IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) ) ) ) )

Transcription

1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE LIQWD, INC., and OLAPLEX LLC, vs. Plaintiffs, L ORÉAL USA, INC., L ORÉAL USA PRODUCTS, INC., L ORÉAL USA S/D, INC., and REDKEN 5TH AVENUE NYC, L.L.C., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) Civil Action No. 17-cv SLR DECLARATION OF EDWARD T. BORISH, PH.D. IN SUPPORT OF OLAPLEX S MOTION FOR A PRELIMINARY INJUNCTION 0 L'OREAL USA, INC. EX. 1014

2 I, Edward T. Borish, Ph.D., declare as follows: 1. I have been retained by Plaintiffs Liqwd, Inc. and Olaplex LLC (collectively Olaplex ) to offer opinions regarding infringement and validity of U.S. Patent No. 9,498,419 ( the 419 patent ). 2. I have been asked by counsel for Plaintiffs to provide opinions regarding infringement of claim 1 of the 419 patent by three products: Matrix Bond Ultim8 Step 1 Amplifier ( Bond Ultim8 Step 1 ), the Redken ph-bonder #1 Bond Protecting Additive ( ph- Bonder #1 ), and L Oréal Professionnel Smartbond Step 1 Additive ( Smartbond Step 1 ) (collectively, Accused Products ). I also have been asked by counsel for Plaintiffs to provide opinions (and rebuttal) regarding the validity of the 419 patent. 3. This report is based on information currently available to me. I may continue my investigation and study as new information comes to light and circumstances evolve. Accordingly, I may supplement my opinions and/or provide rebuttal opinions. I would be able to testify regarding the matters stated in this report, if asked by the Court or by the parties attorneys. I. SUMMARY OF OPINIONS 4. It is my opinion that use of the Accused Products by L Oréal USA, Inc.; L Oréal USA Products, Inc.; L Oréal USA S/D, Inc.; and Redken 5th Avenue NYC, L.L.C., (collectively, L Oréal ) directly infringes at least claim 1 of the 419 patent, that L Oréal actively induces others to infringe at least claim 1 of the 419 patent, and that the 419 patent is valid. II. BACKGROUND AND QUALIFICATIONS 5. I am currently the Vice President of Research and Development with Global Seven, Inc., a producer of specialty chemicals for personal care, household and industrial products, and an independent consultant with ANA Innovation LLC, which helps clients develop new business opportunities in biotechnology, mass and salon marketing, educational/scientific publishing, and retail merchandising. 1

3 6. I obtained a Bachelor of Science (Chemistry) Degree at the University of Massachusetts at Lowell in Lowell, Massachusetts, in 1979, and a Doctor of Philosophy (Ph.D.) Degree in Inorganic Chemistry at the University of Rhode Island in Kingston, Rhode Island, where my thesis research involved Silver (III) redox reactions, in I have taught in the areas of chemistry, biochemistry, and cosmetics chemistry at the University of Cincinnati as an Adjunct Professor and at Louisiana State University and the University of Rhode Island. 8. I was a Post-Doctoral Research Associate and Senior Post-Doctoral Research at Louisiana State University in Baton Rouge, Louisiana, where I studied free radical biochemistry, from 1984 to In 1987, I left academia and joined Helene Curtis, Inc. as a senior chemist, where my work involved identifying and developing technologies and products for the salon and mass markets. 10. In 1990, I left Helene Curtis to pursue an opportunity with a subsidiary of Kodak (L&F Products). I was the group leader charged with developing new hair care and skin care products. This work led to a number of products that were commercialized, including Ogilvie Tender Color Hair Color, and a new perm product called Heat Activated Whisper Wave. 11. I joined a division of Shiseido Company Ltd. (Zotos International) as Vice President of Research and Development from 1993 through I was responsible for directing all aspects of research and development regarding personal care products for the salon business. Among the innovations that we worked on were innovations for hair growth, sunscreens, sunless tanners, and dietary supplements. 12. In 1999, I joined Bath & Body Works as Director of Research and Development, and helped it launch 800 new products during a three-year period. Among my responsibilities was directing development of high performance skin and hair care lines, and antibacterial products. 13. In 2002, I joined Global Seven, where I am currently employed. 2

