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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`
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS-EXAMINATION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`REACTIVE SURFACES LTD., LLP
`
`Petitioner
`
`v.
`
`TOYOTA MOTOR CORPORATION
`
`Patent Owner
`
`
`
`
`
`Case: IPR2016-01914
`
`Patent No. 8,394,618 B2
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS-EXAMINATION
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`
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`In association with inter partes review of claims 1-11 (“Challenged Claims”)
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`of United States Patent No. 8,394,618 (“’618 Patent”), Petitioner Reactive Surfaces
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`Ltd. LLP submits the following response to Patent Owner’s Motion for Observation
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`on Cross-examination (“Motion”) of Dr. David Rozzell and Mr. Eric Ray, such
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`cross-examinations both conducted on November 15, 2017.
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`
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`Observation I.A.1
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to the parties’ disagreement regarding the proper definition of
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`the ’618 Patent’s “field of endeavor” and is relevant because it allegedly highlights
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`the hindsight nature of Dr. Rozzell’s definition. (Motion at 1)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because Dr. Rozzell has testified in regard to the field of endeavor in the context of
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`the field of the claimed invention and in regard to the prior art. (See Ex. 2017 at
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`10:12-14.) For example, in the context of this observation, when asked “[a]re you
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`aware of any prior art patents or publications that talked about using enzymes
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`containing polymeric coatings to facilitate the removal of fingerprints and other
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`bioorganic stains by vaporization” in the context of the basis of his definition of the
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`field of endeavor, Dr. Rozzell answered “Yes” and, when asked “Can you name --
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` 1
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`can you name -- name them” Dr. Rozzell answered “The first one that comes to mind
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`is actually one of the exhibits, I believe it's Wang” (See Ex. 2017 at 10:15-23). Dr.
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`Rozzell goes on to testify as to specific prior art disclosure in Wang supporting the
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`basis of such definition of the field of endeavor. (Ex. 2017 at 47:25-49:24; 57:8-
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`58:9.) For example, in regard to Wang, Dr. Rozzell has testified that:
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`1. “Well, Wang teaches that the enzymes could be a protease if it's a protein
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`stain or a lipase if it's an oil or lipid or fat-based stain. We tend to break
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`those molecules down, hydrolyze them, and create sort of self-cleansing
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`type mechanism to assist in the removal of that stain.” when asked “[w]hat
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`effect would you say such hydrolyzation, as referenced in Wang or
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`disclosed by Wang, have on a stain of Wang?” (Ex. 2017 at 49:6-14)
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`2. “It would assist it. It would make it more likely to happen.” when asked
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`what effect would such hydrolyzing have on the ability of a lipid or a
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`bioorganic stain such as a lipid to evaporate?” (Ex. 2017 at 49:20-24)
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`
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`Observation I.A.2
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to the definition of the “field of endeavor” and is relevant
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` 2
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`because it highlights the fact that Dr. Rozzell himself lacks any experience or
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`expertise in the relevant “field of endeavor” as he has defined it. (Motion at 2)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because Dr. Rozzell’s testimony supports his experience as it relates to the
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`underlying enzymatic functionality that can provide for facilitating the removal of
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`fingerprints by vaporization. For example, although Dr. Rozzell has testified that
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`“Personally, I haven't worked on specifically trying to remove fingerprints by
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`vaporization using an enzyme-associated coating” (See Ex. 2017 at 27:5-7), he has
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`unambiguously testified to his in-depth understanding of the underlying mechanism
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`that enables removal of bioorganic stains from a lipase associated coating or substrate
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`by vaporization. (See Ex. 2017 at 27:8-29:12; 38:18-39:14; 43:8-43:22; 49:9-24;
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`52:8-54:24; 59:16-60:18.) Also supporting his opinion that Buchanan is pertinent
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`and analogous art, Dr. Rozzell has testified that “Buchanan dealt with the whole idea
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`of fingerprints disappearing on the basis of vaporization, and she showed that
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`fingerprints with more volatile components disappeared more quickly.” (See Ex.
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`2017 at 45:23-46:4.)
