Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 26
`Entered: March 23, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01914
`Patent 8,394,618 B2
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 26
`Entered: March 23, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01914
`Patent 8,394,618 B2
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`INTRODUCTION
`
`A. Background
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–11 of U.S. Patent No.
`8,394,618 B2 (Ex. 1001, “the ’618 patent”). The Patent Owner did not file a
`Preliminary Response.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted unless “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`After considering the Petition and the evidence currently of record, we
`determine that Petitioner has demonstrated that there is a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition. Accordingly, we institute inter partes review.
`
`B. Related Matters
`The parties have not identified any judicial or administrative matters
`that involve the ’618 patent or that are otherwise related to this case.1 Pet. 1;
`Paper 4, 1.
`
`
`1 The parties note that the ’618 patent was the subject of Reactive Surfaces
`Ltd. LLP v. Toyota Motor Engineering & Manufacturing North America,
`Inc., Case No. 1-13-CV-1098-LY (W.D. Tex.), and Reactive Surfaces Ltd.
`LLP v. Toyota Motor Corporation, Case No. 1:14-CV-1009-LY (W.D.
`Tex.), both of which have been dismissed without prejudice. Pet. 1–2; Paper
`4, 1.
`
`2
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–11 of the ’618 patent are
`unpatentable based on the following grounds (Pet. 32, 35–63):2
`Statutory
`Basis
`Challenged Claim(s)
`Ground
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Van Antwerp3
`Van Antwerp and Bostek4
`Van Antwerp and Moon5
`Van Antwerp and Hamade6
`Schneider7
`Schneider and McDaniel8
`Drevon9
`Drevon and Schneider
`
`1–3
`4 and 5
`6–9
`10 and 11
`1–8, 10, and 11
`9
`1–9
`10 and 11
`
`
`2 Petitioner also relies on a declaration from Dr. David Rozzell. Ex. 1010.
`3 Van Antwerp, U.S. Patent No. 5,868,720, issued Feb. 9, 1999 (Ex. 1005,
`“Van Antwerp”).
`4 C. Carl Bostek, Effective Methods of In-Line Intravenous Fluid Warming at
`Low to Moderate Infusion Rates, 60 J. AM. ASS’N NURSE ANESTHETISTS 561,
`561–66 (Dec. 1992) (Ex. 1009, “Bostek”).
`5 Moon et al., US 2005/0176905 A1, published Aug. 11, 2005 (Ex. 1006,
`“Moon”).
`6 Hamade et al., U.S. Patent No. 6,150,146, issued Nov. 21, 2000 (Ex. 1007,
`“Hamade”).
`7 Schneider et al., US 2005/0147579 A1, published July 7, 2005 (Ex. 1004,
`“Schneider”).
`8 McDaniel, US 2004/0109853 A1, published June 10, 2004 (Ex. 1008,
`“McDaniel”).
`9 Géraldine F. Drevon, Enzyme Immobilization into Polymers and Coatings
`(Ph.D. Thesis, University of Pittsburgh, Nov. 2002) (Ex. 1003, “Drevon”).
`
`3
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`D. The ’618 Patent
`The ’618 patent is directed to a “substrate or coating . . . that includes
`a lipase with enzymatic activity toward a component of a fingerprint” and “a
`process for facilitating the removal of fingerprints . . . wherein an inventive
`substrate or coating including a lipase is capable of enzymatically
`degrading . . . one or more components of the fingerprint to facilitate
`fingerprint removal from the substrate or said coating.” Ex. 1001, at [57].
`“Fingerprint” is defined in the ’618 patent as “a bioorganic stain, mark, or
`residue left behind after an organism touches a substrate or coating,” and it
`“is not limited to marks or residue left behind after a substrate is touched by
`a finger.” Id. at 3:1–4. “Other sources of bioorganic stains are illustratively,
`palms, toes, feet, face, any other skin surface area, hair, stains from fats used
`in cooking such as cis-fatty acids, or fatty acids from any other source.” Id.
`at 3:4–8.
`
`E. Illustrative Claims
`All the claims of the ’618 patent are challenged. Claim 1 is
`independent and illustrative; it recites:
`
`1. A method of facilitating the removal of a fingerprint on a
`substrate or a coating comprising:
`providing a substrate or a coating;
`associating a lipase with said substrate or said coating such
`that said lipase is capable of enzymatically degrading a
`component of a fingerprint, and
`facilitating the removal of a fingerprint by vaporization
`from the lipase associated substrate or coating when
`contacted by a fingerprint.
