Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 64
`Entered: March 1, 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.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 64
`Entered: March 1, 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.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`INTRODUCTION
`
`A. Background
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 1–11 of U.S. Patent No.
`8,394,618 B2 (Ex. 1001, “the ’618 patent”). On March 23, 2017, we
`instituted trial to review the patentability of claims 1–11. Paper 26 (“Inst.
`Dec.”).
`On March 3, 2017, Toyota Motor Corporation and the Regents of the
`University of Minnesota, the joint owners of the ’618 patent, filed a motion
`to dismiss this proceeding on the ground of sovereign immunity under the
`Eleventh Amendment to the United States Constitution. Paper 23.
`Following a Response to the Motion to Dismiss by Petitioner (Paper 25) and
`a Reply (Paper 28), we granted the motion to dismiss in part, dismissing the
`Regents of the University of Minnesota from the proceeding, but continuing
`to review the patentability of the claims of the ’618 patent with Toyota
`Motor Corporation present as Patent Owner. Paper 36.
`After our decision on the Motion to Dismiss, Patent Owner filed a
`Response (Paper 37, “PO Resp.”), Petitioner filed a Reply (Paper 41), and
`Patent Owner filed a Sur-Reply (Paper 56). Patent Owner filed
`Observations on Cross-Examination (Paper 54), to which Petitioner filed a
`Response (Paper 57). We held an oral hearing on January 9, 2018. Paper 63
`(“Tr.”). After the oral hearing, we authorized both parties to file additional
`briefing regarding the proper application of the Board’s precedential
`decision in Ex parte Schulhauser to the challenged claims. Paper 60.
`Petitioner and Patent Owner each filed an additional brief on this issue.
`Paper 61; Paper 62.
`
`2
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`Patent 8,394,618 B2
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We
`conclude that Petitioner has established by a preponderance of the evidence
`that claims 1–11 of the ’618 patent are unpatentable.
`
`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.
`
`C. The Instituted Grounds of Unpatentability
`We instituted review of claims 1–11 of the ’618 patent based on the
`following grounds:
`Statutory
`Ground
`§ 103
`§ 103
`§ 103
`
`Basis
`
`Challenged Claim(s)
`
`Van Antwerp2
`Van Antwerp and Bostek3
`Van Antwerp and Moon4
`
`1–3
`4 and 5
`6–9
`
`
`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 Van Antwerp, U.S. Patent No. 5,868,720, issued Feb. 9, 1999 (Ex. 1005,
`“Van Antwerp”).
`3 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”).
`4 Moon et al., US 2005/0176905 A1, published Aug. 11, 2005 (Ex. 1006,
`“Moon”).
`
`3
`
`
`
`Basis
`
`Challenged Claim(s)
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`Patent 8,394,618 B2
`Statutory
`Ground
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Van Antwerp and Hamade5
`Schneider6
`Schneider and McDaniel7
`Drevon8
`Drevon and Schneider
`
`10 and 11
`1–8, 10, and 11
`9
`1–9
`10 and 11
`
`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.
`
`
`5 Hamade et al., U.S. Patent No. 6,150,146, issued Nov. 21, 2000 (Ex. 1007,
`“Hamade”).
`6 Schneider et al., US 2005/0147579 A1, published July 7, 2005 (Ex. 1004,
`“Schneider”).
`7 McDaniel, US 2004/0109853 A1, published June 10, 2004 (Ex. 1008,
`“McDaniel”).
`8 Géraldine F. Drevon, Enzyme Immobilization into Polymers and Coatings
`(Ph.D. Thesis, University of Pittsburgh, Nov. 2002) (Ex. 1003, “Drevon”).
`
`4
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`Patent 8,394,618 B2
`E. Illustrative Claim
`Petitioner challenges all the claims of the ’618 patent. 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.
