`
`Paper No. 1
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Shenzhen Silver Star Intelligent Technology Co., Ltd.
`Petitioner,
`
`v.
`
`iRobot Corporation
`Patent Owner
`
`
`
`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 6,809,490
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`Table of Contents
`
`Page
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1) ........................... 1
`
`A.
`
`Real Parties In Interest 37 C.F.R. §42.8(b)(1) ...................................... 1
`
`B.
`
`C.
`
`Related Matters 37 C.F.R. §42.8(b)(2) ................................................. 1
`
`Lead Counsel and Back-Up Counsel 37 C.F.R. §42.8(b)(2) ................ 2
`
`D.
`
`Service Information 37 C.F.R. §42.8(b)(4) ........................................... 2
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. §42.103 ........................................ 2
`
`III.
`
`SUMMARY OF THE ‘490 PATENT ............................................................. 3
`
`A. Description of the alleged invention of the ‘490 Patent ........................ 3
`
`B.
`
`Prosecution history of the ‘490 Patent .................................................. 3
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §42.104 ................................................................................................. 6
`
`A. Grounds for standing under 37 C.F.R. §42.104(a) ................................ 6
`
`B.
`
`Identification of challenge under 37 C.F.R. §42.104(b) and
`relief requested ...................................................................................... 7
`
`1.
`
`2.
`
`3.
`
`Claims for Which Inter Partes Review Is Requested (37 C.F.R.
`§42.104(b)(1) .............................................................................. 7
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based Under 37 C.F.R. §42.104(b)(2) ................... 7
`
`How the challenged claims are to be construed (37 C.F.R.
`§42.104(b)(3)) ............................................................................. 9
`
`a.
`
`b.
`
`c.
`
`“means for moving the robot over a surface” ................... 9
`
`“bounce mode” ...............................................................10
`
`“isolated area” .................................................................12
`
`
`
`i
`
`

`

`d.
`
`e.
`
`“means for manually selecting an operational mode” ....15
`
`“a control system operatively connected to said obstacle
`detection sensor and said means for moving” and “said
`control system configured to operate 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.”........................................15
`
`4.
`
`How the construed claims are unpatentable (37 C.F.R.
`§42.104(b)(4)) ...........................................................................17
`
`5.
`
`Supporting evidence (37 C.F.R. §42.104(b)(5)) .......................17
`
`V.
`
`BRIEF DESCRIPTION OF THE PRIOR ART ............................................ 17
`
`A. Ueno (Ex. 1005) .................................................................................. 17
`
`B.
`
`C.
`
`Bottomley (Ex. 1006) .......................................................................... 18
`
`Kawagoe (Ex. 1007) ............................................................................ 18
`
`D. Öhman (Ex. 1008) ............................................................................... 18
`
`E.
`
`F.
`
`Bisset (Ex. 1010) ................................................................................. 19
`
`Erwin (Ex. 1011) ................................................................................. 19
`
`G.
`
`Erwin (Ex. 1011) ................................................................................. 19
`
`VI. DETAILED EXPLANATION OF PERTINENCE AND MANNER
`OF APPLYING THE CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH REVIEW IS REQUESTED UNDER 37 C.F.R. §42.104(b) .......... 20
`
`A.
`
`Field of the art and the level of ordinary skill ..................................... 20
`
`B.
`
`Ground 1: Claims 1, 2-5, 7, 8, and 12 is obvious over Ueno .............. 21
`
`1.
`
`2.
`
`Claim 1 ......................................................................................21
`
`Claims 2-5, 7, 8, and 12 ............................................................28
`
`C.
`
`Ground 2: Claims 1, 2-5, 7, 8, and 12 are obvious over Ueno
`and AAAI Article ................................................................................ 31
`
`
`
`ii
`
`