`Id. at 15:18–27.
`
`4
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (upholding
`the use of the broadest reasonable interpretation standard). Claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes construing “facilitating the removal of a
`fingerprint by vaporization,” a term that appears in claim 1, as “enabling a
`bioorganic material deposited by an organism through touching a lipase
`associated substrate or coating to transition from an initial quantity of
`visually apparent bioorganic material being on such substrate or coating to a
`lesser quantity of visually apparent bioorganic material being thereon.”
`Pet. 22 (citing Pet. 8–22). This proposed construction generally is supported
`by the Specification of the ’618 patent. Ex. 1001, 3:1–9 (defining
`“fingerprint” as not limited to marks left by touching a surface with a finger,
`but also including other “bioorganic stains”). It does, however, expand the
`scope of the phrase beyond removal of fingerprints “by vaporization” to
`include removal by any and all means. Petitioner explains its deletion of the
`limitation “by vaporization” from its proposed construction by arguing that
`“‘removal of a fingerprint by vaporization’ does not find antecedent basis”
`earlier in claim 1. Pet. 21–22. According to Petitioner, because of this lack
`
`5
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`of antecedent basis, the “removal of a fingerprint by vaporization” is not
`“necessarily . . . dependent on enzymatic degradation of a component of a
`fingerprint.” Id. at 22. This does not explain why a person of ordinary skill
`in the art would understand “facilitating the removal of a fingerprint by
`vaporization” to include enabling the reduction of the amount of bioorganic
`material by any and all means. Accordingly, we do not adopt Petitioner’s
`proposed construction to the extent that it extends the permissible means of
`fingerprint removal beyond vaporization. For purposes of the present
`decision, and based on the current record, we construe “facilitating the
`removal of a fingerprint by vaporization” as “enabling a bioorganic material
`deposited by an organism through touching a surface to transition, by
`vaporization of the bioorganic material, from an initial quantity of visually
`apparent bioorganic material being on such substrate or coating to a lesser
`quantity of visually apparent bioorganic material being thereon.”
`
`B. Asserted Obviousness over Van Antwerp
`Petitioner argues that the subject matter of claims 1–3 would have
`been obvious to a person of ordinary skill in the art given the teachings of
`Van Antwerp. Pet. 32, 35–39.
`
`1. Van Antwerp
`Van Antwerp relates to “[a]n improved indwelling catheter adapted
`for long-term usage [that] includes a stable enzyme coating to prevent
`occlusion of the catheter lumen.” Ex. 1005, at [57]. The catheter of
`Van Antwerp “includes a stable and substantially immobilized enzyme
`coating to prevent formation of and/or to dissolve occlusions along the
`catheter lumen,” and the enzyme is disclosed as “fibrinolytic and/or
`lipolytic.” Id. at 2:34–40. The catheter itself “is commonly constructed
`
`6
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`from a polymeric material, such as medical grade silicone rubber,
`polyethylene, or the like.” Id. at 3:65–67. The lipolytic enzyme of the
`catheter coating “combines with grease or soap-like phospholipids produced
`in the presence of body fluids and certain medications, to produce soluble
`lipase compounds,” which causes the occlusion to be dissolved. Id. at 6:14–
`24.
`
`2. Analysis
`Petitioner argues that all limitations of claims 1–3 are taught or
`suggested by Van Antwerp. Pet. 36–39.
`
`a. Claim 1
`There is sufficient evidence, on the present record and for present
`purposes, that Van Antwerp teaches or suggests “providing a substrate or a
`coating” and “associating a lipase with said substrate or said coating such
`that said lipase is capable of enzymatically degrading a component of a
`fingerprint.” Pet. 36–37 (citing Ex. 1005, 2:34–42, 3:41–44, 3:65–67, 4:8–
`26, 6:14–18, Fig. 4).
`It is a closer case whether Van Antwerp teaches or suggests
`“facilitating the removal of a fingerprint by vaporization from the lipase
`associated substrate or coating when contacted by a fingerprint.”
