Top Secret

Patent Trials and Appeals Board

May 12, 2021

IPR2020-00168 (P.T.A.B. May. 12, 2021)

Trials@uspto.gov Paper 42
571-272-7822 Entered: May 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CHURCH & DWIGHT CO., INC.,
Petitioner,
v.
RANDALL BATINKOFF,
Patent Owner.

IPR2020-00168
Patent 7,841,494 B2

Before LYNNE H. BROWNE, MITCHELL G. WEATHERLY, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Challenged Claims 1–11 Unpatentable
35 U.S.C. § 318(a)
Dismissing Patent Owner’s Motion to Exclude
Dismissing Petitioner’s Motion to Exclude
37 C.F.R. § 42.64

IPR2020-00168
Patent 7,841,494 B2

2
INTRODUCTION
Church & Dwight Co., Inc. (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting institution of an inter partes review of claims 1–11 of
U.S. Patent No. 7,841,494 B2 (Ex. 1001, “the ’494 patent”). Randall
Batinkoff (“Patent Owner”) filed a Corrected Preliminary Response.
Paper 8 (“Prelim. Resp.”). Petitioner filed a Preliminary Reply (Paper 9), to
which Patent Owner filed a Preliminary Sur-reply (Paper 10). Pursuant to
35 U.S.C. § 314, we instituted an inter partes review of claims 1–11 of the
’494 patent on all presented challenges. Paper 11 (“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 19, “PO
Resp.”), Petitioner filed a Reply (Paper 25, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 27, “PO Sur-reply”). In addition, Patent Owner filed
a Motion to Exclude (Paper 30), Petitioner filed an Opposition to that
Motion (Paper 35), and Patent Owner filed a Reply (Paper 38). Petitioner
also filed a Motion to Exclude (Paper 31), Patent Owner filed an Opposition
to that Motion (Paper 33), and Petitioner filed a Reply (Paper 37). An oral
hearing in this proceeding was held on February 17, 2021, and a transcript of
the hearing is included in the record (Paper 41, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
(2019). For the reasons that follow, we determine that Petitioner has shown
by a preponderance of the evidence that claims 1–11 of the ’494 patent are
unpatentable.
IPR2020-00168
Patent 7,841,494 B2

3
BACKGROUND
A. Real Parties in Interest and Related Matters
Petitioner states that its real party in interest is itself. Pet. 64. Patent
Owner states that its real parties in interest are itself and “Top Secret,” “a
California corporation in the business of hair care.” Paper 4, 2.
The parties identify two proceedings that may affect, or could be
affected by, a decision in this proceeding: (1) Randall Batinkoff and Top
Secret v. Church & Dwight Co., Inc. and Mark H. Kress, 3:18-cv-16388
(D.N.J.) (filed Nov. 21, 2018) (the “district court litigation”); and
(2) Randall Batinkoff and Top Secret v. Dennis J. Smolinski, 2:18-cv-12905
(E.D. Mich.) (filed Sept. 17, 2018). Pet. 64; Paper 4, 2.
B. The ’494 Patent
The ’494 patent issued on November 30, 2010, from an application
filed March 16, 2007. Ex. 1001, codes (22), (45). The ’494 patent discloses
“a manually activated pump dispenser . . . suitable for dispensing powder or
fiber onto a scalp or other parts of the body” and “easily manipulated by a
single hand of the user.” Id. at 1:7–11. According to the ’494 patent, prior
art dispensers suffered from complicated designs that rendered them
expensive to manufacture, and “the requirement of the use of both hands in
order to operate the dispenser.” Id. at 1:42–45.
IPR2020-00168
Patent 7,841,494 B2

4
Figure 2 of the ’494 patent is reproduced below.

Figure 2 is “a cross sectional, side elevation view of an air atomizing spray
gun.” Ex. 1001, 2:65–66. The pump cap includes elastomeric bulb 11 that
forms a compressible interior air chamber and sits on top of a dispenser (not
numbered). Id. at 3:14–16, 3:33–36. The pump cap has an opening on its
bottom end defined by peripheral wall 10, with the opening adapted to
couple to a receptacle (not shown) containing fibers or powder. Id.
at 3:18–21, 3:28–30. The dispenser includes one-directional intake valve
cavity 12 and valve vent 15 in communication with the chamber under
bulb 11. Id. at 3:16–17, 3:43–47. The dispenser’s air passageway 13 is in
communication with the chamber under bulb 11 on one end, and adjacent the
media in the receptacle below on the other end. Id. at 3:18–21, 4:1–9.
Product outlet 14 “draws the media from the receptacle and disperses same
through an outside opening.” Id. at 4:9–11.
IPR2020-00168
Patent 7,841,494 B2

5
In operation, a user activates the pump dispenser by grasping the
dispenser with one hand and manually pressing down on bulb 11 to direct air
from the bulb 11’s interior chamber through passageway 13 to the receptacle
containing media. Ex. 1001, 4:49–57. The air agitates and disperses the
media throughout the receptacle chamber such that fibers are forced out
through product outlet 14. Id. at 4:57–61.
C. Challenged Claims
Petitioner challenges claims 1–11. Pet. 10. Of those claims, claims 1
and 7 are independent. Ex. 1001, 5:12–8:6. Claim 1 is reproduced below,
with underlining added to limitations most relevant to our Decision.
1. A pump cap for dispensing a cosmetic media from a
receptacle, the receptacle having a base and an outer upright
peripheral wall extending from the base to define a receptacle
chamber for the cosmetic media, the upright peripheral wall
terminating in an open end, said pump cap comprising:
a closure including a top wall which terminates in a
downward depending peripheral wall, said top wall having
top and bottom sides, said closure receiving the open end
of the receptacle adjacent said bottom side of said top wall
of the closure and within the depending peripheral wall;
a deformable dome secured to said top wall of the closure to
provide an air-tight dome chamber between said
deformable dome and said top wall of said closure;
an air pump tube for providing airflow from said dome
chamber to the open top end of the receptacle when said
deformable dome is compressed, said air pump tube
having a top end located in the dome chamber and a
bottom end located in the receptacle chamber, said top end
being flared out;
an air intake tube comprising a first air intake chamber
running in a direction substantially parallel to the top wall
of the closure and communicating with said peripheral
wall of said closure, and a second air intake chamber
IPR2020-00168
Patent 7,841,494 B2

6
communicating with said first air intake chamber and with
said dome chamber, said second air inlet chamber being
disposed perpendicularly to said first air inlet chamber,
and being in communication with said first inlet chamber
and said dome chamber, said air intake tube providing
airflow from outside the dispenser to said dome chamber
when deformable dome is released from a compressed to
a non-compressed state; and
an outlet chamber for dispensing cosmetic media from the
receptacle, said outlet chamber communicating between a
media outlet opening on the peripheral wall of said
closure, and a receptacle chamber media opening located
on the bottom side of the top wall of said closure, said
receptacle chamber media opening being flush against the
bottom side of the top wall of the closure;
such that the dispenser can be held in one hand and cosmetic
media may be dispensed by successively compressing and
releasing said deforming dome.
Id. at 5:12–52 (emphases added).
We provide a brief overview of the prosecution history to provide
context to the parties’ arguments. During prosecution, the Examiner
rejected the pending claims as obvious. Ex. 1002, 76–80, 117–119. The
applicant amended several claims to require the air pump tube
(passageway 13 in Figure 2) to have a “flared out” top end within the dome
chamber under bulb 11. Id. at 60. The applicants alleged that the “flared
out” top end of the tube in the dome chamber prevents clogging of the air
pump tube and “ensures free and proper flow of air into the receptacle.” Id.
at 67. The Examiner found the claims allowable due to the addition of the
“flared out” limitation. Id. at 35–36. The Examiner maintained obviousness
rejections based on Kross, Kress, and Perritt for claims that did not contain
the “flared out” limitation. Id. at 33–34. The applicant amended the
remaining claims to add the “flared out” limitation so that all claims
IPR2020-00168
Patent 7,841,494 B2

7
included that feature, and the Examiner issued a Notice of Allowance
following that amendment. Id. at 13, 23–24.
D. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–11 would have been unpatentable on
the following grounds (Pet. 10):
Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
1–4, 61 103(a) Carsberg,2 Kross,3 Kress4
5, 7–11 103(a) Carsberg, Kross, Kress, Lundblad5
1–11 103(a) Lundblad, Kross, Kress
1–11 103(a) Kross, Kress, Perritt,6 Lundblad
1–11 103(a) Kross, Kress, Perritt, knowledge of POSITA7
Petitioner also relies on the Declaration of Michael B. Jones. See
Ex. 1003. Patent Owner relies on the Declaration of David A. Hullender,
Ph.D. See Ex. 2017.

