`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`TABLE OF CONTENTS
`
`
`
` 
`
` 
`
` 
`
`B. 
`C. 
`
`Pages
`INTRODUCTION ........................................................................................... 1 
`OVERVIEW OF the ’490 PATENT ............................................................... 1 
`  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2 
`  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. .......................................................................................................... 5 
`A. 
`Petitioner has Failed to “Identify the Specific Portions of the
`Specification that Describe the Structure” Under 37 C.F.R. §
`42.104(b) ............................................................................................... 6 
`Petitioner’s Failure Warrants Denial of Institution ............................... 7 
`Reliance on Arguments or Citations in the ITC Claim Construction
`Constitutes Improper Incorporation by Reference .............................. 10 
`THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(d) .............................................................................................. 11 
`A.  Ueno-642 Discloses the Same Random and Spiral Travel Modes as
`Ueno-025 ............................................................................................. 13 
`A Version of Ueno Having an Obstacle Follow Mode was Considered
`During Prosecution .............................................................................. 15 
`Portions of Ueno-642 Cited for the Added “select…” Limitation are
`Present in Ueno-025 and have Already Been Considered by the Patent
`Office ................................................................................................... 17 
`D.  Application of 35 U.S.C. § 325(d) is Appropriate .............................. 22 
`  UENO-642 FAILS TO DISCLOSE ELEMENT 1[d] – “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” .................. 23 
`A.  Ueno-642’s “travel mode pointer” Does Not Change in Response to
`Sensor Signals ..................................................................................... 26 
`
`B. 
`
`C. 
`
`
`
`i
`
`

`

`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`TABLE OF CONTENTS (cont’d)
`
`
`B. 
`
`Pages
`Transitioning Modes After the Robot has Traveled “for a planned time
`(or distance)” is Not in Response to Sensor Signals ........................... 27 
`Uneo-642 Prioritizes “Operations,” not Operating Modes ................. 28 
`C. 
`  CONCLUSION .............................................................................................. 29 
`
`
`
`
`
`ii
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`PAGES
`
`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00456 ................................ 7, 9
`Apple Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01902 ............................. 8
`Arctic Cat, Inc., v. Polaris Industries, Inc., IPR2017-00199 .................................. 23
`Carefusion Corp. v. Baxter Int., Inc, IPR2016-01456 ............................................... 7
`Conopco v. The Procter & Gamble Company, IPR2013-00510 ............................. 10
`Conopco, Inc. v. The Procter & Gamble Co., IPR2014-00628 ......................... 16, 23
`Cultec, Inc. v. Stormtech LLC, IPR2017-00777 ...................................................... 23
`Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-00985 ........................... 9
`Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp., IPR2014-00489 .................. 10
`HP Inc. v. Memjet Technology Ltd., IPR2016-00356 ................................................ 8
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge LTD., IPR2013-00517 .......... 10
`Kingston Technology Company, Inc. v. Polaris Innovations Ltd.,
`IPR2017-00114 .................................................................................................... 8
`Oil States Energy Servs. LLC v. Greene’s Energy Group, LLC, Case No. 16-712,
`certiorari granted (U.S. Jun. 12, 2017) ................................................................ 1
`Panel Claw, Inc. v. Sunpower Corp., IPR2014-00388 .............................................. 8
`Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) .................... 9
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp., IPR2014-01419, ........................ 10
`Unified Patents Inc. v. John L. Berman, IPR2016-01571 ................................. 12, 22
`
`STATUTES
`
`PAGES
`
`35 U.S.C. § 112(f) .............................................................................................. 1, 5, 8
`35 U.S.C. § 323 .......................................................................................................... 1
`
`
`
`
`iii
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`35 U.S.C. § 325(d) ................................................................................. 11, 12, 22, 23
`
`
`REGULATIONS
`
`PAGES
`
`37 C.F.R. § 42.104(b) ............................................................................... 1,5, 6, 8, 11
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 10
`
`
`iv
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`EXHIBIT LIST
`
`IR2001
`
`Prosecution History of U.S. Patent No. 6,809,490 (Serial No.
`10/167,851)
`
`IR2002
`
`U.S. Patent No. 6,076,025 to Ueno et al. (“Ueno-025”)
`
` v
`
`
`
`
`
`
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`
`INTRODUCTION
`
`The Board should deny all grounds in this Petition because (1) the Petition
`
`does not satisfy the requirements of 37 C.F.R. § 42.104(b) to “identify the specific
`
`portions of the specification that describe the structure” for claim elements that
`
`invoke Pre-AIA 35 U.S.C. § 112, para. 6; (2) the Petition relies on substantially the
`
`same art applied and overcome during prosecution; and (3) elements of the
`
`independent claims are not disclosed or suggested by the cited references. 1
`
` OVERVIEW OF THE ’490 PATENT
`
`The ’490 patent describes an autonomous mobile cleaning robot “designed
`
`to provide maximum coverage at an effective coverage rate in a room of unknown
`
`
`
`1 Arguments presented herein are presented without prejudice to presenting
`
`additional arguments in a later response should the Board institute IPR review. No
`
`waiver is intended by Patent Owner and no waiver attaches to arguments not
`
`presented in a patent owner’s preliminary response. 35 U.S.C. § 323. Moreover,
`
`as the Board is aware, the United States Supreme Court is currently considering
`
`certain aspects of the inter partes review process in Oil States Energy Servs. LLC
`
`v. Greene’s Energy Group, LLC, Case No. 16-712, certiorari granted (U.S. Jun. 12,
`
`2017). Patent Owner respectfully reserves its right to timely request permission to
`
`brief the implications of that decision on this proceeding.
`
`1
`
`

