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
`6,809,490
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`DECLARATION OF KENNETH SALISBURY, Ph.D.
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`1
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`IROBOT 2005
`Shenzhen Zhiyi Technology v. iRobot
`IPR2017-02061
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`

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`Case IPR2017-02061
`Docket No. 44360-0004IP1
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`TABLE OF CONTENTS
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`INTRODUCTION AND SCOPE OF WORK ............................................ 4 
`I. 
`II.  QUALIFICATIONS ...................................................................................... 5 
`III.  MATERIALS CONSIDERED ..................................................................... 7 
`IV.  PERSON OF ORDINARY SKILL IN THE ART ...................................... 8 
`V.  OVERVIEW OF THE ’490 PATENT ......................................................... 9 
`VI. 
`INTERPRETATION OF THE ’490 PATENT CLAIMS AT
`ISSUE ............................................................................................................ 13 
`A. 
`“spot-coverage mode whereby the robot operates in an isolated
`area” (claims 1, 42) ............................................................................. 14 
`“bounce mode whereby the robot travels substantially in a
`direction away from an obstacle after encountering the
`obstacle” (claims 1, 42) ....................................................................... 19 
`VII.  ANALYSIS OF GROUNDS 1-2: ANTICIPATION BY UENO-642
`(CLAIMS 1-3, 7, 12) AND OBVIOUSNESS BY UENO-642 IN
`VIEW OF BISSETT-612 (CLAIM 42) ...................................................... 21 
`A. 
`“a spot-coverage mode whereby the robot operates in an
`isolated area” (Claims 1-3, 7, 12, and 42) ........................................... 23 
`“bounce mode whereby the robot travels substantially in a
`direction away from an obstacle after encountering the
`obstacle” (Claims 1-3, 7, 12, and 42) .................................................. 27 
`“whereby said obstacle detection sensor comprises a tactile
`sensor” (Claim 7) ................................................................................. 29 
`“a means for manually selecting an operational mode” (Claim
`12) ........................................................................................................ 30 
`“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” (Claims 1, 42) ............................................. 34 
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`D. 
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`E. 
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`2
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`B. 
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`B. 
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`C. 
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`Case IPR2017-02061
`Docket No. 44360-0004IP1
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`VIII.  LEGAL STANDARDS ................................................................................ 35 
`A.  Claim Interpretation ......................................................................... 35 
`B. 
`Obviousness ......................................................................................... 37 
`IX.  ADDITIONAL REMARKS ........................................................................ 40 
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`I, Kenneth Salisbury, of Palo Alto, California, declare the following.
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`Case IPR2017-02061
`Docket No. 44360-0004IP1
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`I.
`
`INTRODUCTION AND SCOPE OF WORK
`1.
`I have been retained by Fish & Richardson P.C. as an expert witness on
`
`behalf of iRobot Corp. (“iRobot” or “Patent Owner”). I understand that Shenzhen
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`Zhiyi Technology Co. Ltd., d/b/a iLife (“iLife” or “Petitioner”) filed for inter partes
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`review (“IPR”) of claims 1-3, 7, 12, and 42 of U.S. Patent No. 6,809,490 (“’490
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`patent”), and that the Patent Trial and Appeal Board (“PTAB” or “Board”) instituted
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`IPR on each of these claims.
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`2.
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`I have been asked to provide my independent analysis of the ’490 patent
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`in light of the materials cited below and my knowledge and experience in the field
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`of the ’490 patent. I have been asked to consider what a person of ordinary skill in
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`the art as of the Critical Date of the ’490 patent (described below in paragraph 12)
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`would have understood from the patent, including scientific and technical
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`knowledge related to the ’490 patent. I have also been asked to consider whether
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`the references relied on by iLife disclose or render obvious the inventions claimed
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`by the ’490 patent.
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`3.
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`I am not, and never have been, an employee of iRobot. I received no
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`compensation for this declaration beyond my normal hourly compensation based on
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`my time actually spent analyzing the ’490 patent, the materials cited below, and the
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`issues related thereto, and I will not receive any added compensation based on the
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`outcome of any IPR or other proceeding involving the ’490 patent.
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`II. QUALIFICATIONS
`4.
`I am currently a Professor Emeritus (Research) at Stanford University,
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`with joint appointments in Computer Science and Surgery, as well as a courtesy
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`appointment in Mechanical Engineering. My academic focus has been in the fields
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`of robotic hands and arms, haptics, robotically assisted surgery, and personal
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`robotics.
