hold the material. The combination of Wolcott's bristle arrangement with Davidson's well met the limitations of a recess defined in the front surface for receiving a capsule, surrounded by angled retaining elements.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to combine the references to improve the pellet retention of Wolcott's toothbrush. Since Wolcott was concerned with preventing the pellet from falling out if inverted, a POSITA would incorporate Davidson's well to add suction, thereby increasing the reliability of pellet retention in a simple and predictable manner.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining a known retention feature (a well) with a known bristle structure involved predictable design choices to achieve the known goal of securing a dentifrice pellet.

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 toothbrush with several embodiments for holding a dentifrice pellet, including a "pocket" formed by surrounding bristles that retain the pellet through their resiliency. This pocket constituted the claimed capsule receiving zone with angled retaining elements. Similar to Ground 1, Davidson supplied the teaching of a recess or well formed in the head to hold the dentifrice.
  • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA, seeking to enhance the ability of Young's toothbrush to retain a pellet, would incorporate the well from Davidson. This combination would reduce the likelihood of the pellet falling out by adding the benefit of suction to the retention provided by Young's resilient bristles.
  • Expectation of Success: The combination was a predictable integration of known technologies to enhance a known function, leading to a reasonable expectation of success.

Ground 3: Claims 1, 2, and 5-18 are obvious over Sorrentino and Fitz-Gibbon (if means-plus-function interpretation is adopted).

• Prior Art Relied Upon: Sorrentino (Patent 8,240,937) and Fitz-Gibbon (Patent 1,346,536).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented contingent on the Petitioner's proposed means-plus-function construction for "angled capsule retaining elements" (see Section 4). Petitioner argued Sorrentino disclosed a toothbrush with a "basin" or "cavity" (a recess) and "curved retaining members" to hold a capsule. Fitz-Gibbon taught a toothbrush with inwardly angled bristles that form a "dentifrice holding chamber or pocket."
  • Motivation to Combine: A POSITA would have been motivated to modify Sorrentino's design for cost and manufacturing simplicity. Sorrentino taught an injection-molded, single-piece bristle block with integrated curved prongs. A POSITA would replace these specialized curved prongs with the conventional angled bristles taught by Fitz-Gibbon and replace the molded vertical bristles with traditional stapled bristles to create a cheaper, more conventional toothbrush that still performed the same function of retaining a capsule.
  • Expectation of Success: A POSITA would have a high expectation of success in substituting one known retaining structure (angled bristles) for another (curved prongs) to achieve a more cost-effective design.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Wolcott, Davidson, and Fitz-Gibbon (Ground 2); Young, Davidson, and Fitz-Gibbon (Ground 4); and Sorrentino alone (Ground 5, if a broader claim construction is adopted). These grounds relied on similar mapping and motivation arguments.

4. Key Claim Construction Positions

• Petitioner argued the term "angled capsule retaining elements" should be construed as a means-plus-function term under pre-AIA 35 U.S.C. § 112, sixth paragraph.
  • Function: Retaining an oral care capsule in a capsule receiving zone.
  • Structure: Angled bristles.
  • Importance: Petitioner contended the word "elements" is a non-structural, generic placeholder, and the claims lack sufficient corresponding structure. This construction was central to Ground 6 and the argument that the patent was not entitled to its priority date, as the original application only disclosed "angled bristles," not the generic "elements."

5. Key Technical Contentions (Beyond Claim Construction)

• Lack of Priority Claim Entitlement: Petitioner's primary technical contention was that the ’332 patent was not entitled to its claimed August 17, 2007 priority date. Petitioner argued that numerous claim limitations—including "angled capsule retaining elements," a recess "elevated above the recess," and specific angular arrangements (e.g., 108 degrees apart)—were added during prosecution and lack written description support in the parent application. Consequently, Petitioner asserted the patent's effective filing date is April 11, 2008. This later date was critical for establishing that Sorrentino (filed January 24, 2008) is available as prior art under §102(e).

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d) and Fintiv.
  • §325(d) Factors: The asserted prior art and arguments were not the same or substantially the same as those considered during prosecution. The primary references (Wolcott, Davidson, Young, Fitz-Gibbon) were never substantively analyzed by the examiner. Further, the Office erred by not challenging the patent's priority claim, which improperly prevented the consideration of Sorrentino.
  • Fintiv Factors: Petitioner argued the factors favored institution because the co-pending district court case was at an early stage with no trial date set, Petitioner intended to file a motion to stay, and Petitioner stipulated it would not pursue in district court any grounds raised or that reasonably could have been raised in the inter partes review (IPR).

7. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1, 2, and 5-18 of the ’332 patent as unpatentable under 35 U.S.C. §103.