Board PGR obviousness decision vacated for disregarding evidence of copying as irrelevant

Liqwd, Inc. v. L’Oreal USA, Inc.

Docket Nos. 2018-2152 (PGR2017-00012)
October 30, 2019

Brief Summary: Board PGR obviousness decision vacated for error in disregarding evidence of copying as irrelevant.

Summary: Liqwd appealed Board post-grant review (PGR) decision finding Liqwd’s keratin treatment-related formulation and method claims (“method for bleaching hair”) of US 9,498,419 unpatentable for obviousness. L’Oreal’s PGR request alleged anticipation and obviousness. The Board found no anticipation because although the prior art “disclosed all the limitations of the challenged claims”, those were “not as arranged in the claims as required for anticipation” (not at issue in this appeal). However, the Board concluded the challenged claims to be invalid for obviousness in view of three prior art references (Ogawa, Berkemer, and a Korean patent application (KR ‘564)), and in its analysis “considered arguments and evidence related to objective indicia of non-obviousness-in particular, long-felt need and copying.” Regarding copying, Liqwd argued “that the Board erred by ruling that L’Oreal’s copying of Liqwd’s unpublished ‘885 patent application ‘did not qualify as an objective indicium of nonobviousness’ despite the Board’s factual finding that ‘[L’Oreal] used maleic acid because of [L’Oreal’s] access to [Liqwd’s] non-public information, rather than because of [L’Oreal’s]…independent development.” L’Oreal argued that “Liqwd did not show replication of any specific product embodying the claimed invention, so there is no evidence of copying by L’Oreal” (relying on Iron Grip, FC 2004). The FC panel explained that it has “consistently held that objective indicia ‘may often be the most probative and cogent evidence’ of nonobviousness” (Advanced Display, FC 2000; In re Cyclobenzaprine (FC 2012 (“Objective indicia are essential safeguards that protect against hindsight bias.”); W.L. Gore, FC 1983; Stratoflex, FC 1983), and that “copying by a competitor is a relevant consideration” (Iron Grip; Vandenberg, FC 1984; Institut Pasteur, FC 2013 (e.g., “more than twenty later-published articles demonstrating that other scientists had adopted the patented method”)). In Iron Grip, the FC “stated that ‘copying requires the replication of a specific product” and here explained that “more is needed than merely showing that similarity exists between the patent and the competitor’s accused product” (also citing Wyers, FC 2010; Tokai, FC 2011 (emphasizing the difference between infringement and copying); DuPuy Spine, FC 2009 (“defendant’s initial attempts at one design together with ‘prompt adoption of the claimed feature soon after the patent issued, are relevant indicia of nonobviousness’”); Apple, FC 2016 (must be a nexus to the claimed features)). The FC’s “primary concern in each of [those] cases has been to avoid treating mere infringement as copying simply because the claims of a patent arguably read on a competitor product.” The FC panel found that substantial evidence supported the Board’s factual finding that L’Oreal copied Liqwd’s patented method. However, the FC panel also found the Board erred is disregarding that evidence as irrelevant and therefore vacated and remanded the decision for reconsideration of this evidence (Knoll Pharm., FC 1983).

This entry was posted in Anticipation (35 USC 102), Obviousness, Post-grant review, Uncategorized. Bookmark the permalink.

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