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`5. My full Curriculum Vitae, including a list of publications, is attached
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`as Appendix A to this declaration. A summary of some pertinent aspects of my
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`background and qualifications are described in the following paragraphs.
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`6.
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`After receiving my Ph.D. from Stanford in 1982 in Mechanical
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`Engineering (Design Division), I spent approximately 15 years as a researcher at the
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`Massachusetts Institute of Technology in the Artificial Intelligence Laboratory and
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`in MIT's Mechanical Engineering Department, ultimately in the position of Principal
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`Research Scientist. In 1997, I moved to California where I served for four years as
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`Fellow and Scientific Advisor at Intuitive Surgical, Inc. In 1999, I moved to
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`Stanford University, where I have held a number of faculty positions.
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`7.
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`I have worked in the field of robotics for over 30 years. My work has
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`focused on the mechanical design of dexterous robots, sensors, task control systems,
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`force feedback systems, surgical simulation and medical instruments. I am
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`particularly interested in the control and sensing of physical interactions that occur
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`during manipulation, including the manipulation of real and virtual objects and the
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`creation of methods to permit compact encoding of how things feel. For example, I
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`have developed hands that can grasp a donut or a wrench, an arm that can wash a
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`window and catch a ball, a display device that lets you actually feel imaginary
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`objects and robot hands that can defuse bombs and do gall bladder surgery.
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`8.
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`I am well-versed in the field of electro-mechanical system design and
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`robotics. I have had significant hands-on experience in building and operating
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`complex systems, ranging from a tiny printer for HP calculators, to robot hands arms,
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`haptic interfaces, and personal robots. My teaching experience is in design, robotics,
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`haptics and instrumentation.
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`9.
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`As further detailed in Appendix A, my work and expertise in this area
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`have been recognized by The Institute of Electrical and Electronics Engineers, Inc.
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`(“IEEE”). I have been an IEEE member since 1976 and have served on many of its
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`program committees, technical committees and boards. IEEE has published
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`numerous articles and papers that I have authored or co-authored. In 2011, IEEE
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`awarded me its “Inaba Technical Award for Innovation Leading to Production,” in
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`recognition of my original innovative contributions to commercialization of
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`products in medical robotics, robotics and haptics.
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`III. MATERIALS CONSIDERED
`10. As part of my analysis for this Declaration, I have considered the
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`Case IPR2017-02061
`Docket No. 44360-0004IP1
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`following: my own knowledge and experience, including my work experience in the
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`fields of engineering, robotics and embedded systems, and my experience in
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`working with others involved in those fields. In addition, I have analyzed the
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`following publications and materials:
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` Petition (IPR Case No. 2017-02061)
` Institution Decision (IPR Case No. 2017-02061; Paper No. 8)
` U.S. Patent No. 6,809,490 (“’490 patent”) (Ex. 1001)
` Select Portions of File History of U.S. Patent 6,809,490 (Ex. 2001)
` Declaration of C. Douglass Locke, Ph.D. (Ex. 1003)
` Certified English Translation of Japanese Unexamined Patent
`Application Publication H11-212642 (“Ueno-642”; Ex. 1004)
` U.S. Patent No. 6,493,612 to Bissett et al. (“Bissett-612”; Ex. 1005)
` Joint Claim Construction Chart, as submitted in Investigation No.
`337-TA-1057, August 18, 2017 (Ex. 1008)
` Claim Construction Order from Investigation No. 337-TA-1057,
`August 18, 2017 (Ex. 2003)
` U.S. Provisional Application No. 60/297,718 (Ex. 2004)
` Definition of “spot,” The Oxford Essential Dictionary: American
`Edition, p. 580 (1998) (Ex. 2006)
` Definition of “spot,” Webster’s II New College Dictionary, p. 1068
`(1999) (Ex. 2007)
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` European Patent Application Publication No. EP0145683 A1 to
`Brantmark et al. (“Brantmark”; Ex. 2009)
` U.S. Patent No. 6,452,348 to Toyoda (“Toyoda”; Ex. 2010)
` U.S. Patent No. 6,681,031 to Cohen et al. (“Cohen”; Ex. 2011)
` U.S. Patent No. 4,484,294 to Noss (“Noss”; Ex. 2012)
` U.S. Patent No. 4,360,886 to Kostas et al. (“Kostas”; Ex. 2013)
` Definition of “isolated,” The New Shorter Oxford English Dictionary,
`Volume 1, p. 1425 (1993) (Ex. 2014)
` Transcript of the June 20, 2018 Deposition of Dr. C. Douglass Locke
`(Ex. 2015)
`IV. PERSON OF ORDINARY SKILL IN THE ART
`11.
