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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SHENZHEN ZHIYI TECHNOLOGY CO. LTD., D/B/A ILIFE,
`Petitioner
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`v.
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`IROBOT CORP.,
`Patent Owner
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`Case IPR2017-02061
`Patent 6,809,490
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`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
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`

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`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
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`TABLE OF CONTENTS
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`Pages
`INTRODUCTION ........................................................................................... 1 
`OVERVIEW OF the ’490 PATENT ............................................................... 3 
`  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 4 
`  CLAIM CONSTRUCTION ............................................................................ 4 
`  UENO-642 HAS ALREADY BEEN FOUND NOT TO DISCLOSE “SAID
`CONTROL SYSTEM CONFIGURED TO … SELECT FROM AMONG
`THE PLURALITY OF MODES IN REAL TIME IN RESPONSE TO
`SIGNALS GENERATED BY THE OBSTACLE DETECTION SENSOR”
`(CLAIM 1 – ELEMENT [1D]) ..................................................................... 12 
`A. 
`The Description of Ueno-642’s “travel mode pointer” Demonstrates
`that Mode Selection is Accomplished Without Use of Sensor Signals
` ............................................................................................................. 12 
`Transitioning Modes After the Robot has Traveled “for a planned time
`(or distance)” is Not in Response to Sensor Signals ........................... 14 
`Ueno-642 Prioritizes “Operations,” not Operating Modes ................. 15 
`C. 
`D.  New Arguments Raised in Petitioner’s Request for Rehearing .......... 15 
`  UENO-642 FAILS TO DISCLOSE “A SPOT-COVERAGE MODE
`WHEREBY THE ROBOT OPERATES IN AN ISOLATED AREA”
`(CLAIM 1 – ELEMENT [1D-1]; CLAIM 42 - ELEMENT [42E-1]) .......... 20 
`  UENO-642 FAILS TO DISCLOSE “A BOUNCE MODE WHEREBY THE
`ROBOT TRAVELS SUBSTANTIALLY IN A DIRECTION AWAY
`FROM AN OBSTACLE AFTER ENCOUNTERING THE OBSTACLE”
`(CLAIM 1 – ELEMENT [1D-3]; CLAIM 42 - ELEMENT [42E-3]) .......... 24 
`  UENO-642 FAILS TO DISCLOSE “WHEREBY SAID OBSTACLE
`DETECTION SENSOR COMPRISES A TACTILE SENSOR” (CLAIM 7)
`BECAUSE “CONTACT SENSOR 5A” DOES NOT GENERATE
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`B. 
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`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
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`TABLE OF CONTENTS (cont’d)
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`Pages
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`SIGNALS USED TO SELECT FROM AMONG THE PLURALITY OF
`MODES ......................................................................................................... 25 
`  UENO-642 FAILS TO DISCLOSE “A MEANS FOR MANUALLY
`SELECTING AN OPERATIONAL MODE” (CLAIM 12) ......................... 27 
`THE PETITION INCLUDES NUMEROUS DEFICIENCES WHICH
`FURTHER COMPEL AFFIRMANCE OF PATENTABILITY OF THE
`CHALLENGED CLAIMS ............................................................................ 31 
`A.  Ueno-642 fails to disclose “wherein, when in the obstacle following
`mode, the robot travels adjacent to an obstacle for a distance at least
`twice the work width of the robot” (Claim 1 – Element [1d-4]; Claim
`42 - Element [42e-2]) .......................................................................... 31 
`Bisset-612 is not prior art .................................................................... 33 
`1. 
`The ’490 Patent is Entitled to a Priority Date of June 12, 2001
` ................................................................................................... 33 
`Bisset-612 is Not Prior Art Under § 102(a) .............................. 43 
`2. 
`Bisset-612 is Not Prior Art Under § 102(e) .............................. 43 
`3. 
`The Petition fails to meet the requirements of 37 C.F.R. § 42.104(b)
`for claim elements that invoke 35 U.S.C. § 112, para. 6. ................... 46 
`1. 
`Petitioner has Failed to “Identify the Specific Portions of the
`Specification that Describe the Structure” Under 37 C.F.R. §
`42.104(b) ................................................................................... 47 
`Petitioner’s Failure Warrants Confirmation of Patentability of
`the Challenged Claims .............................................................. 48 
`Reliance on Arguments or Citations in the ITC Claim
`Construction Constitutes Improper Incorporation by Reference
` ................................................................................................... 52 
`
`B. 
