UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD. LLP,
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`Petitioner,
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`v.
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`TOYOTA MOTOR CORPORATION,
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`Patent Owner.
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`Case IPR2016-01914
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`Patent No. 8,394,618 B2
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`PATENT OWNER’S BRIEF IN RESPONSE TO THE JANUARY 12, 2018
`ORDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD. LLP,
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`Petitioner,
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`v.
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`TOYOTA MOTOR CORPORATION,
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`Patent Owner.
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`Case IPR2016-01914
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`Patent No. 8,394,618 B2
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`PATENT OWNER’S BRIEF IN RESPONSE TO THE JANUARY 12, 2018
`ORDER
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
` Ex parte Schulhauser is inapplicable to the challenged claims. Specifically,
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`the fact that the “facilitating” limitation of independent claim 1 includes the phrase
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`“when contacted by a fingerprint” does not make that limitation a “conditional”
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`claim element. Schulhauser involved a very different type of claim, one that
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`explicitly recited two separate, and mutually exclusive, methods, with each method
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`being explicitly contingent on the occurrence of a specified event. In contrast,
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`claim 1 here recites a single method of “facilitating the removal of a fingerprint on
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`a substrate or a coating,” one that, by definition, has to involve contact with a
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`fingerprint. The Board should hold that the “facilitating” limitation is a necessary
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`element of the challenged claims, and that the “when” clause connotes a merely
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`temporal aspect, requiring the “facilitating” action to occur only after there is
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`contact with a fingerprint, which, indeed, is the only time that such “facilitati[on]”
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`could logically occur. Further, because the prior art fails to teach or suggest the
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`“facilitating” limitation, the Board should uphold the patentability of claims 1-11.
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`In Schulhauser, the claims recited “[a] method of monitoring of cardiac
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`conditions incorporating an implantable medical device in a subject.” 2016 Pat.
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`App. LEXIS 2437, *2-3. The first two steps required “collecting . . . electrocardiac
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`signal data” from the subject and “comparing [said] data with a threshold
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`electrocardiac criteria.” Then, the claims provided for two mutually exclusive
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`paths. If the signal data was not within the threshold criteria, the claims required
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`1
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`“triggering an alarm state.” Conversely, if the signal data was within the threshold
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`criteria, the claims required a series of further monitoring steps instead of the
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`“triggering” step. The Board therefore concluded that the claims “as written”
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`actually covered “at least two methods,” with one of the two being performed to
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`the exclusion of the other depending on whether the signal data was “within” or
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`“not within” the threshold criteria. Id., *10. Further, because the claims would be
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`literally infringed by either of the two methods, the prior art needed to disclose
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`only one of the two in order to render the claims unpatentable. Id., *12 (citing the
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`rule that “that which would infringe if later anticipates if earlier”). Since the prior
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`art taught the triggering of an alarm state in response to the signal data not being
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`within the threshold criteria, the examiner’s rejection was affirmed. Id., *11-12.
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` The claims at issue here are very different from those in Schulhauser. The
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`Schulhauser claims specified two “mutually exclusive” “conditions precedent” (the
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`signal data being either within or not within the threshold criteria) and described
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`two separate methods that would have to be carried out depending on which of the
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`two conditions precedent occurred. 2016 Pat. App. LEXIS 2437, *8, 10. Because
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`the conditions precedent were mutually exclusive, it would have been impossible
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`to practice the claimed invention while performing both methods at the same time.
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`The steps involved in each method were therefore plainly “conditional” on the
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`occurrence of a particular event. Here, in contrast, claim 1 is not written in the
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`2
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`alternative. Instead, the claim is directed to a single “method of facilitating the
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`removal of a fingerprint on a substrate or a coating” comprising “providing a
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`substrate or a coating,” “associating a lipase [therewith] such that said lipase is
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`capable of enzymatically degrading a component of a fingerprint,” and “facilitating
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`the removal of a fingerprint by vaporization from [said] substrate or coating when
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`contacted by a fingerprint.” The claim does not purport to describe an alternative
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`method of “facilitating the removal of a fingerprint on a substrate or a coating”
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`wherein the substrate or the coating is never contacted by a fingerprint.
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`In fact, common sense dictates that a method of facilitating the removal of a
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`fingerprint from a surface requires that a fingerprint first be deposited thereon.