`

`D. Ground 3: Claims 1, 2-5, 7, 8, and 12 are obvious over Ueno
`and Kawagoe ....................................................................................... 31
`
`E.
`
`F.
`
`Ground 4: Claim 12 is obvious over Ueno and Bisset ....................... 37
`
`Ground 5: Claim 12 is obvious over Ueno, AAAI Article, and
`Bisset ................................................................................................... 39
`
`G. Ground 6: Claim 12 is obvious over Ueno, Kawagoe, and
`Bisset ................................................................................................... 39
`
`H. Ground 7: Claim 12 is obvious over Ueno and Erwin ....................... 40
`
`I.
`
`J.
`
`Ground 8: Claim 12 is obvious over Ueno, AAAI Article, and
`Erwin ................................................................................................... 41
`
`Ground 9: Claim 12 is obvious over Ueno, Kawagoe, and
`Erwin ................................................................................................... 42
`
`K. Ground 10: Claim 42 is obvious over Ueno and Bottomley .............. 42
`
`L.
`
`Ground 11: Claim 42 is obvious over Ueno, AAAI Article, and
`Bottomley ............................................................................................ 44
`
`M. Ground 12: Claim 42 is obvious over Ueno, Kawagoe, and
`Bottomley ............................................................................................ 44
`
`N. Ground 13: Claim 42 is obvious over Ueno and Öhman .................... 45
`
`O. Ground 14: Claim 42 is obvious over Ueno, AAAI Article, and
`Öhman ................................................................................................. 46
`
`P.
`
`Ground 15: Claim 42 is obvious over Ueno, Kawagoe, and
`Öhman ................................................................................................. 46
`
`Q. Ground 16: Claim 42 is obvious over Ueno and Bissett-612 ............. 46
`
`R.
`
`Ground 17: Claims 1 and 42 are obvious over Bottomley and
`AAAI Article ....................................................................................... 46
`
`VII. CONCLUSION .............................................................................................. 57
`
`
`
`iii
`
`

`

`List of Exhibits
`
`Ex. No.
`
`Description of Exhibit
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`U.S. Patent No. 6,809,490 to Joseph L. Jones et al.
`
`Prosecution File History of U.S. Patent No. 6,809,490
`
`ITC Complaint
`
`District Court Complaints
`
`Certified translation of JP 11-212642 (“Ueno”) and Affidavit
`certifying translation of Ueno
`
`1006 WO 00/04430 (“Bottomley”)
`
`1007
`
`US 6,574,536 (“Kawagoe”)
`
`1008 WO 93/03399 (“Öhman”)
`
`1009
`
`Dictionary definition of “encounter”
`
`1010 WO 00/38025 (“Bisset”)
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`Translation of DE 19849978 (“Erwin”)
`
`US 5,204,814 (“Noonan”)
`
`US 6,076,025 (“Ueno ‘025”)
`
`JP 11-212642 (“Ueno”)
`
`DE 19849978 (“Erwin”)
`
`“Sensors for Mobile Robots – Theory and Application” by H.R.
`Everett, Wellesley, MA, 1995
`
`“Where am I? Sensors and Methods for Mobile Robot Positioning” by
`J. Borenstein, H.R. Everett and L. Feng, University of Michigan, Ann
`Arbor, MI, April 1996
`
`“Mobile Robots – Inspiration to Implementation” by J.L. Jones and A.
`M. Flynn, Wellesley, MA, 1st Edition, 1993
`
`“Sweep Strategies for a Sensory-Driven, Behavior-Based Vacuum
`Cleaning Agent” by K.L. Doty and R.R. Harrison, AAAI Technical
`Report FS-93-03, AAAI 1993 Fall Symposium Series – Instantiating
`Real-World Agents, Oct. 1993 (“AAAI Article”)
`
`1020
`
`Declaration of Dr. Mingshao Zhang, Ph.D., Regarding Invalidity of
`
`
`
`iv
`
`

`

`the Challenged Claims of U.S. Patent No. 6,809,490
`
`1021
`
`1022
`
`1023
`
`Respondents’ opening claim construction brief, Certain Robotic
`Vacuum Cleaning Devices and Components Thereof Such as Spare
`Parts, Inv. No. 337-TA-1057
`
`Complainant’s reply claim construction brief, Certain Robotic
`Vacuum Cleaning Devices and Components Thereof Such as Spare
`Parts, Inv. No. 337-TA-1057
`
`Joint Claim Construction Chart, Certain Robotic Vacuum Cleaning
`Devices and Components Thereof Such as Spare Parts, Inv. No. 337-
`TA-1057
`
`1024 Markman hearing transcript, Certain Robotic Vacuum Cleaning
`Devices and Components Thereof Such as Spare Parts, Inv. No. 337-
`TA-1057
`
`1025
`
`Construing terms of the asserted patents (November 9, 2017), Certain
`Robotic Vacuum Cleaning Devices and Components Thereof Such as
`Spare Parts, Inv. No. 337-TA-1057
`
`1026
`
`US 6,493,612 (“Bisset-612”)
`
`
`
`v
`
`

