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 SUR-REPLY
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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 SUR-REPLY
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`Patent Owner submits this Sur-Reply pursuant to the Order of November 17.
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`I. The Newly Relied-Upon Wang Reference Does Not Suggest the Use of
`Lipase for Facilitating Evaporative Fingerprint Removal.
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`In an attempt to remedy the deficiencies in the prior art relied upon in the
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`Petition, Petitioner submits the Wang reference and suggests that it somehow
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`shows that “stain removal by catalytic action and evaporation were well-known.”
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`Reply 9-10 (capitalization omitted). In fact, Wang was already considered by the
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`Office during prosecution. As the applicants successfully argued then, while Wang
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`discloses that enzymes such as lipase can degrade the components of a bioorganic
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`stain, it lacks any teaching that such degradation can facilitate the removal a
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`fingerprint stain by vaporization. Ex. 1012 at 10. Petitioner’s expert Dr. Rozzell
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`admitted as much in his deposition, including on examination by Petitioner’s own
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`counsel. Ex. 2017 at 54:12-18 (“Q: . . . [I]n totality, considering the disclosures of
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`Wang, do these disclosures provide for the removal of a bioorganic stain by
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`evaporation? A: . . . I don’t believe so. I believe the focus is on breaking down the
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`components but not explicitly disclosing evaporation.”); see also id. at 11:8-12:13.
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`Thus, the prior art, including Wang, gave no expectation that degrading the
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`components of a bioorganic stain into smaller molecules would facilitate the
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`removal of the stain by vaporization. As argued by the applicants in prosecution,
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`Wang in particular provided “no expectation that the activity of a lipase associated
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`coating or substrate will actually promote removal of [a] fingerprint as opposed to
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`1
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`merely degrading one or more component parts and leaving those component parts
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`on the surface of the material,” which “may explain why [Wang] requires washing
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`with [deionized] water to actually remove the [decomposed] stain.” Ex. 1012 at
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`10-11 (emphasis added); see Ex. 1025 ¶ [0051] (removing an egg-white stain
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`degraded with protease by “wash[ing] with DI water”). In his deposition, Dr.
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`Rozzell admitted that there would be no expectation that breaking down the
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`components of a fingerprint stain into smaller molecules with lipase would
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`necessarily make the stain less visible. Ex. 2017 at 59:22-60:12; cf. Inst. Dec. 5-6
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`(construing the phrase “facilitating the removal of a fingerprint by vaporization” in
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`claim 1 to require a reduction in “visually apparent” bioorganic material). Wang
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`does not suggest, never mind teach, the methods of the ’618 patent.
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`II. Petitioner’s Belated Evidence Does Not Establish That Buchanan Was
`“Publicly Accessible.”
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` The Institution Decision noted that Petitioner’s case hinges on the testimony
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`of Dr. Rozzell. Inst. Dec. 7-8, 16-17, 23-24. The only support he offers for his
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`assertions regarding the alleged obviousness of using lipase in a method of
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`facilitating the removal of fingerprints by vaporization is the Buchanan paper. See
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`Ex. 1010 ¶¶ 32-34, 40-41. Because the reply evidence belatedly submitted by
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`Petitioner does not show that Buchanan was in fact “publicly accessible” before
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`the ’618 patent’s priority date, Dr. Rozzell’s testimony (already described in the
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`Institution Decision as “border[ing] on conclusory”) should be given no weight.
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`2
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
` A reference is “publicly accessible” if it has been “[1] disseminated or [2]
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`otherwise made available to the extent that persons interested and ordinarily skilled
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`in the subject matter or art exercising reasonable diligence, can locate it.” Suffolk
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`Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014). Petitioner has not
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`shown that Buchanan was ever “disseminated” to persons in the relevant field—
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`i.e., bioactive materials scientists. While the Pepper declaration (cited at page 25
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`of the Reply) asserts that Buchanan appeared in the “Proceedings”1 of a conference
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`sponsored by the Society of Photo-Optical Instrumentation Engineers and entitled
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`“Forensic Evidence Analysis and Crime Scene Investigation,” see Ex. 1023 at 1,
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`the target audience for this conference would have been forensic scientists (as its
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`name plainly suggests). Petitioner’s own expert Eric Ray (a trained forensic
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`scientist) admits that such persons do not qualify as POSITAs in the field of the
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`’618 patent. Ex. 2018 at 9:8-10:6 (Mr. Ray testifying that he “would not consider
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`[himself] to be a POSITA . . . because of [his] lack of experience in lipase-coated
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`surfaces”). Because the target audience of the conference did not include persons
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`in the relevant field, the fact that the Buchanan paper might have been presented
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`there does not establish its “public accessibility.” See Coalition for Affordable
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`Drugs VIII, LLC v. The Trustees of The Univ. of Pa., IPR2015-01835, Paper 56 at
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`1 A conference proceeding is a collection of research papers presented at a
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`conference. See, e.g., http://libguides.gatech.edu/confproc.