1 Although Petitioner refers to “Ground 1” as challenging claims 1–11 based
on Carsberg, Kross, Kress, and Lundblad, Petitioner does not rely on all four
references for each of claims 1–11. Pet. 26–38. For claims 1–4 and 6,
Petitioner relies on Carsberg, Kross, and Kress, and does not explicitly refer
to Lundblad. Id. at 26–33. We treat the challenge to claims 1–4 and 6 based
on Carsberg, Kross, and Kress separate from the challenge to claims 5 and
7–11 based on those same references and Lundblad.
2 UK 748,530, published May 2, 1956 (“Carsberg”) (Ex. 1008).
3 US 2,223,256, issued November 26, 1940 (“Kross”) (Ex. 1005).
4 US 7,140,522 B2, issued November 28, 2006 (“Kress”) (Ex. 1007).
5 US 1,520,502, issued December 23, 1924 (“Lundblad”) (Ex. 1009).
6 US 2,098,160, issued November 2, 1935 (“Perritt”) (Ex. 1006).
7 Petitioner contends that the knowledge of one of ordinary skill in the art
(“POSITA”) includes “the well-known manufacturing feature of rounded
edges or ‘fillets.’” Pet. 50.
IPR2020-00168
Patent 7,841,494 B2

8
ANALYSIS
A. Legal Standards
To prevail in its challenges, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e) (2012); 37 C.F.R.
§ 42.1(d) (2018). “In an [inter partes review], the petitioner has the burden
from the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof
in an inter partes review).
Petitioner relies on obviousness in its challenges to the claims of the
’494 patent. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if
the differences between the claimed subject matter and the prior art are such
that the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) when in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–
18 (1966).
IPR2020-00168
Patent 7,841,494 B2

9
B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). “The person of ordinary skill in the art is a
hypothetical person who is presumed to know the relevant prior art” at the
time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed.
Cir. 1995). Factors that may be considered in determining the level of
ordinary skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
level of active workers in the field. Id. In a given case, one or more factors
may predominate. Id.
Petitioner contends that a person having ordinary skill in the art
“would have at least a Bachelor’s degree in Mechanical Engineering and at
least four years of experience in pump design, with some general familiarity
with manufacturing techniques such as injection molding, or equivalent
education and training.” Pet. 11. Patent Owner does not dispute Petitioner’s
proposal “with one exception”—that Petitioner’s inclusion of “some general
familiarity with manufacturing techniques such as injection molding,” or
equivalent education and training. PO Resp. 25–26. Patent Owner argues
that the ’494 patent does not mention injection molding and other
manufacturing methods that can be used to manufacture the claimed device.
Id.
We agree with Patent Owner that the ’494 patent does not mention
injection molding or any specific manufacturing method. Although a person
having “at least a Bachelor’s degree in Mechanical Engineering and at least
four years of experience in pump design” would presumably be aware of
IPR2020-00168
Patent 7,841,494 B2

10
injection molding techniques, the proposed level of ordinary skill in the art
need not include any specific reference to injection molding to adequately
define the level of skill in the art pertaining to the ’494 patent. Accordingly,
we adopt the undisputed portion of Petitioner’s asserted level of ordinary
skill, which we find consistent with the problems identified and solutions
provided in the ’494 patent and the prior art. We find that a person having
ordinary skill in the art pertaining to the ’494 patent “would have at least a
Bachelor’s degree in Mechanical Engineering and at least four years of
experience in pump design.”8
C. Claim Construction
In inter partes reviews, we interpret claims in the same manner used
in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019);
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (setting
forth claim construction approach in district court cases). Under that
standard, we generally give claim terms their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art at
the time of the invention, in light of the language of the claims, the
specification, and the prosecution history. See Phillips, 415 F.3d at
1313–14. Although extrinsic evidence, when available, may also be useful
when construing claim terms under this standard, extrinsic evidence is
generally “less reliable” than the intrinsic record. See id. at 1318–19. Only
terms that are in controversy need to be construed, and then only to the
extent necessary to resolve the controversy. Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).

8 Our findings and conclusions in this Decision would not change if we
adopted Petitioner’s proposal in full.
IPR2020-00168
Patent 7,841,494 B2

11
Petitioner proposes “that the claim terms of the ’494 Patent be given
their ordinary and customary meaning.” Pet. 10–11. Patent Owner proposes
constructions for two claim limitations, which we address in turn below.
1. Cosmetic Media
Patent Owner argues that “cosmetic media,” which appears in
independent claims 1 and 7, means “solid (powder or fiber, especially hair
fiber).” PO Resp. 26 (emphasis removed); Ex. 1001, 5:43, 6:36. Patent
Owner argues that the ’494 patent specification repeatedly refers to
dispensing powder or fiber without disclosing dispensing liquid, and the
“prosecution history confirms the ‘cosmetic media’ must be solid.” PO
Resp. 27; see also id. at 30 (“The intrinsic evidence requires ‘cosmetic
media’ to be construed as solid fiber or pow[d]er.”). Aside from
maintaining that the “ordinary and customary meaning” applies, Petitioner
does not specifically address Patent Owner’s claim construction arguments
as to “cosmetic media” and relies on prior art that discloses solid media in
the challenges we address below. See Pet. 10–11, 26, 30, 35, 37.
We need not determine whether the ordinary meaning or Patent
Owner’s proposed construction applies because, as discussed below, we
ultimately determine that all challenged claims have been shown to be
unpatentable even when we adopt Patent Owner’s proposed construction.
We do need to clarify the construction that we adopt, however, because
Patent Owner’s proposals shifted during the briefing. Patent Owner’s
proposed construction could be read as merely requiring a solid, with the
powder and fiber the specification discloses serving as two examples of solid
cosmetic media without limiting “cosmetic media” to either of those
examples. See PO Resp. 26 (“‘[C]osmetic media’ is solid (powder or fiber,
IPR2020-00168
Patent 7,841,494 B2

12
especially hair fiber).” (emphasis removed)), 27 (arguing that the
“prosecution history confirms the ‘cosmetic media’ must be solid”). The
claim structure supports this approach, as claim 8, which depends from
claim 7, recites “wherein said media is a powder or fiber,” strongly
suggesting that “cosmetic media” in claim 7 does not require “powder or
fiber.” Ex. 1001, 7:4–5. Patent Owner’s proposals in its Response could
also be read more narrowly to require not only solid media, but specifically
solid “powder or fiber.” PO Resp. 26, 30. Because Petitioner’s challenges
do not turn on this issue, for purposes of this Decision, we construe
“cosmetic media” more narrowly to mean solid cosmetic media in the form
of powder or fiber.
To be clear, our adoption of Patent Owner’s proposed construction
from its Response results in claim scope in which either powder or fiber
meets the “cosmetic media” limitation, consistent with Patent Owner’s
wording in its Response. See PO Resp. 26, 30. In its Sur-reply, Patent
Owner argues for the first time “that the claimed pump dispenser for
cosmetic media must be capable of dispensing hair fibers” and “must also be
able to dispense powders.” PO Sur-reply 9. In effect, Patent Owner changes
its proposed construction from powder or fiber to powder and fiber, as
nothing in the proposed language of Patent Owner’s construction or its
Response suggests that the claimed dispenser must be capable of dispensing
both powder and fiber. Compare PO Resp. 26, 30, with PO Sur-reply 9–10.
Because Patent Owner’s new twist on its proposed construction did not
appear until its Sur-reply, and Petitioner had no opportunity to brief the
issue, we do not consider Patent Owner’s new proposal. See Paper 12, 8
(“Patent Owner is cautioned that any arguments not raised in the response
IPR2020-00168
Patent 7,841,494 B2

13
may be deemed waived.”); see also 37 C.F.R. § 42.23(b) (defining proper
scope of sur-reply).
2. Flared Out
Patent Owner argues that we should construe “said top end being
flared out” in claims 1 and 7 to mean “[t]he top end of air injecting
passageway widening from the bottom end toward the deformable bulb.”
PO Resp. 31. Although Petitioner contends that the “ordinary meaning”
should apply, Petitioner also argues, in the context of one of its challenges,
that Patent Owner seeks an improperly broad construction of “flared out” in
the district court litigation that would encompass “any widening, such as
rounded edges or ‘fillets,’ at the top end of the air pump tube.” Pet. 50.
Patent Owner disagrees with Petitioner’s interpretation of its litigation
position, and argues that a construction that covers merely rounding edges a
small amount does not suffice. PO Resp. 31–33. Patent Owner contends
that its prosed construction shows that it does not construe “flared out” as
broadly as Petitioner suggests. Id. at 33.
The parties appear to agree that “flared out” should not be construed
so broadly that it covers any merely rounded edges no matter how small the
radius, and we agree—such an approach would effectively eliminate the
“flared out” limitation. See Pet. 10–11, 50 (applying broad construction to a
challenge based on Patent Owner’s alleged arguments in district court
litigation); PO Resp. 31; PO Sur-reply 11. We need not determine whether
the ordinary meaning or Patent Owner’s proposed construction applies to
“flared out” because, as discussed below, we ultimately determine that all
challenged claims have been shown to be unpatentable even when we adopt
Patent Owner’s proposed construction. Accordingly, we construe “flared
IPR2020-00168
Patent 7,841,494 B2

14
out” in claims 1 and 7 to mean “[t]he top end of air injecting passageway
widening from the bottom end toward the deformable bulb.” PO Resp. 31.
Our adoption of Patent Owner’s construction does not mean that we
adopt further arguments by Patent Owner that go beyond its construction.
For example, Patent Owner contends that “the flaring is intended to have
functionality” and alludes to functions such as contributing to the air pump
tube’s ability to force pressurized air into the container and prevent
clogging. PO Resp. 32. To the extent Patent Owner seeks a functional
construction of “flared out” that amounts to “flared out” or “widened”
enough to pressurize air or prevent clogging, we decline to adopt such a
construction for several reasons. First, Patent Owner does not include such a
requirement in its proposed construction. Second, the claims at issue here
are apparatus claims to a “pump cap” that define structure, including a
“flared out” top end of a tube, without any suggestion that such structure
requires any specific functionality. Ex. 1001, 5:12, 5:16, 6:10. Third, the
’494 patent specification never mentions the “flared out” aspect of the tube
at all, does not identify the flared out end by number in the figures, and does
not imply any functionality of the flared out end of the tube. See Ex. 1001,
Figs. 1–2. Fourth, the specification’s reference to an increase in air pressure
only mentions air passageway/tube 13, not a flared out end of that structure,
and nothing in the specification mentions anti-clogging functionality. See
id. at 4:6–8. Fifth, the reference to the anti-clogging functionality of the
flared out end in the prosecution history, standing alone, does not justify
importing that limitation into the claim, and Patent Owner has not advanced
sufficient argument and evidence to support such a claim. Sixth, adopting
any functional requirements would not bring clarity to the claim scope, and
IPR2020-00168
Patent 7,841,494 B2

15
would invite further confusion over whether a widened area was sufficiently
wide to meet the functional requirements.
We are mindful that the construction we adopt for purposes of this
Decision refers to “widening from the bottom end toward the deformable
bulb” without identifying how much “widening” is required to meet the
claim limitation, and Patent Owner does not fill that gap with any applicable
standard. See PO Resp. 31. As noted above, we agree with the parties that a
merely rounded edge, no matter how small the radius, does not suffice, but
we do not impose any formal requirements on the amount of widening
necessary to meet the claim limitation. The widening need only be readily
distinguishable from the tube diameter from which the flared out end
projects, and may be formed by a straight or curved surface.
D. Obviousness of Claims 1–4 and 6 Based on Carsberg, Kross,
and Kress
Petitioner challenges claims 1–4, and 6 under 35 U.S.C. § 103 based
on Carsberg, Kross, and Kress. Pet. 26–33.9 For these challenges, Petitioner
cites to the asserted references and the Jones Declaration. Id.
1. Overview of Carsberg
Carsberg relates to “powder blowers” that force air into a powder
container such that air and powder escape from the container. Ex. 1008,
1:9–12. The air is “compressed by means of a resilient deformable bulb
attached to a head-piece which is secured to the powder container.” Id.
at 1:12–15.