4 14. I have over 50 patents, publications, and presentations covering both applied and basic research relating to chemistry, biochemistry and associated sciences, and design and development of products in the health and personal care industry. 15. I have consulted for numerous hair care companies, including Abercrombie & Fitch (the famous American fashion brand), Dragoco Gerberding & Co. AG (an international supplier of perfume compositions, aroma chemicals, cosmetic raw materials and active ingredients, and flavors), and Genencor (a biotechnology company that is now part of DuPont), to name a few. 16. My expertise, professional experience and qualifications are further detailed in my Curriculum Vitae, a copy of which is attached as Exhibit A. 17. I have not testified as an expert at trial or by deposition during the previous four years. 18. The complete list of all publications authored by me is provided in my Curriculum Vitae. 19. My compensation for consulting on this matter is $420 per hour. I have no financial interest in the outcome of this proceeding, and my compensation is unaffected by the content of my testimony. III. LEGAL STANDARD 20. I am not a legal expert and offer no opinions of the law. However, I have been informed by counsel of the legal standards that apply with respect to determining infringement. 21. I have been informed that a patent includes the written description of one or more preferred embodiments of the invention, figures, and one or more claims that point out and claim the subject matter of the invention. The claims define and measure the patent s scope. Each claim defines a separate invention. 22. I have been informed that the determination of infringement is a two-step process. First, the language of the claims asserted against a device, method, or structure accused of 3

5 infringement (which I will refer to as the accused device, method, or structure) is construed by the Court. Second, the accused device, method, or structure is compared to the construed claims. 23. I have been informed that literal infringement is found when each and every element of at least one of the patent s claims, under the Court s construction, is literally found practiced in the accused device, method, or structure. My understanding of the law with respect to patent infringement is that an accused device, method or structure infringes a claim if it contains all of the elements of the claims, regardless of whether or not there are additional elements in the accused device, method, or structure not present in the claim. 24. I also have been informed that active inducement is found when someone else actually carried out acts that directly infringe at least one of the patent s claims, and the alleged infringer took action to induce or cause the infringing acts with knowledge of the patent and knew the acts it induced constituted patent infringement. 25. I have been informed that the burden of proof for proving patent infringement is by a preponderance of the evidence, which means that the accused device, method, or structure is established to be more likely to infringe than not to infringe a claim of the patent-in-suit. IV. TECHNOLOGY BACKGROUND 26. I have carefully read the 419 patent and its file history. The patent generally relates to formulations and methods for treating hair when it is being bleached. Independent claim 1 of the 419 patent is directed, in part, to the use of the specific active agent maleic acid during bleaching. Claim 1 appears in full below: 1. A method for bleaching hair comprising: (a) mixing a formulation comprising an active agent with a bleaching formulation, wherein the active agent has the formula: or salts thereof; and 4

6 (b) applying the mixture to the hair; wherein the active agent in the mixture is at a concentration ranging from about 0.1% by weight to about 50% by weight; and wherein the mixture does not contain a hair coloring agent. 27. Briefly, claim 1 describes a hair bleaching method. As set forth in the claim, the first step is mix together two formulations, an active agent formulation and a bleaching formulation. This mixture is then applied to the hair. The claim describes the active agent present in the mixture, the concentration of that agent, and also excludes hair coloring agents from the mixture. 28. Hair fibers consist primarily of fibrous proteins belonging to the keratin family. Proteins are polymers consisting of polypeptide chains formed from condensation (or bonding) of amino acid building blocks. The feature that distinguishes keratin from other fibrous proteins is a high content of the sulfur containing amino acid cystine. Cystine forms covalent crosslinks (or bonds) between polypeptide chains. These crosslinks are responsible for the high degree of physical and chemical stability of keratin. Morphologically, hair structure has three distinct components: the cuticle, the cortex, and the medulla. The shingle-like cuticle layer forms the hair exterior and encloses the corticular mass. The cortex constitutes the bulk of the hair fiber and contains tightly packed elongated cortical cells oriented parallel to the fiber axis. These cells contain alpha-helical microfibrils embedded in a cystine-rich amorphous protein matrix. Melanin pigment granules are located within the cortex of the hair fiber. The medulla is located toward the center of the hair fiber. It is composed of loosely attached spongy cells and makes up only a small percentage of the hair fiber. As the 419 patent explains, many harsh chemical treatments involve chemicals that can break these natural bonds in the hair, and can cause severe hair damage, especially when chemical treatments are repeated. See, e.g., Col. 1, line 24 - Col. 2, line 10; Col. 2, lines 23-33; Col. 23, line 63 Col. 24, line For example, bleaching typically lightens hair color by oxidation reactions. Chemicals are applied to the hair, which react with the color pigment in the hair and change the 5

7 pigment so that it no longer imparts a color to the hair. A typical bleaching process involves two components: powder lightener (also known as bleach) and developer. See, e.g., Col. 16, lines Powder lightener is generally a salt of a persulfate. Developer is generally hydrogen peroxide, which in combination with the persulfate is the oxidizing agent. 30. In addition to changing hair pigment as intended, the bleaching process can also create harmful side reactions with the hair. One of the side reactions is oxidizing the disulfide bonds in hair that are important to its strength, as discussed above. This oxidizing breaks the disulfide bonds, thus weakening the hair. 31. The 419 patent describes formulations and methods to solve this problem by preventing damage to hair during bleaching, or treating hair that has been damaged during bleaching. As described, novel formulations with polyfunctional active ingredients are applied in connection with the hair bleaching treatment. See, e.g., Col. 3, line One of the claimed methods for bleaching involves combining a formulation involving maleic acid, or its salt form, with a bleaching formulation to create a mixture with a specific concentration range of the active ingredient, which is then applied to hair during the bleaching process. Col. 25, line 42-Col. 26, line 5. Maleic acid has the chemical structure shown below: V. THE LEVEL OF ORDINARY SKILL IN THE ART 32. My opinion on the level of ordinary skill in the art is based on my personal knowledge and experience as well as my consideration of such things as the education and experience level of persons of skill working in the field. 33. In my opinion, the field of invention is cosmetic chemistry. One of skill in the art as of that date would have a college degree in chemistry or an associated science. In addition, a person of ordinary skill in the art would have had several years of work experience. 6

