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14 July 2020Patents

Toyota’s anti-fingerprint patent cancelled

A US appeals court has upheld the cancellation of a  Toyota patent covering technology to protect against fingerprint marks on touchscreen devices.

The  decision, issued last Friday, July 10, by the US Court of Appeals for the Federal Circuit, comes as a victory for Texas-based  Reactive Surfaces, which petitioned for inter partes review (IPR) of the patent (US number 8,394,618).

The ‘618 patent covers lipase enzymes to remove visible fingerprints from surfaces through vaporisation.

It describes a process by which lipases degrade the insoluble chemicals in fingerprints into smaller molecules that are more likely to vaporise, and become less visible.

The patent covers the method of including these lipase enzymes in a coating or substrate that can be applied to surfaces like touchscreen devices.

But it was held unpatentable as obvious in March 2018 by the US Patent Trial and Appeal Board (PTAB), in light of an “article from forensic science literature referred to as Buchanan”.

This article, combined with another US patent, describes a catheter with an enzyme coating that produces lipase compounds, which can dissolve fingerprints.

Toyota argued that Buchanan was not “analogous prior art”, ie, from the same field as the claimed invention.

But the Federal Circuit was not convinced: “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.”

The Federal Circuit accepted the PTAB’s view that there was substantial evidence for Buchanan being relevant to the claimed invention in Toyota’s patent.

Toyota also argued that, even if it was analogous prior art, the material contained in Buchanan did not necessarily lead to: “facilitating the removal of a fingerprint by vaporisation from the lipase associated substrate or coating when contacted by a fingerprint.”

But the Federal Circuit disagreed, again finding that there was “substantial evidence”, including expert testimony from a Reactive Surfaces witness, in support of the PTAB’s original findings.

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