`Van Antwerp does not disclose the evaporation of bioorganic stains, because
`the enzyme coating of Van Antwerp is designed for “long-term interaction
`with body fluids to prevent and/or dissolve clots and occlusions within the
`catheter lumen.” Ex. 1005, 1:16–20. Petitioner relies on the disclosure of
`the ’618 patent and the testimony of Dr. Rozzell to show that lipase
`facilitates the vaporization of fingerprints inherently when the fingerprints
`are “in an environment that would support such vaporization,” such as “an
`
`7
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`ambient environment consisting of air.” Pet. 37–38 (citing Pet. 13–15;
`Ex. 1010 ¶¶ 35–41, 94–96). The ’618 patent does not support a finding that
`it would have been known by a person of ordinary skill in the art either that
`fingerprints contain low-volatility lipids or that fingerprint lipids could be
`broken into smaller, higher-volatility molecules by contact with a lipase,
`because the disclosure cited refers to the inventors’ discovery of these facts,
`not the general knowledge in the art. Ex. 1001, 2:34–56. Dr. Rozzell’s
`testimony, however, does suggest that a person of ordinary skill in the art
`would have known (1) that fingerprints contain compounds of different
`volatilities, (2) that the presence of more high-volatility compounds would
`increase the rate at which fingerprints vaporize, and (3) that lipase could
`catalyze degradation of lipids in fingerprints to break those lipids into
`smaller molecules of higher volatility. Ex. 1010 ¶¶ 40–41 (citing Ex. 1013,
`at [57], ¶¶ 89, 91). Although Dr. Rozzell’s testimony borders on conclusory,
`it is not, on the present record, contradicted by any evidence or argument to
`the contrary. Accordingly, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 1
`over Van Antwerp.
`
`b. Claim 2
`Claim 2 of the ’618 patent depends from claim 1 and adds a limitation
`requiring that the lipase be “covalently attached to [the] substrate or [the]
`coating.” Ex. 1001, 15:28–29. Petitioner argues that Van Antwerp teaches
`or suggests this limitation. Pet. 38 (citing Ex. 1005, 5:29–43, 5:59–6:9).
`Van Antwerp discloses “chemically bond[ing]” enzyme-containing capsules
`to a catheter “by silicone chemistry,” where at least some of the bonds are
`covalent. Ex. 1005, 5:29–43, 5:59–6:9. Accordingly, on the present record,
`
`8
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`we determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 2 over Van Antwerp.
`
`c. Claim 3
`Claim 3 depends from claim 1 and requires that the lipase be “non-
`covalently adhered to or admixed into [the] substrate or [the] coating.”
`Ex. 1001, 15:30–32. Petitioner argues that Van Antwerp teaches or suggests
`this limitation. Pet. 38–39 (citing Ex. 1005, 2:46–50, 4:36–47).
`Van Antwerp discloses applying the enzyme to the catheter “as a thin
`micellar coating.” Ex. 1005, 2:46–50. This coating adheres to the catheter
`“in a micellar array of microsphere particles.” Id. at 4:36–47. Accordingly,
`on the present record, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 3
`over Van Antwerp.
`
`C. Asserted Obviousness over Van Antwerp and Bostek
`Petitioner argues that claims 4 and 5 would have been obvious to a
`person of ordinary skill in the art given the teachings of Van Antwerp and
`Bostek. Pet. 32, 39–40.
`
`1. Bostek
`Bostek relates to warming intravenous fluids during the administration
`of those fluids to patients. Ex. 1009, 561. Bostek discloses warming a bag
`of intravenous fluids to increase the temperature of the fluids being infused
`to 25 degrees Celsius or higher at the site of the infusion catheter. Id. at
`564–65.
`
`2. Analysis
`Petitioner argues that all limitations of claims 4 and 5 are taught or
`suggested by the combination of Van Antwerp and Bostek. Pet. 39–40.
`
`9
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`a. Claim 4
`Claim 4 depends from claim 1 and adds a limitation requiring
`“heating [the] substrate or [the] coating or applying heat to a surface of said
`substrate or said coating subsequent to being contacted by a fingerprint.”
