Fingerprint resistant touchscreen patent rendered obvious by catheter patent. TOYOTA v. REACTIVE SURFACES

Fingerprint resistant touchscreen patent rendered obvious by catheter patent. TOYOTA v. REACTIVE SURFACES

After a patent is granted it is not immune from attack. Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.  The inventor and the patent examiner do their best to consider all the relevant prior during the patent application process, but sometimes relevant prior art is overlooked.  If a member of the public discovers a piece of prior art which anticipates a patent which has been granted they may request an inter partes review of the patent.  An inter partes review can result in invalidation of some or all of the claims of a patent.

The prior art that can be considered in an inter partes review is limited to analogous prior art.  Analogous prior art includes art from the same field as the invention being reviewed. Simply stated, prior art in the fishing industry is unlikely to be considered analogous to the semiconductor industry.  But analogous prior art can include references from other fields if the reference is reasonably pertinent to the particular problem with which the inventor is involved.  This standard can be confusing, therefore it is useful to study case law to learn how courts interpret analogous prior art.

TOYOTA MOTOR CORP. v. REACTIVE SURFACES LTD., LLP, 18-1906 (C.A.F.C. 2020) is a case where two seeming unrelated technologies were cited as prior art in an inter partes review.

Toyota owns U.S. Patent No. 8,394,618 (’618 patent), which is directed to the use of lipase enzymes to remove visible fingerprints from surfaces through vaporization. The ’618 patent teaches that if lipases are included in a coating or substrate applied to a surface, such as a touchscreen display, these enzymes can degrade lipids in fingerprints placed on the coating into smaller, more volatile molecules that are more likely to vaporize than the original lipids in the fingerprint, making the fingerprint less visible.

In September 2016 Reactive Surfaces petitioned for inter partes review on the grounds that the ’618 patent was obvious of the combination of a patent and a forensic publication on finger prints.  U.S. Patent No. 5,868,720 (Van
Antwerp)  teaches a catheter with an enzyme coating that produces lipase compounds. These compounds dissolve obstructions inside the catheter.  A forensic science article authored by Buchanan was the second piece of prior art.  The article by Buchanan studied the reason why children’s finger prints disappeared from surfaces faster than adult fingerprints.  The article concluded that lipase will inherently cause lipid stains, such as finger prints, to degrade faster.  The Patent Trial and Appeal Board found the claims 1–11 unpatentable as obvious in light of the combination of the two pieces of prior art.

Toyota appealed the decision to the Court of Appeals for the Federal Circuit on two grounds 1) that the article by Buchanan was not analogous prior art and 2) that the combination of the two piece of prior art does not inherently teach the removal of fingerprints.  The Federal Circuit reviewed the two arguments in turn and affirmed the Board’s decision.

The Federal Circuit agreed with the Board that the article by Buchanan would be relevant to an inventor trying to solve the problem of removing finger prints because the article studied the substances of which fingerprints are composed.  Furthermore, reading an article titled “Chemical characterization of fingerprints from adults and children” would have been a natural starting point for the inventor of the ’618 patent.

With respect to the two piece of prior art inherently teaching the removal of fingerprints the Federal Circuit noted a party must show that the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.  The Board found that lipase is capable of degrading lipids until the lipids vaporize.  Because fingerprints are composed of lipids, coating a surface with lipase will inherently remove fingerprints.  The Federal Circuit found that this reasoning was supported by substantial evidence.

Because the Federal Circuit found that the Board’s decision was supported by substantial evidence, it affirmed the obviousness determination.

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