9 As noted above (see supra, note 1), although Petitioner describes
“Ground 1” as a challenge to claims 1–11 based on Carsberg, Kross, Kress,
and Lundblad, Petitioner does not rely on Lundblad for claims 1–4 and 6.
See Pet. 26–33.
IPR2020-00168
Patent 7,841,494 B2

16
Carsberg’s Figure 2 is reproduced below.

Figure 2 depicts “a sectional side elevation of the separated components of
the blower.” Ex. 1008, 1:71–72. Rubber bulb 15 sits on top of cup 13, with
ring 16 connecting bulb 15 and cup 13. Id. at 1:81–84, Figs. 1, 2. Short
tube 14 extends downward from cup 13 into container 11. Id. at 1:77–80,
Fig. 2. Outlet nozzle 19 extends from collar 12, which is integral with
cup 13, with nozzle 19 communicating with the inside of container 11. Id.
at 2:7–8, Fig. 2.
When in use, Carsberg states that the device “can be picked [up] and
operated with one hand, either the thumb or a finger being used to depress
the bulb.” Ex. 1008, 2:18–21. The user can apply a desired quantity of
powder by controlling the amount of pressure applied to the bulb. Id.
at 2:22–28.
IPR2020-00168
Patent 7,841,494 B2

17
2. Overview of Kross and Kress
Kross discloses an attachment to a milk bottle to separate the cream
from the milk. Ex. 1005, 1:1–5. In Kross’s device, air enters the device via
air inlet duct 16 in body 1 of the device, passing through valve 13, and into a
cylindrical area under bulb 6. Id. at 1:15–16, 1:50–54, Fig. 4. A user
operates the device by pressing and releasing bulb 6 to draw air through
duct 16, and expelling air through air duct 17 that extends downward
through body 1 of the device. Id. at 1:54–2:3, 2:11–17, Figs. 1, 4.
Kress discloses an applicator for hair building cosmetic fibers,
powders, and particles. Ex. 1007, code (57). Kress’s device includes a
nexus 32 attached to lid 24 of container 22. Id. at 4:17–26, Fig. 5. Directing
tube 38 extends between the underside of nexus 32 at orifice 44 on one end,
and nozzle 42 that can be directed towards an area of treatment on the other
end. Id. at 4:34–42, Figs. 2, 5, 7A.
3. Discussion
We first address whether the combination of Carsberg, Kross, and
Kress discloses all of the limitations of claims 1–4 and 6. We focus on
limitations Patent Owner contends are absent from the proposed
combination. We then address the motivation to combine the references.
Petitioner asserts that the combination of Carsberg, Kross, and Kress
discloses all limitations of claim 1–4 and 6. Pet. 26–33. Petitioner relies on
Carsberg as disclosing the vast majority of the limitations of claim 1, and
relies on Kross for the “air intake tube” and related limitations and Kress for
the claimed receptacle chamber media opening flush against the bottom side
of the top wall of the closure. Id. at 26–31. Petitioner provides analysis of
each limitation in the challenged claims, with citations to the references that
IPR2020-00168
Patent 7,841,494 B2

18
correspond to each of the claim limitations. Id. at 26–33. Petitioner also
cites to the relevant testimony by Mr. Jones. Id. (citing various portions of
Ex. 1003). Patent Owner argues that the proposed combination fails to
disclose several limitations of claim 1. PO Resp. 45–48. We address each
argument in turn.
a. Disputed Limitations
1) Cosmetic Media
Petitioner contends that Carsberg discloses the “cosmetic media”
limitation of claim 1, which is found in the preamble and body of claim 1.
See Pet. 26, 30. Petitioner argues that Carsberg discloses “a ‘powder
blower’ having a container holding the powder and a ‘head-piece [that] is
detachably secured to the powder container, for example by means of
screwthreads, thereby providing a convenient means for refilling the powder
container.’” Id. at 26 (citing Ex. 1003 ¶ 102; Ex. 1008, 1:29–35). Patent
Owner argues that “Carsberg does not disclose, let alone enable, the
dispensing of fibers, including hair fibers.” PO Resp. 45 (citing PO Resp.
13–18; Ex. 2017 ¶ 149). Patent Owner also contends that “[a]lthough
Carsberg discloses dispensing powders, Carsberg does not enable dispensing
powders.” Id. (citing PO Resp. 13–18; Ex. 2017 ¶¶ 111, 149). Patent
Owner’s non-enablement argument centers on Carsberg’s use of dispensing
tube 19 as both an intake and dispensing tube. Id. at 17 (citing Ex. 2017
¶ 111). According to Patent Owner, “[s]uch a design is unlikely to work”
and “is largely inoperable.” Id. Petitioner responds that Carsberg is
presumed to be operable and Patent Owner’s speculation to the contrary
does not rebut this presumption. Pet. Reply 5–6 (citing MPEP §§ 716.07,
IPR2020-00168
Patent 7,841,494 B2

19
2121; Ex. 1003 ¶¶ 79–84; Ex. 1017,10 122:24–123:5). In its Sur-reply,
Patent Owner maintains that if Carsberg “works at all, it is, at most, for very
fine powders,” not “for hair fibers.” PO Sur-reply 13 (citing PO Resp. 14–
15, 45–46, 50–51). Patent Owner also recasts its non-enablement argument
as not based on enablement, but instead providing reasons why one would
not rely on Carsberg and would see little value in its teachings. Id. at 14.
We agree with Petitioner that Carsberg discloses the “cosmetic
media” limitation because it discloses a “powder blower” that dispenses
powder. See Pet. 26, Ex. 1003 ¶ 102; Ex. 1008, 1:29–35. As noted in the
claim construction section above, “cosmetic media” covers powder as well
as fibers but does not require that dispenser be capable of dispensing both—
i.e., our construction does not require a dispenser capable of dispensing
fibers if it is capable of dispensing powder. Patent Owner’s argument that
Carsberg only discloses dispensing fine powder and not hair fibers,
therefore, does not provide a basis to argue that Carsberg fails to disclose the
“cosmetic media” limitation, as disclosure of the powder alone suffices. See
PO Resp. 45. As to enablement of dispensing powder, we agree with
Petitioner that Carsberg is presumed to be operable and that Patent Owner
has not rebutted that presumption. Pet. Reply 5–6; Ex. 1003 ¶¶ 79–84. In
any event, Patent Owner did not squarely address and explain adequately
why Carsberg would not be operable and abandoned any non-enablement
argument in its Sur-reply. PO Resp. 17, 45; PO Sur-reply 14.

10 Petitioner cites to Exhibit 2017, but we view that citation as a
typographical error, as the relevant cited testimony can be found in Exhibit
1017, and Exhibit 2017 lacks the cited page and line numbers. See
Ex. 1017, 122:24–123:5.
IPR2020-00168
Patent 7,841,494 B2

20
2) Flared Out
Petitioner argues that Carsberg’s tube 14 includes a flared out top end.
Pet. 19–20 (citing Ex. 1003 ¶¶ 85–86; Ex. 1008, Fig. 2), 28 (citing Pet. 17–
20; Ex. 1003 ¶ 108; Ex. 1008, 1:77–80, Fig. 2). Petitioner’s enlarged and
annotated version of Carsberg’s Figure 2 is reproduced below (Pet. 19):

The annotated Figure 2 depicts short tube 14 with an upper end terminating
in cup 13, with a red circle added around the top end of tube 14 to indicate
the upper portion of tube 14 that Petitioner relies on for the “flared out”
limitation. See Pet. 19; Ex. 1008, 1:77–80, Fig. 2.
Patent Owner argues that Petitioner “inappropriately relies on a
magnified figure from Carsberg” and that the allegedly flared out portion
Petitioner identifies “is not flaring, but crosshatching to distinguish
elements.” PO Resp. 46 (citing PO Resp. 13–18; Ex. 2017 ¶ 151).
According to Patent Owner, “[t]he lines forming the right-hand side of the
alleged flare and the left-hand side belong to different elements—the head-
IPR2020-00168
Patent 7,841,494 B2

21
piece [12]/[13] (right side) and the air pump tube [14] (left side)—and, thus,
do not form a flare.” Id. at 15 (citing Ex. 2017 ¶ 100).
Petitioner counters by arguing that “Figure 2 shows that the ‘flared
out’ top is a different structure than element 12/13 because the diagonal
object line of the left side of the ‘flared out’ top end runs from top left to
bottom right whereas the crosshatching lines of part 12/13 run from bottom
left to top right as indicated below.” Pet. Reply 7. Petitioner also contends
that the termination of the lines defining the interior of tube 14 at a
horizontal object line below the top of tube 14 further supports its position
that the drawing depicts a flared out top end. Id. at 7–8 (citing Ex. 1017,
130:23–131:21; Ex. 2018, 142:12–144:13).
In its Sur-reply, Patent Owner argues that the horizontal line at the
bottom of the alleged flared out portion merely “provides a sense of a third
dimension.” PO Sur-reply 15. According to Patent Owner, “it indicates that
the air tube has depth, into/out off the page, as well as height and width. It
has nothing to do with a flare.” Id.
We agree with Petitioner that Carsberg discloses a “flared out” top
end of tube 14. See Pet. 19–20, 28; Ex. 1003 ¶¶ 85–86, 108; Ex. 1008,
Fig. 2. Figure 2 alone adequately supports Petitioner’s position, as it depicts
the angular sides of the flare outward toward the top of Carsberg’s bulb 15,
consistent with Patent Owner’s construction requiring “widening” from the
bottom toward the deformable bulb. Ex. 1008, Fig. 2.11 The flared out sides