`I understand that the teaching of the prior art is viewed through the eyes
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`of a person of ordinary skill in the art at the time of the invention. To assess the
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`level of ordinary skill in the art, I understand that one can consider the types of
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`problems encountered in the art, the prior solutions to those problems found in prior
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`art references, the speed with which innovations were made at that time, the
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`sophistication of the technology, and the level of education of active workers in the
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`field.
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`12.
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`I have been informed by Counsel for iRobot that in a related proceeding
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`before the International Trade Commission (Inv. No. 337-TA-1057), the ITC
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`determined that a person of ordinary skill in the art as of the Critical Date of the ’490
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`patent (a “POSITA”) “would hold a bachelor’s degree in physics, electrical
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`engineering, mechanical engineering, computer science, or a related discipline, and
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`have at least three years of experience in the design and implementation of robotics
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`and embedded systems, or some other equivalent combination of education and
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`experience.” Ex. 2003, p. 12. My analysis in this declaration is therefore made from
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`the perspective of a POSITA having this level of knowledge or skill as of the Critical
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`Date of the ’490 patent.
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`13.
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`I understand that the ’490 patent was filed June 12, 2002, and claims
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`priority to U.S. Provisional Application No. 60/297,718 (Ex. 2004) filed June 12,
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`2001. Counsel for iRobot has instructed me to apply June 12, 2001 as the Critical
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`Date of the ’490 patent, and I have done so herein. Nonetheless, I have no basis to
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`believe that my opinions would change even if the Critical Date were June 12, 2002.
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`V. OVERVIEW OF THE ’490 PATENT
`14. The ’490 patent is titled “Method and System for Multi-Mode Coverage
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`for an Autonomous Robot.” Ex. 1001, p. 1. The specification of the ’490 patent
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`describes aspects of the subject matter as follows:
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`This invention relates generally to autonomous vehicles or robots, and
`more specifically to methods and mobile robotic devices for covering a
`specific area as might be required of, or used as, robotic cleaners or
`lawn mowers. (Ex. 1001, 1:9-12)
`
`
`The specification of the ’490 patent goes on to describe:
`
`In the present invention, a mobile robot is designed to provide
`maximum coverage at an effective coverage rate in a room of unknown
`geometry. In addition, the perceived effectiveness of the robot is
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`enhanced by the inclusion of patterned or deliberate motion. In addition,
`in a preferred embodiment, effective coverage requires a control system
`able to prevent the robot from becoming immobilized in an unknown
`environment. (Ex. 1001, 5:29-36)
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`15. The ’490 patent describes that the mobile robot is able to operate and
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`autonomously select between a number of operation modes, including “preferred
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`operational modes” of “Spot Coverage, Wall Follow (or Obstacle Follow) and Room
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`Coverage.” Ex. 1001, 9:6-9. The ’490 patent describes the “Spot Coverage” mode
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`as an operational mode in which the robot “clean[s] an isolated dirty area.” Id., 9:10-
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`12. The ’490 patent describes that the robot controls its motions to limit cleaning to
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`a designated area or “spot” such that “the immediate area within, for example, a
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`defined radius is brought into contact with the cleaning head” of the robot. Id., 9:15-
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`18. The ’490 patent describes that one method of implementing spot coverage
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`involves moving in a spiral pattern within a maximum radius or spiral distance. Id.,
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`35-10:8. However, the ’490 patent makes clear that spiral motion is a mere example
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`for how to achieve spot coverage and that “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., 10:22-25.
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`16. The ’490 patent describes the “Wall/Obstacle Following” mode as an
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`operational mode in which the robot “clean[s] only the edges of a room or the edges
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`of objects within a room.” Ex. 1001, 10:26-34. The ’490 patent describes that in a
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`preferred embodiment “the robot uses the wall-following sensor 16 to position itself
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`a set distance from the wall. The robot then proceeds to travel along the perimeter
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`of the wall.” Id., 10:43-49.