`
`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 constructions for four terms: “fingerprint,”
`“latent fingerprint,” “vaporization,” and “facilitating the removal of a
`fingerprint by vaporization.” Pet. 16–17, 22; Reply 2–3. Patent Owner does
`not propose construing any terms, but it does agree with the interpretation of
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`Patent 8,394,618 B2
`“facilitating the removal of a fingerprint by vaporization” that we adopted in
`our Institution Decision. PO Resp. 13–14; Paper 56.
`
`1. “Fingerprint”
`Petitioner argues that the ’618 patent expressly defines the term
`“fingerprint.” Pet. 16–17 (quoting Ex. 1001, 3:1–9). We agree. An
`inventor may define specific terms used to describe an invention, but must
`do so “with reasonable clarity, deliberateness, and precision” and must “‘set
`out his uncommon definition in some manner within the patent disclosure’
`so as to give one of ordinary skill in the art notice of the change” in
`meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting
`Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir.
`1992)). The ’618 patent states that “[a] fingerprint as defined herein is a
`bioorganic stain, mark, or residue left behind after an organism touches a
`substrate or coating.” Ex. 1001, 3:1–3. Moreover, the touch by an organism
`need not be by the organism’s finger; the ’618 patent lists “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” as “[o]ther sources of
`bioorganic stains.” Id. at 3:3–9. The language of the ’618 patent begins
`with “[a] fingerprint as defined herein is . . . .” We find that this sets out a
`definition of the term “fingerprint” with “reasonable clarity, deliberateness,
`and precision.” Paulsen, 30 F.3d at 1480. Accordingly, we interpret
`“fingerprint” as “a bioorganic stain, mark, or residue left behind after an
`organism touches a substrate or coating” that is not limited to marks
`produced by an organism touching a substrate or coating with a finger.
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`2. “Latent Fingerprint”
`Petitioner proposes construing the term “latent fingerprint.” Reply 2.
`This term does not appear in any claim, and construing it is not necessary to
`resolve the parties’ dispute over the patentability of claims 1–11.
`Accordingly, we do not construe “latent fingerprint.” See Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”).
`
`3. “Vaporization”
`Petitioner proposes construing the term “vaporization,” although
`Petitioner does not provide a bounded construction of the term. Reply 3.
`Instead, Petitioner argues only that “vaporization” is broad enough to
`“include[] evaporation.” Id. Because neither party addresses the precise
`construction of “vaporization,” and because determining that precise
`construction is not necessary to resolve the parties’ dispute over the
`patentability of claims 1–11, we do not construe “vaporization” expressly.
`See Vivid Techs., 200 F.3d at 803.
`
`4. “Facilitating the Removal of a Fingerprint by Vaporization”
`In our Institution Decision, we construed “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.” Inst. Dec. 5–6. Patent Owner
`argues that we should continue to use that interpretation. PO Resp. 13–14
`n.2. Although Petitioner argues in the Petition that “facilitating the removal
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`IPR2016-01914
`Patent 8,394,618 B2
`of a fingerprint by vaporization” should be interpreted 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.
`8–22, we noted in the Institution Decision that Petitioner did not explain
`sufficiently why a person of ordinary skill in the art would interpret
`“facilitating the removal of a fingerprint by vaporization” in a way that did
`not require the removal to involve vaporization. Inst. Dec. 5–6. Petitioner
`does not address this issue in the Reply. Reply 1–3. Accordingly, we
`maintain the construction we adopted in the Institution Decision, and we
`interpret “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 on Grounds Relating to Van Antwerp
`We instituted trial to determine whether 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. Inst. Dec. 6–9, 30; see Pet. 36–39. In
`addition, we instituted trial to determine whether the subject matter of the
`following claims would have been obvious to a person of ordinary skill in
`the art given the teachings of the following prior art references: claims 4 and
`5 over the combination of Van Antwerp and Bostek; claims 6–9 over the
`combination of Van Antwerp and Moon; and claims 10 and 11 over the
`
`8
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`Patent 8,394,618 B2
`combination of Van Antwerp and Hamade. Inst. Dec. 9–15, 30; see Pet. 39–
`45.
