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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`PETITIONER’S BRIEF IN RESPONSE TO THE JANUARY 12, 2018
`CONDUCT OF THE PROCEEDINGS ORDER UNDER 37 C.F.R. § 42.5
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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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`PETITIONER’S BRIEF IN RESPONSE TO THE JANUARY 12, 2018
`CONDUCT OF THE PROCEEDINGS ORDER UNDER 37 C.F.R. § 42.5
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`As it relates to IPR2016-01914 for U.S. Patent No. 8,394,618 (“the ’618 Patent”),
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`the Board in its Order under 37 C.F.R. § 42.5 (Paper 60 – “Order”) issued January 12, 2018
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`has raised the question sua sponte of “whether the limitation ‘facilitating the removal of a
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`fingerprint by vaporization from the lipase associated substrate or coating when contacted
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`by a fingerprint’ is a conditional method step.” For answering such question, the Board
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`has authorized each party to file a single paper addressing the proper application, if any, of
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`Ex parte Schulhauser (“Schulhauser”) to the challenged claims. Order at 3.
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` Proper application of Schulhauser requires a determination of whether,
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`consistent with the broadest reasonable interpretation of a method claim, one or more
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`steps of the method claim may be conditional. Schulhauser at 6-7 (incl. footnotes 1-3).
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`Where it is determined that one or more of such steps of the method claim is conditional
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`(i.e., conditional method step(s)), such application of Schulhauser requires assessing
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`patentability of the method claim as recited in accordance with such broadest reasonable
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`interpretation – i.e., as recited exclusive of such conditional method step(s).
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`Schulhauser at 7-10. Thus, Schulhauser sets forth the basis of reasoning that any step
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`or steps employed in a method claim need not be found in the prior art if, under the
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`broadest reasonable interpretation of such claim consistent with the specification, the
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`method need not invoke such step(s).
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`“[T]he language ‘when contacted by a fingerprint’ may indicate that this limitation
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`is conditional; that is, the action of ‘facilitating the removal of a fingerprint by
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`2
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`vaporization from the lipase associated substrate or coating’ may not occur at all unless
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`there is contact by a fingerprint.” Order [Paper 60] at 2. The following disclosures of
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`the specification of the ’618 Patent [Ex. 1001] support an interpretation of claim 1 that
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`facilitating the removal of a fingerprint by vaporization from the lipase associated
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`substrate or coating (“the facilitating limitation”) does not occur at all unless there is
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`contact by a fingerprint.
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`1. “A fingerprint as defined herein is a bioorganic stain, mark, or residue left
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`behind after an organism touches a substrate or coating.” Id. at 3:1-3.
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`2. “When a surface which is optionally a substrate or a coated substrate, is
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`contacted with a fingerprint, the lipase enzyme or combinations of enzymes
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`contact the fingerprint, or components thereof. The contacting allows the
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`enzymatic activity of the substrate or coating to interact with and
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`enzymatically alter the components of the fingerprint improving their
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`removal from the substrate or coating.” Id. at 10:36-42.
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`3. “The presence of lipase combined with the material of a substrate or a coating
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`on a substrate, optionally, with applied heat, breaks down fingerprint stains
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`for facilitated fingerprint removal.” Id. at 11:4-7.
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`4. “Apply mild heat after surface is loaded with fingerprint stain” Id. at FIG. 4.
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`“Based on the claim limitations as written, the broadest reasonable interpretation of
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`claim 1 encompasses an instance in which the method ends when” a surface of the substrate
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`or coating is not contacted by a fingerprint. Schulhauser at 8. The broadest reasonable
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`interpretation of claim 1 of the ’618 Patent requires neither enzymatic activity being provided
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`3
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`for by the lipase-associated substrate or coating nor application of heat to the surface of such
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`lipase-associated substrate or coating to occur at all unless a surface thereof is contact by a
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`fingerprint. Tellingly, there is no positively recited step in claim 1 for providing a fingerprint
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`on the substrate or coating and the lipase associated with the coating or substrate is only
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`recited in claim 1 as being “capable of” enzymatically degrading a component of a
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`fingerprint. ’618 Patent [Ex. 1001] at 15:21-23. Notably in claim 1 of Schulhauser, there
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`is not a positively recited step for determining either “the electrocardiac signal data is not
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`within the threshold electrocardiac criteria” or “the electrocardiac signal data is within the
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`threshold electrocardiac criteria.” Schulhauser at 6-7. For at least these reasons, the broadest
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`reasonable interpretation of claim 1 of the ’618 Patent consistent with the specification
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`thereof encompasses an instance of the method thereof in which the facilitating limitation is
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`a conditional method step.
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`Schulhauser requires assessing patentability of claim 1 of the ’618 Patent
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`exclusive of the facilitating limitation (i.e., the conditional method step). Schulhauser
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`at 7-10. Claim 1 recites, in pertinent part as it relates to such assessment of patentability
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`(’618 Patent [Ex. 1001] at 15:18-23):
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`providing a substrate or a coating;
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`associating a lipase with said substrate or said coating
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`such that said lipase is capable of enzymatically degrading a
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`component of a fingerprint.
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`4
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`Claim 1 of the ’618 Patent was asserted by Petitioner as being unpatentable under
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`35 U.S.C. §103(a) over each of Van Antwerp [Ex. 1006], Schneider [Ex. 1004] and
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`Drevon [Ex. 1003]. See Petition [Paper 1] at 36-38, 46-48, 53-56. Inter partes review of
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`claim 1 was instituted on grounds of unpatentability based upon each of Van Antwerp,
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`Schneider and Drevon. For each instituted ground of unpatentability for claim 1, the Board
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`stated, “There is sufficient evidence, on the present record and for present purposes, that
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`[the relied upon prior art] teaches or suggests ‘providing a substrate or a coating’ and
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`‘associating a lipase with said substrate or said coating such that said lipase is capable of
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`enzymatically degrading a component of a fingerprint.’” Institution Decision [Paper 26]
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`at 7, 16, and 23. Accordingly, the prior art of record in this proceeding supports a finding
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`of unpatentability of claim 1 of the ’618 Patent through proper application of Schulhauser
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`as it relates to the facilitating limitation of claim 1 of the ’618 Patent being a conditional
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`method step.
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`Dated: January 19, 2018
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`Respectfully submitted,
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`By:
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`/s/ David O. Simmons
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`David O. Simmons, Reg. No. 43,124
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`Email: dsimmons@ivcpatentagency.com
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`Counsel for Petitioner, Reactive
`Surfaces Ltd., LLP
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) and 42.105(b), the undersigned hereby
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`certifies that a copy of this PETITIONER’S BRIEF IN RESPONSE TO THE
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`JANUARY 12, 2018 CONDUCT OF THE PROCEEDINGS ORDER UNDER
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`37 C.F.R. § 42.5 for inter partes review of U.S. Patent No. 8,394,618 was served on
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`January 19, 2018 by email on the following counsel of record for Patent Owner:
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`Joshua A. Lorenz (joshua.lorentz@dinsmore.com)
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`Richard H. Schabowsky (richard.schabowsky@dinsmore.com)
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`John D. Luken (john.luken@dinsmore.com)
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`Oleg Khariton (oleg.khariton@dinsmore.com)
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`/s/ David O. Simmons
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`David O. Simmons, Reg. No. 43,124
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`Email: dsimmons@ivcpatentagency.com
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`Counsel for Petitioner, Reactive
`Surfaces Ltd., LLP
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`6
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