`Tel: 571-272-7822
`
`Paper No. 60
`Entered: January 12, 2018
`
`
`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.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`Following extensive briefing by Reactive Surfaces Ltd. LLP
`(“Petitioner”) and Toyota Motor Corporation (“Patent Owner”), we held an
`oral hearing on January 9, 2018. During our post-hearing consideration of
`the case, it became apparent that neither party had addressed a claim-
`construction issue that may be presented by the challenged claims.
`All of the challenged claims are method claims that recite a limitation
`requiring “facilitating the removal of a fingerprint by vaporization from the
`lipase associated substrate or coating when contacted by a fingerprint.”
`Ex. 1001, 15:18–16:36. The language “when contacted by a fingerprint”
`may indicate that this limitation is conditional; that is, the action of
`“facilitating the removal of a fingerprint by vaporization from the lipase
`associated substrate or coating” may not occur at all unless there is contact
`by a fingerprint. See Ex parte Kaundinya, No. 2016-000917, 2017 WL
`5510012, at *6 (PTAB Nov. 14, 2017) (“when” may indicate a conditional
`method step); Ex parte Zhou, No. 2016-004913, 2017 WL 5171533, at *2
`(PTAB Nov. 1, 2017) (same); Ex parte Lee, No. 2014-009364, 2017 WL
`1101681, at *2 (PTAB Mar. 16, 2017) (same). Of course, “when contacted
`by a fingerprint” may not indicate that the limitation is conditional; instead,
`it might be a temporal limitation requiring that “facilitating the removal of a
`fingerprint” not occur until after there is contact by a fingerprint.
`The question of whether the limitation “facilitating the removal of a
`fingerprint by vaporization from the lipase associated substrate or coating
`when contacted by a fingerprint” is a conditional method step is not purely
`academic. Our controlling precedent requires us to interpret claims reciting
`conditional method steps as encompassing at least two separate methods:
`one in which the conditional step occurs and one in which the conditional
`
`2
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`step does not occur. Ex parte Schulhauser, No. 2013-007847, 2016 WL
`6277792, at *4–5 (PTAB Apr. 28, 2016) (precedential). Accordingly, if the
`language “when contacted by a fingerprint” renders the limitation
`“facilitating the removal of a fingerprint by vaporization from the lipase
`associated substrate or coating when contacted by a fingerprint” a
`conditional method step, then we must interpret the challenged claims
`reciting this limitation as encompassing a method in which this step is not
`triggered and does not occur.
`Because neither party has addressed the question of whether the
`limitation “facilitating the removal of a fingerprint by vaporization from the
`lipase associated substrate or coating when contacted by a fingerprint” is a
`conditional method step, we raise the question sua sponte and provide both
`parties with an opportunity to respond. Each party may file, no later than
`January 19, 2018, a single paper, not to exceed five pages, addressing the
`proper application, if any, of Ex parte Schulhauser to the challenged claims.
`We will not permit new evidence, but we encourage the parties to cite to the
`evidence already of record to the extent the parties find it helpful.
`
`It is
`ORDERED that each party may file a single paper not exceeding five
`pages, no later than January 19, 2018, addressing the proper application, if
`any, of Ex parte Schulhauser to the challenged claims; and
`FURTHER ORDERED that no new evidence shall accompany either
`party’s submission.
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`PETITIONER:
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`Jonathan D. Hurt
`MCDANIEL & ASSOCIATES, PC
`jhurt@technologylitigators.com
`
`Mark A.J. Fassold
`Jorge Mares
`WATTS GUERRA LLP
`mfassold@wattsguerra.com
`jmares@wattsguerra.com
`ReactiveSurfaces@wattsguerra.com
`
`Rico Reyes
`RICO REYES LAW
`rico@ricoreyeslaw.com
`
`
`
`PATENT OWNER:
`
`Joshua A. Lorentz
`Richard Schabowsky
`John D. Luken
`Oleg Khariton
`DINSMORE & SHOHL LLP
`joshua.lorentz@dinsmore.com
`richard.schabowsky@dinsmore.com
`john.luken@dinsmore.com
`oleg.khariton@dinsmore.com
`
`
`4
`
`
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