8 VI. CLAIM CONSTRUCTION 34. There should not be significant disputes as to the meaning of the claim terms of the 419 patent, because claim 1 identified above is composed of standard terms, with wellunderstood plain and ordinary meanings that are known to a person of ordinary sill in the art. 35. The 419 patent uses the word bleaching in its plain and ordinary way: lightening. 36. The phrase bleaching formulation in claim 1 refers to a chemical mixture that lightens hair color. See, e.g., Col. 16, lines The chemical structure of the active agent shown in claim 1, and reproduced below, is known as maleic acid: 38. Claim 1 requires that the concentration of that active agent in the mixture of the active agent formulation and bleaching formulation be within a specified range. Specifically, it must be present in an amount that is between about 0.1% and 50% of the total weight of the mixture. In other words, if the mixture weighs a total of 100 grams, then about 0.1 grams to about 50 grams of maleic acid active agent must be present in the mixture. 39. Finally, claim 1 specifies that the mixture cannot have a hair coloring agent in it. Hair coloring agent has a well-understood plain and ordinary meaning that is set forth in the file history of the 419 patent, namely, a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection. (Ex. B, August 23, 2016 Response to Office Action at 7, original pagination). A colorant or pigment that is intended to, for example, permanently or demi-permanently change the color or tone of hair is typically diffused into the hair fibers themselves during hair coloring, and then oxidized by hydrogen peroxide into active intermediates. See also Col. 16, Ln. 43 Col. 17, Ln. 14 and Col. 20, Ln These intermediates then react with coupling agents to 7

9 create dye molecules that fix the color to the hair fiber. By contrast, a colorant or pigment that is not intended to permanently, demi-permanently or semi-permanently change the color or tone of hair, e.g., the colorant or pigment easily washes out or is not visible in the hair, in this fashion is not a hair coloring agent. VII. INFRINGEMENT ANALYSIS 40. I understand that Olaplex contends that the Accused Products infringe at least claim 1 of the 419 patent. I describe each of the Accused Products in detail below. Based on my analysis, it is my opinion that the use of each of the Accused Products infringes at least claim 1 of the 419 patent. 41. Attached to this report as Appendices 1-3 are charts showing how each element of claim 1 is present when the Accused Products are used according to their instructions. Below I explain how use of the Accused Products directly infringes claim 1 and also how L Oréal actively induces infringement of these claims by hair care professionals in salons, among others. A. Direct Infringement of Claim 1 1. A method for bleaching hair comprising: 42. Use of the Accused Products is unquestionably a method for bleaching hair. As mentioned above, the 419 patent uses the word bleaching with reference to hair in its plain and ordinary way: lightening. 43. The Matrix Bond Ultim8 Step 1 product is described in the instructions provided on the bottle and in the packaging as a Bond Protecting System. The bottle lists two of the supposed benefits of using the Bond Ultim8 Step 1 product as Helps protect bonds during lightening and Helps Prevent hair breakage, as shown in the following excerpt from the bottle label attached as Ex. C with emphasis added: 8

10 44. The terms lightening and bleaching are synonymous in this context. In the FAQ section of the package instructions attached as Ex. D L Oréal explains that Bond Ultim8 Step 1 is used during professional lightening service, as shown in excerpt below, with emphasis added: 45. These instructions describe a method for bleaching hair with Bond Ultim8 Step The Redken ph-bonder #1 product is described in the instructions provided on the bottle and in the packaging as a Bond Protecting Additive for use during technical services. 9

11 (Ex. E, ph-bonder #1 Package Instructions excerpt.) The bottle instructions describe how to use the ph-bonder #1 product with lightener (i.e., bleach). (Ex. F, ph-bonder #1 Label excerpt, with emphasis added.) The package instructions say that it promotes bond integrity during a lightening service and is optimized for use with REDKEN LIGHTENERS. * * * (Ex. E, ph-bonder #1 Package Instructions excerpts, with emphasis added.) In the FAQ section of the package instructions, L Oréal explains that the ph-bonder #1 product is used during professional lightening service. 10