`

`
`
`
`
`Petitioner, Shenzhen Silver Star Intelligent Technology Co. Ltd.,
`
`respectfully requests inter partes review for claims 1, 2-5, 7, 8, 12 and 42 of U.S.
`
`Patent No. 6,809,490 (“the ‘490 Patent”) (Ex. 1001).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1)
`
`A. Real Parties In Interest 37 C.F.R. §42.8(b)(1)
`
`In addition to the Petitioner, Xrobot Hong Kong Limited is a real party of
`
`interest.
`
`B. Related Matters 37 C.F.R. §42.8(b)(2)
`
`The ‘490 Patent is the subject of the following cases involving the
`
`Petitioner: (1) Certain Robotic Vacuum Cleaning Devices and Components
`
`Thereof Such as Spare Parts, Inv. No. 337-TA-1057 (filed April 18, 2017), (2)
`
`iRobot Corp. v. Hoover Inc., No. 1-17-cv-10647-LTS (D. Mass, filed Apr. 17,
`
`2017), (3) iRobot Corporation v. The Black & Decker Corporation, No. 1-17-cv-
`
`10648-LTS (D. Mass, filed Apr. 17, 2017), and (4) iRobot Corporation v.
`
`bObsweep, Inc. et. al, No. 1-17-cv-10651-LTS (D. Mass, filed Apr. 17, 2017). In
`
`addition, to the best knowledge of Petitioner, the ‘490 Patent is or has also been
`
`asserted in the following other litigations and PTAB proceedings:
`
`Name
`
`Number
`
`Tribunal
`
`Filed
`
` iRobot Corporation v. Bissell
`Homecare, Inc.
`
`1-17-cv-10649-
`
`D. Mass.
`
`4/17/17
`
`LTS
`
`iRobot Corp. v. Shenzen ZhiYi
`Technology Co., Ltd.
`
`1:17-cv-10652-
`
`D. Mass.
`
`4/17/17
`
`
`
`1
`
`

`

`Name
`
`Number
`
`Tribunal
`
`Filed
`
`LTS
`
`Petition for Inter Partes Review
`
`IPR2017-02061
`
`PTAB
`
`9/6/17
`
`by Shenzhen Zhiyi Technology
`
`Co. Ltd., d/b/a iLife
`
`
`
`A copy of the ITC Complaint and its Amendment are combined and
`
`included as Ex. 1003, and copies of the District Court complaints are combined
`
`and included as Ex. 1004.
`
`C. Lead Counsel and Back-Up Counsel 37 C.F.R. §42.8(b)(2)
`
`Lead Counsel
`Shen Wang (Reg. No. 71,847)
`ARCH & LAKE LLP
`Postal and Hand Delivery Address
`203 N LaSalle Street
`Suite 2100
`Chicago, Illinois 60601
`Telephone: (636) 235-5390
`Facsimile: (312) 614-1873
`Email: shenwang@archlakelaw.com
`
`
`Back-Up Counsel
`Hao Tan (Reg. No. 73,711)
`ARCH & LAKE LLP
`Postal and Hand Delivery Address
`203 N LaSalle Street
`Suite 2100
`Chicago, Illinois 60601
`Telephone: (312) 375-9408
`Facsimile: (312) 614-1873
`Email: haotan@archlakelaw.com
`
`D.
`
`Service Information 37 C.F.R. §42.8(b)(4)
`
`Service of any documents by hand-delivery may be made at the postal
`
`mailing address of the respective lead or back-up counsel designated above with
`
`courtesy email copies to the email addresses and ip@archlakelaw.com.
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. §42.103
`
`2
`
`

