by Dennis Crouch
Toyota Motor Corp. v. Reactive Surfaces Ltd., LLP (Fed. Cir. 2020) (nonprecedential)
Toyota’s US8394618 covers a method of removing fingerprints using a lipase “capable of enzymatically degrading a component of the fingerprint” by vaporization.
Reactive had previously attempted to trigger an interference proceeding at the PTO and then unsuccessfully sued in Federal Court to have the patent rendered unenforceable (or to transfer ownership rights). Those approaches failed.
This inter partes review is what worked. After granting the IPR petition, the Board conducted a trial and then issued a Final Written Decision that the challenged claims were unpatentable as obvious. On appeal, the Federal Circuit affirmed with the following notes:
Analogous arts: The Board relied upon a scientific article titled “Chemical characterization of fingerprints from adults and children” in part of its obviousness analysis. On appeal, Toyota argued that the article should not have been available for obviousness because it was not “analogous art” to the invention.
Analogous prior art includes art from the same field as the invention at issue. But it also encompasses references from other fields if such reference is “reasonably pertinent to the particular problem with which the inventor is involved.”
Slip Op. Here, the court found substantial evidence to support the Board’s finding that the scientific article would be a “natural starting point” for an inventor looking to vaporize finger prints. (The test is for substantial evidence, because analogous art is a factual finding given deference on appeal).
What the combination inherently teaches: The method claim at issue includes three steps:
- provide a substrate
- associate a lipase with the substrate (where the lipase is “capable of enzymatically degrading a component of a fingerprint”)
- facilitate “the removal of a fingerprint by vaporization from the lipase associated substrate … when contacted by a fingerprint.”
A combination of references provided by the Board taught the first two steps, but did not expressly teach the third step. The Board concluded that step three is simply an inherent result of the first two steps: “any combination of prior art that teaches the first two limitations of the challenged claims inherently would teach the [facilitating step]. . . . [A] surface-associated lipase . . . capable of degrading lipids . . . inherently will facilitate the removal of lipid-containing stains, such as fingerprints, by vaporization from the surface.”
While prior art may include a variety of inherent teachings, the Federal Circuit requires evidence that “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharm (Fed. Cir. 2014). Because of this “exacting” standard, inherency is typically difficult for an Examiner to show during ex parte examination. However, during an IPR the patent challenger is able to marshal expert testimony that connects the dots. Here, the petitioner’s expert explained the connection and inherent result. That was enough for the Board and the Federal Circuit on appeal.