PTAB

PGR2018-00025

L Oréal USA Inc v. Liqwd Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Methods for Bleaching Hair with Maleic Acid
  • Brief Description: The ’954 patent is directed to methods for bleaching hair by mixing a standard bleaching formulation (e.g., bleach powder and developer) with an active agent formulation containing maleic acid. The resulting mixture is then applied to the hair to achieve lightening while purportedly reducing damage.

3. Grounds for Unpatentability

Ground 1: Claims 1-19, 21, and 23-30 are obvious over Pratt in view of Tanabe.

  • Prior Art Relied Upon: Pratt (Application # 2012/0024309) and Tanabe (Patent 6,358,502).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Pratt discloses a three-part method for bleaching hair to reduce damage, comprising a bleaching compound (a), an oxidizing agent (b), and a composition with a cationic compound (c). Pratt teaches that its composition (c) has a specific pH and discloses maleic acid as one of sixteen possible pH adjusters. Tanabe discloses a hair conditioner composition comprising an acid and a cationic surfactant to improve hair properties, and specifically identifies maleic acid as one of only three "particularly preferred" acids. The combination of Pratt's bleaching method with Tanabe's maleic acid-containing conditioner composition as Pratt's composition (c) renders the limitations of claim 1 obvious. The resulting mixture would contain maleic acid in a concentration that overlaps the claimed range of 0.1-50% by weight.
    • Motivation to Combine: A POSITA would combine the teachings because both references address the same problem: reducing damage to hair during a chemical treatment. Pratt explicitly teaches that its bleaching method can "preferably" include a hair conditioning compound. A POSITA would be motivated to use Tanabe's conditioner, which teaches superior hair improvement properties, as the conditioning component in Pratt's system. This motivation is strengthened by the fact that the required cationic compounds in Pratt and Tanabe have nearly identical chemical formulas and overlap in scope, with both references even using the same specific compound in examples.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because of the substantial overlap in the required and optional components of the respective compositions and their shared technical goal. Using Tanabe's conditioner, with its preferred maleic acid component, in Pratt's bleaching system would be expected to achieve the desired results of both bleaching and conditioning hair with reduced damage.

Ground 2: Claims 20 and 22 are obvious over Pratt and Tanabe in view of Stone.

  • Prior Art Relied Upon: Pratt (Application # 2012/0024309), Tanabe (Patent 6,358,502), and Stone (Application # 2013/0034515).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Pratt/Tanabe combination established in Ground 1. Dependent claims 20 and 22 add limitations requiring specific conditioning agents (behentrimonium methosulfate and stearamidopropyl dimethylamine) and other common ingredients (e.g., glycerin, cetearyl alcohol). While Pratt and Tanabe do not disclose all these specific agents, Stone explicitly discloses a hair conditioner formulation containing the exact combination of conditioning agents recited in claim 20 and the full list of ingredients in claim 22.
    • Motivation to Combine: A POSITA, having already arrived at the damage-reducing bleaching method of Pratt/Tanabe, would be motivated to incorporate Stone’s formulation. Stone is directed to hair conditioners and provides specific, well-known conditioning agents. A POSITA would have found it obvious to use Stone's known and effective conditioning agents and formulations to optimize the conditioner component (derived from Tanabe) in the overall bleaching process.
    • Expectation of Success: A POSITA would expect success in substituting Stone's known conditioning agents into the Pratt/Tanabe composition, as it would be a predictable implementation of known ingredients for their intended purpose of conditioning hair.

Ground 3: Claims 1-19, 21, and 23-30 are obvious over Pratt and Tanabe in view of Berkemer and KR’564.

  • Prior Art Relied Upon: Pratt (Application # 2012/0024309), Tanabe (Patent 6,358,502), Berkemer (German Patent Publication DE 1220969), and KR’564 (Korean Patent Publication KR2006-0059564).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground reasserts the unpatentability of the same claims as Ground 1 but adds Berkemer and KR’564 to reinforce the rationale. The core combination of Pratt and Tanabe remains the same.
    • Motivation to Combine: The incremental contribution of Berkemer and KR’564 is that they provide a POSITA with an even stronger motivation to specifically select maleic acid from Tanabe's short list of preferred acids. Berkemer expressly teaches that treating bleached hair with maleic acid provides "astonishing structural improvement," and KR’564 teaches using maleic acid as an additive in bleaching treatments to "alleviate and prevent hair damage." These references confirm the known, superior benefits of maleic acid for the exact problem Pratt and Tanabe aim to solve, strengthening the motivation to create the claimed combination.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 20 and 22 based on the combination of all five prior art references (Pratt, Tanabe, Stone, Berkemer, and KR’564), arguing that the motivations are cumulative.

4. Key Claim Construction Positions

  • Petitioner argued that a proper interpretation of the claims requires the final bleaching mixture to be acidic (the "acid interpretation"). However, anticipating that the Board might disagree and find that the claims can also be read to include salts of maleic acid (the "salt interpretation"), Petitioner structured all of its unpatentability arguments to be valid even under the broader salt interpretation.

5. Relief Requested

  • Petitioner requests institution of a post-grant review and cancellation of claims 1-30 of the ’954 patent as unpatentable under 35 U.S.C. §103.