`

`The undersigned authorizes the Office to charge $35,500 to Deposit Account
`
`602239 for the fee set forth in 37 C.F.R §42.15 for this Petition. The undersigned
`
`further authorizes payment for any additional fees due in connection with this
`
`Petition to be charged to the above-referenced Deposit Account.
`
`III. SUMMARY OF THE ‘490 PATENT
`
`A. Description of the alleged invention of the ‘490 Patent
`
`The ‘490 Patent describes “a control system for a mobile robot (10)”
`
`provided to cover a given area by operating in a plurality of modes, including an
`
`obstacle following mode (51), a random bounce mode (49), and a spot coverage
`
`mode, such as spiraling (45). Ex. 1001, Abstract. The mobile robot 10 includes
`
`two bump sensors 12 & 13, four cliff sensors 14, a wall following sensor 16, two
`
`wheels 20, motors 21 for driving the wheels 20, a microcontroller 22, and a
`
`rechargeable battery 23. Id., 5:41-48 and 5:59-62. Further, the ‘490 Patent
`
`provides details of each of the plurality of operational modes. Specifically, the
`
`‘490 patent describes the (1) spot coverage mode as a mode to clean an isolated
`
`area using, e.g., spiral behavior, (2) wall-following mode as a mode that uses a
`
`wall-following sensor 16 to position the mobile robot 10 a set distance from the
`
`wall such that the mobile robot 10 proceeds to travel along a perimeter of the wall,
`
`and (3) a bounce mode as a mode that allows a mobile robot 10 to travel away
`
`from an obstacle 101 or a wall 100. Id., 9:10-22, 10:43-46, and 12:53-61.
`
`B.
`
`Prosecution history of the ‘490 Patent
`
`3
`
`

`

`The ‘490 Patent issued from U.S. Patent Application No. 10/167,851 (“the
`
`‘851 Application”) filed on June 12, 2002. Ex. 1001. The ‘851 Application claims
`
`the benefit of the U.S. Provisional Application No. 60/297,718 (“the ‘718
`
`Application”), filed on June 12, 2001. Id. Thus, the earliest potential priority date
`
`is June 12, 2001.
`
`Multiple claim amendments were made during prosecution. For example, in
`
`the Amendment filed on December 3, 2003, Applicant amended claim 1 of the
`
`‘851 Application in an attempt to overcome the rejection of claim 1 based on U.S.
`
`Patent No. 5,204,814 to Noonan (Ex. 1012) and U.S. Patent No. 6,076,025 to Ueno
`
`‘025 (Ex. 1013). Ex. 1002, 327 to 364. The amended language of claim 1 recited:
`
`(d) 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, and a bounce mode whereby the
`
`robot travels substantially in a direction away from an
`
`obstacle after encountering an the obstacle.
`
`Ex. 1002, 343 (underline and strikethrough in the original). The Applicant
`
`argued that Noonan (Ex. 1012) and Ueno ‘025 (Ex. 1013) do not disclose the three
`
`operational modes of claim 1: (1) a spot-coverage mode; (2) an obstacle-following
`
`mode; and (3) a bounce mode. Ex. 1002, 351. In regards to Ueno ‘025, the
`
`4
`
`

`

`Applicant specifically argued that it lacked an obstacle-following mode. Ex. 1002,
`
`355 and 356.
`
`However, the USPTO maintained its rejection of claim 1 in a Final Office
`
`Action dated December 29, 2003 and continued to assert that the above-noted
`
`amendments to claim 1 were not sufficient to overcome the rejection based on
`
`Noonan (Ex. 1012) and Ueno ‘025 (Ex. 1013). Ex. 1002, 319 and 320.
`
`After the Final Office Action dated December 29, 2003 was issued, a
`
`personal interview was conducted between the Examiner and the Applicant’s
`
`representatives on March 11, 2004 and an Amendment dated March 12, 2004 was
`
`subsequently filed. In the Amendment filed on March 12, 2004, Applicant further
`
`amended claim 1 of the ‘851 Application (which ultimately issued as claim 1 of the
`
`‘490 Patent) to overcome the rejection of claim 1 based on Noonan (Ex. 1012) and
`
`Ueno ‘025 (Ex. 1013). Ex. 1002, 67 and 74-82. The amended language of claim 1
`
`recited:
`
`(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
`
`5
`
`

`

`whereby the robot travels substantially in a direction
`
`away from an obstacle after encountering the obstacle,
`
`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.
`
`Ex. 1002, 75 (underline and strikethrough in the original). The Applicant
`
`summarily argued with no explanatory detail that the above-noted claim
`
`amendments are distinguishable over the cited references in the Response filed on
`
`March 12, 2004. The Amendment of March 12, 2004 also included a new claim
`
`42 (which ultimately issued as claim 42 of the ‘490 Patent). Ex. 1002, 74-82.
`
`In response to the above-noted amendments to claim 1 and new claim 42,
`
`the USPTO issued a Notice of Allowance dated March 22, 2004 and a
`
`Supplemental Notice of Allowance (in order to consider additional references filed
`
`in multiple IDSs) dated June 17, 2004. Ex. 1002, 30-35 and 61-66. The ‘851
`
`Application then issued as the ‘490 Patent with claims 1-42.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §42.104
`
`A. Grounds for standing under 37 C.F.R. §42.104(a)
`
`Petitioner hereby certifies that the ‘490 Patent is available for inter partes
`
`review and that the Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the claims on the ‘490 Patent on the grounds identified herein.
`
`More particularly, Petitioner hereby certifies that: (1) Petitioner is not the owner of
`
`the ‘490 Patent; (2) Petitioner has not filed a civil action challenging the validity of
`
`6
`
`