12 (Ex. E, ph-bonder #1 Package Instructions excerpts, with emphasis added.) These instructions describe a method for bleaching hair with ph-bonder # L Oréal also provides instructions on the bottle for Smartbond Step 1 and also in the packaging. This bond strengthening additive is said to protect bonds during technical service. The bottle instructions and the package instructions both describe how to use Smartbond Step 1 with lightener, for examples as shown in the excerpts below: (Ex. G, Smartbond Step 1 Label excerpt; Ex. H, Smartbond Step 1 Package Instructions excerpt; with emphasis added.) Again, such use is a method for bleaching hair with Smartbond Step 1. As such, this claim element is met by use of the Accused Products according to their instructions. 2. (a) mixing a formulation comprising an active agent with a bleaching formulation, 48. The label on Bond Ultim8 Step 1 lists the ingredients that it contains. The second ingredient is identified as maleic acid, which is the active agent: 11

13 (Ex. C, Bond Ultim8 Step 1 Label excerpt, with emphasis added.) Thus, Bond Ultim8 Step 1 is a formulation comprising an active agent The instructions provided on the bottle of Bond Ultim8 Step 1 direct the user to mix STEP 1, including its active agent maleic acid, with a bleaching formulation: (Ex. C, Bond Ultim8 Step 1 Label excerpt, with emphasis added.) 50. The package instructions (included in the box when Bond Ultim8 Step 1 is sold) further describe the bleaching formulation: (Ex. D, Bond Ultim8 Step 1 Package Instructions excerpt, with emphasis added.) The words powder and lightener powder refer to bleach. The bleaching formulation is therefore the combination of bleach and developer. As such, this claim element is met by use of Bond Ultim8 Step 1 according to its instructions. 1 I have been unable to obtain a copy of the Bond Ultim8 material safety data sheet as of the date of this declaration. I reserve the right to add to my analysis if and when such information is obtained. 12

14 51. Similarly, ph-bonder #1 is the formulation comprising the active agent maleic acid, as shown below: [PROBLEM WITH THE IMAGE BELOW IT IS CUT OFF] (Ex. F, ph-bonder #1 Label excerpt, with emphasis added.) Thus ph-bonder #1 is a formulation comprising an active agent. The material safety data sheet for ph-bonder #1 confirms that maleic acid is the active agent: (Ex. I, (ph-bonder MSDS), with emphasis added.)) 52. The instructions provided on the bottle of ph-bonder #1 direct the user to mix ph-bonder #1, including its active agent maleic acid, with a bleaching formulation: [Highlighted text reproduced for clarity:] Wearing suitable gloves, mix your lightener as usual. IMPORTANT: Always mix developer, and lightener before adding ph-bonder #1. For lightener, add 4ml of ph- Bonder #1 for every grams (½ 1 oz) of powder or 8ml of ph-bonder #1 for every grams (1 2z) of powder used in mixture. Apply lightener as usual. (Ex. F, ph-bonder #1 Label excerpt, with emphasis added.) 53. The package instructions (included in the box when ph-bonder #1 is sold) further describe the bleaching formulation: 13

15 (Ex. E, ph-bonder #1 Package Instructions excerpt, with emphasis added.) The words powder and lightener refer to bleach. The bleaching formulation is therefore the combination of bleach and developer. As such, this claim element is met by use of ph-bonder Step 1 according to its instructions. 54. Smartbond Step 1 is the formulation comprising the active agent maleic acid, as shown below: (Ex. G, Smartbond Step 1 Label excerpt, with emphasis added.) Thus, Smartbond Step 1 is a formulation comprising an active agent. The material safety data sheet for Smartbond Step 1 confirms that maleic acid is the active agent: 14

16 (Ex. J, (Smartbond Step 1 MSDS), with emphasis added.)) 55. The instructions provided on the bottle of Smartbond Step 1 direct the user to mix Smartbond Step 1, including its active agent maleic acid, with a bleaching formulation: (Ex. G, Smartbond Step 1 Label excerpt, with emphasis added.) 56. The package instructions (included in the box when the Smartbond Step 1 is sold) further describe the bleaching formulation: [Highlighted text reproduced for clarity:] #1 MIX. 15

17 Mix your lightener as usual. Important: Always mix developer and lightener before adding Smartbond Step 1. Add 4 ml (0.14 oz) of Step 1 Additive of every 15-30g (½ 1 oz) or 8 ml of Step 1 Additive for every g (1 2 oz) of lightening product used in the final mixture. #2 APPLICATION Apply as usual according to instructions. (Ex. H, Smartbond Step 1 Package Instructions excerpt, with emphasis added.) The word lightener refers to bleach. The bleaching formulation is therefore the combination of bleach and developer. As such, this claim element is met by use of Smartbond Step 1 according to its instructions. 3. wherein the active agent has the formula: [maleic acid] or salts thereof; and 57. Each of the Accused Products has labeling identifying ingredients that it contains. Maleic acid is the second ingredient listed for Bond Ultim8 Step 1, ph-bonder #1, and Smartbond Step 1, as shown below: (Ex. C, Bond Ultim8 Step 1 Label excerpt, with emphasis added.) (Ex. F, ph-bonder #1 Label excerpt, with emphasis added.) (Ex. G, Smartbond Step 1 Label excerpt, with emphasis added.) The 1H Nuclear Magnetic Resonance (NMR) Spectroscopy testing described below confirms the accuracy of these labels with regard to the presence of maleic acid in each of the Accused Products. 4. (b) applying the mixture to the hair 16