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`17. The ’490 patent describes several different movement behaviors that
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`can be employed to achieve the “Room Coverage” mode. As a preferred
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`embodiment, the ’490 patent describes a bounce mode embodiment of the Room
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`Coverage mode in which “the robot 10 travels until a bump sensor 12 and/or 13 is
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`activated by contact with an obstacle 101 or a wall 100 (see FIG. 11). The robot 10
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`then turns and continues to travel.” Ex. 1001, 12:53-61. FIG. 11 shows an example
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`travel pattern for the robot when implementing bounce mode in a room of unknown
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`geography:
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`Ex. 1001, FIG. 11.
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`18.
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`I understand that the PTAB instituted inter partes review on claims 1-
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`3, 7, 12, and 42 of the ’490 patent. These claims are reproduced below for reference:
`
`
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`1. A mobile robot comprising:
`(a) means for moving the robot over a surface;
`(b) an obstacle detection sensor;
`(c) and a control system operatively connected to said
`obstacle detection sensor and said means for moving;
`(d) said control system configured to operate the robot in
`a plurality of operational modes and to select from among the
`plurality of modes in real time in response to signals generated
`by the obstacle detection sensor, said plurality of operational
`modes comprising: a spot-coverage mode whereby the robot
`operates in an isolated area, an obstacle following mode whereby
`said robot travels adjacent to an obstacle, and a bounce mode
`whereby the robot travels substantially in a direction away from
`an obstacle after encountering the obstacle, and wherein, when
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`in the obstacle following mode, the robot travels adjacent to an
`obstacle for a distance at least twice the work width of the robot.
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`2. A mobile robot according to claim 1 in which said control
`system is configured to operate first in said spot-coverage mode,
`then alternate operation between said obstacle following mode
`and said bounce mode.
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`3. A mobile robot according to claim 2 in which said spot-
`coverage mode comprises substantially spiral movement.
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`7. A mobile robot according to claim 1, whereby said
`obstacle detection sensor comprises a tactile sensor.
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`12. The mobile robot according to claim 1, further comprising
`a means for manually selecting an operational mode.
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`42. A mobile robot comprising:
`(a) means for moving the robot over a surface;
`(b) an obstacle detection sensor;
`(c) a cliff sensor; and
`(d) a control system operatively connected to said obstacle
`detection sensor, said cliff sensor, and said means for moving;
`(e) said control system configured to operate the robot in
`a plurality of operational modes, said plurality of operational
`modes comprising: a spot-coverage mode whereby the robot
`operates in an isolated area, an obstacle following mode whereby
`said robot travels adjacent to an obstacle for a distance at least
`twice the work width of the robot, and a bounce mode whereby
`the robot travels substantially in a direction away from an
`obstacle after encountering the obstacle.
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`Ex. 1001, 17:17-20:64.
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`VI.
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`INTERPRETATION OF THE ’490 PATENT CLAIMS AT ISSUE
`19.
`I understand that, for purposes of my analysis in this inter partes review
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`proceeding, the terms appearing in the patent claims should be interpreted according
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`to their “broadest reasonable construction in light of the specification of the patent
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`in which it appears.” 37 C.F.R. § 42.100(b). In that regard, I understand that the
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`best indicator of claim meaning is its usage in the context of the patent specification
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`as understood by a POSITA. I further understand that the words of the claims should
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`be given their plain meaning under the broadest reasonable interpretation standard,
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`unless that meaning is inconsistent with the patent specification or the patent’s
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`history of examination before the Patent Office (for example, where the applicant
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`explicitly acted as a lexicographer to provide a clear and unambiguous definition of
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`a term in the patent specification, or where the applicant provided an explicit
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`disclaimer/disavowal of a particular claim scope). I also understand that the words
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`of the claims should be interpreted as they would have been interpreted by a POSITA
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`at the time the invention was made (not today). Because I do not know at what date
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`the invention as claimed was made, I have applied the Critical Date as described
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`above (paragraph 13).
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`A. “spot-coverage mode whereby the robot operates in an isolated area”
`(claims 1, 42)
`20. Elements [1d-1] and [42e-1] of the ’490 patent recite “a spot-coverage
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`mode whereby the robot operates in an isolated area.” Ex. 1001, 17:27-29; 20:58-
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`59.