`

`geometry.” Ex. 1001, 5:29-31. To improve effective coverage rate, the ’490
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`patent’s cleaning robot “autonomously” cycles through “operational modes,”
`
`including “spot cleaning,” “edge cleaning,” and “room cleaning.” Id., 8:35-47. By
`
`autonomously cycling through different types of cleaning modes, the ’490 patent
`
`invented techniques to more effectively clean a room of unknown size or geometry
`
`with less user involvement. Id., 8:59-9:5; 2:27-35. The user need not pre-program
`
`a path or otherwise plan operation modesthe ’490 patent’s cleaning robot
`
`autonomously selects the operation modes based on sensor signals. Id., 8:59-9:5;
`
`2:27-35; 3:55-62; 4:20-25; 16:1-10.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`Since the instant Petition was filed, the ITC issued a claim construction
`
`order (IR2003) that addressed the definition of a POSITA proposed by Petitioner
`
`in the ITC. In that order, the ITC agreed that experience in robotics was needed,
`
`but found that even more experience was needed than proposed by Petitioner.
`
`Indeed, the ITC found that a POSITA should have at least three years of
`
`experience in the design and implementation of robotics and embedded systems,
`
`rather than the one year of experience that the Petitioner proposed in that
`
`proceeding. IR2003, p. 13. Here, Petitioner proposes no robotics experience,
`
`substituting that relevant experience with experience in “embedded computer
`
`devices,” tailored to Dr. Locke’s background. Thus, for the purpose of this
`
`2
`
`

`

`proceeding, Petitioner’s definition of a POSITA should be rejected. Patent Owner
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`proposes that the Board adopt the same definition of a POSITA as the ITC;
`
`namely, “a person having an ordinary level of skill would hold a bachelor’s degree
`
`in physics, electrical engineering, mechanical engineering, computer science, or a
`
`related discipline, and have at least three years of experience in the design and
`
`implementation of robotics and embedded systems, or some other equivalent
`
`combination of education and experience.” Id.
`
`In contrast, Petitioner proposes a definition of a person of ordinary skill in
`
`the art that differs from not only for the adopted definition from the ITC action, but
`
`even differs from the definition they proposed in the co-pending ITC case (Inv. No.
`
`337-TA-1057). Petitioner provides no explanation why the definition here should
`
`differ. The inconsistent defintitions of a POSITA as set forth by Petitioner in this
`
`Petition and in the parallel ITC case are shown below:
`
`Definition from IPR Petition
`
`Definition from ITC Proceeding
`
`“A POSITA in the field of the ’490
`
`A POSITA in the field of the ’490
`
`patent at the time of the earliest
`
`patent would have “a bachelor’s degree
`
`possible priority date (June 12, 2001)
`
`in physics, electrical engineering,
`
`would have had at least an
`
`mechanical engineering, computer
`
`undergraduate degree in computer
`
`science, or a related discipline, and
`
`3
`
`