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`C. 
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`2. 
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`3. 
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`ii
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`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
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`TABLE OF CONTENTS (cont’d)
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`Pages
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`  CONCLUSION .............................................................................................. 53 
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`iii
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`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
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`TABLE OF AUTHORITIES
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`CASES
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`PAGES
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`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00456 ............................ 49, 50
`Apple Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01902 ........................... 50
`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) ......................... 23
`Carefusion Corp. v. Baxter Int., Inc., IPR2016-01456 ............................................ 48
`Conopco v. The Procter & Gamble Company, IPR2013-00510 ............................. 52
`Cont'l Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
`(Fed. Cir., 1991) ........................................................................... 28, 29, 31, 33
`EnOcean GmbH v. Face Int'l Corp., 742 F.3d 955, 957 at note 3, (Fed. Cir.
`2014) .............................................................................................................. 44
`Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-00985 .................... 50,51
`Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp., IPR2014-00489 .................. 52
`Google LLC v. Uniloc USA, Inc., IPR2017-02082 .................................................. 16
`Hansgirg v. Kemmer, 26 C.C.P.A. 937, 102 F.2d 212, 214, 40 U.S.P.Q. (BNA)
`665, 667 (CCPA 1939) .................................................................................. 29
`HP Inc. v. Memjet Technology Ltd., IPR2016-00356 .............................................. 50
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380–81 (Fed. Cir. 2016) ...... 17
`In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. (BNA) 323, 326 (CCPA 1981) .... 29
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge LTD., IPR2013-00517 .......... 52
`Karsten Mfg. Corp. 242 F.3d at 1383 ...................................................................... 31
`Kingston Technology Company, Inc. v. Polaris Innovations Ltd.,
`IPR2017-00114 .............................................................................................. 50
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`Panel Claw, Inc. v. Sunpower Corp., IPR2014-00388 ............................................ 50
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................... 5
`Sanitec Indus., Inc. v. Micro-Waste Corp., 2006 WL 3455000, note 11 (S.D. Tex.
`2006) .............................................................................................................. 44
`Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1316 (Fed. Cir. 2002) ........... 17
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp., IPR2014-01419 ......................... 52
`Ubisoft Inc. v. Guitar Apprentice, Inc., IPR2015-00298 ......................................... 51
`Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997) ...... 23
`STATUTES
`PAGES
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`35 U.S.C. § 102 ................................................................................33, 43, 44, 45, 46
`35 U.S.C. § 112 .............................................................................................. 3, 27, 46
`35 U.S.C. § 371(c)(1) ............................................................................................... 44
`35 U.S.C. § 371(c)(2) ............................................................................................... 44
`35 U.S.C. § 371(c)(4) ............................................................................................... 44
`REGULATIONS
`PAGES
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`37 C.F.R. § 42.100(b) ................................................................................................ 4
`37 C.F.R. § 42.104(b) ........................................................... 3, 31, 46, 47, 49, 51, 53
`MPEP § 2136.03 ...................................................................................................... 44
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`Case IPR2017-02061
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`EXHIBIT LIST
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`IR2001
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`Prosecution History of U.S. Patent No. 6,809,490 (Serial No.