`
`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
`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. 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.
`
`3. 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
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`“polymeric resin composition” that is “particularly useful for medical
`supplies . . . such as catheters.” Id. ¶ 59.
`
`4. 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.
`
`5. Analysis
`a. The “Facilitating the Removal of a Fingerprint by
`Vaporization” Limitation
`As noted above, claim 1, the only independent claim of the ’618
`patent, recites a preamble and three limitations: “[a] method of facilitating
`the removal of a fingerprint on a substrate or a coating,” “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.” Ex. 1001, 15:18–27. In each of the Van Antwerp
`grounds, Petitioner relies on Van Antwerp to teach or suggest the limitations
`of claim 1, except for “facilitating the removal of a fingerprint by
`vaporization from the lipase associated substrate or coating when contacted
`by a fingerprint.” Pet. 36–38. Petitioner argues that this limitation is
`
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`Patent 8,394,618 B2
`inherent in the performance of the method steps that Van Antwerp teaches or
`suggests. Id. at 38; Reply 3–10.
`We agree that Van Antwerp itself does not expressly teach or suggest
`“facilitating the removal of a fingerprint by vaporization” (the “facilitating
`step”). Ex. 1005, 4:8–26, 6:14–18, Fig. 4 (teaching only using the lipolytic
`enzyme to facilitate dissolving bioorganic material from the surface of the
`catheter into the liquid-phase environment). As we explain below, however,
`we are persuaded that Van Antwerp’s failure to teach or suggest this
`limitation does not affect the obviousness of the challenged claims. Before
`turning to Van Antwerp, we address whether the facilitating step is a
`conditional method step.
`
`(1) Is the Facilitating Step a Conditional Method
`Step That the Prior Art Need Not Teach or
`Suggest?
`When a claim recites a method step that is conditioned on the
`occurrence of some event, the broadest reasonable interpretation of the scope
`of that claim may encompass two separate methods: one in which the
`conditional step occurs and one in which the conditional step does not occur.
`Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4–5 (PTAB
`Apr. 28, 2016) (precedential) (applying rule to claim having separate,
`mutually exclusive conditional method steps); see Ex parte Urbanet,
`No. 2011-002606, 2012 WL 4460637, at *2 (PTAB Sep. 19, 2012)
`(applying rule to claim having single conditional method step); see also
`Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607
`(Fed. Cir. 2007) (unpublished) (“It is of course true that method steps may
`be contingent. If the condition for performing a contingent step is not
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`satisfied, the performance recited by the step need not be carried out in order
`for the claimed method to be performed.”).
`Because neither party briefed this issue before the oral hearing, we
`invited each party to submit a brief presenting argument as to whether the
`facilitating step is conditional and therefore non-limiting under Schulhauser.
`Paper 60. Petitioner argues that, under Schulhauser, the facilitating step is
`conditional and need not be carried out to practice the claimed method.
`Paper 62, 2–5. Instead, according to Petitioner, the claimed method
`encompasses a method where the first two steps are performed and the
`facilitating step never occurs because the surface or coating is never
`contacted by a fingerprint. Id. at 3. Patent Owner argues that the claim
`language “when contacted by a fingerprint” does not make the facilitating
`step conditional on a fingerprint contacting the surface. Paper 61, 3–4.
`Instead, Patent Owner argues that this language provides a temporal
`limitation: the facilitating step must occur after the fingerprint contacts the
`surface. Id. Thus, according to Patent Owner, the claimed method does not
`encompass a method with only the first two steps performed; instead, a
`fingerprint contacting the surface is a necessary part of the claim. Id.