`

`science or electrical engineering, or
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`have at least one year of experience in
`
`equivalent experience and, in addition,
`
`the design and implementation of
`
`two years of experience in the design
`
`robotics and embedded systems, or
`
`and implementation of embedded
`
`some other equivalent combination of
`
`computer devices controlling sensors
`
`education and experience.” (IR2003, p.
`
`and motors.” (Petition, p. 7)
`
`12)
`
`
`Notably, the definition of a POSITA proposed by Petitioner in this IPR is
`
`devoid of any experience in mechanical design, physics, or even robotics. This
`
`definition seems aligned with the software engineering background of Petitioner’s
`
`declarant, Dr. Locke, whose CV describes his expertise to be in the area of
`
`“software development management and organization.” Ex. 1003, pp. 50-51,
`
`Appendix A. Although Dr. Locke purports to have “experience in designing and
`
`building navigation systems,” this experience appears to be solely software related
`
`and Dr. Locke does not mention any direct experience in robotics design or
`
`mechanical design, which are at issue in the challenged claims. Ex. 1003, pp. 5-6;
`
`50-51.
`
`4
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
` 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.
`
`In Inter Partes Review, “[w]here the claim to be construed contains a
`
`means-plus-function or step-plus-function limitation as permitted under 35 U.S.C.
`
`112(f),” this Board requires the petition to “identify the specific portions of the
`
`specification that describe the structure, material, or acts corresponding to each
`
`claimed function.” 37 C.F.R. § 42.104(b).2 Here, elements [1a] and [42a] and
`
`claim 12 recite “means for” limitations, but the Petition provides no evidence or
`
`argument that identifies structure in the specification for the claimed functions.
`
`Petitioner even admits that it has not, because it cannot, met its burden, relying on
`
`alleged “constructions” offered in a related ITC litigation without any additional
`
`
`
`2 37 C.F.R. § 42.104(b) requires that:
`
`“the petition must set forth . . . [h]ow the challenged claim is to be
`construed. Where the claim to be construed contains a means-plus-
`function or step-plus-function limitation as permitted under 35 U.S.C.
`112(f), the construction of the claim must identify the specific
`portions of the specification that describe the structure, material, or
`acts corresponding to each claimed function.”
`
`
`
`5
`
`

`

`details. As the Board has previously recognized, this deficiency is fatal to the
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`Petition and justifies denial of institution.
`
`A.
`
`Petitioner has Failed to “Identify the Specific Portions of the
`Specification that Describe the Structure” Under 37 C.F.R. §
`42.104(b)
`
`The Petition admits that “means-plus-function” treatment applies to
`
`elements [1a] and [42a] and claim 12. See Petition, 8, 15, 34, 39. Yet, the Petition
`
`does not:
`
` provide a proper construction of these claims, failing to “identify the
`
`specific portions of the specification that describe the structure” of
`
`the claimed functions in any capacity whatsoever, citing wholesale to
`
`Exhibit 1008 with no analysis;
`
` provide any identification of the precise “means-plus-function”
`
`elements that the Petition seeks construction for; or
`
` provide any detail with respect to the allegedly “agreed constructions”
`
`from a related ITC action and their applicability to the instant
`
`proceedings. Id.
`
`The Petition’s sole attempt to construe these terms amounts to citation to
`
`Exhibit 1008, which allegedly includes “agreed constructions” from a related ITC
`
`action. Id. The Petition asserts that these “constructions are consistent with the
`
`broadest reasonable constructions” and that “Petitioner is not aware of any
`
`6
`
`

`

`reasonable alternative interpretation that affects the outcome of this Petition.” Id.
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`The Petition’s reference to allegedly agreed constructions in an entirely different
`
`proceeding with a different claim construction standard is not a proper claim
`
`construction analysis. And, the Petition’s unsupported statement that Petitioner “is
`
`not aware of” alternatives does nothing to help. Indeed, the Petition does not
`
`identify any “portions of the specification” of the ’490 patent or even any specific
`
`portions of Exhibit 1008. Id. at 15, 34, 39.
`
`B.
`
`Petitioner’s Failure Warrants Denial of Institution
`
`Numerous cases support denial of institution in these circumstances. For
`
`example, in Carefusion Corp. v. Baxter Int., Inc., the Board denied institution
`
`where, as here, the Petitioner pointed to litigation constructions, instead of offering
`
`“its own construction … by identifying corresponding structure, material, or acts
`
`described in the Specification.” IPR2016-01456, Paper 9 at 10, 13, 19 (PTAB Feb.
`
`6, 2017). Reference to litigation constructions is insufficient because “it is the
`
`Petition, and not an external document, that must set forth an identification of the
`
`corresponding structure.” Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-
`
`00456, Paper 9 at 7 (PTAB June 15, 2015).
`
`Similarly, as the Petition does here, referencing “agreed” litigation
`
`constructions has been deemed insufficient in numerous decisions from the Board.
`
`Id. at 8. For example, in Apple v. ContentGuard Holdings, the Board considered a
`
`7
`
`