11 Although we do not construe “flared out” to require any “anti-clogging”
function, we find credible Mr. Jones’s testimony that “[a] POSITA at the
time of filing the ’494 patent would have reviewed Figure 2 of Carsberg and
immediately recognized that the top end of tube 14 functions to prevent
IPR2020-00168
Patent 7,841,494 B2

22
define a bottom and top of a frusto-conical area at the top end of tube 14,
with the bottom and top depicted with horizontal lines in Carsberg’s
Figure 2. See id.
Patent Owner’s contrary interpretation of Carsberg’s Figure 2 lacks
support. As an initial matter, Patent Owner’s complaint that Petitioner
“inappropriately” relies on a magnified version of Figure 2 does not
establish that any aspect of the magnified version of Figure 2 fails to
accurately depict Carsberg’s disclosure, and we see nothing improper with
Petitioner’s use of an enlarged view of the relevant areas of a figure to aid
our analysis. See PO Resp. 46. As to Patent Owner’s argument that the
diagonal sides of the flared out portion depict portions of other adjacent
structures, we disagree. The sides of the flared out portion run roughly
perpendicular to the cross-hatched lines defining element 12/13 or tube 14
and do not mimic the spacing of the cross-hatched lines depicting the other
elements. See Ex. 1008, Fig. 2; Pet. Reply 7. This strongly suggests that the
diagonal lines defining the flared out end do not correspond to cross-
hatching within the cross section of either element 12/13 or tube 14. See id.
As to the argument that the single line defining the bottom of the flared out
portion merely shows a third dimension, we also disagree. Figure 2 depicts
three dimensional shading in a different context on the far left of the hollow
portion of item 13, but uses five lines of varying length to do so,
undermining any suggestion that a single, short horizontal line at the bottom
of the flared out portion merely indicates a three dimensional shape. See Ex.
1008, Fig. 2; Pet. Reply 8; PO Sur-reply 15 (“[T]he five lines toward the left

accumulation of the media and clogging, and redirect media back down into
the container.” Ex. 1003 ¶ 86.
IPR2020-00168
Patent 7,841,494 B2

23
of the inside of the dome, provides a sense of a third dimension”).
Petitioner’s position that the horizontal line denotes the bottom of the flared
out portion and the top of the inner portion of tube 14, given that the vertical
lines defining the inside of tube 14 terminate at the horizontal line, is far
more consistent with Figure 2 than Patent Owner’s position. See Ex. 1008,
Fig. 2; Pet. Reply 7–8.12
b. Undisputed Limitations
Petitioner asserts that the combination of Carsberg, Kross, and Kress
discloses all of the remaining limitations of claim 1–4 and 6 and provides a
limitation-by-limitation analysis supported by citations to the references and
supporting testimony from Mr. Jones. See Pet. 26–33. For example,
Petitioner argues that, to the extent the preamble limits the claim, Carsberg’s
powder blower having container 11 for holding the powder discloses the
contents of the preamble. Pet. 26 (citing Ex. 1003 ¶ 102; Ex. 1008,
1:29–35). Petitioner also argues that Carsberg discloses the claimed
“closure” and “deformable dome” in the form of collar 12 having cup 13 on
a top side of collar 12, to which a bulb 15 (i.e., the claimed “deformable
dome”) is secured. Pet. 26–27 (citing Ex. 1003 ¶¶ 103–105; Ex. 1008,
1:81–82, 2:38–39, Figs. 1, 2). Petitioner also contends that Carsberg
discloses the claimed “air pump tube” meeting the requirements of claim 1.

12 Patent Owner addresses several other limitations in claims 1–3 in its
Response, but does not allege that Petitioner’s proposed combination, once
made, fails to disclose those limitations. See PO Resp. 46–49 (addressing
“air intake tube” of claim 1 and “one-way” air intake valve of claims 2 and
3). Instead, Patent Owner’s arguments amount to alleged reasons why one
of skill in the art would not seek to make the proposed combination or
related modifications. See id. We address motivation to combine issues
below.
IPR2020-00168
Patent 7,841,494 B2

24
Pet. 27–28 (citing Ex. 1003 ¶¶ 106–107; Ex. 1008, 1:77–80, 2:22–28). As to
various aspects of the “air intake tube,” Petitioner argues that Kross’s air
inlet duct 16 discloses the claimed “air intake tube.” Pet. 28–29 (citing
Ex. 1002, 33; Ex. 1003 ¶¶ 112–113; Ex. 1005, 1 at 2:50–54, Fig. 4). As to
the claimed “outlet chamber” and “receptacle chamber,” Petitioner argues
that Carsberg’s outlet nozzle 19 discloses the claimed outlet chamber for
dispensing cosmetic media, and that Kress’s orifice 44 on nexus 32 disclose
the claimed “receptacle chamber media opening being flush against the
bottom side of the top wall of the closure.” Pet. 30 (citing Ex. 1003 ¶¶ 119,
121–123; Ex. 1007, 4:24–26, 5:10–12, Fig. 5; Ex. 1008, 2:7–11, Fig. 2). As
to the final limitation of claim 1 requiring the ability to “be held in one
hand,” Petitioner argues that Carsberg discloses a device that can be held in
one hand while compressing and releasing its bulb 15. Pet. 31 (citing
Ex. 1003 ¶¶ 124–125; Ex. 1008, 2:18–21 (“[I]t can be picked and operated
with one hand.”). Petitioner sets forth further allegations as to the
limitations of claims 2–4 and 6. See id. at 31–33.
Patent Owner, with the exception of the limitations addressed in the
previous section and certain arguments that go to motivation to combine,
does not address Petitioner’s arguments and evidence on these points or
argue that the combination fails to disclose these limitations. See PO
Resp. 45–49. Based on our review of the record, we are persuaded by
Petitioner’s arguments and evidence that combination of Carsberg, Kross,
and Kress discloses all of these limitations of claims 1–4 and 6. See
Pet. 26–33.13

13 We need not set forth formal findings as to the undisputed assertions by
Petitioner that the references disclose these limitations of claims 1–4 and 6.
IPR2020-00168
Patent 7,841,494 B2

25
Based on the foregoing analysis of the disputed and undisputed
limitations, we find that Petitioner establishes by a preponderance of the
evidence that the combination of Carsberg, Kross, and Kress discloses all of
the limitations of claims 1–4 and 6.
c. Motivation to Combine References
1) The Parties’ Positions
Petitioner argues that Carsberg, Kross, and Kress are analogous art
because they all teach manually activated pump caps that employ
pressurized air to move a fluid. Pet. 25 (citing Ex. 1003 ¶ 101). Petitioner
proposes several modifications to Carsberg in the context of claim 1. First,
Petitioner proposes modifying Carsberg’s outlet nozzle 19 with Kross’s air
intake duct 16 in a manner that results in the disclosure of “air intake tube”
limitations in claim 1. Id. at 28–30. Petitioner argues that a POSITA would
recognize that Carsberg’s outlet nozzle 19 “also functions as an air inlet”
and that a POSITA would have been motivated to modify outlet nozzle 19 to
improve its ability to dispense, while also providing a separate air intake as
in Kross “to enable the pump cap to quickly reset the pump cap for multiple
uses in quick succession.” Id. at 29–30 (citing Ex. 1003 ¶¶ 114–115).
Second, as to the combination of Carsberg and Kress, Petitioner argues that
a “POSITA would have recognized that agitated media could more easily

See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“Although the
Board did not make findings as to whether any of the other claim limitations
(such as fusion apertures or anti-migration teeth) are disclosed in the prior
art, it did not have to: NuVasive did not present arguments about those
limitations to the Board. . . . The Board, having found the only disputed
limitations together in one reference, was not required to address undisputed
matters.”); Paper 12, 8 (emphasizing that “any arguments for patentability
not raised in the response may be deemed waived”).
IPR2020-00168
Patent 7,841,494 B2

26
have been directed out of the container through an orifice at the bottom side
of the top wall of the closure, and as a result would have been motivated to
combine the teachings of Carsberg and Kress.” Id. at 30–31 (citing Ex. 1003
¶ 123). As to claim 2, which claims a “one-way” valve in the air pump tube,
Petitioner contends that a POSITA would have been motivated to add the
one-way valve of Kross to the combination because “a POSITA at the time
of the alleged invention would have sought to prevent the media in the
receptacle from entering the dome chamber to prevent clogging within the
dome chamber, and would have known found it obvious, as a matter of
routine design, to include a one-way valve such as the valve described by
Kross in the air pump tube.” Id. at 31–32 (citing Ex. 1003 ¶¶ 126–129). As
to claim 3, which claims a “one-way valve” in the first air intake chamber,
Petitioner contends that Kross discloses valve 13 in its air inlet duct 16 to
hinder air flow outside of the receptacle. Id. at 32 (citing Ex. 1003
¶¶ 130–131).
Patent Owner raises several arguments that relate to motivation to
combine. First, Patent Owner argues that Petitioner and Mr. Jones used
impermissible hindsight in their analysis. PO Resp. 34–40. Second, Patent
Owner argues that Petitioner “failed to provide a non-hindsight motivation
for modifying the deficient art to include a flared air pump tube.” Id. at 40.
Patent Owner contends that Mr. Jones conceded at his deposition that adding
a flared end lacked predictability and a reasonable expectation of success.
Id. at 41–42. Patent Owner also contends that the reasons provided by Mr.
Jones to support the combination, including prevention of clogging,
minimizing air turbulence, and improving repeatable manufacture, all lack
support. Id. at 42 (citing Ex. 1003 ¶¶ 86, 98–100). As to anti-clogging,
IPR2020-00168
Patent 7,841,494 B2