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` 3
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`Observation I.A.3
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to Patent Owner’s argument that Buchanan is not from the
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`same “field of endeavor” as the ’618 Patent and is relevant because it demonstrates
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`that Buchanan falls outside the relevant “field of endeavor” even under Dr. Rozzell’s
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`definition. (Motion at 2)
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`Dr. Rozzell’s testimony in this observation must be viewed in the context of
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`him having opined in his Reply Declaration that Buchanan is “highly pertinent and
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`analogous art.” (See Ex. 1018 at 38, Ex. 2017 at 13:17-23.) Accordingly, the cited
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`testimony in this observation is not relevant in the manner asserted by Patent Owner
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`because such testimony is consistent with Dr. Rozzell having opined that Buchanan
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`is “pertinent and analogous art” as it relates to the claimed invention. Also
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`supporting his opinion that Buchanan is pertinent and analogous art, Dr. Rozzell has
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`testified that “Buchanan dealt with the whole idea of fingerprints disappearing on the
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`basis of vaporization, and she showed that fingerprints with more volatile
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`components disappeared more quickly.” and “[T]he mechanism that they spelled out
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`in the '618 patent as to why their invention worked was that the lipase was converting
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`more higher boiling components in fingerprints to lower boiling, and, thereby,
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`rendering them more vaporizable. So this mechanism of fingerprint disappearing on
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` 4
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`the basis of vaporization was exactly the same mechanism that Buchanan described.”
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`(see Ex. 2017 at 45:23-46:4; 46:24-47:6)
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`Observation I.A.4
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to Patent Owner’s argument that Buchanan is not reasonably
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`pertinent to the particular problem with which the inventor was involved and is
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`relevant because it supports Patent Owner’s position that Petitioner’s reliance on
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`Buchanan for its alleged teaching that fingerprints can vaporize reveals improper
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`hindsight because it amounts to defining the problem in terms of its solution.
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`(Motion at 2)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because Dr. Rozzell’s testimony is consistent with his position on the problem being
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`addressed by the inventors of the ’618 Patent because his testimony illustrates why
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`the disclosure of Buchanan are reasonably pertinent to the particular problem with
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`which the inventor was involved. For example, in the context of this observation,
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`Dr. Rozzell has testified that Buchanan discloses that constituent chemical
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`components of fingerprint residue are known to evaporate, stating in regard to
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`Buchanan that: “She -- I'm looking at the top of Page 91, where she's looking at the
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` 5
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`difference in the content of lipids, I think between children and adults, the elevated
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`temperatures, lower molecular weight, volatile carboxylic acids that are prevalent in
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`young children, tend to evaporate from the surface.· She talks about less volatile long
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`chain esters. Further down she talks about cholesteryl acetate, a cholesterol ester.”
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`(See Ex. 2017 at 40:2-9.)
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`
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`Observation I.B.1
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to Patent Owner’s argument that a POSITA would not have
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`reasonably expected that the association of a lipase with a substrate would promote
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`the removal of fingerprints stains from the substrate via vaporization and is relevant
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`because it undermines Dr. Rozzell’s testimony that the use of lipase to break down
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`the lipid components of a fingerprint stain into smaller compounds would have been
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`expected to facilitate the removal of the fingerprint stain. (Motion at 3)
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`Consistent with 1.) a POSITA having reasonably expected that the association
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`of a lipase with a substrate would promote the removal of fingerprints stains from the
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`substrate via vaporization and 2.) Dr. Rozzell’s testimony that the use of lipase to
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`break down the lipid components of a fingerprint stain into smaller compounds would
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`have been expected to facilitate the removal of the fingerprint stain (See Ex. 2017 at
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` 6
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`54:4-24), Dr. Rozzell has testified that “Some would” as it relates to whether the
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`breakdown products obtained from lipase-catalyzed hydrolysis of lipids would
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`necessarily vaporize at ambient conditions. (See Ex. 2017 at 29:6-9.) Also
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`supporting 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 expected
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`to facilitate the removal of the fingerprint stain, Dr. Rozzell has testified that
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`“Buchanan dealt with the whole idea of fingerprints disappearing on the basis of
`
`vaporization, and she showed that fingerprints with more volatile components
`
`disappeared more quickly.” and “[T]he mechanism that they spelled out in the '618
`
`patent as to why their invention worked was that the lipase was converting more
`
`higher boiling components in fingerprints to lower boiling, and, thereby, rendering
`
`them more vaporizable. So this mechanism of fingerprint disappearing on the basis
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`of vaporization was exactly the same mechanism that Buchanan described.” (see Ex.