`Although we disagree with Patent Owner that the language “when
`contacted by a fingerprint” is purely temporal, we agree that the challenged
`claims should not be interpreted in such a way as to encompass methods in
`which the facilitating step does not occur. The facilitating step itself is
`conditional, rather than temporally limited, because it occurs only when the
`surface from which the fingerprint is to be removed is “contacted by a
`fingerprint.” Ex. 1001, 15:24–26 (emphasis added). The use of “when”
`instead of “if” does not change whether the method step is conditional. Ex
`
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`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). In other words, “when contacted by a fingerprint” could be
`replaced by “if contacted by a fingerprint” without changing the meaning of
`the claims. The alternative would be to interpret “when contacted by a
`fingerprint” as a solely temporal limitation requiring the facilitation of
`removal to take place after the fingerprint is placed on the surface. This
`alternative view would be persuasive if there were no way to carry out the
`other method steps without a fingerprint being present. For example, if, in
`addition to the limitations that are already present, claim 1 also recited
`“placing a fingerprint on the lipase associated substrate or coating,” it would
`make sense to interpret “when contacted by a fingerprint” as merely limiting
`the time during which the facilitation of removal could occur. Without such
`a limitation, however, a fingerprint may or may not ever make contact with
`the lipase associated surface, so the interpretation of “when contacted by a
`fingerprint” as conditional is more compelling.
`This does not end our inquiry, however, because we must consider the
`facilitating step within the context of claim 1 as a whole. Claim 1’s
`preamble recites “[a] method of facilitating the removal of a fingerprint on a
`substrate or a coating.” Ex. 1001, 15:18–19. When the facilitating step does
`not occur (i.e., when the surface is not “contacted by a fingerprint”), the
`method is no longer the “method of facilitating the removal of a fingerprint”
`that the preamble requires. The applicant emphasized the recitation of a
`“method of facilitating the removal of a fingerprint” in the preamble and the
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`use of the lipase-associated substrate or coating to facilitate the removal of a
`fingerprint in the final method step when arguing for the patentability of the
`challenged claims during prosecution of the ’618 patent. Ex. 1012, 9–10.
`Because of this reliance on the language of the preamble and the facilitating
`step, we conclude that a person of ordinary skill in the art would not
`interpret the challenged claims as encompassing a method in which the
`facilitating step was not performed and no fingerprint removal was
`facilitated. See Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801,
`808–09 (Fed. Cir. 2002) (“[C]lear reliance on the preamble during
`prosecution to distinguish the claimed invention from the prior art
`transforms the preamble into a claim limitation because such reliance
`indicates use of the preamble to define, in part, the claimed invention.”).
`Thus, we decline to interpret claim 1 in such a way that it encompasses a
`method in which only the first two limitations are performed. Accordingly,
`Petitioner must show that the entire claimed method, including the
`“facilitating the removal of a fingerprint by vaporization” limitation, would
`have been obvious.9
`
`
`9 Even assuming that a person of ordinary skill in the art would interpret the
`challenged claims as encompassing a method in which the facilitating step
`was not performed, Schulhauser requires Petitioner only to show that the
`prior art teaches or suggests performing the first two method steps. Showing
`that the prior art teaches or suggests performing all three steps necessarily
`includes a showing that the first two steps are performed. As discussed
`below, Petitioner has made such a showing. Accordingly, even if
`Schulhauser applies here, Petitioner still has shown the obviousness of the
`challenged claims.
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`
`(2) Is Performance of the Facilitating Step Inherent
`in the Performance of the Other Method Steps?