`10/167,851)
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`IR2002
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`U.S. Patent No. 6,076,025 to Ueno et al. (“Ueno-025”)
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`IR2003
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`Claim Construction Order from Investigation No. 337-TA-1057,
`August 18, 2017
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`IR2004
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`U.S. Provisional Application No. 60/297,718
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`IR2005
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`Declaration of Dr. J. Kenneth Salisbury
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`IR2006
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`IR2007
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`Definition of “spot,” The Oxford Essential Dictionary: American
`Edition, p. 580 (1998)
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`Definition of “spot,” Webster’s II New College Dictionary, p. 1068
`(1999)
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`IR2008
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`RESERVED
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`IR2009
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`European Patent Application Publication No. EP0145683 A1 to
`Brantmark et al. (“Brantmark”)
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`IR2010
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`U.S. Patent No. 6,452,348 to Toyoda (“Toyoda”)
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`IR2011
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`U.S. Patent No. 6,681,031 to Cohen et al. (“Cohen”)
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`IR2012
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`U.S. Patent No. 4,484,294 to Noss (“Noss”)
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`IR2013
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`U.S. Patent No. 4,360,886 to Kostas et al. (“Kostas”)
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`Definition of “isolated,” The New Shorter Oxford English Dictionary,
`Volume 1, p. 1425 (1993)
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`Transcript of Deposition of Dr. C. Douglass Locke taken June 20,
`2018
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`IR2014
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`IR2015
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`INTRODUCTION
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`Petitioner has failed to meet its burden of proving that claims 1-3, 7, 12, and
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`42 of U.S. Patent No. 6,809,490 (“the ’490 patent”) are unpatentable because the
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`Petition does not sufficiently demonstrate that the subject matter of each of the
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`challenged claims was known in the prior art for the reasons outlined here and
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`explained in detail below.1
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`First, as recognized in the Institution Decision (pp. 5-10), Ueno-642 fails to
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`disclose “select[ing] from among the plurality of modes in real time in response to
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`signals generated by the obstacle detection sensor,” as recited in originally non-
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`instituted claim 1. Specifically, the Petition fails to demonstrate how signals
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`generated by an obstacle detection sensor are used to “select from among the
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`plurality of modes,” as required.
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`Second, the cited references fail to disclose “a spot-coverage mode whereby
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`the robot operates in an isolated area,” as recited in claims 1 and 42. Specifically,
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`1 Claims 1-3, 7, and 12 were originally not instituted and were only added
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`back into the proceeding due to the recent Supreme Court decision in SAS Inst. Inc.
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`v. Iancu. See Decision Granting Petitioner’s Request for Rehearing, 2.
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`1
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`Ueno-642’s unbounded spiral travel mode is not a “spot-coverage mode” that
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`Attorney Docket No: 44360-0004IP1
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`“operates in an isolated area.”2
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`Third, the cited references fail to disclose “a bounce mode whereby the
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`robot travels substantially in a direction away from an obstacle after encountering
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`the obstacle,” as recited in claims 1 and 42. Specifically, Ueno-642’s random
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`travel mode is not a “bounce mode” because Ueno-642 never describes its robot
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`reacting to contact with an obstacle by turning and traveling away from the
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`obstacle while operating in the random travel mode.
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`Fourth, the cited references fail to disclose claim 7 because Ueno-642 fails
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`to disclose using signals generated the “contact sensor 5A” to select from among a
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`plurality of operational modes.
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`Fifth, the cited references fail to disclose “a means for manually selecting an
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`operational mode,” as recited by claim 12. Specifically, the Petition relies on a
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`flawed inherency theory for claim 12, failing to demonstrate that the structure from
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`the ’490 patent is necessarily present in Ueno-642.
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`Sixth, the Petition includes several general deficiencies, including reliance
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`on a reference that is not prior art (Bissett-612); inclusion of improper obviousness
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`2 All emphasis added unless otherwise noted
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`2
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`analysis for a claim element challenged under an anticipation ground; and failure
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`to satisfy the requirements of 37 C.F.R. § 42.104(b) to “identify the specific
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`portions of the specification that describe the structure” for claim elements that
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`invoke Pre-AIA 35 U.S.C. § 112, para. 6.
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`For at least these reasons, Grounds 1 and 2 are flawed, and the Board should
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`confirm the patentability of the challenged claims.
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` OVERVIEW OF THE ’490 PATENT
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`The ’490 patent describes an autonomous mobile cleaning robot “designed
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`to provide maximum coverage at an effective coverage rate in a room of unknown
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`geometry.” Ex. 1001, 5:29-31. To improve effective coverage rate, the ’490
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`patent’s cleaning robot “autonomously” selects “operational modes,” including
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`“spot cleaning,” “edge cleaning,” and “room cleaning.” Id., 8:35-47. When
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`operating in the “spot cleaning” mode, the “robot designates a specific region for
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`cleaning” such that the robot is restricted to “the immediate area within, for
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`example, a defined radius.” Ex. 1001, 8:37-39; 9:11-19; 10:22-25 (“for spot
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`coverage, any self-bounded area can be used”). In edge cleaning mode, the robot
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`“moves in such a way that it follows the edge” of a wall or object. Id., 10:26-34.
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`The ’490 patent further describes a “BOUNCE” mode embodiment in which, when
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`the robot comes in contact with an obstacle, the robot changes directions to move
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`away from the obstacle. Id., 12:53-13:10.