`

`a claim of the ‘490 Patent; (3) this Petition is filed less than one year after the date
`
`on which the Petitioner, the Petitioner’s real-party-interest, or a privy of the
`
`Petitioner was served with a complaint alleging infringement of the ‘490 Patent;
`
`(4) the estoppel provisions of 35 U.S.C. §315(e)(1) do not prohibit this inter partes
`
`review; and (5) this Petition is filed later than nine months after the date of grant of
`
`the ‘490 Patent, or the date of termination of any post-grant review thereof and/or
`
`the ‘490 Patent is ineligible for post-grant review.
`
`B.
`
`Identification of challenge under 37 C.F.R. §42.104(b) and
`relief requested
`
`The precise relief requested by the Petitioner is that claims 1, 2-5, 7, 8, 12
`
`and 42 of the ‘490 Patent be found unpatentable.
`
`1.
`
`Claims for Which Inter Partes Review Is Requested (37 C.F.R.
`§42.104(b)(1)
`
`Inter partes review of claims 1, 2-5, 7, 8, 12 and 42 is requested.
`
`2.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based Under 37 C.F.R. §42.104(b)(2)
`
`Inter partes review is requested in view of the following references:
`Patent/Application Number/Publication
`Date Effective As
`Exhibit
`Prior Art
`Number
`August 6, 1999
`1005/1014
`January 27, 2000
`1006
`
`JP 11-212642 by Ueno et al. (“Ueno”)
`WO 00/04430 by Bottomley et. al
`(“Bottomley”)
`US 6,574,536 by Kawagoe et. al
`(“Kawagoe”)
`WO 93/03399 (“Öhman”)
`WO 00/38025 by Bisset et. al (“Bisset”)
`DE 19849978 by Erwin et. al (“Erwin”)
`“Sweep Strategies for a Sensory-Driven,
`
`7
`
`January 27, 1997
`
`1007
`
`February 18, 1993
`June 29, 2000
`May 11, 2000
`July 1994
`
`1008
`1010
`1011/1015
`1019
`
`

`

`Behavior-Based Vacuum Cleaning Agent”
`(“AAAI Article”)
`US Patent 6,493,612 by Bisset (“Bisset-
`612”)
`
`June 29, 2000
`
`1026
`
`Each of these references qualifies as prior art under §102 (pre-AIA). None of
`
`these references were cited in a rejection by the Examiner during the prosecution
`
`of the ‘490 Patent. Ueno, Bottomley, Öhman, Erwin, and the AAAI Article are
`
`§102(b) references. Kawagoe is a §102(e) reference, and Bisset and Bisset-612 are
`
`§102(a) references. Notably, the Japanese Ueno reference is not the same as the
`
`Ueno ‘025 cited during prosecution. The Japanese Ueno reference is more relevant
`
`because it includes the additional obstacle following mode the Applicant
`
`contended was missing from Ueno ‘025 during the original prosecution. The
`
`following specific grounds of rejection are asserted under § 103:
`
`Ground Claims and references
`
`Ground 1 Claims 1, 2-5, 7, 8, and 12 are obvious over Ueno
`
`Ground 2 Claims 1, 2-5, 7, 8, and 12 are obvious over Ueno and AAAI Article
`
`Ground 3 Claims 1, 2-5, 7, 8, and 12 are obvious over Ueno and Kawagoe
`
`Ground 4 Claim 12 is obvious over Ueno and Bisset
`
`Ground 5 Claim 12 is obvious over Ueno, AAAI Article, and Bisset
`
`Ground 6 Claim 12 is obvious over Ueno, Kawagoe, and Bisset
`
`Ground 7 Claim 12 is obvious over Ueno and Erwin
`
`Ground 8 Claim 12 is obvious over Ueno, AAAI Article, and Erwin
`
`Ground 9 Claim 12 is obvious over Ueno, Kawagoe, and Erwin
`
`Ground
`10
`
`Ground
`11
`
`Claim 42 is obvious over Ueno and Bottomley
`
`Claim 42 is obvious over Ueno, AAAI Article, and Bottomley
`
`Ground
`
`Claim 42 is obvious over Ueno, Kawagoe, and Bottomley
`
`8
`
`