`

`statement that “[t]he parties to the co-pending litigation have agreed the ‘[u]ser
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`interface 1305 described [in Ex. 1009] at 16:35-44’ is this means element.” Id.
`
`Even though that statement identified a portion of the specification, this was not
`
`enough to meet the requirements of 37 C.F.R. § 42.104(b). As the Board
`
`explained, “by couching it in terms of what Petitioner allegedly agreed to in district
`
`court, Petitioner has not identified necessarily what it considers to be the
`
`corresponding structure under the claim construction standard applicable to an
`
`inter partes review.” Id.3
`
`Similar reasoning controls here, where Petitioner relies exclusively on
`
`allegedly agreed constructions in an external document from a different court,
`
`
`
`3 See also Kingston Technology Company, Inc. v. Polaris Innovations Ltd.,
`
`IPR2017-00114, Paper 10 at 7-9, 32-33 (PTAB April 3, 2017) (denying institution
`
`for claims subject to 112/6 where the Petition failed to “identify what structure in
`
`the Specification . . . corresponds to the means-plus-function limitations.”); HP
`
`Inc. v. Memjet Technology Ltd., IPR2016-00356, Paper 7 at 10-11 (PTAB June 16,
`
`2016); Apple Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01902, Paper 7 at
`
`31 (PTAB Feb. 17, 2016); Panel Claw, Inc. v. Sunpower Corp., IPR2014-00388,
`
`Paper 10 at 8-9 (PTAB June 30, 2014).
`
`8
`
`

`

`which this Board is not bound to follow. See, e.g., Facebook, Inc. v. Sound View
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`Innovations, LLC, IPR2017-00985, Paper 17 at 11-12, 13-14 (PTAB Sept. 5, 2017)
`
`(noting same, as the Board “will not make arguments for Petitioner”); see also
`
`Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is
`
`no dispute that the board is not generally bound by a prior judicial construction of a
`
`claim term”). This Petition has far more deficiencies than the petitions at issue in
`
`ContentGuard or Facebook, as Petitioner has failed to identify any “specific
`
`portions of the specification” of the ’490 patent for the corresponding structure of
`
`elements [1a] and [42a] and claim 12. Patent Owner and the Board are thus unable
`
`to assess Petitioner’s purported construction. Because “means” elements are found
`
`in each challenged independent claim, the Petition has not established a reasonable
`
`likelihood of success for any challenged claim and the Petition should be denied in
`
`its entirety.4
`
`
`
`4 The Petition’s analysis of element [42a] does not correct the deficiency of
`
`claim 1 because it merely references back to element [1a]. Petition, 39. The same
`
`deficiencies also can be found in dependent Claim 12, where the Petition fails to
`
`even offer a citation to Exhibit 1008, much less proper citation to “specific
`
`portions of the specification” of the ’490 patent. Petition, 34.
`
`9
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`C. Reliance on Arguments or Citations in the ITC Claim
`Construction Constitutes Improper Incorporation by Reference
`
`The Board has recognized on multiple occasions that “[a]rguments must not
`
`be incorporated by reference from one document into another document.”
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge LTD., IPR2013-00517, Paper
`
`87 at 16 (PTAB Feb. 11, 2015) (quoting 37 C.F.R. § 42.6(a)(3)). Here, as
`
`discussed above, the Petition incorporates Ex. 1008 as a whole for element [1a].
`
`Petition, 8, 15, 34, 39. With this treatment, it is unclear exactly what arguments
`
`the Petition relies on from Ex. 1008. Id.
`
`The Board has long “decline[d] to consider information presented in a
`
`supporting [exhibit], but not discussed in a petition” and should not change course
`
`here. Conopco v. The Procter & Gamble Company, IPR2013-00510, Paper 9 at 8-
`
`9 (PTAB Feb. 12, 2014). When “information is not discussed adequately in the
`
`Petition” this information should “not be incorporated by reference” from an
`
`Exhibit. Tempur Sealy Int’l, Inc. v. Select Comfort Corp., IPR2014-01419, Paper 7
`
`at 7-8 (PTAB Feb. 17, 2015); see also Fidelity Nat’l Info. Serv., Inc. v.
`
`Datatreasury Corp., IPR2014-00489, Paper 9 at 9-10 (PTAB Aug. 13, 2014) (“the
`
`Petition’s extensive reliance on citations to the [Expert] Declaration in lieu of
`
`citations to the references themselves amounts to an incorporation by reference of
`
`10
`
`