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`21. Based on my review of the ’490 patent and file history, and my
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`knowledge and experience in the field, I am confident a POSITA would have
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`recognized that the plain meaning of this claim element as recited by claims 1 and
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`42 is “a mode in which the robot is designed to operate in a limited, self-bounded
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`area.”
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`22. The ’490 patent describes the spot-coverage concept in some detail:
`
`Spot coverage or, for example, spot cleaning allows the user to clean
`an isolated dirty area. The user places the robot 10 on the floor near
`the center of the area (see reference numeral 40 in FIGS. 6A, 6B) that
`requires cleaning and selects the spot-cleaning operational mode. The
`robot then moves in such a way that the immediate area within, for
`example, a defined radius, is brought into contact with the cleaning
`head 30 or side brush 32 of the robot. (Ex. 1001, 9:10-19).
`
`23. The ’490 patent describes that one method of implementing spot
`
`
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`coverage involves moving in a spiral pattern within a maximum radius or spiral
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`distance. Id., 35-10:8. However, spiral motion is a mere example of how to achieve
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`the goal of spot-coverage (cleaning within a limited area) and the ’490 patent makes
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`clear that any “self-bounded area” can be used to achieve spot coverage:
`
`While a preferred embodiment describes a spiral motion for spot
`coverage, any self-bounded area can be used, including but not limited
`to regular polygon shapes such as squares, hexagons, ellipses, etc. (Ex.
`1001, 10:22-25).
`
`24. Therefore, based on these disclosures of the “Spot Coverage” mode in
`
`
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`the specification of the ’490 patent, as would have been understood by a POSITA,
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`it is clear that the defining characteristic of “Spot Coverage” is that the robot cleans
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`within a limited, self-bounded area, not any specific movement pattern, such as
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`spiral motion. Specifically, the robot is able to self-determine an area to clean rather
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`than simply cleaning an unbounded area of indefinite size until an obstacle is
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`contacted.
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`25. This functionality of the ’490 patent’s spot-coverage mode is further
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`confirmed by FIG. 7, which shows the robot cleaning within a self-bounded area that
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`is defined by the “Max. spiral distance” being reached:
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`Ex. 1001, FIG. 7; 9:57-10:8. FIG. 7 shows that it is possible for the robot to exit
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`spot-coverage mode in response to contact with an obstacle, but makes clear that the
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`spot-coverage mode must not cover an area beyond the self-defined “max. spiral
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`distance.” Ex. 1001, 9:16-19; 9:62-10:8; 10:22-25. This distinguishes spot-coverage
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`mode from other modes in which the movements of the robot are bounded only by
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`the geography of the room.
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`26.
`
`I’d like to note that the spiral motion used to achieve the spot-coverage
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`mode (as discussed in columns 9-10 of the ’490 patent) should not be confused with
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`the “spiral mode” discussed later in the ’490 patent. Specifically, the spiral mode
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`discussed in column 16 “continue[s] until any bump sensor event” occurs. Ex. 1001,
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`16:42-45. The ’490 patent makes clear that this behavior is part of a different
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`embodiment of the ’490 robot that includes a “spiral mode” and does not tie this
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`particular spiral motion to the earlier described spot-coverage mode. Id. The claim
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`language makes clear that the claimed “spot-coverage mode” is referring to the self-
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`bounded spot-coverage mode described in columns 9-10 of the ’490 patent by
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`specifying that in the claimed spot-coverage mode, “the robot operates in an isolated
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`area.”
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`27. The fact that the claimed spot-coverage mode must be self-bounded is
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`further supported by the understanding that a POSITA would have had based on the
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`plain claim language itself of “spot-coverage mode whereby the robot operates in an
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`isolated area.” This plain language indicates that the movements of the robot when
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`operating in spot-coverage mode must be limited by the robot to “an isolated area”
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`such that a spot is cleaned. A POSITA would have recognized that the plain and
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`ordinary meaning of the term “spot” indicates “[a] specific place with relatively
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`small and definite limits” and therefore that the claimed “spot-coverage mode”
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`requires that the robot define a limited area in which to operate. Ex. 2007; Ex. 2006.
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`Furthermore, the plain and ordinary meaning of the term “isolated” of “standing
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`apart or alone” would have further been understood by a POSITA that the claimed
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`isolated area is a specific portion of a room as defined by the robot. Ex. 2014.