27
Patent Owner argues that Mr. Jones’s deposition testimony shows
skepticism that clogging would be a problem and that Carsberg would not
serve an anti-clogging function. Id. at 42–43. As to reducing turbulence,
Patent Owner argues that a POSITA “would neither expect that flaring the
air pump tube would reduce turbulence nor desire such an effect.” Id. at 43
(citing Ex. 2017 ¶¶ 47–48, 108). As to improved manufacturability, Patent
Owner argues that it improperly assumes the claimed device would be made
by injection molding, and would not apply to straight edges and corners as in
Carsberg. Id. at 43–44 (citing Ex. 2017 ¶ 107).
Patent Owner further addresses the addition of Kress’s air intake tube
to Carsberg, and contends that Petitioner fails to support the proposed
modification because the modification does not acknowledge that Carsberg’s
outlet is below the top wall, and the resulting structure would fail to more
easily direct media out of the container when compared to Carsberg’s
existing outlet tube. Id. at 48 (citing Ex. 1003 ¶ 123; Ex. 2017 ¶ 156). As to
claim 3, Patent Owner argues that “two modifications to Carsberg are
necessary: adding the air-intake chamber [limitations] of claim [1] and then
adding the valve of claim 3.” Id. at 49 (citing Ex. 2017 ¶ 158). Patent
Owner asserts that Mr. Jones “contends that the first of these changes could
render a device inoperable, begging the question of why a POSA would do
it.” Id.
In its Reply, Petitioner addresses the three potential motivations for
adding the flared end to the tube. As to anti-clogging, Petitioner argues that
Mr. Jones did not contradict his declaration by merely stating that “to
determine whether a pump dispenser with a ‘flared out’ top end of the air
pump tube would prevent clogging, one would first need to know whether
IPR2020-00168
Patent 7,841,494 B2

28
the materials to be dispensed actually clog.” Pet. Reply 8–9 (citing Ex. 1003
¶¶ 86, 109, 175, 225; Ex. 2018, 96:7–18; 99:11–21). Petitioner also
contends that Mr. Jones testified that Carsberg must prevent clogging if the
similar flared out end in the ’494 patent prevents clogging. Id. at 9 (citing
Ex. 2018, 184:13–18). As to repeatable manufacture, Petitioner argues that
Carsberg’s flared out end provides the benefit of more repeatable
manufacture because it avoids “square” sharp edges, regardless of whether
the edges are also rounded. Id. at 9–10 (citing PO Resp. 16; Ex. 1003
¶¶ 98–100; Ex. 1012; Ex. 2018, 92:25–93:7). As to minimizing turbulence,
Petitioner argues that Mr. Jones properly focuses on reducing turbulence in
the dome chamber as air travels in and out of the chamber near the entrance
of tube 14, not turbulence downstream within the tube. Id. at 10 (citing PO
Resp. 17; Ex. 1003 ¶¶ 109, 175, 225, 272; Ex. 1017, 160:17–23), 10 n.3
(citing Ex. 1018, 5–6). Petitioner adds that the benefit of increased
turbulence and velocity downstream in the air pump tube, cited by
Dr. Hullender, was well known and “yet another reason why a POSITA
would have been motivated to combine the ‘flared out’ top end of Carsberg.”
Id. at 11 (citing Ex. 1017, 161:15–162:3).
Petitioner also argues, when addressing Patent Owner’s arguments
beyond the “flared out” limitation, that the arguments improperly fail to
acknowledge Petitioner’s specific rationales, which are consistent with the
Examiner’s combinations during prosecution, and improperly focus on the
references individually. Pet. Reply 11. As to the addition of Kress’s air
intake tube, Petitioner argues that Patent Owner fails to address Dr. Jones’s
testimony that the modification involves a simple rearrangement of known
elements with predictable results, and the limited number of choices
IPR2020-00168
Patent 7,841,494 B2

29
available to place the outlet and media opening. Id. at 13–14 (citing
Ex. 1001, Fig. 1; Ex. 1003 ¶¶ 120–121; Ex. 1017, 39:25–40:7). As to
claims 2 and 3 and the one-way valves, Petitioner argues that Mr. Jones
repeatedly explained the need for valves in the air pump tube and first intake
chamber, and that he agreed with the Examiner that placement of the valve
was a matter of design choice. Id. at 14 (citing Ex. 1002, 34; Ex. 1003
¶¶ 114, 126–127, 130; Ex. 1017, 38:13–17).
In its Sur-reply, Patent Owner argues that as to anti-clogging,
Petitioner relies on testimony that reveals it is hindsight because it refers to
the ability of the flared out end in the ’494 patent to prevent clogging. PO
Sur-reply 15–16 (citing Pet. Reply 9; PO Resp. 28–30; Ex. 1017,
168:10–14). As to ease of manufacture, Patent Owner alleges that Carsberg
discloses a square flare with undesirable sharp edges. Id. at 16 (citing PO
Resp. 24–25; Ex. 2017 ¶ 107). As to minimizing turbulence, Patent Owner
alleges that a flared entrance to a tube increases turbulence and that “it
makes no sense to discuss turbulence within the dome chamber.” Id. at 16–
17. Patent Owner also alleges that for other claim limitations, Petitioner
improperly relies on design choice arguments, including its argument that
Kross’s tube length could be altered to dispense solid cosmetic media rather
than liquid. Id. at 18–19.
2) Discussion
As an initial matter, we note that Patent Owner does not raise any
non-analogous art arguments in the context of this challenge, and all of the
references teach manually activated pump caps that employ pressurized air
to move a fluid. Pet. 25; Ex. 1003 ¶ 101. In addition, as noted above, we
find that the combination of prior art discloses all of the limitations of claims
IPR2020-00168
Patent 7,841,494 B2

30
1–4 and 6, including Carsberg’s disclosure of the flared out tube end, the
only limitation the Examiner found missing from the prior art during
prosecution. Petitioner does not contend that a limitation missing from the
combination would nonetheless be obvious due to design choice or some
other rationale, and does not limit its motivation to combine arguments
solely to a mere “design choice” as Patent Owner suggests. See Pet. 28–32;
Pet. Reply 8–16.
Turning to the parties’ arguments, we first address Petitioner’s
rationales for adding the teachings of Kross and Kress to Carsberg. We are
persuaded by Petitioner’s argument and evidence that a POSITA would have
been motivated to modify Carsberg by incorporating Kross’s separate air
intake tube that includes a first intake chamber as required by claim 1, in
order “to enable the pump cap to quickly reset the pump cap for multiple
uses in quick succession.” Pet. 29–30; Ex. 1003 ¶¶ 114–115. Patent Owner
argues that it would make no sense to increase the complexity of Carsberg
when Mr. Jones generally praised Carsberg outlet nozzle 19 that also
functions as an air intake, but that argument does not address directly
Petitioner’s proposed rationale for the combination and the possibility that
such advantages outweigh any alleged complexity. See PO Resp. 46–47.
Similarly, Patent Owner argues that Petitioner’s proposed modification of
Carsberg requires the addition of a one-way air intake valve to enable
operation of the device, which again does not directly address Petitioner’s
proposed reasons for the combination. Id. at 47. Patent Owner also
improperly assumes that Petitioner’s proposed modification of Carsberg
cannot require any further modifications such as the addition of a valve, no
matter how routine, without providing any support for that position. See id.
IPR2020-00168
Patent 7,841,494 B2

31
We find Petitioner’s stated advantage for the addition of a separate air intake
tube to be persuasive.14
We are also persuaded by Petitioner’s argument and evidence that a
POSITA would have been motivated to modify Carsberg by adding Kress’s
teaching of an orifice to the underside of the top wall closure, which would
allow agitated media to more easily be directed out of the container.
Pet. 30–31; Ex. 1003 ¶¶ 120–121, 123; see also Ex. 1003 ¶ 122 (quoting
Ex. 1002, 35 (during prosecution, Examiner found that adding Kress’s exit
passage flus on the bottom of its closure body would have been obvious in
part because of its ability to dispense fine particles)). Petitioner persuasively
argues, with credible support from Mr. Jones, that “implementing an
opening on the bottom side of the closure flush against the bottom side of
the top wall of the closure would have only involved a simple rearrangement
well-known elements in the prior art to achieve predictable results.” Pet.
Reply 13–14; Ex. 1003 ¶¶ 120–121. Patent Owner argues that Carsberg’s
outlet is below the top wall, but fails to persuasively rebut Petitioner’s
position that moving the location of an outlet would merely involve a simple

14 In its overview of the prior art, Patent Owner makes more general
arguments that liquid dispensers such as Kross with long discharge tubes
would not work with cosmetic media. See PO Resp. 6–8. Patent Owner
does not repeat those arguments in the context of this challenge, except to
argue that Kross relates to dispensing liquid and a POSITA “would not have
been able to take Kress’s disclosure of dispensing ha[ir] fibers and simply
used Carsberg or Kross for that purpose.” Id. at 45–46. Patent Owner
premises this argument on adding Kress’s hair fibers to Carsberg or Kross,
which Petitioner does not allege; Petitioner relies on Carsberg’s powder as
the “cosmetic media” and alleges that certain teachings of Kross and Kress
are used to modify Carsberg. See Pet. 26–32. In addition, Petitioner does
not propose modifying Kross’s liquid dispenser to handle solid cosmetic
media, as Patent Owner suggests. See PO Sur-reply 18–19.
IPR2020-00168
Patent 7,841,494 B2

32
rearrangement of parts. PO Resp. 48 (citing Ex. 1003 ¶ 123; Ex. 2017
¶ 156). Patent Owner also argues that some of Petitioner’s arguments lack
adequate support from Mr. Jones, but on the whole, based on all of the
arguments and evidence of record, we are persuaded that it would have been
obvious to modify Carsberg by adding Kress’s teaching of an orifice to the
underside of the top wall closure. See id.; Pet. 30–31; Ex. 1002, 35;
Ex. 1003 ¶¶ 120–123; Pet. Reply 13–14.
As to claims 2 and 3, we find that Petitioner establishes sufficiently
that a POSITA would have been motivated to add the claimed one-way
valve of Kross to Carsberg’s air pump tube (claim 2) and air intake chamber
(claim 3) to prevent the media in the receptacle from entering the dome
chamber to prevent clogging within the dome chamber and to prevent air
from leaving the dome chamber. Pet. 31–32; Ex. 1003 ¶¶ 126–131.
Although Patent Owner argues that two modifications are necessary to
Carsberg to meet the limitations of claim 3 and implementing only one of
them may render Carsberg inoperable, Patent Owner does not address
directly Petitioner’s stated basis for the proposed combination. PO Resp.
48–49. Moreover, the evidence Patent Owner cites for its inoperability
argument does not state that making both alterations necessary to meet
claim 3 would result in an inoperable device. See id. at 47 (citing Ex. 1003
¶ 130), 49 (citing PO Resp. 46–47); Ex. 1003 ¶ 130.
The parties also dispute whether it would have been obvious to add
Carsberg’s flared out tube to the other art of record, and devote substantial
briefing to the issue, but we do not view this issue as determinative of the
obviousness issues here. See PO Resp. 40–44; Pet. Reply 8–11; PO Sur-
reply 15–18. Petitioner relies on Carsberg as disclosing the vast majority of
IPR2020-00168
Patent 7,841,494 B2