`Ex. 1001, 15:33–35. Petitioner argues that this limitation is taught or
`suggested by Bostek. Pet. 39–40 (citing Ex. 1009, 564–65). Bostek
`discloses heating intravenous fluid before it is infused into a patient, and
`Bostek teaches that this heating causes the temperature of the fluid passing
`through the catheter to rise, which would cause the catheter and its coating
`to be warmed. Ex. 1009, 564–65. In addition, Petitioner argues that a
`person of ordinary skill in the art would have been motivated to combine the
`teachings of Bostek with those of Van Antwerp because Bostek provides
`specific examples of using a catheter, such as the catheter described in
`Van Antwerp, to administer fluids to a patient. Pet. 40. The use of
`Van Antwerp’s catheter in Bostek’s heating and infusing process appears on
`the present record to be no more than the combination of prior-art elements
`according to known methods to yield predictable results. KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly, on the present record,
`we determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 4 over the combination of
`Van Antwerp and Bostek.
`
`b. Claim 5
`Claim 5 depends from claim 4 and adds a limitation requiring that the
`heating take place “for at least 30 minutes.” Ex. 1001, 15:36–37. Petitioner
`argues that this limitation is taught or suggested by Bostek. Pet. 40 (citing
`Ex. 1009, 564–65). Bostek discloses infusing heated intravenous solution
`
`10
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`for up to two hours. Ex. 1009, 564. Accordingly, on the present record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 5 over the combination of
`Van Antwerp and Bostek.
`
`D. Asserted Obviousness over Van Antwerp and Moon
`Petitioner argues that claims 6–9 would have been obvious to a person
`of ordinary skill in the art given the teachings of Van Antwerp and Moon.
`Pet. 32, 40–43.
`
`1. Moon
`Moon “relates to a monomer with anti-microbial characteristics, a
`polymeric compound with anti-microbial characteristics using the same, and
`manufacturing methods thereof.” Ex. 1006, at [57]. Moon discloses a
`“polymeric resin composition” that is “particularly useful for medical
`supplies . . . such as catheters.” Id. ¶ 59.
`
`2. Analysis
`Petitioner argues that all limitations of claims 6–9 are taught or
`suggested by the combination of Van Antwerp and Moon. Pet. 40–43.
`
`a. Claim 6
`Claim 6 depends from claim 1 and adds a limitation requiring that the
`substrate or coating “comprise[] an organic crosslinkable polymer resin.”
`Ex. 1001, 16:17–18. Petitioner argues that Van Antwerp teaches or suggests
`this limitation.10 Pet. 40 (citing Ex. 1005, 3:65–67). Van Antwerp discloses
`
`
`10 Although Petitioner includes claim 6 in the group of claims challenged as
`obvious over the combination of Van Antwerp and Moon, Petitioner does
`not rely on Moon to teach or suggest any limitation of claim 6. Pet. 32, 40.
`
`11
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`making its catheter from polyethylene, which is an organic crosslinkable
`polymer resin. Ex. 1005, 3:65–67. Accordingly, on the present record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 6 over the combination of
`Van Antwerp and Moon.
`
`b. Claim 7
`Claim 7 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin comprise[] a functional group of
`acetoacetate, acid, amine, carboxyl, epoxy, hydroxyl, isocyanate, silane,
`vinyl, or combinations thereof.” Ex. 1001, 16:19–22. Petitioner argues that
`Moon teaches or suggests this limitation. Pet. 40–41 (citing Ex. 1006 ¶¶ 59,
`112, 115, 119). Moon discloses antimicrobial polymeric resin materials for
`use in medical supplies, such as catheters, and Moon discloses that these
`materials may include isocyanate, hydroxyl, or epoxy functional groups.
`Ex. 1006 ¶¶ 59, 112, 115, 119. In addition, Petitioner argues that a person of
`ordinary skill in the art would have been motivated to combine the teachings
`of Moon with those of Van Antwerp because Moon discloses making a
`catheter, such as that disclosed in Van Antwerp, from materials that have
`improved antimicrobial characteristics. Pet. 41. The use of Moon’s
`materials to make Van Antwerp’s catheter appears on the present record to
`be no more than the combination of prior-art elements according to known
`methods to yield predictable results. KSR, 550 U.S. at 417. Accordingly, on
`the present record, we determine that Petitioner has established a reasonable
`likelihood of prevailing in showing the obviousness of claim 7 over the
`combination of Van Antwerp and Moon.
`
`12
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`c. Claim 8
`Claim 8 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin [be] aminoplasts, melamine
`formaldehydes, carbamates, polyurethanes, polyacrylates, epoxies,
`polycarbonates, alkyds, vinyls, polyamides, polyolefins, phenolic resins,
`polyesters, polysiloxanes, or combinations thereof.” Ex. 1001, 16:23–27.