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`3
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`19 (Mar. 6, 2017) (a slide set presented at an investor day was not sufficiently
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`disseminated because there was no evidence that “the target audience would have
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`been an ordinary artisan in the relevant field”).
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` Not only is there no evidence that Buchanan was ever “disseminated” to the
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`relevant POSITAs, but there is also no evidence that it was “otherwise made
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`available” to an extent that a reasonably diligent POSITA could locate it. For
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`example, the record lacks any evidence that a copy of the conference proceedings
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`in which Buchanan allegedly appeared was received and catalogued by any library
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`or online database prior to the relevant date. Cf. Marvell Semiconductor, Inc., v.
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`Intellectual Ventures I LLC, IPR2014-00553, Paper 57 at 7-9 (Nov. 30, 2015)
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`(finding that a conference proceedings paper was “publicly accessible” where the
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`petitioner provided a declaration from a university librarian with knowledge of the
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`library’s “normal practices for recording the receipt of and cataloging and shelving
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`of conference proceedings” as well as the catalog record for the paper). The fact
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`that Buchanan was apparently referenced in a handful of other forensics papers, see
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`Reply 25; Ex. 1018 ¶¶ 47-53, does not prove that it was sufficiently available to the
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`relevant research community; at most, this suggests that the paper might have been
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`circulated among forensic scientists and crime scene investigators.
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`III. The Ray Declaration Does Not Bolster Petitioner’s Case.
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` With its Reply, Petitioner has introduced a declaration from a brand new
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`4
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`expert, Mr. Ray. Much of Mr. Ray’s declaration attempts to fill the gaps in
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`Petitioner’s initial case, particularly in Dr. Rozzell’s testimony. In particular, Mr.
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`Ray suggests that the prior art would have revealed to the POSITA both that the
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`lipid components of fingerprint residue tend to vaporize from the surface and that
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`lipase enzymes can facilitate this process. See Ex. 1020 ¶¶ 20, 26-27. However,
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`his assertions in that respect are just as unsubstantiated as Dr. Rozzell’s.
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` To begin with, Mr. Ray, by his own admission, is not a POSITA. See supra
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`at 3; Ex. 2018 at 36:9-12 (“I am really an expert in fingerprints and aspects of
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`developing, comparing, researching fingerprints and fingerprint residue, but not in
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`the art of bioactive surfaces.”). Accordingly, to the extent that he purports to opine
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`that a POSITA would have been motivated to use lipase in a method of facilitating
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`the removal of fingerprints, that opinion plainly lacks any competent foundation.
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` Further, the prior art cited by Mr. Ray lends no credibility to his assertions.
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`Thus, his declaration claims that the Ramotowski reference disclosed the tendency
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`of fingerprint lipids to evaporate from the surface after being degraded into smaller
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`compounds, see Ex. 1020 ¶ 20, but Ramotowski in fact makes no reference to the
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`evaporation of lipids or their breakdown products, as Mr. Ray was forced to admit
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`on cross-examination. Ex. 2018 at 18:9-19:7. While he asserted in his deposition
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`that it would be the “inherent property” of compounds formed by the lipase-
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`catalyzed breakdown of lipids to evaporate from the surface, id. at 19:13-17, there
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`5
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`is simply no teaching to that effect in Ramotowski. As such, Ramotowski fails to
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`establish a pre-existing expectation that the action of lipase would promote the
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`removal of a fingerprint stain as opposed to merely degrading some components of
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`the stain and leaving those components on the surface. See supra at 1-2.
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` Similarly, the Mong reference cited by Mr. Ray, see Ex. 1020 ¶ 20, indicates
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`only that water evaporates from fingerprint residue over time. Ex. 2013 at 12
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`(stating that “up to 85% of the fingerprint’s weight (presumably as water)” is lost
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`over two weeks). This is beside the point. First, to the extent that the water
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`portion of a fingerprint evaporates over time, the activity of a lipase would not be
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`expected to facilitate that process. See Ex. 2018 at 34:21-35:12. Second, the loss
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`of water does not result in the removal of the fingerprint. To the contrary, Mong
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`explains that it results in “[t]he consolidation of the materials in the fingerprint to a
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`waxy layer,” Ex. 2013 at 12, which, by Mr. Ray’s own admission, would actually
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`be expected to make the remaining compounds less likely to evaporate. Ex. 2018
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`at 27:23-28:10 (“[T]hat mixture of lower molecular weight compounds, and
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`particularly saturated compounds, forms a harder, more crystal[l]ine shell [which]
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`further lowers the chance of vaporization of those resulting compounds.”). Thus,
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`Mong does not disclose that fingerprint stains can be removed from a surface by
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`vaporization, much less that lipase would be useful in facilitating such removal. In
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`sum, Mr. Ray’s declaration offers no support for Petitioner’s arguments.
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`6
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`Dated: November 27, 2017
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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
`Attorney for Patent Owner
`Toyota Motor Corporation
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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 SUR-REPLY was served on November 27, 2017 by email on the
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`following counsel of record for 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 27, 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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