18 58. As documented above, the instructions provided on the bottle, and those that are included in the packaging provided with Bond Ultim8 Step 1, direct the user to [a]pply lightener as usual after mixing the additive into the bleaching formulation. The mixture is being applied to the hair. 59. To the extent this is not self-evident, step 4 of the package instructions directs the user to Rinse lightener from hair (which confirms that the mixture is applied to the hair): (Ex. D, Bond Ultim8 Step 1 Package Instructions excerpt, with emphasis added.) 60. Therefore, the use of Bond Ultim8 Step 1 as instructed involves applying the additive/bleaching formulation mixture to hair as claimed in this element. 61. As documented above, the instructions provided on the bottle, and those that are included in the packaging provided with ph-bonder #1, direct the user to [a]pply lightener as usual after mixing the additive into the bleaching formulation. The mixture is being applied to the hair. 62. To the extent this is not self-evident, the label instructions direct the user to Rinse lightener from hair (which confirms that the mixture is applied to the hair): (Ex. F, ph-bonder #1 Label excerpt, with emphasis added.) 17

19 63. Therefore, the use of ph-bonder #1 as instructed involves applying the additive/bleaching formulation mixture to hair as claimed in this element. 64. As documented above, the instructions provided on the bottle and those that are included in the packaging provided with Smartbond Step 1 direct the user to [a]pply lightener as usual after mixing the additive into the bleaching formulation. The mixture is being applied to the hair. 65. To the extent this is not self-evident, the label instructions direct the user to Rinse thoroughly lightener from hair (which confirms that the mixture is applied to the hair): (Ex. G, Smartbond Step 1 Label excerpt, with emphasis added.) 66. Therefore, the use of Smartbond Step 1 as instructed involves applying the additive/bleaching formulation mixture to hair as claimed in this element. 5. wherein the active agent in the mixture is at a concentration ranging from about 0.1% by weight to about 50% by weight; and 67. Each of the Accused Products contains the active agent maleic acid within the claimed concentration range. 68. To determine the amount of maleic acid present in these products, I turned to the independent testing laboratory ANALYZE INC., which in turn at my direction had the products tested by NMR Spectroscopy. These spectroscopy services were provided by the independent laboratory Spectral Data Systems of Champaign, Illinois. I have attached the laboratory report as Exhibit K. 69. The concentrations of maleic acid in the Accused Products was determined to be as follows: Accused Product Maleic Acid Wt-% Bond Ultim8 Step

20 ph-bonder # Smartbond Step I also compared these test results with the material safety data sheets (each sometimes called an MSDS ) that I was provided for the Accused Products. The NMR test results are consistent with the MSDS information. 71. The ph-bonder #1 MSDS requires that maleic acid is present in an amount of 10.7 wt. % or less, before it is mixed with the bleach. (Ex. I, (ph-bonder MSDS), with emphasis added.)) The Smartbond Step 1 MSDS requires that maleic acid is present in an amount of 10.7 wt. % or less, before it is mixed with the bleach. (Ex. J, (Smartbond Step 1 MSDS), with emphasis added.)) Using these test results and/or data, together with the instructions that come with the Accused Products, it is possible to determine the concentration of maleic acid (weight percentage) in the mixture that is applied to the hair. 72. The package instructions that accompany Bond Ultim8 Step 1 include a table with the specified amounts of lightener powder, developer and Step 1 additive to use when bleaching 19

21 hair. The relevant portion of the table is reproduced as follows: Lightener (grams) Developer (ml) Step 1 Additive (ml) g ml 4 ml g ml 8 ml 73. The amounts of developer and Step 1 additive are given as a volume. To convert these into a mass, I assumed that the density of each was approximately that of water (1 g/ml). Water is expected to be the major component of these compositions, and I have seen nothing in the ingredient lists, material safety data sheets, or any other information source to suggest otherwise. 74. Thus, the total mass of ingredients in the top row was from a minimum of 34 grams to a maximum of 124 grams. Using the NMR testing results, I calculated the weight of maleic acid present in 4 ml of Step 1 additive (0.4 grams). From this I calculated the weight percentage of maleic acid present in that mixture to be between 0.3 to 1.2 wt. %. See also Appendix 1 at pages Following the same process, I determined that the weight percentage of maleic acid present in that mixture in the bottom row to be between 0.4 to 1.2 wt. %. See also Appendix 1 at pages Using Bond Ultim8 Step 1 according to the instructions results in a concentration of maleic acid (active agent) in the mixture ranging from about 0.1% by weight to about 50% by weight. In this way, my analysis demonstrates that the concentration of maleic acid (weight percentage) in the mixture that is applied to the hair is between about 0.1% by weight and about 50% by weight, as claimed in this element. 20