33
the limitations in these challenged claims, including the “cosmetic media”
and “flared out” limitations, and only relies on Kross or Kress for certain
limitations, based on specific motivations to modify Carsberg. See
Pet. 26–33. After the proposed modifications of Carsberg are made, the
resulting device includes all of the limitations of the challenged claims. See
id. Patent Owner seems to assume that Petitioner must not only support the
modification of Carsberg based on the teachings of Kross and Kress, but also
must support the modification of Kross and Kress by adding the “flared out”
tube of Carsberg. See PO Resp. 40 (arguing that Petitioner “failed to
provide a non-hindsight motivation for modifying the deficient art to include
a flared air pump tube”); PO Sur-reply 15 (arguing that Petitioner “failed to
show a POSA would have had any non-hindsight motivation to include such
a tube in a cosmetic-media pump dispenser”). Patent Owner provides no
support for such a position.15
We find that Petitioner has proven by a preponderance of the evidence
that one of ordinary skill in the art would have been motivated to combine

15 Although we need not reach the issue, at least as to the anti-clogging
rationale Petitioner presents credible testimony of Mr. Jones that a “POSITA
at the time of filing the ’494 patent would have reviewed Figure 2 of
Carsberg and immediately recognized that the top end of tube 14 functions
to prevent accumulation of the media and clogging, and redirect media back
down into the container.” Ex. 1003 ¶ 86. Patent Owner argues that this
rationale must have been the product of hindsight and gleaned from a
comment in the prosecution history, but Mr. Jones makes no reference to the
prosecution history, and the concept of adding a flared out end to a tube to
produce a widened diameter and thereby help “prevent accumulation of the
media and clogging” appears so straightforward that it would be
immediately recognizable to a POSITA without resort to the prosecution
history. See id.; PO Resp. 43.
IPR2020-00168
Patent 7,841,494 B2

34
Carsberg, Kross, and Kress in the manner Petitioner proposes for the reasons
provided by Petitioner.
d. Objective Indicia of Nonobviousness
1) The Parties’ Positions
Patent Owner argues that objective indicia illustrate the
nonobviousness of the challenged claims, including long-felt need, failure of
others, copying, praise by others, unexpected results, and commercial
success. PO Resp. 56–59. Patent Owner argues that its “legacy and
commercial hair-fiber pump applicators are commercial embodiments of at
least claims 1–6 of the ’494 patent.” Id. at 57 (citing Ex. 2017 ¶¶ 181–215).
Patent Owner also argues that “[a] nexus between the patent and objective
indicia exists because the ’494 patent made possible Top Secret’s
convenient, one-handed pump dispensers for hair fibers.” Id. Patent Owner
further contends that its “pump dispensers are ‘essentially the claimed
invention,’ i.e., the claimed pump dispensers, resulting in a presumption of
nexus [Petitioner] has not rebutted.” PO Sur-reply 24 (citing Fox Factory,
Inc. v. SRAM, LLC, 944 F.3d 1366, 1373-74 (Fed. Cir. 2019)).
As to long-felt need, Patent Owner points to the long-running concern
of baldness and the need for a one-handed hair fiber dispenser, and claims
that its legacy product “was the first one-handed pump applicator for hair
fibers.” PO Resp. 57 (citing Ex. 2017 ¶¶ 216–219). As to failure of others,
Patent Owner argues that Kress taught an inconvenient two-handed device.
Id. (citing Ex. 2017 ¶ 219). As to copying, Patent Owner alleges that Kress
was forced to copy Patent Owner’s product, and eventually sold his
company to Petitioner, and another rival “sold a copycat product” and was
sued for infringement. Id. at 57–58 (citing Ex. 2004 ¶¶ 7–11; Ex. 2017
IPR2020-00168
Patent 7,841,494 B2

35
¶ 219). As to praise by others, Patent Owner argues that a rival company
executive said that he “liked” Patent Owner’s product and allegedly “rave
reviews” were left by customers on Amazon. Id. at 58 (citing Ex. 2003;
Ex. 2004 ¶ 6; Ex. 2030 ¶ 6). Patent Owner’s allegations of unexpected
results center on a POSITA’s doubt “that a compact one-handed applicator
would be sufficiently powerful and capable of effectively suspending and
forcing hair fibers from an attached container” and Mr. Jones’s alleged
doubt that a flared air pump tube would serve any benefit. Id. (citing
Ex. 2017 ¶¶ 220–221). As to commercial success, Patent Owner alleges that
it competes against larger companies such as Petitioner yet grossed over
$200,000 in 2016, over $150,000 in 2017, and over $90,000 in 2018 from
Amazon, and over $95,000 from March 2019 to March 2020 from Bed Bath
& Beyond/Harmon Beauty. Id. at 59 (citing Ex. 2030 ¶ 11; Ex. 2029).
Petitioner argues, as to the nexus issue, that Patent Owner’s
commercial embodiments “do not provide any nexus (in addition to not
providing any evidence of secondary considerations of nonobviousness)
because they are not coextensive with the ’494 Patent claims.” Pet.
Reply 27. Petitioner contends that Patent Owner improperly “conflates sales
and consumer reviews of the claimed dispenser with the unpatented hair
fibers that the dispenser is supposed to dispense.” Id.
As to long-felt need, Petitioner argues that Patent Owner fails to
provide any surveys, market research, or other evidence to support its
claims, and its own commercial product can be used without the need for a
pump dispenser. Pet. Reply 23 (citing Ex. 2025, 1). As to failure of others,
Petitioner argues that Patent Owner provides no evidence that Kress or
anyone else failed to design a pump dispenser, much less a dispenser falling
IPR2020-00168
Patent 7,841,494 B2

36
within the scope of the challenged claims. Id. at 24. As to the statement that
a rival executive “liked” Patent Owner’s product and its “copycat” product
was the basis for an infringement action, Petitioner contends that the cited
evidence from a rival executive is inadmissible and the suit against that
company was dismissed due to Patent Owner’s failure to prosecute. Id. As
to the allegedly positive Amazon reviews, Petitioner argues that Patent
Owner selectively compiled the reviews, some of which pertain to the hair
fibers rather than the dispenser, and many of the dispenser reviews are
negative. Id. at 24–25. As to unexpected results, Petitioner contends that
Patent Owner’s argument lacks support and that “the prior art dispensers of
Carsberg (one-handed pump for powders) and Kress (hair fibers) each
effectively suspend and force solids from an attached container.” Id. at 25.
Petitioner also argues that Mr. Jones explained the benefits of a flared out
tube end rather than expressed skepticism about its benefits. Id. As to
commercial success, Petitioner argues that Patent Owner sells its pump
dispensers with unpatented hair fibers, and that even then the sales are
insignificant. Id. at 26 (citing Ex. 2035 ¶¶ 6–7). Petitioner also argues that
Patent Owner’s sales data fails to “provide detail about the products sold nor
any information which ties the sales to the Top Secret pump dispenser, as
opposed to non-patented products (e.g., hair fibers).” Id. at 26 (citing
Ex. 2035; Ex. 2029; MPEP §716.03(a)).
2) Discussion
We first address the nexus between the claimed invention and Patent
Owner’s objective indicia of nonobviousness and then the strength of Patent
Owner’s objective indicia evidence.
IPR2020-00168
Patent 7,841,494 B2

37
Patent Owner bears the burden of establishing a nexus. See Fox
Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019). “[A]
patentee is entitled to a rebuttable presumption of nexus between the
asserted evidence of secondary considerations and a patent claim if the
patentee shows that the asserted evidence is tied to a specific product and
that the product ‘is the invention disclosed and claimed.’” Id. (quoting
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988)).
Patent Owner fails to meet its burden of establishing a nexus. In its
Response, Patent Owner argues, and Petitioner does not dispute, that at least
claims 1–6 cover Patent Owner’s pump dispensers. PO Resp. 57. Merely
establishing that the claims cover its products, however, does not entitle
Patent Owner to a presumption of nexus. See Fox Factory, 944 F.3d at 1373
(noting that Federal Circuit has “reaffirmed the importance of the
‘coextensiveness’ requirement”); see also id. at 1377 (“We reject [Patent
Owner’s] attempt to reduce the coextensiveness requirement to an inquiry
into whether the patent claims broadly cover the product that is the subject
of the evidence of secondary considerations.”). Petitioner points this out in
its Reply by arguing that Patent Owner’s products are not coextensive with
the claims, and argues that Patent Owner’s sales and customer reviews
include evidence directed to Patent Owner’s kits that included unpatented
hair fibers. Pet. Reply 27. While Patent Owner did include a sentence in its
Sur-reply going to the coextensiveness issue (the “pump dispensers are
‘essentially the claimed invention’”), Patent Owner did not elaborate on why
the claims were coextensive with the products or address Petitioner’s point
that at least some of Patent Owner’s evidence relates to kits that include
IPR2020-00168
Patent 7,841,494 B2

38
unpatented components, which undermines Patent Owner’s nexus argument.
PO Sur-reply 24.16
Based on our review of the record, Patent Owner has not established
that its kits, within which its pump dispensers are sold, are coextensive with
the claimed inventions, and Patent Owner has not provided sufficient
analysis for us to determine the extent to which the remaining evidence
pertains to the kits or the pump dispensers alone. PO Sur-reply 24; see also
Ex. 2025, 1 (showing potentially unpatented version of Patent Owner’s
products that includes a “Sifter Top”). Due to the presence of unpatented
components within the kits, and the lack of adequate argument and evidence
on this issue from Patent Owner, we find that Patent Owner has not
established a presumption of nexus or a nexus absent any presumption.
For the sake of completeness, we briefly address Patent Owner’s
allegations relating to objective indicia based on the assumption that Patent
Owner established a nexus. Overall, we find Patent Owner’s objective
evidence relatively weak.
Long-Felt Need. Patent Owner contends that the prevalence of one-
handed dispensers for other unrelated items demonstrates a long-felt need
for a one-handed hair fiber dispenser. PO Resp. 57 (citing Ex. 2017 ¶ 218).
Patent Owner only submits the unsupported opinion of Dr. Hullender to
support its contention, without any third party data or evidence suggesting
such a need. See id.; Ex. 2017 ¶ 218. We find the evidence of long-felt but
unresolved need weak.