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`3
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`

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`By autonomously cycling through different types of cleaning modes, the
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`’490 patent invented techniques to more effectively clean a room of unknown size
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`or geometry with less user involvement. Id., 8:59-9:5; 2:27-35. The user need not
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`pre-program a path or otherwise plan operation modesthe ’490 patent’s cleaning
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`robot autonomously selects the operation modes based on sensor signals. Id., 8:59-
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`9:5; 2:27-35; 3:55-62; 4:20-25; 16:1-10.
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` LEVEL OF ORDINARY SKILL IN THE ART
`As previously stated in the Patent Owner’s Preliminary Response (at pp. 2-
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`4) Patent Owner proposes that the Board adopt the same definition of a POSITA as
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`the ITC; namely, “a person having an ordinary level of skill would hold a
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`bachelor’s degree in physics, electrical engineering, mechanical engineering,
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`computer science, or a related discipline, and have at least three years of
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`experience in the design and implementation of robotics and embedded systems, or
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`some other equivalent combination of education and experience.” IR2003, p. 13.
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` CLAIM CONSTRUCTION
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`For the purposes of IPR, each claim of the ’490 patent is to be “given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 C.F.R. § 42.100(b). Patent Owner submits that all claim terms should
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`be given their plain meaning under the BRI standard as detailed in the relevant
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`4
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`sections below, except that Patent Owner provides the following discussion to aid
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`the Board in interpreting the following terms.3
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`“spot-coverage mode whereby the robot operates in an isolated area”
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`Claims 1 and 42 each recite a “spot-coverage mode whereby the robot
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`operates in an isolated area.” This claim feature should be construed as “a mode in
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`3 The USPTO recently announced a proposal to change the claim
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`construction standard in inter partes review proceedings from BRI to the standard
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`that is used in district courts and other forums consistent with Phillips v. AWH
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`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 83 Fed. Reg. 21221. The
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`BRI standard, however, currently remains in force and was used in instituting this
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`proceeding. Accordingly, Patent Owner has applied the BRI standard in this
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`response, noting that the arguments for patentability under the BRI standard also
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`apply under the Phillips standard. To the extent the standard changes, Patent
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`Owner requests additional briefing to address the implications of the change,
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`reserving the right to advance narrower constructions of the terms proposed for
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`construction under the BRI standard, propose constructions of terms not offered for
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`construction under the BRI standard, and provide arguments for the patentability of
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`the challenged claims under the Phillips constructions.
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`5
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`which the robot is designed to operate in a limited, self-bounded area.” IR2005,
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`¶¶20-27.
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`This interpretation is supported by the claim language itself. As Dr.
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`Salisbury explains, a POSITA would have viewed the term “spot-coverage” to
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`connote operation in a particular “spot” with a defined area. IR2005, ¶¶27, 25.
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`Additionally, the claim goes further to specify that “spot-coverage” operation
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`occurs in “an isolated area.” As Dr. Salisbury explains, a POSITA would have
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`viewed this additional language to suggest that the “spot” is “isolated” with
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`boundaries defining the area of operation. IR2005, ¶¶26-27. This is supported by
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`the plain and ordinary meanings of the terms “spot” and “isolated.” IR2007
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`(defining “spot” as “A specific place with relatively small and definite limits”);
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`IR2006 (defining “spot” as “particular place; definite locality”); IR2014 (defining
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`“isolated” as “standing apart or alone”); IR2005, ¶27. Thus, from the claim
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`language itself, a POSITA would have viewed a “spot-coverage mode whereby the
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`robot operates in an isolated area” to mean operation in a limited, self-bounded
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`area. IR2005, ¶27.
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`This interpretation also is supported by the specification of the ’490 patent
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`which defines the “Spot Coverage” mode as a mode in which the robot “clean[s]
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`an isolated dirty area” such that “the immediate area within, for example, a
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`defined radius” is cleaned by the robot. Ex. 1001, 9:10-18. For example, in the
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`“spot cleaning” mode, “the user or robot designates a specific region for cleaning.”