`Petitioner argues that “facilitating the removal of a fingerprint by
`vaporization” is inherent in the performance of the method steps that Van
`Antwerp teaches or suggests. Pet. 38; Reply 3–10. Petitioner supports this
`argument with Dr. Rozzell’s testimony that it was “well-known” that
`“[l]ipases will degrade triglycerides and other lipids, wax esters, other fatty
`acid esters, cholesterol esters, and similar compounds, which are well-
`known to be among the components of fingerprints” and that “it would be an
`inherent property that a lipase immobilized on a surface would degrade a
`triglyceride-base oil stain.” Ex. 1010 ¶¶ 35–36. Dr. Rozzell also testifies
`that the breakdown products of the catalytic activity of lipase on the
`compounds present in fingerprints are “more readily vaporizable” and would
`“disappear more quickly” from a surface. Id. ¶¶ 40–41. Dr. Rozzell
`supports his testimony by citing to Buchanan,10 an article from the forensic
`science literature. Id. ¶¶ 35–36, 40–41 (citing Ex. 1013, 89–91). Buchanan
`reports that “the fingerprints of children disappear from surfaces more
`quickly than those of adults” and describes a study intended to determine the
`reason for this phenomenon. Ex. 1013, 89. The study found that samples
`extracted from adult fingertips contained “higher concentrations of less
`volatile long chain esters of fatty acids,” whereas samples extracted from
`children’s fingertips “contained higher levels of relatively volatile free fatty
`acids.” Id. Because the free fatty acids in children’s fingerprints would
`
`
`10 Michelle V. Buchanan, Keiji Asano, & Arthur Bohanon, Chemical
`Characterization of Fingerprints from Adults and Children, in FORENSIC
`EVIDENCE ANALYSIS & CRIME SCENE INVESTIGATION, 2941 PROC. SPIE 89
`(Feb. 5, 1997) (Ex. 1013, “Buchanan”).
`
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`evaporate more quickly from a surface than would the long-chain esters of
`fatty acids in adult fingerprints, Buchanan concludes that this difference in
`composition accounts for the more rapid disappearance of children’s
`fingerprints from surfaces. Id. at 89, 91.
`Patent Owner does not present any evidence to the contrary but argues
`that Dr. Rozzell’s testimony is conclusory because it relies only on
`Buchanan, which Petitioner has not shown to be a printed publication that a
`person of ordinary skill in the relevant art reasonably could have located.
`We do not find this argument persuasive. It is clear that Buchanan was
`published in the sense that it was available to those with an interest in
`finding it. Buchanan appeared as an article in the Proceedings of SPIE, the
`journal of the Society of Photo-Optical Instrumentation Engineers, in
`February 1997. Ex. 1023 ¶¶ 1, 2, 6. The journal issue was cataloged at the
`Library of Congress. Id. at Attachment A, 12. Others working in the field
`of forensic science cited Buchanan in prior-art articles. Ex. 1021, 316 n.4;
`Ex. 1022, 6 n.2. It also appeared in the international search report
`accompanying a 2006 patent application relating “to a method for
`determining the presence of a residue on or within a fingerprint using mass
`spectrometric techniques.” Ex. 1031, 1, 63.
`Despite the general public availability of Buchanan, Patent Owner
`argues that it may not have been available specifically to those of ordinary
`skill in the art relevant to the ’618 patent. PO Resp. 27–35. As discussed
`above, Buchanan was published in a forensic science journal, and the prior-
`art citations to Buchanan come from researchers in forensic science. Patent
`Owner argues that the ’618 patent is in the art of “bioactive coatings,” which
`is not the same as, or closely related to, forensic science. Id. at 28. We do
`
`16
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`IPR2016-01914
`Patent 8,394,618 B2
`not find this argument persuasive. First, Patent Owner’s definition of the
`relevant field is far too narrow. The claims of the ’618 patent are not limited
`to coatings at all, much less to only bioactive coatings. Ex. 1001, 15:18–27
`(claim 1, reciting a method with a first step of “providing a substrate or a
`coating”).
`Second, even if we agreed with Patent Owner that Buchanan were
`outside the field of the invention of the ’618 patent, a prior-art reference
`need not fall within the field of the invention for a person of ordinary skill in
`the art to consider it. Instead, the reference must have “been disseminated or
`otherwise made available to the extent that persons interested and ordinarily
`skilled in the subject matter or art exercising reasonable diligence, can locate
`it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir.
`2006). The reference to “the subject matter or art” is telling, because it
`references the test for analogous art, which permits the consideration of prior
`art that “is either in the field of the applicant’s endeavor or is reasonably
`pertinent to the problem with which the inventor was concerned.” In re
`Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). Thus, a prior-art reference is
`both analogous art and, assuming sufficient dissemination, a printed
`publication, even if it falls outside the field of the invention, if it “is
`reasonably pertinent to the problem with which the inventor was concerned.”
