Toyota loses at CAFC; analogous art and "inherent teaching"

The outcome



Toyota Motor Corporation appeals from a Final Written Decision of the Patent Trial and Appeal Board holding
that claims 1–11 of U.S. Patent No. 8,394,618 are unpatentable as obvious. Reactive Surfaces Ltd., LLP v.
Toyota Motor Corp., No. IPR2016-01914, 2018 WL 1146318
(P.T.A.B. Mar. 1, 2018) (Board Decision). Because substantial evidence supports the Board’s obviousness determination, we affirm.


The technology


Toyota is a co-owner of the ’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.



Of analogous art:


We first address Toyota’s challenge to the Board’s finding that Buchanan was analogous prior art. 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.” Id.
(quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)).
“Whether a reference is analogous art is a question of fact.”
Id. “Generally, a skilled artisan would only have been motivated to combine analogous prior art [references].” Id.
Toyota raises multiple arguments in support of its contention that Buchanan should not be considered analogous
prior art. However, none of them speak directly to the relevant standard of review: whether the Board’s finding to
the contrary was supported by substantial evidence.2



Inherency in an obviousness context:



The inherent teachings of prior art references are
questions of fact. In re Napier, 55 F.3d 610, 613 (Fed. Cir.
1995). “[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis,” 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.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d
1186, 1195–96 (Fed. Cir. 2014). This is an exacting standard which cannot be met by a showing of “probabilities or
possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”
Hansgirg v. Kemmer, 102 F.2d 212, 213 (CCPA 1939).