`

`arguments made in the [Expert] Declaration into the Petition . . . We, therefore,
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`decline to consider the information found only in the [Expert] Declaration.”).
`
`Here, such improper incorporation by reference of Exhibit 1008 should not
`
`be allowed and therefore denial of institution is proper for failure to meet the
`
`requirements of § 42.104(b).
`
` THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(D)
`
`Institution also should be denied because the Petition relies on “substantially
`
`the same prior art or arguments previously … presented to the Office.” 35 U.S.C.
`
`§ 325(d). Specifically, the Petition relies on a Japanese publication from Ueno
`
`(Ueno-642, Ex. 1004) as the sole primary reference. Petition, 4. Although this
`
`Japanese version of Ueno was not explicitly considered during examination, a U.S.
`
`patent with substantially similar disclosure (Ueno-025, U.S. Patent No. 6,076,025
`
`(IR2002)) was thoroughly considered and distinguished. Ueno-025 served as the
`
`basis of several rejections issued by the Examiner, and was overcome by Patent
`
`Owner during prosecution based on similar, if not the same, issues presented by the
`
`11
`
`

`

`Petition here. IR20015, pp.320, 759. Because: (1) the arguments presently
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`advanced for Ueno-642 are substantially similar to arguments made by the
`
`Examiner for the combination of the Ueno-025 and Noonan references; and (2)
`
`Petitioner offers no justification for why limited Board resources should be
`
`devoted to rehashing the Examiner’s decision to allow the ’490 patent over
`
`common disclosure from Ueno, institution should be denied under § 325(d).
`
`Unified Patents Inc. v. John L. Berman, IPR2016-01571, Paper 10 at 11-12 (PTAB
`
`Dec. 14, 2016) (Designated Informative).6
`
`
`
`
`
`
`
`5 The Petition identifies Exhibit 1002 as “File history of U.S. Patent No.
`
`6,809,490” (Petition, iv) but the file submitted as Exhibit 1002 is the file history
`
`for U.S. Pat. Appl. No. 10/818,073, not the application that eventually matured into
`
`the ’490 patent. Ex. 1002, 4. Patent Owner submits the correct file history for the
`
`’490 patent (Appl. No. 10/167,851) as Exhibit IR2001.
`
`6 The Petition insists that Ueno-642 includes “additional disclosures that
`
`were not available to the examiner” including “more than two operational modes.”
`
`Petition, 7. However, as addressed below, these additional disclosures relate to the
`
`obstacle following mode already found to be present in Noonan.
`
`12
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`A. Ueno-642 Discloses the Same Random and Spiral Travel
`Modes as Ueno-025
`
`During prosecution, the Examiner relied on Ueno-025 as disclosing the
`
`claimed “spot-coverage” and “bounce” modes. IR2001, pp. 759-760. (“Ueno et
`
`al. teach[es] … a spiral pattern running motion, which presents the spot-coverage
`
`pattern … [and a] random pattern running motion … [that] represents the claimed
`
`bounce mode.”). Ueno-642 discloses the same spiral and random travel modes.
`
`Petition, at 10, 19. For example, FIGs. 5 and 6 of Ueno-642, which show motions
`
`of the robot during random and spiral travel modes, are substantially identical to
`
`FIGs. 5 and 6 of Ueno-025:
`
`
`
`
`
`
`
`Japanese Ueno
`
`U.S. Ueno
`
`Ueno-642, FIG. 5
`
`Ueno-025, FIGs. 5a-b
`
`
`
`
`
`
`
`
`
`13
`
`