16 Because Patent Owner first addresses the coextensiveness issue in its Sur-
reply, Petitioner has not had the opportunity to address or rebut Patent
Owner’s assertion.
IPR2020-00168
Patent 7,841,494 B2

39
Failure of Others and Copying. Patent Owner presents no evidence
that any person or company attempted but failed to design or fabricate a
device meeting the limitations of any of the challenged claims, or copied
Patent Owner’s commercial products. See PO Resp. 57–58 (failing to cite
any support for allegation of copying by Kress or a rival executive). Patent
Owner has not presented any credible evidence of failure of others or
copying.
Praise by Others. Patent Owner raises two instances of alleged praise
by others. First, Patent Owner relies on a witness who claims that a rival
executive told the witness “that he found a hair applicator he ‘liked.’”
Ex. 2004 ¶ 6; PO Resp. 58. This statement does not identify which “hair
applicator” was at issue, and does not establish that the product in question
was Patent Owner’s product, much less a version of the product coextensive
with the challenged claims. See id. Second, Patent Owner argues that
positive Amazon reviews amount to praise by others. PO Resp. 58 (citing
Ex. 2003; Ex. 2030 ¶ 6). Patent Owner’s single sentence of argument on
this point is not adequately supported and developed to be given any weight,
as it does not describe the nature of any of the reviews, whether the reviews
were sorted to provide only positive reviews, and most importantly, whether
any of the reviews pertain to the pump dispenser alone rather than
unpatented products within Patent Owner’s kit, such as the hair fibers
themselves. See id. We find, therefore, that Patent Owner has not presented
any credible evidence of praise by others.
Unexpected Results. Patent Owner relies solely on Dr. Hullender’s
testimony to support its allegation that the power of its one-handed
applicator was unexpected. PO Resp. 58 (citing Ex. 2017 ¶ 220). That
IPR2020-00168
Patent 7,841,494 B2

40
testimony does not cite to any objective evidence or data suggesting that the
claimed one-handed applicator produces more or less power than a two-
handed applicator, and does not address whether Carsberg’s one-handed
applicator for cosmetic media already produced the allegedly unexpected
results prior to the claimed invention. See Ex. 2017 ¶ 220. Under these
circumstances, we view the evidence of unexpected results as relatively
weak.
Commercial Success. Patent Owner presents very modest sales as
evidence of commercial success. PO Resp. 59. Over a period of four years,
gross sales were over $535,000, with gross profits a fraction of that number.
Id.; Ex. 2029, 13–14. In addition, these sales appear to be for kits, not the
patented pump dispenser alone, and therefore include sales related to
unpatented hair fibers. See Pet. Reply 24. On balance, we view the
evidence of commercial success as relatively weak.
Based on the foregoing, we find that Patent Owner fails to establish a
nexus and therefore fails to establish that the objective indicia support a
finding of nonobviousness. Even if Patent Owner were to establish a nexus,
the objective evidence presented by Patent Owner is relatively weak.
4. Conclusion as to Claims 1–4 and 6
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361
(Fed. Cir. 2017). Above, based on the full record before us, we provide our
factual findings regarding (1) the level of ordinary skill in the art, (2) the
IPR2020-00168
Patent 7,841,494 B2

41
scope and content of the prior art, (3) any differences between the claimed
subject matter and the prior art; and (4) objective indicia of nonobviousness.
In particular, we find that (1) Petitioner’s proposed level of ordinary
skill in the art is consistent with the art of record; (2) the combination of
Carsberg, Kross, and Kress discloses all the limitations of claims 1–4 and 6;
(3) one of ordinary skill in the art would have been motivated to combine
Carsberg, Kross, and Kress in the manner Petitioner proposes; and (4) Patent
Owner fails to establish a nexus, and even assuming a nexus, Patent Owner’s
objective evidence is relatively weak. Weighing these underlying factual
determinations, a preponderance of the evidence persuades us that
claims 1–4 and 6 of the ’494 patent are unpatentable as obvious over the
combination of Carsberg, Kross, and Kress.
E. Obviousness of Claims 5 and 7–11 Based on Carsberg, Kross, Kress,
and Lundblad
Petitioner challenges claims 5 and 7–11 under 35 U.S.C. § 103 based
on Carsberg, Kross, Kress, and Lundblad. Pet. 32–38. For these challenges,
Petitioner cites to the asserted references and the Jones Declaration. Id.
This challenge builds on the previous challenge based on Carsberg, Kross,
and Kress, and relies on Lundblad for certain limitations related to a
“flange” recited in claim 5 and a “media outlet chamber” recited in claim 7.
See id. at 26–38.
1. Overview of Lundblad
Lundblad discloses “a discharge closure for liquid containers.”
Ex. 1009, 1:9–10. Petitioner’s annotated version of Lundblad’s Figure 2 is
reproduced below (Ex. 1003 ¶ 157).
IPR2020-00168
Patent 7,841,494 B2

42

The annotated Figure 2 depicts bulb 14 attached to body member 5 via
flange 7. Ex. 1009, 1:91–95, Fig. 2. Lundblad’s tube-like extension 22
extends downward from body member 5 a short distance into the interior of
container A. Id. at 2:6–11. Air passage 23 extends through body member 5
and extension 22, providing communication between container A and air
chamber 16 above body member 5 and below bulb 14. Id. at 1:96–98,
2:11–15. The annotated Figure 2 labels the exit path of fluid from
chamber 13. Lundblad discloses liquid discharge passage 26 within body
member 5, with discharge passage 26 “communicating through a port 27
with the chamber 13 beneath” body member 5. Id. at 2:35–38. Fluid exiting
IPR2020-00168
Patent 7,841,494 B2

43
chamber 13 passes through port 27, then discharge passage 26, following by
passage 30 and discharge nozzle 29. Id. at 2:43–55.
2. Discussion
We address each of the challenged claims in turn.
a. Claim 5
Claim 5 depends from claim 1 and further requires “a flange
extending from and parallel to the top side of the closure; wherein said
deformable dome possesses a lip which fits under the flange, thereby sealing
the deformable dome to the closure.” Ex. 1001, 5:65–6:3. Petitioner argues
that Lundblad discloses “flange 7 extending from and parallel to the top side
of the closure 5 that fits with bulb 14 which has an inwardly projecting
annular flange 15 formed integral therewith.” Pet. 32–33 (citing Ex. 1003
¶¶ 134–138; Ex. 1009, 1:91–95). Patent Owner does not address or contest
Petitioner’s assertions as to claim 5, except to incorporate its arguments as to
claim 1. PO Resp. 49. Based on our review of the record, Petitioner
establishes sufficiently that the combination of Carsberg, Kross, Kress, and
Lundblad discloses all of the limitations of claim 5, and that a POSITA
would have been motivated to add Lundblad’s teachings to the combination.
See Pet. 32–33; Ex. 1003 ¶¶ 134–138; Ex. 1009, 1:91–95.
b. Claim 7
Independent claim 7 contains limitations that largely mirror the
limitations of claims 1–3, 5, and 6, and Petitioner incorporates its analysis of
those claims into its allegations as to claim 7. See Ex. 1001, 5:12–61,
6:6–8:3; Pet. 33–37; PO Resp. 49. Claim 7 also requires that the air pump
tube’s bottom end extend “only a small distance past the bottom side of the
top wall of the closure, such that air expelled from said air pump tube into
IPR2020-00168
Patent 7,841,494 B2

44
said receptacle chamber is directly incident on the cosmetic media in the
receptacle chamber.” Ex. 1001, 6:33–37. Petitioner argues that Lundblad
discloses “short tube 14” that extends into container 11 and meets this
limitation. Pet. 35 (quoting Ex. 1008, 1:77–80) (citing Ex. 1003 ¶ 150,
Pet. 32). Patent Owner does not address or contest Petitioner’s assertion that
the combination of Carsberg, Kross, Kress, and Lundblad discloses these
limitations, except to incorporate its arguments as to claim 1. PO
Resp. 49–50. Based on our review of the record, Petitioner establishes
sufficiently that the combination of Carsberg, Kross, Kress, and Lundblad
discloses all of these limitations of claim 7, and that a POSITA would have
been motivated to add Lundblad’s short tube 14 to the combination. See
Pet. 35; Ex. 1003 ¶ 150, Pet. 32; Ex. 1008, 1:77–80.
Claim 7 also includes limitations requiring a “media outlet chamber
comprising a first cylindrical chamber being substantially perpendicular to
said bottom side of said top wall of said closure,” “a second cylindrical
chamber substantially perpendicular to said first cylindrical chamber, and
communicating with said first cylindrical chamber,” and “a third cylindrical
chamber parallel to and communication with said second cylindrical
chamber.” Ex. 1001, 6:51–64. Petitioner argues that Lundblad’s liquid
discharge passage 26 corresponds to the claimed first cylindrical chamber,
passage 30 corresponds to the second cylindrical chamber and
communicates with discharge passage 26, and discharge nozzle 29
corresponds to the third cylindrical chamber. Pet. 36 (citing Ex. 1003
¶¶ 157–158; Ex. 1009, 2:35–47, Fig. 2). Patent Owner argues that “no
portion of Lundblad’s liquid discharge chamber 26 is ‘substantially
perpendicular’ to anything that might be considered to a top wall of a
IPR2020-00168
Patent 7,841,494 B2