22 77. The ph-bonder #1 package instructions also instruct the amounts of bleach, developer and ph-bonder #1 to use during hair bleaching. For convenience, I have added the red labels to the image below identifying the component being described in that column: 78. Following the process described above, I determined that the weight percentage of maleic acid present in the ph-bonder #1 mixture to be between 0.3 to 1.2 wt. % in the top row, and to be between 0.4 and 1.2 wt. % in the bottom row. See also Appendix 2 at pages Using ph-bonder #1 according to the instructions results in a concentration of maleic acid (active agent) in the mixture ranging from about 0.1% by weight to about 50% by weight. In this way, my analysis demonstrates that the concentration of maleic acid (weight percentage) in the mixture that is applied to the hair is between about 0.1% by weight and about 50% by weight, as claimed in this element. 21

23 80. The same process can be used to find the concentration of maleic acid when Smartbond Step 1 is used according to its instructions. The package instructions dictate the amounts of bleach powder, developer and additive to use: Lightener Powder (grams) Developer (mixing ratio) Step 1 Additive (ml) g 4 ml 1:1 or 1:1.5 or 1: g 8 ml 81. The mixing ratio referred above is the relative amount of developer used with the lighter. In a 1:1 mixing ratio, 15 grams of lightener powder are used with 15 milliliters (ml) of developer. I understand that the mixing ratio ranges from 1:1 to 1:3. My analysis and conclusions would be the same for any of these ratios. 82. Following the process described above, I determined that the weight percentage of maleic acid present in the Smartbond Step 1 mixture to be between 0.4 to 1.2 wt. % in both the top and bottom rows. See also Appendix 3 at pages Using Smartbond Step 1 according to the instructions results in a concentration of maleic acid (active agent) in the mixture ranging from about 0.1% by weight to about 50% by weight. In this way, my analysis demonstrates that the concentration of maleic acid (weight percentage) in the mixture that is applied to the hair is between about 0.1% by weight and about 50% by weight, as claimed in this element. 84. In the calculations above, I assumed a density for the developer of about 1.0 g/ml. This is approximately the density of water. It is possible that developer has slightly greater density. I calculated that I would have to be off on the density of the developer by more than a factor of two to make the weight concentration of maleic acid outside the claimed range. I am confident that is not the case. 85. In the calculations above, I also assumed a density for the Accused Products of about 1.0 g/ml. Again, this is approximately the density of water, which is the majority of the Accused Products. It is also possible the density of the Accused Products might be different than 22

24 one. However, I calculated that I would have to be off by more than a factor of two to make the weight concentration of maleic acid outside the claimed range. I am confident that is not the case. 6. wherein the mixture does not contain a hair coloring agent. 86. This claim element requires that the combination of the active agent formulation and the bleaching formulation omits a hair coloring agent. As explained above, the wellunderstood plain and ordinary meaning of hair coloring agent is set forth in the file history of the 419 patent, namely, a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection. (Ex. B, August 23, 2016 Response to Office Action). A colorant or pigment that is intended to, for example, permanently or demi-permanently change the color or tone of hair is typically diffused into the hair fibers themselves during hair coloring, and then oxidized by hydrogen peroxide into active intermediates. See also Col. 16, Ln. 43 Col. 17, Ln. 14 and Col. 20, Ln These intermediates then react with coupling agents to create dye molecules that fix the color to the hair fiber. By contrast, a colorant or pigment that is not intended to permanently, demi-permanently or semi-permanently change the color or tone of hair, e.g., the colorant or pigment easily washes out or is not visible in the hair, in this fashion is not a hair coloring agent. 87. I have confirmed that the bleaching formulation prepared according to the Bond Ultim8 Step 1 instructions does not have a hair coloring agent. I first reviewed the labels of Matrix-branded bleaching powder (Light Master and V-Light, attached as Exhibits M and N, respectively) and developer (Solite, attached as Exhibit O), which list the ingredients that they contain. I confirmed that they do not contain any hair coloring agents. I then reviewed the label of Bond Ultim8 Step 1, which also lists the ingredients that it contains. Bond Ultim8 Step 1 does not contain any hair coloring agents, and its instructions for use do not include such agents for bleaching treatments, as shown above. The ingredient list for Bond Ultim8 Step 1 includes three generic product coloring chemicals (CI 19140/Yellow 5, CI 14700/Red 4, CI 23