`

`
`
`Japanese Ueno
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`U.S. Ueno
`
`
`
`
`
`
`
`
`
`Ueno-642, FIG. 6
`
`Ueno-025, FIGs. 6a-c
`
`The description of FIGs. 5-6 is also substantially similar. Compare Ex.
`
`1004, ¶¶0028-0030 to IR2002, 6:19-7:9.7 With near identical disclosure to Ueno-
`
`025, Ueno-642’s “spot-coverage” and “bounce” modes have already been
`
`considered by the Office. IR2001, pp. 759-760.
`
`
`
`
`
`
`
`7 The differences in specific language between Ueno-642 and Ueno-025 can
`
`be attributed to the fact that Ueno-642 is an English translation from Japanese
`
`language source material while Ueno-025 is a U.S. Patent. Additionally, Ueno-025
`
`claims priority to Japanese Application No. 9-029768 and is therefore also possibly
`
`an English translation of that Japanese application. IR2002, Face.
`
`14
`
`

`

`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`B. A Version of Ueno Having an Obstacle Follow Mode was
`Considered During Prosecution
`
`The primary distinctions between Ueno-642 and Ueno-025 are (1) the
`
`physical structure of the robot (which has little bearing on the claims at issue
`
`here), and (2) additional disclosure in Ueno-642 related to obstacle following.8
`
`Obstacle following functionality, however, was already considered as part of
`
`Ueno-025 during prosecution. IR2001, 759-60. Specifically, the Examiner
`
`applied a combination of Noonan and Ueno-025 with three modes – (1) Noonan’s
`
`obstacle following mode, (2) Ueno-025’s spiral mode, and (3) Ueno-025’s random
`
`mode. Id. In fact, the Examiner explicitly considered arguments that Noonan did
`
`
`
`8 Each figure of Ueno-642 not related to the structure of the robot or obstacle
`
`following has a direct correlation in Ueno-025, including FIG. 9 of Ueno-642
`
`(corresponding to FIG. 12 of Ueno-025); FIG. 10 of Ueno-642 (corresponding to
`
`FIG. 14 of Ueno-025); FIG. 11 of Ueno-642 (corresponding to FIG. 15 of Ueno-
`
`025); FIG. 12 of Ueno-642 (corresponding to FIG. 16 of Ueno-025); FIG. 17 of
`
`Ueno-642 (corresponding to FIG. 3 of Ueno-025); FIGs. 18a-b of Ueno-642
`
`(corresponding to FIGs. 7a-b of Ueno-025); FIG. 1 of Ueno-642 (corresponding to
`
`FIG. 2 of Ueno-025); and FIG. 8 of Ueno-642 (corresponding to FIG. 11 of Ueno-
`
`025).
`
`15
`
`

`

`not disclose an “obstacle following mode” and that a POSITA would not have
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`been motivated to combine Noonan’s obstacle following mode with Ueno-025’s
`
`spiral and random modes. Id., pp. 317-324; 350-364. The Examiner rejected
`
`these arguments, holding firm that the combination of Noonan and Ueno-025
`
`evaluated during prosecution included all three operational modes. Id.
`
`The claims of the ’490 patent were not allowed until Patent Owner amended
`
`claim 1 to include two additional limitations:
`
`“to select from among the plurality of modes in real time in response
`to signals generated by the obstacle detection sensor,” and
`
`“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”
`
`IR2001, 75; 61-65. These claim amendments ultimately distinguished over the
`
`combination of Ueno-025 and Noonan, with the Examiner noting that “[t]he
`
`application is allowed based on [the] provided amendment after final office
`
`action.” Id., 65.
`
`
`
`Therefore, the additional disclosure of Ueno-642 related to obstacle
`
`following is immaterial because a version of Ueno having an obstacle following
`
`mode was already considered during prosecution and distinguished. Conopco,
`
`Inc. v. The Procter & Gamble Co., IPR2014-00628, Paper 21 at 8-9 (PTAB Oct.
`
`16
`
`