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`2017 at 45:23-46:4; 46:24-47:6)
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`
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`Observation I.B.2
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to Dr. Dordick’s and Patent Owner’s position that the data
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` 7
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`presented in Buchanan would not reasonably support an expectation that fingerprints
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`can be removed through vaporization. (Motion at 4)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because Dr. Rozzell’s testimony is consistent with the data presented in Buchanan
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`reasonably supporting an expectation that fingerprints can be removed through
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`vaporization. For example, in the context of this observation, Dr. Rozzell has
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`testified that “I do believe isopropanol efficiently extracts lipids generally” and, in
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`regard to isopropanol being reported to extract lipid-based compounds efficiently,
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`Dr. Rozzell has testified that “So the article that I referenced, Drozdowski, described
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`a process in which they used 70 percent isopropanol to extract lipids, I believe they
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`were from fish, but fish oil, but triglycerides, generally. And they reported the
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`extraction to be quite efficient.” (See Ex. 2017 at 33:21-34:11.) When asked “Are
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`there any lipids, as far as you know, that would not be hydrolyzed by any kind of
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`lipase”, Dr. Rozzell has testified “No, none that I can think of.” (See Ex. 2017 at
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`28:8-11.) In regard to Buchanan reasonably supporting an expectation that
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`fingerprints can be removed through vaporization, Dr. Rozzell has testified that
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`“Buchanan dealt with the whole idea of fingerprints disappearing on the basis of
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`vaporization, and she showed that fingerprints with more volatile components
`
`disappeared more quickly.” and “[T]he mechanism that they spelled out in the '618
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` 8
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`patent as to why their invention worked was that the lipase was converting more
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`higher boiling components in fingerprints to lower boiling, and, thereby, rendering
`
`them more vaporizable. So this mechanism of fingerprint disappearing on the basis
`
`of vaporization was exactly the same mechanism that Buchanan described.” (see Ex.
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`2017 at 45:23-46:4; 46:24-47:6)
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`
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`Observation I.B.3
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to Dr. Dordick’s and Patent Owner’s position that the data
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`presented in Buchanan would not reasonably support an expectation that fingerprints
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`can be removed through vaporization and is relevant because it highlights the
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`significance of the Buchanan authors’ failure to verify whether and to what extent
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`the chemical composition of their samples corresponded to the chemical composition
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`of actual fingerprint residue. (Motion at 4)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because Dr. Rozzell’s testimony is consistent with the data presented in Buchanan
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`reasonably supporting an expectation that fingerprints can be removed through
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`vaporization. Dr. Rozzell’s actual testimony in this observation is, “I would expect
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`there might be some compounds transferred and some not transferred and some
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` 9
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`incompletely transferred and everything in-between.” (Ex. 2017 at 34;19-21.)
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`Relatedly, Dr. Rozzell also has testified that “I do believe isopropanol efficiently
`
`extracts lipids generally” and, in regard to isopropanol being reported to extract lipid-
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`based compounds efficiently, Dr. Rozzell has testified that “So the article that I
`
`referenced, Drozdowski, described a process in which they used 70 percent
`
`isopropanol to extract lipids, I believe they were from fish, but fish oil, but
`
`triglycerides, generally. And they reported the extraction to be quite efficient.” (See
`
`Ex. 2017 at 33:21-34:11.) When asked “Are there any lipids, as far as you know,
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`that would not be hydrolyzed by any kind of lipase”, Dr. Rozzell has testified “No,
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`none that I can think of.” (See Ex. 2017 at 28:8-11.) In regard to Buchanan
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`reasonably supporting an expectation that fingerprints can be removed through
`
`vaporization, Dr. Rozzell has testified that “Buchanan dealt with the whole idea of
`
`fingerprints disappearing on the basis of vaporization, and she showed that
`
`fingerprints with more volatile components disappeared more quickly.” and “[T]he
`
`mechanism that they spelled out in the '618 patent as to why their invention worked
`
`was that the lipase was converting more higher boiling components in fingerprints to
`
`lower boiling, and, thereby, rendering them more vaporizable. So this mechanism of
`
`fingerprint disappearing on the basis of vaporization was exactly the same
`
`mechanism that Buchanan described.” (see Ex. 2017 at 45:23-46:4; 46:24-47:6)
`
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`10
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`Observation I.B.4
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to whether Buchanan would have reasonably supported an
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`expectation that associating a lipase with a surface would facilitate the evaporative
`
`removal of fingerprint stains deposited on said surface. (Motion at 5)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because Dr. Rozzell’s testimony is consistent with the data presented in Buchanan
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`reasonably supporting an expectation that associating a lipase with a surface would
`
`facilitate the evaporative removal of fingerprint stains deposited on said surface. For
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`example, in the context of this observation, when asked “[w]ould lipase be capable
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`of hydrolyzing these alkyl esters”, Dr. Rozzell has testified, “Generally speaking,
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`yes.· But, obviously, as we talked before -- I want to clarify that.· As we talked
