`Tel: 571-272-7822
`
`Paper No. 11
`Entered: May 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SHENZHEN ZHIYI TECHNOLOGY CO. LTD., D/B/A ILIFE,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-02061
`Patent 6,809,490 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, TERRENCE W. MCMILLIN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2017-02061
`Patent 6,809,490 B2
`Shenzhen Zhiyi Technology Co. Ltd., d/b/a iLife, (“Petitioner”) filed
`a Petition requesting an inter partes review of claims 1–3, 7, 12, and 42 of
`U.S. Patent No. 6,809,490 B2 (Ex. 1001, “the ’490 patent”). Paper 1
`(“Pet.”). In our Decision on Institution (Paper 8, “Dec. on Inst.”), we
`instituted an inter partes review as to the claim involved in the obviousness
`ground (claim 42), but we did not institute an inter partes review as to the
`claims involved in the anticipation ground (claims 1–3, 7, and 12). Dec. on
`Inst. 15. Petitioner filed a Request for Rehearing (Paper 10, “Req. Reh’g”)
`alleging that we should not have denied institution as to the anticipation
`ground because we misapprehended petitioner’s argument.
`We do not take a position as to the merits of Petitioner’s Request, but
`note that intervening case law has since clarified that we should not have
`denied institution of the claims in the anticipation ground while granting
`institution of the claims in the obviousness ground. The U.S. Supreme
`Court’s recent decision in SAS Institute holds that a final written decision
`under 35 U.S.C. § 318(a) “must address every claim the petition has
`challenged.” SAS Inst. Inc. v. Iancu, 584 U.S. ___, ___ (2018) (slip op., at
`5).1 Because we instituted an inter partes review as to claim 42, absent
`further developments in the proceeding, we must issue a final written
`decision regarding claims 1–3, 7, 12, and 42 of the ’490 patent.
`Accordingly, we bring the anticipation ground into the inter partes review to
`allow a full and fair consideration of the evidence before making any final
`written decision regarding challenged claims 1–3, 7, 12, and 42.
`
`
`1 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018)
`
` 2
`
`
`
`
`
`
`
`IPR2017-02061
`Patent 6,809,490 B2
`In view of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is granted; and
`FURTHER ORDERED that the scope of the inter partes review of the
`’490 patent instituted on March 12, 2018 is modified to include determining
`whether claims 1–3, 7, and 12 of the ’490 patent are anticipated by Ueno-
`642.
`
`
`
`
`PETITIONER:
`
`Patrick McCarthy
`Cameron Nelson
`GREENBERG TRAURIG LLP
`mccarthyp@gtlaw.com
`nelsonc@gtlaw.com
`
`
`PATENT OWNER:
`
`Walter Renner
`Jeremy Monaldo
`Patrick Bisenius
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`bisenius@fr.com
`
`Tonya Drake
`IROBOT CORPORATION
`tdrake@irobot.com
`
`
` 3
`
`
`
`
`
`
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