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`Id., 8:38-39. The region or area may be defined by “a spiral motion” operating
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`within a “maximum spiral distance,” but “any self-bounded area can be used,
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`including but not limited to regular polygon shapes such as squares, hexagons,
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`ellipses, etc.” Id., 9:35-10:25. FIG. 7 of the ’490 patent shows an example of self-
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`bounded spiral operation in spot-coverage mode where the robot self-defines the
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`coverage area by exiting the spiral travel pattern when the “Max. spiral distance” is
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`reached:
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`7
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`Ex. 1001, FIG. 7; 9:57-10:8. Although the spot-coverage mode can exit if an
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`obstacle is encountered, the robot’s coverage will not exceed a self-bounded area if
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`no obstacle is encountered. Ex. 1001, 9:16-19; 9:62-10:8; 10:22-25; IR2005, ¶25.
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`In this way, although the robot might not cover the entire area due to obstacle
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`8
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`presence, the spot-coverage mode requires the robot to be designed to operate
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`within a limited, self-bounded area.
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`Also, the claimed “spot-coverage mode whereby the robot operates in an
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`isolated area” is distinct from other spiral behavior discussed by the ’490 patent.
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`Specifically, with reference to FIG. 14, the ’490 patent discusses a “spiral mode”
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`in which “the device continues … until a predetermined or random number of
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`reflective events has occurred.” Ex. 1001, 16:39-45; IR2005, ¶26. In this spiral
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`mode, “the device should continue until any bump sensor event.” Ex. 1001, 16:42-
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`45. Although this spiral mode is unbounded, as Dr. Salisbury explains, a POSITA
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`would not have viewed FIG. 14’s spiral mode as the claimed “spot-coverage mode
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`whereby the robot operates in an isolated area.” IR2005, ¶26.
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`First, the ’490 patent does not refer to this “spiral mode” as an example of a
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`spot-coverage mode or even use the term “spot” in discussing the FIG. 14
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`operation. Thus, the ’490 patent distinguishes the FIG. 14 “spiral mode” from the
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`claimed “spot-coverage mode,” because it is not spiral motion that makes a mode a
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`“spot-coverage mode;” rather, it is the operation in a limited, self-bounded area
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`that does so. The ’490 patent explicitly confirms this point, explaining that,
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`“[w]hile a preferred embodiment describes a spiral motion for spot coverage, any
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`self-bounded area can be used.” Id., 9:35-10:25. As Dr. Salisbury explains, from
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`this description, a POSITA would not have equated spiral motion with spot
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`coverage, but, instead, equated spot coverage with the limited, self-bounded area in
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`which the robot is designed to operate. IR2005, ¶¶23-24.
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`From the language of the claims, the intrinsic evidence, and the extrinsic
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`evidence, the claimed “spot-coverage mode whereby the robot operates in an
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`isolated area” should be construed as “a mode in which the robot is designed to
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`operate in a limited, self-bounded area.” IR2005, ¶¶20-27.
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`“bounce mode whereby the robot travels substantially in a direction
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`away from an obstacle after encountering the obstacle”
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`Claims 1 and 42 each recite a “bounce mode whereby the robot travels
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`substantially in a direction away from an obstacle after encountering the obstacle.”
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`As discussed in more detail below, this claim feature should be construed as “a
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`mode in which the robot is designed to, upon contacting an obstacle, turn to a new
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`heading and travel away from the obstacle.” IR2005, ¶¶28-31.
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`This interpretation is supported by the claim language itself. As Dr.
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`Salisbury explains, a POSITA would have viewed to term “bounce” to connote that
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`the robot reacts to physically contacting an obstacle by changing directions and
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`thereby “bouncing” off of the obstacle. IR2005, ¶29.
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`This interpretation also is consistent with the specification of the ’490 patent
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`which describes that, in bounce mode, “the robot 10 travels until a bump sensor 12
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`and/or 13 is activated by contact with an obstacle 101 or a wall 100 … The robot
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`10
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`10 then turns and continues to travel” such that the robot effectively bounces off of
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`a wall or other object in the course of travel. Id., 12:54-61; see also 12:62-13:10
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`(describing that in bounce mode “[t]he robot 10 continues its forward movement
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`(step 401) until a bump sensor 12 and/or 13 is activated.”). The ’490 patent
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`distinguishes the bounce mode, in which the robot responds to contact with an
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`object/wall by turning away from the contacted object, with other modes in which
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`the robot never contacts an object/wall. IR2005, ¶¶30-31; Ex. 1001, 12:53-61;
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`13:18-22. Although bounce mode does not require robot navigation to occur
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`exclusively based on robot contact and room coverage may be achieved using
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`techniques other than contact events, bounce mode does require the robot to be
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`designed to perform a specific action if contact occurs. IR2005, ¶¶30-31.