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`before, it would depend on the ester and on the lipase, because they have different
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`overlapping specificities. But, generally speaking, alkyl ester is a substrate for a
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`lipase.” (Ex. 2107 at 41:1-9.) Consistent with 1.) a POSITA having reasonably
`
`expected that the association of a lipase with a substrate would promote the removal
`
`of fingerprints stains from the substrate via vaporization and 2.) Dr. Rozzell’s
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`testimony that the use of lipase to break down the lipid components of a fingerprint
`
`
`
`
`
`
`11
`
`
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`stain into smaller compounds would have been expected to facilitate the removal of
`
`the fingerprint stain (See Ex. 2017 at 54:4-24), Dr. Rozzell has testified that “Some
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`would” as it relates to whether the breakdown products obtained from lipase-
`
`catalyzed hydrolysis of lipids would necessarily vaporize at ambient conditions. (See
`
`Ex. 2017 at 29:6-9.) In regard to Buchanan reasonably supporting an expectation
`
`that associating a lipase with a surface would facilitate the evaporative removal of
`
`fingerprint stains deposited on said surface, Dr. Rozzell has testified that “Buchanan
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`dealt with the whole idea of fingerprints disappearing on the basis of vaporization,
`
`and she showed that fingerprints with more volatile components disappeared more
`
`quickly.” and “[T]he mechanism that they spelled out in the '618 patent as to why
`
`their invention worked was that the lipase was converting more higher boiling
`
`components in fingerprints to lower boiling, and, thereby, rendering them more
`
`vaporizable. So this mechanism of fingerprint disappearing on the basis of
`
`vaporization was exactly the same mechanism that Buchanan described.” (see Ex.
`
`2017 at 45:23-46:4; 46:24-47:6)
`
`
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`Observation I.B.5
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`Patent Owner asserts that Dr. Rozzell’s testimony as it relates to this
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`observation is relevant to whether Buchanan would have reasonably supported an
`
`
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`12
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`
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`expectation that associating a lipase with a surface would facilitate the evaporative
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`removal of fingerprint stains. (Motion at 5)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because Dr. Rozzell’s testimony is consistent with the data presented in Buchanan
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`reasonably supporting an expectation that associating a lipase with a surface would
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`facilitate the evaporative removal of fingerprint stains. For example, in the context
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`of this observation, Dr. Rozzell has testified that 1.) cholesterol esters are
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`hydrolysable by lipase and 2.) that he would expect that acidic acid to be a break-
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`down component from such hydrolyzing that would “vaporize at ambient -- under
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`ambient conditions, because it's relatively volatile.” (Ex. 2017 at 41:22-42:8; 43:8-
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`43:22.) In regard to Buchanan reasonably supporting an expectation that associating
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`a lipase with a surface would facilitate the evaporative removal of fingerprint stains,
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`Dr. Rozzell has testified that “Buchanan dealt with the whole idea of fingerprints
`
`disappearing on the basis of vaporization, and she showed that fingerprints with more
`
`volatile components disappeared more quickly.” and “[T]he mechanism that they
`
`spelled out in the '618 patent as to why their invention worked was that the lipase
`
`was converting more higher boiling components in fingerprints to lower boiling, and,
`
`thereby, rendering them more vaporizable. So this mechanism of fingerprint
`
`
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`13
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`
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`disappearing on the basis of vaporization was exactly the same mechanism that
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`Buchanan described.” (see Ex. 2017 at 45:23-46:4; 46:24-47:6)
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`
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`Observation II.1
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`Patent Owner asserts that Mr. Ray’s testimony as it relates to this observation
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`is relevant to whether Buchanan constitutes art analogous to the ’618 Patent and is
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`relevant because it shows that, to the extent that Mr. Ray opines in his declaration
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`that Buchanan constitutes such analogous art, that opinion is not based on the
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`perspective of the relevant POSITA. (Motion at 6)
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`The cited testimony is not relevant in the manner asserted by Patent Owner
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`because the subject declaration testimony to which Patent Owner refers in this
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`observation is not directed to whether or not Buchanan constitutes such analogous
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`art. (See. Ex. 1020 ¶ 28.)
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`Dated: November 29, 2017
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`Respectfully submitted by:
`/s/ David O. Simmons
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`David O. Simmons, Reg. No. 43,124
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`Email: dsimmons@ivcpatentagency.com
`
`Counsel for Petitioner, Reactive
`Surfaces Ltd., LLP
`
`
`
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`14
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i), 42.105(b) and 42.64, the undersigned
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`hereby certifies that a copy of this PETITIONER’S RESPONSE TO PATENT
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`OWNER’S MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`were served on November 29, 2017 by email on the following counsel of record for
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`Patent Owner:
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`
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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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`Dated: November 29, 2017
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`
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`
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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
`
`Counsel for Petitioner, Reactive
`Surfaces Ltd., LLP
`
`
`15
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`
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