`

`20, 2014) (institution denied even though previously cited reference was “not
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`identical” because petitioner “appl[ied] the prior art references to support
`
`substantially the same argument”).
`
`C.
`
`Portions of Ueno-642 Cited for the Added “select…” Limitation
`are Present in Ueno-025 and have Already Been Considered by
`the Patent Office
`
`Each portion of Ueno-642 cited in the Petition for the added limitation of
`
`“to select from among the plurality of modes in real time in response to signals
`
`generated by the obstacle detection sensor” is found in Ueno-025. Turning to the
`
`Petition’s discussion of the “select…” claim element, the Petition begins by
`
`discussing the physical components and movement patterns of Ueno-642’s robot
`
`that allegedly disclose the claimed “control system” and “plurality of operational
`
`modes.” Petition, 18-21.
`
`When asserting that the “CPU selects among these three modes based on
`
`the inputs from the sensor system,” the Petition cites to FIG. 9 and paragraph 0035
`
`of Ueno-642. Petition, 20. However, these sections of Ueno-642 are found in
`
`Ueno-025. For example, FIG. 9 of Ueno-642 is highly similar to FIG. 12 of
`
`Ueno-025 (with a few added steps related to obstacle following):
`
`
`
`17
`
`

`

`Japanese Ueno
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`U.S. Ueno
`
`Ueno-642, FIG. 9
`(obstacle follow steps
`highlighted in red)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ueno-025, FIG. 12
`
`In fact, the addition of step S4 and decision block S49 in FIG. 9 of Ueno-642
`
`simply adds in a few steps for obstacle following that are unrelated to mode
`
`selection. Indeed, decision block S3 of FIG. 9 of Ueno-642 is equivalent to the
`
`decision block S4 of FIG. 12 of Ueno-025 and simply identifies the mode the robot
`
`is currently executing, which is not a process for selecting the mode, as recognized
`
`by the Examiner. Ex. 1004, ¶¶0037, 0042.
`
`18
`
`

`

`Also, paragraph 0035 of Ueno-642 (cited on page 20 of the Petition as
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`disclosing the claimed “select…” feature) corresponds to disclosure found in
`
`Ueno-025:
`
`Japanese Ueno
`
`
`
`U.S. Ueno
`
`“The controlling operation in
`
`“Referring to a general flow chart
`
`response to the output signals of
`
`in Fig. 9, the robot travel control
`
`their respective sensors is
`
`operations based on the output
`
`explained. Referring to a general
`
`signal of each sensor described
`
`flowchart of FIG. 12, an
`
`above is explained. At Step S1
`
`instruction for starting the spiral
`
`which is the work start…”
`
`running is given at Step S1…”
`
`Ueno-642, ¶0035
`
`Ueno-025, 9:7-16
`
`
`
`
`
`As another example, when asserting that the Ueno-642 robot “selects among
`
`[the modes] based on signals generated from obstacle detection sensors,” the
`
`Petition cites to paragraphs 0024-26, 0028-29, 0033, and 0038-40 of Ueno-642.
`
`Petition, 21. However, each of these paragraphs either describes movements of
`
`Ueno-642’s robot during obstacle following (¶¶0024-0025) or were already
`
`disclosed in Ueno-025 (¶¶0026, 0028-29, 0033, 0038-40) and were therefore
`
`19
`
`

`

`already considered by the Examiner during prosecution. For example, paragraph
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`0026 of Ueno-642 corresponds to 5:55-67 of Ueno-025:
`
`
`
`Japanese Ueno
`
`U.S. Ueno
`
`“each travel pattern of the
`
`“Patterns of running of the
`
`robot by the present invention
`
`robot according to the present
`
`combined with the
`
`invention, which are
`
`border-following travel described
`
`combinations of the above
`
`above is explained. First, the
`
`motions, will now be explained.
`
`random travel which is a basic
`
`The description starts with a
`
`travel pattern of robot 1 is
`
`random running which is a
`
`explained. In random travel, as
`
`basic running pattern of the robot
`
`shown in Fig. 5, if the robot 1
`
`1. In the random running pattern,
`
`positioned in the region A
`
`the robot 1 usually runs straight
`
`surrounded by a boundary or a
`
`forward in an area A defined by
`
`wall surface B makes a straight
`
`boundaries or walls B as shown
`
`advance…”
`
`Ueno-642, ¶0026
`
`in FIGS. 5A and 5B…”
`
`Ueno-025, 5:55-67.
`
`
`
`20
`
`
`
`

`

`Similarly, paragraphs 0028-0030 of Ueno-642 correspond to 6:19-7:9 of
`
`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
`
`
`Ueno-025:
`
`Japanese Ueno
`
`
`
`U.S. Ueno
`
`“The spiral/random running
`
`“Here, spiral travel and random
`
`pattern is now explained in
`
`travel are explained further