PTAB

PGR2017-00012

L Oréal USA Inc v. Liqwd Inc

Key Events

Petition

petition

Title: Keratin Treatment Formulations and Methods
Brief Description: The ’419 patent discloses methods for bleaching hair. The methods involve mixing a formulation containing an active agent (maleic acid or its salts) with a separate bleaching formulation and applying the resulting mixture to hair, with the express exclusion of any hair coloring agent from the mixture.

Prior Art Relied Upon: Ogawa (Patent 7,044,986).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Ogawa discloses every element of the challenged claims. Ogawa teaches a two-part hair treatment method where a "first pack" is mixed with a "second pack" at the time of application. The first pack contains a chelating agent, and Ogawa expressly names maleic acid as one of only ten possible chelating agents. The second pack contains a bleaching agent, such as hydrogen peroxide. Ogawa clarifies that when the composition is used for bleaching (as a "bleach pack"), it does not contain an oxidation dye, thereby meeting the negative limitation of excluding a "hair coloring agent." Petitioner asserted that Ogawa's disclosed concentration ranges for the chelating agent overlap with those required by the challenged claims, and its Example 3 provides a specific bleaching formulation that falls within the claimed ranges.
- Key Aspects: Petitioner contended the Examiner erred during prosecution by allowing a declaration of unexpected results to overcome Ogawa, arguing that such evidence is legally insufficient to rebut a prima facie case of anticipation.

Prior Art Relied Upon: Ogawa (Patent 7,044,986), DE '969 (German Publication DE 1220969), and KR '564 (Korean Publication KR2006-0059564).
Core Argument for this Ground:
- Prior Art Mapping: Ogawa provided the foundational two-part bleaching method and disclosed maleic acid within a small, finite list of ten possible chelating agents. DE '969 taught that using unsaturated acids, specifically maleic acid, provides "astonishing structural improvement" and a "substantial advance" for treating previously bleached hair. Similarly, KR '564 taught using maleic acid as an additive in bleaching processes to alleviate and prevent hair damage.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to improve Ogawa's bleaching method. A POSITA would have been motivated to select maleic acid from Ogawa’s short list of chelating agents to incorporate the known and advantageous hair repair and damage prevention properties explicitly taught by DE '969 and KR '564.
- Expectation of Success: The combination of Ogawa's finite list of predictable options with the clear teachings in DE '969 and KR '564 about the specific benefits of maleic acid would have provided a POSITA with a reasonable expectation of success in achieving a superior bleaching composition.

Prior Art Relied Upon: Kitabata (Application # 2002/0189034), DE '969, and KR '564.
Core Argument for this Ground:
- Prior Art Mapping: Kitabata disclosed a two-composition hair bleaching formulation mixed prior to use. Its "primary agent" composition included a pH adjuster selected from a list of fourteen polycarboxylic acids, which expressly included maleic acid. Its "secondary agent" composition contained an oxidizing agent. Kitabata explicitly stated that when the composition is used as a "bleaching agent," it is not necessary to include a hair dye.
- Motivation to Combine: The motivation was analogous to Ground 2. A POSITA would have been motivated to select maleic acid from Kitabata's disclosed list of pH adjusters to obtain the beneficial hair-strengthening and damage-mitigating effects taught by DE '969 and KR '564. This represented the combination of known elements for their known purposes to achieve a predictable result.
- Expectation of Success: Given that Kitabata provided a finite list of predictable pH adjusters and the secondary references taught the specific benefits of maleic acid in this context, a POSITA would have had a high expectation of success.

"Hair coloring agent": Petitioner argued that, for the purposes of its §102 and §103 grounds, this term should be narrowly construed to mean a substance that changes hair color by depositing dyes or pigments. This construction was proposed to distinguish from bleaching agents, which change color by destroying pigment. Petitioner noted this narrow construction was necessary to avoid invalidity under 35 U.S.C. §112, which was the subject of a concurrently filed petition with a broader construction.
"The mixture does not contain": Petitioner contended this phrase should be interpreted according to its plain meaning to preclude any amount of a hair coloring agent in the mixture. This was intended to preempt a potential argument from the Patent Owner that the phrase only excludes an "effective amount" for coloring hair.

Rebuttal of "Unexpected Results": Petitioner argued that the Patent Owner’s declaration evidence submitted during prosecution (Declaration-1) failed to show unexpected results. The declaration showed benefits from using maleic acid, but Petitioner contended these benefits were not unexpected because prior art, particularly DE '969, already taught that unsaturated acids like maleic acid provide superior structural improvement to damaged hair compared to other acids.
Results Not Commensurate with Claim Scope: Petitioner further argued that the declaration was insufficient because its testing was not commensurate with the scope of the claims. The testing was conducted at a single 10% concentration of the active agent, whereas the challenged claims recite a broad range from about 0.1% to 50% by weight.

Petitioner requested the institution of Post-Grant Review and the cancellation of claims 1-8 and 10 of the ’419 patent as unpatentable.