`Petitioner argues that Van Antwerp teaches or suggests this limitation.11
`Pet. 41–42 (citing Ex. 1005, 3:65–67). Van Antwerp discloses making its
`catheter from polyethylene, which is a polyolefin. Ex. 1005, 3:65–67.
`Accordingly, on the present record, we determine that Petitioner has
`established a reasonable likelihood of prevailing in showing the obviousness
`of claim 8 over the combination of Van Antwerp and Moon.
`
`d. Claim 9
`Claim 9 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer [be] a hydroxyl-functionalized acrylate
`resin.” Ex. 1001, 16:28–29. Petitioner argues that Moon teaches or suggests
`this limitation. Pet. 42–43 (citing Ex. 1006 ¶¶ 59, 112, 115, 120–22). Moon
`discloses some polymers that are hydroxyl-functionalized acrylate resins.
`Ex. 1006 ¶¶ 120–22. Accordingly, on the present record, we determine that
`Petitioner has established a reasonable likelihood of prevailing in showing
`the obviousness of claim 9 over the combination of Van Antwerp and Moon.
`
`
`11 Although Petitioner includes claim 8 in the group of claims challenged as
`obvious over the combination of Van Antwerp and Moon, Petitioner does
`not rely on Moon to teach or suggest any limitation of claim 8. Pet. 32, 41–
`42.
`
`13
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`E. Asserted Obviousness over Van Antwerp and Hamade
`Petitioner argues that claims 10 and 11 would have been obvious to a
`person of ordinary skill in the art given the teachings of Van Antwerp and
`Hamade. Pet. 32, 43–45.
`
`1. Hamade
`Hamade relates to “[a] novel method for controlled release of
`compounds having antimicrobial activity and a novel coating composition
`capable of controlled release of compounds having antimicrobial activity.”
`Ex. 1007, at [57]. Hamade discloses producing a “compound having
`antimicrobial activity . . . by enzymatic reaction between an enzyme and a
`substrate.” Id. at 3:29–31. The enzymes used in Hamade include an
`esterase, such as triacylglycerol lipase and lipoprotein lipase. Id. at 4:5–15.
`
`2. Analysis
`Petitioner argues that all limitations of claims 10 and 11 are taught or
`suggested by the combination of Van Antwerp and Hamade. Pet. 43–45.
`
`a. Claim 10
`Claim 10 depends from claim 1 and adds a limitation requiring that
`the lipase be “lipoprotein lipase, acylglycerol lipase, hormone-sensitive
`lipase, phospholipase A1, phospholipase A2, phospholipase C,
`phospholipase D, phosphoinositide phospholipase C, a lysophospholipase, or
`a galactolipase.” Ex. 1001, 16:30–34. Petitioner argues that Hamade
`teaches or suggests this limitation. Pet. 43–44 (citing Ex. 1007, 4:7–15,
`7:31–35). Hamade discloses a coating that produces antimicrobial activity
`using an enzyme that can be lipase, such as triacylglycerol lipase or
`lipoprotein lipase. Ex. 1007, 4:7–15, 7:31–35. In addition, Petitioner argues
`that a person of ordinary skill in the art would have been motivated to
`
`14
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`combine the teachings of Hamade with those of Van Antwerp because a
`person of ordinary skill in the art would have sought enzymes that “exhibit
`enzymatic activity against various lipids.” Pet. 44. The use of Hamade’s
`lipases to coat Van Antwerp’s catheter appears on the present record to be
`no more than the combination of prior-art elements according to known
`methods to yield predictable results. KSR, 550 U.S. at 417. Accordingly, on
`the present record, we determine that Petitioner has established a reasonable
`likelihood of prevailing in showing the obviousness of claim 10 over the
`combination of Van Antwerp and Hamade.
`
`b. Claim 11
`Claim 11 depends from claim 1 and adds a limitation requiring that
`the lipase be “a triacylglycerol lipase.” Ex. 1001, 16:35–36. Petitioner
`argues that Hamade teaches or suggests this limitation. Pet. 44–45 (citing
`Ex. 1007, 4:7–15, 7:31–35). Hamade discloses a coating that produces
`antimicrobial activity using an enzyme that can be lipase, such as
`triacylglycerol lipase or lipoprotein lipase. Ex. 1007, 4:7–15, 7:31–35.