25 42090/Blue 1): (Ex. C, Bond Ultim8 Step 1 Label excerpt, with emphasis added.) 88. I also confirmed that none of these products has a label stating that it is a hair dye. 89. For all of these reasons, the mixture of Bond Ultim8 Step 1 and the bleaching formulation according to the instructions does not contain a hair coloring agent. Therefore, such use satisfies this claim element. 90. I also have confirmed that the bleaching formulation prepared according to the ph-bonder #1 instructions does not have a hair coloring agent. I first reviewed the labels of Redken-branded bleaching powder (Flash Lift and Up to 7, attached as Exhibits P and Q, respectively) and developer (Pro-Oxide, attached as Exhibit R), which list the ingredients that they contain. I confirmed that they do not contain any hair coloring agents. I then reviewed the label of ph-bonder #1, which also lists the ingredients that it contains. ph-bonder #1 does not contain any hair coloring agents, and its instructions for use do not include such agents for bleaching treatments, as shown above. The ingredient lists for ph-bonder #1 include three generic product coloring chemicals (CI 19140/Yellow 5, CI 14700/Red 4, CI 42090/Blue 1): (Ex. F, ph-bonder #1 Label excerpt, with emphasis added.) I further confirmed that none of these products has a label stating that it has a hair color. 91. For all of these reasons, the mixture of ph Bonder #1 and the bleaching formulation according to the instruction does not contain a hair coloring agent. Therefore, such use satisfies this claim element. 92. I also have confirmed that the bleaching formulation prepared according to the Smartbond Step 1 instructions does not have a hair coloring agent. I first reviewed the labels of 24

26 L Oréal-branded bleaching powder (Quick Blue and Blond Studio, attached as Exhibits S and T, respectively) and developer (Redken Pro-Oxide, attached as Exhibit R), which list the ingredients that they contain. I confirmed that they do not contain any hair coloring agents. Smartbond Step 1 does not contain any hair coloring agents, and its instructions for use do not include such agents for bleaching treatments, as shown above. The ingredient lists for Smartbond Step 1 includes three generic product coloring chemicals (CI 19140/Yellow 5, CI 14700/Red 4, CI 42090/Blue 1): (Ex. C, Smartbond Step 1 Label excerpt, with emphasis added.) I further confirmed that none of these products has a label stating that it has a hair color. 93. For all of these reasons, the mixture of Smartbond Step 1 and the bleaching formulation according to the instruction does not contain a hair coloring agent. Therefore, such use satisfies this claim element. 94. I have been told and understand that L Oréal may claim that dyes present in the Accused Products allegedly constitute hair coloring agents. In particular, each contains three chemicals identified as CI 19140/Yellow 5, CI 14700/Red 4, CI 42090/Blue 1. These are common dyes for coloring products, but I am not aware of any hair dye product which uses these chemicals to actually impart color to hair in the low concentrations that I believe these chemical are used in the Accused Products. Moreover, all three of these dyes are used in various L'Oréal shampoo and conditioner products which are neither intended to color hair, nor labeled as coloring hair, as demonstrated below. 95. Redken Curvaceous conditioner contains both CI 19140/Yellow 5 and CI 42090/Blue 1, as shown in the following excerpts from Exhibit U, with emphasis added: 25

27 96. Matrix Biolage Advanced shampoo also contains CI 19140/Yellow 5, as shown in the following excerpts from Exhibit V, with emphasis added: 26

28 97. Pureology (a L'Oréal brand) Strength Cure conditioner contains CI 14700/Red 4, as shown in the following excerpts from exhibit W, with emphasis added: 98. Pureology Fullfyl shampoo also contains CI 14700/Red 4, as shown in the following excerpts from Exhibit X, with emphasis added: 27

29 99. The fact that L'Oréal uses the three dyes at issue in its shampoo and conditioner products, and does not label those shampoos and conditioners as products containing hair colorants, further demonstrates that L'Oréal does not genuinely consider these dyes to be hair colorants It is likely L'Oréal adds CI 19140/Yellow 5, CI 14700/Red 4, CI 42090/Blue 1 to the Accused Products to mimic the Liquid Gold color of Olaplex s product. In fact, the lack of binding activity between these generic coloring chemicals used in Bond Ultim8 Step 1 and hair fiber makes them a good choice for modifying the appearance of a product in a bottle. However, I believe that neither Olaplex s Liquid Gold product color nor the generic product coloring chemicals used in Bond Ultim8 Step 1, ph Bonder #1, or Smartbond Step 1 permanently, demipermanently or semi-permanently change the color or tone of hair. B. Induced Infringement of Claim 1 by L Oréal 101. I understand that induced infringement for a company means that the company is inducing, or causing, someone else to infringe the asserted claims. I have been informed that this is a two part inquiry that requires: (1) the end-users to directly practice the claimed method and (2) that the company, with knowledge of the patent, intends those actions by the end-users As an initial matter, I have reviewed the instructional materials associated with the Accused Products and compared them to claim 1 of the 419 patent. Based on that analysis, as explained in further detail above, it is my opinion that end-users who use the Accused Products according to their instructions directly practice the claimed method Furthermore, I understand from the allegations in the complaint that L Oréal has knowledge of the 419 patent and an application on which it is based. On my review of L Oréal s instructions, it is clear that L Oréal intends its Accused Products to be used in an infringing manner. As shown above, L Oréal provides detailed instructional documentation to instruct and encourage end-users to perform the claimed method. Moreover, L Oréal has engaged in an extensive marketing campaign to instruct and encourage such use, for example, through creating and publishing the promotional instruction videos discussed below. Therefore, based on my 28