`Id.
`
`Here, the problem solved by the ’618 patent is not the creation of a
`bioactive surface or surface treatment in isolation, but rather the
`development of “materials or coatings that can actively promote the removal
`of fingerprints on organic surfaces or in organic coatings.” Ex. 1001, 1:40–
`42; see Ex. 1001, 15:18–27 (reciting “[a] method of facilitating the removal
`
`17
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`IPR2016-01914
`Patent 8,394,618 B2
`of a fingerprint . . .”). It is difficult to imagine a reference more relevant to
`the problem of removing fingerprints from a surface or coating than
`Buchanan, which relates to the “[c]hemical characterization of fingerprints.”
`Ex. 1013, 89. A natural starting point for someone seeking to develop
`“materials or coatings that can actively promote the removal of fingerprints”
`would be to determine the substances of which fingerprints are composed.
`Accordingly, Buchanan is at least “reasonably pertinent to the problem with
`which the inventor was concerned,” so it is analogous art to the ’618 patent.
`Because Buchanan is analogous art, and because, as discussed above, it was
`disseminated sufficiently to enable those interested in its subject matter to
`locate it, we find that a person of ordinary skill in the art attempting to solve
`the problem solved by the ’618 patent would have been aware of its
`contents.
`The next question is whether Buchanan supports Dr. Rozzell’s
`testimony that “triglycerides and other lipids, wax esters, other fatty acid
`esters, cholesterol esters, and similar compounds . . . are well-known to be
`among the components of fingerprints.” Ex. 1010 ¶ 35. It does. The
`“chemical compositions of fingerprints” of adults “were found to have
`higher concentrations of less volatile long chain esters of fatty acids,” and
`those of children “contained higher levels of relatively volatile free fatty
`acids.” Ex. 1013, 89. Samples tested in Buchanan contained lipids, and
`Buchanan states that “this material . . . can be found in fingerprints.” Id. at
`90. Buchanan discusses the presence of lipids in the fingerprints of both
`children and adults, though in “far lower levels” in children’s fingerprints.
`Id. at 90–91. In addition, “[c]holesterol was observed in all samples
`studied” in Buchanan. Id. at 91. Additional evidence of record further
`
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`IPR2016-01914
`Patent 8,394,618 B2
`supports Dr. Rozzell’s testimony regarding the components of fingerprints.
`See, e.g., Ex. 1001, 2:38–40 (“Fingerprint stains typically include . . . lipids,
`wax, and cellular debris.”); Ex. 1017, 82:18–20 (fingerprints contain lipids).
`Accordingly, we credit Dr. Rozzell’s testimony and find that a person of
`ordinary skill in the art would have known that fingerprint stains contained
`“triglycerides and other lipids, wax esters, other fatty acid esters, cholesterol
`esters, and similar compounds.” Ex. 1010 ¶ 35.
`Dr. Rozzell also testifies that lipases would degrade these components
`of fingerprints. Id. (citing Ex. 1010, Attachment E (reproduced as
`Ex. 1019)). There is evidence of record to support this testimony. Ex. 1001,
`2:43–47 (lipids include triacylglycerol); Ex. 1019, 234 (triacylglycerol lipase
`degrades triacylglycerol to “diacylglycerol” and “a fatty acid anion”); see
`Ex. 1017, 82:3–13 (“it was well known that a lipase would degrade a lipid,”
`and this has been known since the “early 1900s”). Accordingly, we credit
`Dr. Rozzell’s testimony and find that a person of ordinary skill in the art
`would have known that a lipase would degrade lipids.
`Finally, Dr. Rozzell testifies that fingerprints with lower
`concentrations of low-volatility components would disappear more quickly
`via vaporization than fingerprints with higher concentrations of those same
`components, as we
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