`Accordingly, on the present record, we determine that Petitioner has
`established a reasonable likelihood of prevailing in showing the obviousness
`of claim 11 over the combination of Van Antwerp and Hamade.
`
`F. Asserted Obviousness over Schneider
`Petitioner argues that claims 1–8, 10, and 11 would have been obvious
`to a person of ordinary skill in the art given the teachings of Schneider.
`Pet. 32, 45–53.
`
`1. Schneider
`Schneider “relates to a coating composition comprising at least one
`enzyme capable of acting on a compound, wherein said action results in the
`
`15
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`formation of an antifouling species comprising an antifouling activity.”
`Ex. 1004, at [57]. The enzymes used in Schneider include “an esterase,
`including a lipase.” Id. ¶ 52. When a lipase is used, Schneider teaches that
`it “degrade[s] cell wall lipids and other lipid associated macro-molecules at
`the surface of microbial organisms.” Id. ¶ 72.
`
`2. Analysis
`Petitioner argues that all limitations of claims 1–8, 10, and 11 are
`taught or suggested by Schneider. Pet. 46–53.
`
`a. Claim 1
`There is sufficient evidence, on the present record and for present
`purposes, that Schneider teaches or suggests “providing a substrate or a
`coating” and “associating a lipase with said substrate or said coating such
`that said lipase is capable of enzymatically degrading a component of a
`fingerprint.” Pet. 46–47 (citing Ex. 1004 ¶¶ 50, 52, 74, 88–90, 96, 125, 247,
`248, 253, 262, 269).
`It is a closer case whether Schneider teaches or suggests “facilitating
`the removal of a fingerprint by vaporization from the lipase associated
`substrate or coating when contacted by a fingerprint.” Petitioner has not
`directed us to record evidence that Schneider itself teaches or suggests the
`evaporation of bioorganic stains. Instead, Petitioner relies on the disclosure
`of the ’618 patent and the testimony of Dr. Rozzell to show that lipase
`facilitates the vaporization of fingerprints inherently when the fingerprints
`are “in an environment that would support such vaporization,” such as “an
`ambient environment consisting of air.” Pet. 47–48 (citing Pet. 13–15;
`Ex. 1010 ¶¶ 35–41, 142–44). The ’618 patent does not support a finding
`that it would have been known by a person of ordinary skill in the art either
`
`16
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`that fingerprints contain low-volatility lipids or that fingerprint lipids could
`be broken into smaller, higher-volatility molecules by contact with a lipase,
`because the disclosure cited refers to the inventors’ discovery of these facts,
`not the general knowledge in the art. Ex. 1001, 2:34–56. Dr. Rozzell’s
`testimony, however, does suggest that a person of ordinary skill in the art
`would have known (1) that fingerprints contain compounds of different
`volatilities, (2) that the presence of more high-volatility compounds would
`increase the rate at which fingerprints vaporize, and (3) that lipase could
`catalyze degradation of lipids in fingerprints to break those lipids into
`smaller molecules of higher volatility. Ex. 1010 ¶¶ 40–41 (citing Ex. 1013,
`at [57], ¶¶ 89, 91). Although Dr. Rozzell’s testimony borders on conclusory,
`it is not, on the present record, contradicted by any evidence or argument to
`the contrary. Accordingly, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 1
`over Schneider.
`
`b. Claim 2
`Claim 2 of the ’618 patent depends from claim 1 and adds a limitation
`requiring that the lipase be “covalently attached to [the] substrate or [the]
`coating.” Ex. 1001, 15:28–29. Petitioner argues that this type of enzyme-
`substrate bonding was well known in the art. Pet. 48–49 (citing Ex. 1010
`¶ 42). The testimony of Dr. Rozzell, to which Petitioner cites, is supported
`by some evidence that covalent bonding of enzymes was known in the art.
`Ex. 1010, Attachment G. Also, on the present record, it is not contradicted
`by any evidence or argument to the contrary. Accordingly, we determine
`that Petitioner has established a reasonable likelihood of prevailing in
`showing the obviousness of claim 2 over Schneider.
`
`17
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`c. Claim 3
`Claim 3 depends from claim 1 and requires that the lipase be “non-
`covalently adhered to or admixed into [the] substrate or [the] coating.”
`Ex. 1001, 15:30–32. Petitioner argues that Schneider teaches or suggests
`this limitation. Pet. 49 (citing Ex. 1004 ¶¶ 110, 263). Schneider discloses
`that its compositions “can be prepared simply by mixing the various
`ingredients at a temperature at which they are not adversely affected.”