30 review of the materials, it is my opinion that L Oréal intends the infringing actions by the endusers. Indeed, encouraging such use appears to be the primary aim of L Oréal s strategy for its Accused Products. C. Direct Infringement of Claim 1 by L Oréal 104. I have reviewed numerous promotional instructional videos created and published by L Oréal. In addition to showing L Oréal s intent to encourage end-users to act in an infringing manner with regard to the Accused Products, these videos demonstrate the types of activities that L'Oréal itself is engaged in that are direct infringements. Specifically, L Oréal has produced training videos showing its employees using the Accused Products during bleaching, and encouraging others to do the same, including the following marketing videos uploaded by Redken 5th Avenue NYC : (uploaded October 3, 2016); and Sean Goddard, a Global Redken Artist and Artistic Trainer, appears in both the ph-bonder YouTube video and the ph-bonder Periscope Video In training hair care professionals how to use the ph-bonder product, L Oréal teaches the ph-bonder regime which the ph-bonder YouTube video describes as a complete synergistic system to promote bond integrity during lightening (i.e., bleaching) YouTube marketing videos uploaded by L Oréal Professionnel show and describe how to use Smartbond during bleaching treatments to maintain the integrity of the hair: (uploaded August 2, 2016); (uploaded August 2, 2016); (uploaded August 24, 2016); and (uploaded November 18, 2016) 108. YouTube marketing videos uploaded by Matrix show and describe how to use Bond Ultim8 during bleaching treatments to maintain the integrity of the hair: 29

31 (uploaded November 17, 2016); and (uploaded November 29, 2016) The preceeding videos accompany this declaration as Exhibit Y In view of the foregoing, it is my opinion that L Oréal has directly infringed claim 1 of the 419 patent through its employees use of the Accused Products in an infringing manner, as explained on a limitation-by-limitation basis above, and intends the same infringing actions to be performed by the end-users. 2 VIII. OLAPLEX S 419 PATENT IS VALID 110. I understand that every [issued] patent is presumed valid and if L Oréal fails to identify clear and convincing evidence of invalidity, the mere existence of the issued patent satisfies Olaplex s burden at the preliminary injunction stage. Purdue v. Boehringer, 237 F.3d 1359, 1365 (Fed. Cir. 2001) Less than two months ago, the 419 patent issued over more than 135 prior art references cited on the face of the patent, including U.S. and foreign patents and applications and printed publications. See the 419 patent item (56) listing references cited. I further understand that the 419 patent also issued over prior art identified and submitted by an unidentified third party in pre-issuance proceedings (and in parallel proceedings for a United Kingdom foreign counterpart application where the same prior art was identified, the third party was identified as L Oréal) I understand that four separate third-party prior art submissions were provided to the patent office in an attempt to prevent Olaplex s 419 patent from issuing. These submissions 2 Some of these videos were uploaded prior to the issuance of the 419 patent. I understand that L Oréal continues to offer regular training sessions wherein its employees demonstrate and educate others on the use of the Accused Products. For example, L Oréal s Redken-branded 5 th Avenue NYC salon offers scores of training sessions for 2017, many of which relate to changing hair color. See I believe that such ongoing use of the Accused Products according to their instructions constitutes continuing direct infringement of the 419 patent. 30

32 identified five alleged prior art references and included the third party s reasons why it believed each of the references should invalidate the 419 patent. The Examiner fully considered the identified prior art and reasoning, and found none of it persuasive. See Exs. Z, AA (9/26/2016 Notice of Allowance and 10/13/2016 Corrected Notice of Allowance). Based on my review of these materials, as well as my experience and knowledge accumulated over decades of work in the relevant industry, I believe that the 419 patent is valid. I further understand that a patent is presumed to be valid, and I am aware of no facts that challenge that presumption. I reserve all rights to evaluate and respond to any argument or purported evidence that is alleged to challenge the validity of the 419 patent, should L Oréal present such arguments or purported evidence. I confirm that the contents of this Declaration are true to the best of my knowledge and belief insofar as it states facts, and that it contains my honest opinions on the matters upon which I have been asked to give them. I declare under the penalty of perjury under the laws of the United States of America that the foregoing is true and correct. DATED: January 12, 2017 Edward T. Borish, Ph.D. 31