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`Thus, the phrase “when contacted by a fingerprint” in the “facilitating” limitation
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`does not suggest that that limitation is conditional (“conditional” in the sense that
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`the claimed method could be completed with or without it). To the contrary, the
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`“facilitating” limitation is a necessary element, one that imbues the claim with
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`“meaning,” “purpose,” and “utility.” See PO Resp. 20-22 (citing Griffin v. Bertina,
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`285 F.3d 1029 (Fed. Cir. 2002)). The phrase “when contacted by a fingerprint”
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`suggests only a temporal aspect: the removal of the fingerprint is not facilitated
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`until after the fingerprint is deposited on the surface. This reading makes sense as
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`a matter of both “logic” and “grammar.” See Altiris, Inc. v. Symantec Corp., 318
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`F.3d 1363, 1369-70 (Fed. Cir. 2003) (where a method claims requires, “as a matter
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`3
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`of logic or grammar,” a particular order of steps, it will be construed as such).
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` A “whereby” or “wherein” clause that “states a condition . . . material to
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`patentability . . . cannot be ignored in order to change the substance of the
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`invention.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1330 (Fed. Cir. 2003); see
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`also Griffin, 285 F.3d at 1335; Biodelivery Sciences Int’l, Inc., v. RB Pharms Ltd.,
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`IPR2014-00325, Paper 43 at 5-6 (P.T.A.B. Jun. 30, 2015). The “facilitating”
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`limitation is no different. The action described there (“facilitating the removal of a
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`fingerprint by vaporization from the lipase associated substrate or coating when
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`contacted by a fingerprint”) is indisputably “material to patentability.” See Hoffer,
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`405 F.3d at 1330. Indeed, it captures the whole “essence of the invention.” See
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`PO Resp. 20-22. As such, the limitation “cannot be ignored” through a
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`construction that would turn it into a merely conditional (unnecessary) element.
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`See Hoffer, 405 F.3d at 1330; see also Ex parte Hehenberger, No. 2015-007421,
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`2017 Pat. App. LEXIS 960, *7 (P.T.A.B. Jan. 31, 2017) (Delmondo, APJ,
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`concurring) (Schulhauser does not apply where construing a claim element as
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`conditional “would render the entire claim meaningless” (emphasis added)).
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` The Board decisions cited in the January 12 Order are not to the contrary. In
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`Kaundinya and Zhou, the claims were drafted in the same format as those in
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`Schulhauser, specifying two mutually exclusive conditions precedent and
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`providing for two different sets of instructions depending on which of the two
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`4
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`conditions precedent occurred. See Kaundinya, 2017 Pat. App. LEXIS 10710, *2-
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`3 (“when no action is taken for the first alert”/“when . . . an action . . . has been
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`taken for the first alert”); Zhou, 2017 Pat. App. LEXIS 10314, *1-2 (“when the
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`reference key exists in the cache”/“when the reference key does not exist in the
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`cache”). Those decisions construing “when” clauses as conditional limitations are
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`therefore distinguishable on the same grounds as Schulhauser. And in Lee, the
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`Board actually declined to treat a “when” clause as conditional. Although the
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`Board initially characterized the series of steps recited after the “when” clause as
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`“conditional limitations that need not be satisfied to meet the claim,” Lee, 2017
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`Pat. App. LEXIS 2357, *6, in fact it went on to consider those steps as part of its
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`obviousness analysis, and it ultimately reversed a § 103 rejection of the claims due
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`to the fact that some of those steps were not shown to be in the prior art. See id.,
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`*11-15 (reversing the § 103 rejection over Grow and Davies).1
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`In sum, the Board should hold that the “facilitating” limitation is a temporal,
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`rather than conditional, limitation.
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`1 Indeed, the Board’s initial characterization of the steps recited after the “when”
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`clause as “conditional limitations” was in dictum, since it was made in the context
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`of addressing the examiner’s rejection of the claims for lack of written description.
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`Lee, 2017 Pat. App. LEXIS 2357, *6. As the Board itself noted, the “conditional”
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`nature of claim elements is irrelevant to written description analysis. Ibid.
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`5
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`Dated: January 19, 2018
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
` /s/ Joshua A. Lorentz
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`Joshua A. Lorentz
`Reg. No. 52,406
`Dinsmore & Shohl LLP
`255 E. Fifth St., Ste. 1900
`Cincinnati, OH 45202
`T: (513) 977-8200
`E: joshua.lorentz@dinsmore.com
`Attorney for Patent Owner
`Toyota Motor Corporation
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`6
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PATENT
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`OWNER’S BRIEF IN RESPONSE TO THE JANUARY 12, 2018 ORDER was
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`served on January 19, 2018 by email on the following counsel of record for
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`Petitioner:
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`David O. Simmons (dsimmons@ivcpatentagency.com)
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`Jonathan D. Hurt (jhurt@technologylitigators.com)
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`Mark A.J. Fassold (mfassold@wattsguerra.com)
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`Jorge Mares (jmares@wattsguerra.com)
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`Rico Reyes (rico@ricoreyeslaw.com)
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`Dated: January 19, 2018
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for Patent Owner
`Toyota Motor Corporation
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