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 MOTION FOR OBSERVATIONS ON CROSS-
`EXAMINATION
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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 MOTION FOR OBSERVATIONS ON CROSS-
`EXAMINATION
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`Patent Owner Toyota Motor Corporation submits the following observations
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`on the cross-examination of Dr. David Rozzell and Mr. Eric Ray, reply declarants
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`of Petitioner Reactive Surfaces Ltd. LLP.1 The transcripts of Dr. Rozzell’s and
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`Mr. Ray’s testimony have been filed as Exhibits 2017 and 2018, respectively.
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`I.
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`Observations on the Cross-Examination of Dr. Rozzell
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`A. Observations Relevant to Whether Buchanan (Exhibit 2013) Is
`Non-Analogous Art (PO Resp. 27-35).
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`1.
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`In Exhibit 2017, at 9:24-10:5, when asked whether, in defining the
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`“field of endeavor” of the ’618 patent as “enzyme-containing polymeric coatings
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`capable of facilitating the removal of fingerprints and other bioorganic stains by
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`vaporization,” see Ex. 1018 ¶ 37 (emphasis added), he had defined the “field of
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`endeavor” in terms of the inventors’ own invention, Dr. Rozzell admits that he
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`“defined it based on what [he] thought was the focus of the[ir] work, which was
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`the removal or facilitating the removal of fingerprints by vaporization.” This
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`admission is relevant to the parties’ disagreement regarding the proper definition of
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`the ’618 patent’s “field of endeavor.” See PO Resp. 28-30 (defining the relevant
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`1 Patent Owner has been authorized to file a sur-reply on certain issues. See Paper
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`53. To the extent that Dr. Rozzell and Mr. Ray testified on issues that Patent
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`Owner expects to address in the sur-reply, such testimony will be discussed in that
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`later filing rather than this paper.
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`1
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`“field of endeavor” broadly as “bioactive coatings”). The admission is relevant
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`because it highlights the hindsight nature of Dr. Rozzell’s definition.
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`2.
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`In Exhibit 2017, at 13:7-16, Dr. Rozzell admits that he has no
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`experience with “[r]emoving stains by vaporization.” Similarly, at 26:7-11, Dr.
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`Rozzell admits that he has no experience with “methods for facilitating the
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`removal of fingerprints by vaporization.” This admission is relevant to the
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`definition of the “field of endeavor.” See PO Resp. 28-30; Ex. 1018 ¶ 37. The
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`admission is relevant because it highlights the fact that Dr. Rozzell himself lacks
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`any experience or expertise in the relevant “field of endeavor” as he has defined it.
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`3.
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`In Exhibit 2017, at 13:20-14:1, when asked whether Buchanan “ha[s]
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`anything to do with enzymes or enzymes[-]containing polymeric coatings,” Dr.
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`Rozzell admits: “No.” Further, at 14:2-14:7, when asked whether Buchanan
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`therefore falls outside the relevant “field of endeavor” as defined in Dr. Rozzell’s
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`reply declaration, Dr. Rozzell admits that Buchanan “doesn’t include enzymes in
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`looking at the removal of fingerprints by vaporization.” These admissions are
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`relevant to Patent Owner’s argument that Buchanan is not from the same “field of
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`endeavor” as the ’618 patent. See PO Resp. 28-30. The admissions are relevant
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`because they demonstrate that Buchanan falls outside the relevant “field of
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`endeavor” even under Dr. Rozzell’s definition.
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`4.
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`In Exhibit 2017, at 16:20-17:11, Dr. Rozzell admits that the problem
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`2
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`addressed in the ’618 patent is “the removal of fingerprints.” Further, at 16:17-19,
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`when asked whether “there any other ways of removing bioorganic stains besides
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`vaporization,” Dr. Rozzell responds: “Of course.” This admission is relevant to
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`Patent Owner’s argument that Buchanan is not “reasonably pertinent to the
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`particular problem with which the inventor [was] involved.” See PO Resp. 30-35.
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`The admission is relevant because it supports Patent Owner’s position that
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`“Petitioner’s reliance on Buchanan for its alleged teaching that fingerprints can
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`vaporize reveals improper hindsight . . . because it amounts to [d]efining the
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`problem in terms of its solution.” See ibid. 35. (internal citation and quotation
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`marks omitted).
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`B. Observations Relevant to Whether Buchanan Provides a
`Suggestion or Reasonable Expectation That Associating a Lipase
`With a Surface Would Facilitate the Removal of Fingerprint
`Stains From the Surface via Vaporization (PO Resp. 35-49).
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`1.
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`In Exhibit 2017, at 28:12-29:12, when asked whether the breakdown
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`products obtained from lipase-catalyzed hydrolysis of lipids would necessarily
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`vaporize at ambient conditions, Dr. Rozzell admits that this “would depend on
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`what the breakdown products were . . . what the substrate for the lipase was going
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`to be.” This admission is relevant to Patent Owner’s argument that a POSITA
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`would not have reasonably expected that the association of a lipase with a substrate
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`would promote the removal of fingerprints stains from the substrate via
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`vaporization. See PO Resp. 36-37. The admission is relevant because it
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`3
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`undermines Dr. Rozzell’s testimony that the use of lipase to break down the lipid
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`components of a fingerprint stain into smaller compounds would have been
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`expected to facilitate the removal of the fingerprint stain. See Ex. 1018 ¶ 54; see
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`also Ex. 1010 ¶ 41.