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`Specifically, the robot must be designed to, upon contacting an obstacle, turn to a
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`new heading and travel away from the obstacle, as consistently described in the
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`’490 patent. IR2005, ¶29. This excludes modes that handle obstacle contacts
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`using other non-bounce actions, such as simply stopping or repeating travel in the
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`same direction. Id. Thus, the claimed “bounce mode whereby the robot travels
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`substantially in a direction away from an obstacle after encountering the obstacle”
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`should be construed as “a mode in which the robot is designed to, upon contacting
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`an obstacle, turn to a new heading and travel away from the obstacle.” IR2005,
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`¶¶28-31.
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` UENO-642 HAS ALREADY BEEN FOUND NOT TO DISCLOSE
`“SAID CONTROL SYSTEM CONFIGURED TO … SELECT FROM
`AMONG THE PLURALITY OF MODES IN REAL TIME IN
`RESPONSE TO SIGNALS GENERATED BY THE OBSTACLE
`DETECTION SENSOR” (CLAIM 1 – ELEMENT [1D])
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`As recognized in the Institution Decision, Ueno-642 fails to disclose the
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`“select…” limitation that was added during prosecution and ultimately led to
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`allowance. Inst. Dec., 5-10. Indeed, Ueno-642 fails to disclose or suggest
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`“select[ing] from among the plurality of modes in real time in response to signals
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`generated by the obstacle detection sensor,” as required by independent claim 1.
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`This limitation “requires, in practical application, that the system can choose a
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`mode in which to operate (‘select from among’), based on inputs from the obstacle
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`sensor (‘in response to signals’).” Id., 6. Ueno-642 does not choose a mode based
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`on inputs from the obstacle sensor. IR2005, ¶33.
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`A. The Description of Ueno-642’s “travel mode pointer”
`Demonstrates that Mode Selection is Accomplished Without
`Use of Sensor Signals
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`
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`The Petition cites paragraph 0035 as allegedly disclosing the “select…”
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`limitation (Pet., 20), however, paragraph 0035 confirms that mode selection is
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`accomplished without the use of sensor signals. See Prelim. Resp., 26-27.
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`Specifically, paragraph 0035 discusses “3 types of travel mode such as a spiral
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`travel, a random travel and a border-following travel” that are designated by the
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`“travel mode pointer.” Ex. 1004, ¶0035. Mode selection by the Ueno-642 robot is
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`therefore accomplished using a travel mode pointer, not a sensor signal. Id.;
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`IR2005, ¶36. Nowhere does Ueno-642 disclose or suggest that the travel mode
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`pointer is advanced “in response to signals generated by the obstacle detection
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`sensor,” as required by independent claim 1. IR2005, ¶36.
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`As noted in the Institution Decision, the description of Figure 9 “describes
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`how the travel pointer value is not selected from among its possible values but
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`rather merely moves to the next part of a pre-ordained, repeated sequence.” Inst.
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`Dec., 7-8 (citing Ex. 1004, ¶¶0035–0036 (“As to in what sequence these travel
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`modes are executed … the combination of a spiral travel, a random travel and a
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`border-following travel and a random travel are executed repeatedly in this
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`sequence … the worker can set up these [sequences] and register each time or can
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`preregister and select and set up at work start time.”).
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`Indeed, the description of Figure 9 indicates that “the mode selection in
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`Ueno-642 [is] a pre-ordained sequence of modes rather than a selection based on
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`obstacle sensor input.” Inst. Dec., 8 (citing Ex. 1004, ¶0035). Although paragraph
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`0035 describes use of sensor output in controlling operations, claim 1 does not
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`simply require that operations be controlled “in response to signals generated by
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`the obstacle detection sensor,” but rather that signals from the obstacle detection
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`sensor are used “to select from among the plurality of modes.” Ex. 1004, ¶0035;
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`Ex. 1001, claim 1. Because the sensor signals in paragraph 0035 are used to
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`control operations, not select modes, paragraph 0035 does not describe mode
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`selection “in response to signals generated by the obstacle detection sensor.”
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`Furthermore, neither the Petition nor Petitioner’s Request for Rehearing
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`discusses the travel mode pointer in any capacity. See Pet., generally; Req. for
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`Reh., generally. Therefore, any arguments related to advancement of the travel
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`mode pointer made in the Petitioner’s Reply would constitute impermissible new
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`argument.