`Ex. 1004 ¶ 263. Accordingly, on the present record, we determine that
`Petitioner has established a reasonable likelihood of prevailing in showing
`the obviousness of claim 3 over Schneider.
`
`d. Claim 4
`Claim 4 depends from claim 1 and adds a limitation requiring
`“heating [the] substrate or [the] coating or applying heat to a surface of said
`substrate or said coating subsequent to being contacted by a fingerprint.”
`Ex. 1001, 15:33–35. Petitioner argues that this limitation is taught or
`suggested by Schneider. Pet. 49–50 (citing Ex. 1004 ¶¶ 249, 269).
`Schneider discloses using its coating on the “external surface of a central
`heating system.” Ex. 1004 ¶ 249. Accordingly, on the present record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 4 over Schneider.
`
`e. Claim 5
`Claim 5 depends from claim 4 and adds a limitation requiring that the
`heating take place “for at least 30 minutes.” Ex. 1001, 15:36–37. Citing to
`the testimony of Dr. Rozzell, Petitioner argues that this limitation is taught
`or suggested by Schneider. Pet. 49–50 (citing Ex. 1004 ¶¶ 249, 269;
`Ex. 1010 ¶ 149). Dr. Rozzell’s testimony is some evidence that a person of
`
`18
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`ordinary skill in the art would have known that the “external surface of a
`central heating system” of Schneider could be “exposed to heated air for
`several hours each day.” Ex. 1004 ¶ 249; Ex. 1010 ¶ 149. That testimony is
`not, on the present record, contradicted by any evidence or argument to the
`contrary. Accordingly, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 5
`over Schneider.
`
`f. Claim 6
`Claim 6 depends from claim 1 and adds a limitation requiring that the
`substrate or coating “comprise[] an organic crosslinkable polymer resin.”
`Ex. 1001, 16:17–18. Petitioner argues that Schneider teaches or suggests
`this limitation. Pet. 50 (citing Ex. 1004 ¶¶ 225, 253). Schneider discloses
`making its coatings from alkyd, epoxy, urethane, polyester, vinyl, or
`phenolic resins, all of which are organic crosslinkable polymer resins.
`Ex. 1004 ¶ 253. Accordingly, on the present record, we determine that
`Petitioner has established a reasonable likelihood of prevailing in showing
`the obviousness of claim 6 over Schneider.
`
`g. Claim 7
`Claim 7 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin comprise[] a functional group of
`acetoacetate, acid, amine, carboxyl, epoxy, hydroxyl, isocyanate, silane,
`vinyl, or combinations thereof.” Ex. 1001, 16:19–22. Petitioner argues that
`Schneider teaches or suggests this limitation. Pet. 50–51 (citing Ex. 1004
`¶ 253; Ex. 1010 ¶ 153). Schneider discloses making its coatings from alkyd,
`epoxy, urethane, or phenolic resins. Ex. 1004 ¶ 253. Dr. Rozzell testifies
`that epoxy, urethane, and phenolic resins “comprise epoxy, isocyanate, and
`
`19
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`hydroxyl functional groups, respectively.” Ex. 1010 ¶ 153. Accordingly, on
`the present record, we determine that Petitioner has established a reasonable
`likelihood of prevailing in showing the obviousness of claim 7 over
`Schneider.
`
`h. Claim 8
`Claim 8 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin [be] aminoplasts, melamine
`formaldehydes, carbamates, polyurethanes, polyacrylates, epoxies,
`polycarbonates, alkyds, vinyls, polyamides, polyolefins, phenolic resins,
`polyesters, polysiloxanes, or combinations thereof.” Ex. 1001, 16:23–27.
`Petitioner argues that Schneider teaches or suggests this limitation. Pet. 51
`(citing Ex. 1004 ¶ 253). Schneider discloses making its coatings from alkyd,
`epoxy, urethane, polyester, vinyl, or phenolic resins, all of which are organic
`crosslinkable polymer resins. Ex. 1004 ¶ 253. Accordingly, on the present
`record, we determine that Petitioner has established a reasonable likelihood
`of prevailing in showing the obviousness of claim 8 over Schneider.
`
`i. Claim 10
`Claim 10 depends from claim 1 and adds a limitation
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