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`B. “bounce mode whereby the robot travels substantially in a direction
`away from an obstacle after encountering the obstacle” (claims 1, 42)
`28. Elements [1d-3] and [42e-3] of the ’490 patent recite “bounce mode
`
`whereby the robot travels substantially in a direction away from an obstacle after
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`encountering the obstacle.” Ex. 1001, 17:30-33; 20:62-64.
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`29. Based on my review of the ’490 patent and file history, and my
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`knowledge and experience in the field, I am confident a POSITA would have
`
`recognized that the plain meaning of this claim element as recited by claims 1 and
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`42 is “a mode in which the robot is designed to, upon contacting an obstacle, turn to
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`a new heading and travel away from the obstacle.” A POSITA would have
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`understood, from use of the word “bounce,” that this operational mode requires that
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`the robot react to physical contact with an obstacle by changing directions and
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`traveling away from the obstacle according to a new heading to “bounce” off of the
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`obstacle. This excludes modes that handle obstacle contacts using other non-bounce
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`actions, such as simply stopping or repeating travel in the same direction.
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`30. This understanding of a POSITA is confirmed by the ’490 patent, which
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`describes the operations of the robot when operating in bounce mode:
`
`
`In a preferred embodiment, the method of performing the room
`cleaning behavior is a BOUNCE behavior in combination with the
`STRAIGHT LINE behavior. As shown in FIG. 10, the robot 10 travels
`until a bump sensor 12 and/or 13 is activated by contact with an
`obstacle 101 or a wall 100 (see FIG. 11). The robot 10 then turns and
`continues to travel. A sample movement path is shown in FIG. 11 as
`line 48.
`
`The algorithm for random bounce behavior is set forth in FIG. 10. The
`robot 10 continues its forward movement (step 401) until a bump
`sensor 12 and/or 13 is activated (step 410). The robot 10 then calculates
`an acceptable range of new directions based on a determination of
`which bump sensor or sensors have been activated (step 420). A
`determination is then made with some random calculation to choose the
`new heading within that acceptable range, such as 90 to 270 degrees
`relative to the object the robot encountered. The angle of the object the
`robot has bumped is determined as described above using the timing
`between the right and left bump sensors. The robot then turns to its new
`headings. (Ex. 1001, 12:53-13:6).
`
`31. Furthermore, the ’490 patent distinguishes this bounce mode from other
`
`
`
`modes in which the robot never contacts another obstacle. Ex. 1001, 13:18-22.
`
`Therefore, based on these disclosures of the bounce mode in the specification of
`
`the ’490 patent, as would have been understood by a POSITA, it is clear that the
`
`defining characteristic of the bounce mode is that, when operating in the bounce
`
`mode, when the robot contacts an obstacle, the robot turns and travels away from the
`
`contacted obstacle.
`
`20
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`

`

`Case IPR2017-02061
`Docket No. 44360-0004IP1
`
`VII. ANALYSIS OF GROUNDS 1-2: ANTICIPATION BY UENO-642
`(CLAIMS 1-3, 7, 12) AND OBVIOUSNESS BY UENO-642 IN VIEW
`OF BISSETT-612 (CLAIM 42)
`32.
`I have carefully reviewed the ’490 patent and relevant portions of its
`
`prosecution file history, Ueno-642 (Ex. 1004), as well as the additional material that
`
`I have identified in Section III. Based on review of these materials and my
`
`knowledge and experience in the field, and applying the legal standards discussed in
`
`Section VIII of this declaration, I believe a POSITA would have recognized that
`
`Ueno-642 fails to disclose each and every limitation of claims 1-3, 7, and 12 and that
`
`claim 42 is non-obvious over Ueno-642 in view of Bissett-612. The analysis and
`
`reasoning that led me to these conclusions are explained below.
`
`A. “said control system configured to operate the robot in a plurality of
`operational modes and to select from among the plurality of modes
`in real time in response to signals generated by the obstacle detection
`sensor” (Claims 1-3, 7, and 12)
`33.
`Independent claim 1 (and therefore, by extension dependent claims 2-
`
`3, 7, and 12 which depend from claim 1) recite “said control system configured to
`
`operate the robot in a plurality of operational modes and to select from among the
`
`plurality of modes in real time in response to signals generated by the obstacle
`
`detection sensor.” I have reviewed the arguments included in the Petition and Dr.