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`B. Transitioning Modes After the Robot has Traveled “for a
`planned time (or distance)” is Not in Response to Sensor
`Signals
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`Ueno-642’s timing or distance criteria also fails. As Ueno-642 explains,
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`“border-following travel is stopped after continuing for a planned time (or
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`distance), it moves to a random travel mode.” Ex. 1004, ¶0025. However, a
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`“planned time (or distance)” is not a signal generated by an obstacle detection
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`sensor, and certainly not a signal generated by the contact and infrared sensors the
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`Petition maps to the claimed obstacle detection sensor. Id.; Pet., 17; see also Inst.
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`Dec., 9; IR2005, ¶¶34-35.
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`Similarly, paragraph 0038 of Ueno-642 specifies that “the move to the spiral
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`travel during [random] travel is executed when a planned time T from the last turn
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`back operation of random travel is passed.” Ex. 1004, ¶0038. This shows that the
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`spiral travel mode is initiated (and random travel is ended), not “in response to
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`signals generated by the obstacle detection sensor,” but due to a timer having
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`reached “time T.” Id. Thus, Ueno-642 once again discloses that mode selection is
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`based on factors other than signals from the obstacle detection sensor. IR2005,
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`¶¶34-35.
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`C. Ueno-642 Prioritizes “Operations,” not Operating Modes
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`The Petition asserts that “the inputs received from the Ueno-642 robot’s
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`sensors are prioritized.” Pet., 22. Yet, as observed in the Institution Decision, “the
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`disclosures in Ueno-642 regarding priority of operations and action plans [are] not
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`[] a disclosure of a control system selecting modes as required by claim 1.” Inst.
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`Dec., 9. Ueno-642 specifies that this prioritization scheme assigns priorities for
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`“operations such as a straight advance, a retreat, a stop and a slow rotation, a fast
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`rotation and a pivot turn, an ultra-pivot turn etc.” Ueno-642’s prioritization is not
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`for selecting between operating modes. Ex. 1004, ¶0021. Rather the disclosures of
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`paragraphs 0021-0022 are “discussing how the robot handles the immediate
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`consequences of hitting an object, for example, because the operations among
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`which it selects are not the operating modes but rather smaller tasks such as retreat,
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`advance, stop, rotate, etc.” Inst. Dec., 9 (citing Ex. 1004, ¶0021-0022).
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`D. New Arguments Raised in Petitioner’s Request for Rehearing
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`In addressing the “select…” limitation in the Request for Rehearing,
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`Petitioner raises a number of new arguments and addresses portions of Ueno-642
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`that had not been previously discussed in the Petition. Not only are these new
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`arguments an impermissible attempt to retroactively correct for deficiencies in the
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`Petition, these new arguments fail to disclose claim 1’s requirement that the control
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`system be configured to “select from among the plurality of modes in real time in
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`response to signals generated by the obstacle detection sensor.” As discussed
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`above, this limitation “requires, in practical application, that the system can choose
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`a mode in which to operate (‘select from among’), based on inputs from the
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`obstacle sensor (‘in response to signals’)” such that “[d]etermining when to exit the
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`present mode is not the same as selecting the next mode based upon signals
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`generated by the obstacle detection sensor.” Inst. Dec., 6-7 (emphasis original).
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`The new portions of Ueno-642 that are discussed for the first time in the Request
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`for Rehearing fail to satisfy this interpretation of the “select…” limitation.
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`Turning to the new arguments raised in the Request for Rehearing, Petitioner
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`focuses on two paragraphs of Ueno-642 (¶¶0024 and 0028) that were cited in “see
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`also” string cites in the Petition (in a section that cites to 19 different paragraphs
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`and seven figures of Ueno-642) but not quoted or substantively addressed in the
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`Petition. Req. for Reh., 3-7; Pet., 18-22. This failure to substantively address
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`paragraphs 0024 and 0028 in the Petition is fatal, as it improperly leaves it to the
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`Board to “piece together … a cogent and coherent explanation that supports
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`anticipation.” Google LLC v. Uniloc USA, Inc., IPR2017-02082, Paper 10 at 12-13
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`(PTAB March 29, 2018). See also Schumer v. Lab. Comput. Sys., Inc.,