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`2.
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`In Exhibit 2017, at 31:8-32:19, Dr. Rozzell admits that Ramotowski
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`(Exhibit 1024) makes a distinction between “sweat samples” and “latent print
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`residue[]” samples. At 32:20-22, Dr. Rozzell admits that Ramotowski is a
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`reputable source. These admissions are relevant to Dr. Dordick’s and Patent
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`Owner’s position that the data presented in Buchanan would not reasonably
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`support an expectation that fingerprints can be removed through vaporization, one
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`reason being that, instead of analyzing the chemical composition of actual
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`fingerprint residue deposited on a surface, the authors analyzed “sweat samples”
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`extracted from the subjects’ fingertips with rubbing alcohol (70% isopropanol in
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`water). See Ex. 2010 ¶¶ 37, 67-68; PO Resp. 41-43. These admissions are
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`relevant because they refute the testimony in Dr. Rozzell’s reply declaration that
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`the distinction made by Dr. Dordick between “sweat samples” and actual
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`fingerprint residue is “inaccurate and misleading.” See Ex. 1018 ¶ 59.
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`3.
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`In Exhibit 2017, at 34:12-35:1, Dr. Rozzell admits that isopropanol
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`might extract lipid compounds than would not be found in fingerprint residue.
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`This admission is relevant to the same argument as discussed above in Paragraph
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`4
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`B.2. The admission is relevant because it highlights the significance of the
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`Buchanan authors’ failure to verify whether and to what extent the chemical
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`composition of their samples (i.e., isopropanol-extracted “sweat samples”)
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`corresponded to the chemical composition of actual fingerprint residue. See Ex.
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`2010 ¶¶ 37, 67-68; PO Resp. 41-43.
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`4.
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`In Exhibit 2017, at 40:10-19, Dr. Rozzell testifies that the specific
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`lipids that had been identified in Buchanan as being present in the isopropanol-
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`extracted “sweat samples” were alkyl esters. At 41:10-21, when asked whether he
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`had “any evidence that the breakdown products obtained from the hydrolysis of
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`these alkyl esters . . . by lipase . . . would necessarily vaporize at ambient
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`conditions,” Dr. Rozzell admitted that he “didn’t have any evidence without more
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`detail as to what exactly those substances were.” This admission is relevant to
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`whether Buchanan would have reasonably supported an expectation that
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`associating a lipase with a surface would facilitate the evaporative removal of
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`fingerprint stains deposited on said surface. See PO Resp. 36-37. The admission is
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`relevant because it undermines Dr. Rozzell’s testimony that Buchanan would have
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`reasonably supported such an expectation. See Ex. 1018 ¶ 54; see also Ex. 1010 ¶¶
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`40-41.
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`5.
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`In Exhibit 2017, at 41:22-42:2, Dr. Rozzell testifies that cholesterol
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`esters were another class of compounds that had been identified in Buchanan as
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`5
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`being present in the isopropanol-extracted “sweat samples.” However, at 42:21-
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`43:7, Dr. Rozzell admits that, in his reply declaration, “the only enzyme [he]
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`specifically identified with th[e] capability to [hydrolyze cholesterol esters] is
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`cholesterol esterase,” and further admits that cholesterol esterase is not classified
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`as a lipase. At 43:8-22, when asked whether, assuming arguendo that cholesterol
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`esters were susceptible to being hydrolyzed by lipase, such hydrolysis would yield
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`compounds that “would necessarily vaporize at ambient temperatures or
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`conditions,” Dr. Rozzell admitted that that “would depend on what the acyl
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`component of the cholesterol ester would be.” These admissions are relevant to
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`whether Buchanan would have reasonably supported an expectation that
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`associating a lipase with a surface would facilitate the evaporative removal of
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`fingerprint stains. See PO Resp. 36-37. The admissions are relevant because they
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`also undermine Dr. Rozzell’s testimony that Buchanan would have reasonably
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`supported such an expectation. See Ex. 1018 ¶ 54; see also Ex. 1010 ¶¶ 40-41.
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`II. Observation on the Cross-Examination of Mr. Ray
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`1.
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`In Exhibit 2018, at 9:8-10:6, Mr. Ray admits that, in the context of the
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`’618 patent, a POSITA is a person “researching the application of lipases to a
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`surface and the subsequent degradation of fingerprint components on that surface,”
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`and further admits that he “would not consider [himself] a POSITA . . . in this
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`[field], because of [his] lack of experience in lipase-coated surfaces.” These
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`6
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`admissions are relevant, among other things, to whether Buchanan constitutes art
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`analogous to the ’618 patent. See PO Resp. 27-35. The admission is relevant
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`because it shows that, to the extent that Mr. Ray opines in his declaration that
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`Buchanan constitutes such analogous art, see Ex. 1020 ¶ 28, that opinion is not
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`based on the perspective of the relevant POSITA.
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` /s/ Joshua A. Lorentz
`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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`Dated: November 21, 2017
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`7
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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 MOTION FOR OBSERVATIONS ON CROSS-EXAMINATION was
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`served on November 21, 2017 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: November 21, 2017
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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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