45
closure,” and therefore Lundblad lacks the ‘first cylindrical chamber.’” PO
Resp. 50 (citing Ex. 2017 ¶ 162). Patent Owner also argues that Petitioner
“fails to explain how and why a POS[IT]A would modify Carsberg to
include Lundblad’s liquid discharge chamber.” Id. Petitioner replies that
Mr. Jones explained that a
POSITA would have known prior to the filing of the ’494 Patent
to use “passages of a given diameter . . . to control the dispersion
pattern of media as it is expelled” and would have been
motivated to combine the passages in the outlet of Lundblad to
accomplish this known benefit.
Pet. Reply 15 (citing Ex. 1003 ¶¶ 156–159). Patent Owner does not address
Petitioner’s reply argument in its Sur-reply. See PO Sur-reply 13–19.
We find that Petitioner establishes sufficiently that Lundblad discloses
the claimed “media outlet chamber” and related limitations, including a first
cylindrical chamber substantially perpendicular to the bottom side of a top
wall of the closure. Pet. 36; Ex. 1003 ¶¶ 156–159. As shown above in
Lundblad’s annotated Figure 2, at least one aspect of discharge passage 26
runs up from port 27 formed on the bottom side of body member 5.
Ex. 1008, Fig. 2. Another aspect of discharge opening 26 runs parallel to
passage 30. Id. Petitioner relies on the first aspect of discharge opening 26
(shown in purple in the annotated drawing above), as the first cylindrical
chamber. See Ex. 1003 ¶ 157. Patent Owner does not directly address the
evidence Petitioner relies on to disclose this limitation, does not argue that
the entire discharge opening 26 must meet the claim requirements rather
than the portion Petitioner relies upon, and mischaracterizes the limitation at
issue by arguing that “no portion of Lundblad’s liquid discharge chamber 26
is ‘substantially perpendicular’ to anything that might be considered to be a
top wall of a closure.” See PO Resp. 50 (citing Ex. 2017 ¶ 162). The
IPR2020-00168
Patent 7,841,494 B2

46
limitation requires discharge chamber 26 be substantially perpendicular to
the “bottom side” of the top wall of a closure, not the “top wall of a closure”
more generally. Ex. 1001, 6:53–56. We are persuaded that at least the
portion of discharge opening 26 that Petitioner relies upon is “substantially
perpendicular” to the bottom side of Lundblad’s body member 5. Ex. 1008,
Fig. 2; Ex. 1003 ¶¶ 156–159.
As to the motivation to combine issue, we find that Petitioner
establishes sufficiently that a POSITA would have been motivated to
combine Carsberg’s outlet passage with Lundblad’s teachings as to outlet
passages. Pet. Reply 15; Ex. 1003 ¶¶ 156–159. Petitioner argues
persuasively, with credible support from Mr. Jones that Patent Owner does
not directly address or dispute, that a “POSITA would have known prior to
the filing of the ’494 Patent to use ‘passages of a given diameter . . . to
control the dispersion pattern of media as it is expelled’ and would have
been motivated to combine the passages in the outlet of Lundblad to
accomplish this known benefit.” Pet. Reply 15 (citing Ex. 1003
¶¶ 156–159).
c. Claims 8 and 9
Claim 8 depends from claim 7, and further recites “said media is a
powder or fiber.” Ex. 1001, 7:4–5. Claim 9 depends from claim 8 and
further recites “said fiber is a hair increasing material.” Id. at 7:6–7. As to
claim 8, Petitioner argues that Carsberg discloses powder and Kress
discloses fibers, and either reference disclose the requirements of claim 8
because the claim requires powder or fiber. Pet. 37 (citing Ex. 1003 ¶ 162;
Ex. 1008, 1:29–35, 2:34–36). As to claim 9, Petitioner contends that Kress
discloses “hair increasing fiber material.” Id. (citing Ex. 1003 ¶ 164;
IPR2020-00168
Patent 7,841,494 B2

47
Ex. 1007, code (54)). Patent Owner argues that “Carsberg, at most, is
enabled for fine powder (not fibers), and the Kress patent teaches dispensing
hair fibers with a very different, inconvenient two-handed device.” PO
Resp. 50 (citing Ex. 2017 ¶ 163).
We find that Petitioner establishes sufficiently that Carsberg teaches
the limitations of claims 8 and 9. As Petitioner correctly notes, claim 8
requires cosmetic media that is a powder or fiber, and Carsberg discloses
cosmetic media in the form of a powder. Pet. 37; Ex. 1003 ¶ 162; Ex. 1008,
1:29–35, 2:34–36. Claim 9 alters the scope of the “fiber” of claim 8 by
requiring a fiber that is a “hair increasing material,” but claim 9 does not
expressly limit the cosmetic media to that material, and therefore claim 9
appears to cover cosmetic media that is powder or hair increasing material.
Ex. 1001, 7:6–7. Accordingly, Carsberg’s powder still meets the limitations
of claim 9. Even if claim 9 were to require hair increasing material, Kress
discloses that material, and Patent Owner’s argument as to two-handed use
does not address that point or explain why hair increasing fiber would not
work in Carsberg’s one-handed cosmetic media dispenser. See PO Resp. 50.
d. Claims 10 and 11
Claims 10–11 depend from claim 8 and recite “a discharge”
(claim 10) and a “medial outlet opening” (claim 11) that can accurately
direct material. Ex. 1001, 8:1–6. Petitioner argues that Carsberg discloses
the limitations of claims 10 and 11. Pet. 37–38 (citing Ex. 1003 ¶¶ 165–168;
Ex. 1008, 1:23–30, 1:60–65). Patent Owner does not contest Petitioner’s
arguments and evidence as to claims 10 and 11 other than to argue that its
arguments as to claim 8 apply to claims 10 and 11. PO Resp. 51. We find
that Petitioner establishes sufficiently that Carsberg discloses the additional
IPR2020-00168
Patent 7,841,494 B2

48
limitations of claims 10 and 11. See Pet. 37–38; Ex. 1003 ¶¶ 165–168;
Ex. 1008, 1:23–30, 1:60–65.
3. Conclusion as to Claims 5 and 7–11
We find that (1) Petitioner’s proposed level of ordinary skill in the art
is consistent with the art of record; (2) the combination of Carsberg, Kross,
Kress, and Lundblad discloses all the limitations of claims 5 and 7–11;
(3) one of ordinary skill in the art would have been motivated to combine
Carsberg, Kross, Kress, and Lundblad in the manner Petitioner proposes;
and (4) Patent Owner fails to establish a nexus, and even assuming a nexus,
the objective evidence is relatively weak. Weighing these underlying factual
determinations, a preponderance of the evidence persuades us that claims 5
and 7–11 of the ’494 patent are unpatentable over the combination of
Carsberg, Kross, Kress, and Lundblad.
F. Petitioner’s Additional Challenges
Petitioner challenges claims 1–11 under 35 U.S.C. § 103 (1) based on
Lundblad, Kross, and Kress; (2) based on Kross, Kress, Perritt, and
Lundblad; and (3) based on Kross, Kress, Perritt, and the knowledge of a
POSITA. Pet. 39–63. We do not reach these challenges because we have
concluded that Petitioner has met its burden of establishing that claims 1–11
are unpatentable on other grounds.
G. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude a number of items, including
Exhibits 1011–1012 and 1018–1023. Paper 30, 3–13. Patent Owner also
moves to exclude paragraphs 265 and 271 of Exhibit 1003 because those
paragraphs rely on inadmissible Exhibit 1011, and Patent Owner moves to
IPR2020-00168
Patent 7,841,494 B2

49
exclude paragraph 272 of Exhibit 1003 because it relies on inadmissible
Exhibit 1012. Id.
Although we may have explicitly or implicitly referenced these
exhibits when recounting or addressing the parties’ arguments, we do not
rely on any of the exhibits, or the paragraphs cited in Exhibit 1003, as a basis
to make any findings in this Decision. We, therefore, dismiss Patent
Owner’s Motion to Exclude as moot.
H. Petitioner’s Motion to Exclude
Petitioner moves to exclude Exhibits 2001, 2003, 2004, and 2029.
Paper 31, 1–15. Although we may have explicitly or implicitly referenced
these exhibits when recounting or addressing the parties’ arguments, we do
not rely on any of the exhibits as a basis to make any findings adverse to
Petitioner in this Decision. For example, we considered Exhibits 2004
and 2029 as part of Patent Owner’s objective indicia arguments, and found
the arguments lacking even after we considered the exhibits. We, therefore,
dismiss Petitioner’s Motion to Exclude as moot.
CONCLUSION17
A summary of our conclusions appears in the chart below:
Claim(s)
35
U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–4, 6 103(a) Carsberg, Kross,
Kress
1–4, 6

17 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
IPR2020-00168
Patent 7,841,494 B2

50
Claim(s)
35
U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
5, 7–11 103(a) Carsberg, Kross,
Kress, Lundblad
5, 7–11
1–11 103(a)18 Lundblad, Kross,
Kress

1–11 103(a) Kross, Kress,
Perritt, Lundblad

1–11 103(a) Kross, Kress,
Perritt, knowledge
of POSITA

Overall
Outcome
1–11

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–11 of U.S. Patent 7,841,494 B2 have been
shown, by a preponderance of the evidence, to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
18 Because we already determined that all of the challenged claims are
unpatentable, we did not reach whether the same claims are also
unpatentable based on other challenges.
IPR2020-00168
Patent 7,841,494 B2

51
For PETITIONER:
Baldassare Vinti
James Shalek
Gerald Worth
Stephanie Diehl
PROSKAUER ROSE LLP
bvintiptabmatters@proskauer.com
jshalek@proskauer.com
gworth@proskauer.com
sdiehl@proskauer.com

For PATENT OWNER:
Edward Pergament
Kenneth Canfield
PERGAMENT & CEPEDA, LLP
epergament@pergamentcepeda.com
kcanfield@pergamentcepeda.com