`
`Locke’s declaration with respect to this claim element as well as the Ueno-642
`
`reference and the analysis of this argument in the Institution Decision. Based on this
`
`analysis and my knowledge and experience in the relevant field, I agree with the
`
`21
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`

`

`Case IPR2017-02061
`Docket No. 44360-0004IP1
`
`Board’s assessment in the Institution Decision that Ueno-642 fails to disclose
`
`selecting between operational modes “in response to signals generated by the
`
`obstacle detection sensor” as required by element [1d].
`
`34. First, I agree with the Board’s assessment that the plain language of
`
`element [1d] “requires, in practical application, that the system can choose a mode
`
`in which to operate (‘select from among’), based on inputs from the obstacle sensor
`
`(‘in response to signals’).” Inst. Dec., 6. In addressing element [1d], both the Petition
`
`and Dr. Locke identify three operational modes: “spiral, border-following, and
`
`random.” Ex. 1003, ¶ 66; Petition, 18. As I describe in greater detail below, these
`
`three operational modes of the Ueno-642 robot differ from the three operational
`
`modes recited by claim 1 in several aspects. Additionally, Ueno-642 fails to disclose
`
`element [1d] in that Ueno-642 describes, at best, a determination as to when to end
`
`a present operational mode. Specifically, Ueno-642 describes ending the “border-
`
`following travel … after continuing for a planned time (or distance). Ex. 1004, ¶
`
`0025. Similarly, Ueno-642 describes ending the random travel mode after a
`
`“planned time T” has elapsed. Id., ¶ 0038. Neither of these functions of the Ueno-
`
`642 is based on signals generated by an obstacle detection sensor. Ueno-642 also
`
`describes stopping spiral travel “[i]f a sensor 26 or 25L detects a boundary, a wall
`
`surface or an obstacle.” Ex. 1004, ¶ 0040.
`
`22
`
`

`

`Case IPR2017-02061
`Docket No. 44360-0004IP1
`
`35. These portions of Ueno-642 simply identify when an operational mode
`
`is ended, not selection of a next mode based on sensor signals. I agree with the
`
`Board’s assessment that “[d]etermining when to exit the present mode is not the
`
`same as selecting the next mode based upon signals generated by the obstacle
`
`detection sensor.” Inst. Dec., 7.
`
`36. As the Board correctly observed, Ueno-642 discloses that an
`
`operational mode is determined based on the status of a “travel mode pointer.” Inst.
`
`Dec., 7 (citing Ex. 1004 ¶¶ 0035–0036). There is simply no disclosure in Ueno-642
`
`of determining how to assign the travel mode pointer to a particular travel mode
`
`based on sensor input.
`
`B. “a spot-coverage mode whereby the robot operates in an isolated
`area” (Claims 1-3, 7, 12, and 42)
`37.
`Independent claims 1 and 42 (and therefore, by extension dependent
`
`claims 2-3, 7, and 12 which depend from claim 1) recite “a spot-coverage mode
`
`whereby the robot operates in an isolated area.” As I’ve previously discussed in
`
`Section VI.A, supra, a POSITA would have recognized that this claim recitation
`
`means “a mode in which the robot is designed to operate in a limited, self-bounded
`
`area.” As I’ve described above, the ’490 patent specifies that, when operating in the
`
`spot-coverage mode, the cleaning robot of the ’490 patent cleans within “the
`
`immediate area within, for example, a defined radius” of the robot. Ex. 1001, 9:10-
`
`19. This is achieved by the robot defining a “self-bounded area” in which to clean.
`
`23
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`

`

`Case IPR2017-02061
`Docket No. 44360-0004IP1
`
`Id., 10:22-25. Based on review of Ueno-642, the Petition, Dr. Locke’s declaration,
`
`and my knowledge and experience in the field, I believe that a POSITA would have
`
`recognized that Ueno-642 fails to disclose the claimed spot-coverage mode.
`
`38. Both the Petition and Dr. Locke identify the “spiral travel” behavior
`
`described in Ueno-642 as allegedly disclosing the claimed spot-coverage mode.
`
`Petition, 22-25; Ex. 1003, ¶¶ 72-75. Dr. Locke asserts that the spiral travel behavior
`
`“opearate[s] in an ‘isolated area’” and includes the terms “isolated area” and “limited
`
`area” in quotations followed by citation to Ueno-642. Ex. 1003, ¶ 73. However, the
`
`terms “isolated area” and “limited area” do not appear within Ueno-642 and neither
`
`the Petition nor Dr. Lo