`

`Ground Claims and references
`12
`
`Ground
`13
`
`Ground
`14
`
`Ground
`15
`
`Ground
`16
`
`Ground
`17
`
`Claim 42 is obvious over Ueno and Öhman
`
`Claim 42 is obvious over Ueno, AAAI Article, and Öhman
`
`Claim 42 is obvious over Ueno, Kawagoe, and Öhman
`
`Claim 42 is obvious over Ueno and Bissett-612
`
`Claims 1 and 42 are obvious over Bottomley and AAAI Article
`
`3.
`
`How the challenged claims are to be construed (37
`C.F.R. §42.104(b)(3))
`
`Petitioner proposes the following constructions. For any terms not
`
`specifically construed, Petitioner proposes not to require specific construction and
`
`should be interpreted according to their plain and ordinary meaning.
`
`a.
`
`“means for moving the robot over a surface”
`
`This is a means plus function clause. The function is straightforward –
`
`moving the robot over a surface. The corresponding structure in the ‘490 patent
`
`specification performing that function is straightforward also. The disclosed
`
`embodiment includes “two wheels 20, motors 21 for driving the wheels
`
`independently” Ex. 1001, 5:59-62. The ‘490 specification states that “[t]hese
`
`components are well known in the art and are not discussed in detail herein.” Id.,
`
`5:63-64. The parties in the related ITC case are in agreement that the structure
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`performing the function of moving the robot over a surface is two wheels and
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`motors 21 for driving the wheels independently. Ex. 1023, 5. Ex. 1025, 14-15.
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`Accordingly, this should be considered the corresponding structure for purposes of
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`claim construction.
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`b.
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`“bounce mode”
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`The word “bounce” in “bounce mode” raises the question of whether actual,
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`physical contact with obstacles is required when driving in this mode, or whether
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`this mode can include situations where the change in direction occurs due to
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`proximity with obstacles without contact. Petitioner submits the latter is correct,
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`and that the term “bounce mode” should be construed to according to its plain and
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`ordinary meaning, and including contact or proximity to the object to trigger the
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`change in direction.
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`This interpretation is supported by the plain language of the independent
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`claims. Nothing in the independent claims requires actual, physical contact
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`between the robot and an obstacle. Instead, the claim language uses the term
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`“encountering” to describe the robot’s relation to the obstacle, which clearly does
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`not require contact. Ex. 1009 (dictionary definition of “encounter”).
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`Moreover, the other claims plainly contemplate that proximity may be used
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`to trigger the change of direction in this mode. For example, claims 8 and 40 recite
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`that the “obstacle detection sensor” can comprise “an IR sensor.” IR sensors are
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`used for detecting proximity. Ex. 1001, 6:35-38. Similarly, claim differentiation
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`compels an interpretation that contact is not required because claims 7 and 41
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`recite that the “obstacle detection sensor” includes “a tactile sensor.” A tactile
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`sensor detects contact. Id.at 5:52-55 (“bump (tactile) sensors”). Thus, an
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`interpretation requiring “bounce mode” to include sensing of physical contact
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`would violate claim differentiation by requiring the device of the independent
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`claims to include a tactile sensor. Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 910 (Fed.Cir.2004).
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`This interpretation is also supported by the specification. The specification
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`states that “the sensor(s) may be of a variety of types including sonar, tactile,
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`electromagnetic, capacitive, etc.” Ex. 1001, 5:50-52. The specification also says
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`“bump (tactile) sensors” are used in the “preferred embodiment” for cost-reasons.
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`Id., 5:52-55. Clearly, the specification contemplates that the sensors chosen may
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`be of any type, including contact sensors or non-contact sensors. That logically
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`means that detection of actual, physical contact used in the “preferred
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`embodiment” should not be required by the independent claim term “bounce
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`mode.” Other parts of the specification confirm this. Id., 6:35-38 (stating as an
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`alternative to contact/bump sensors that “[n]on-contact sensors, which allow the
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`robot to sense proximity to objects without physically touching the object, such as
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`capacitive sensors or a curtain of IR light, can also be used.”); 6:39-42 (“It is useful
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`to have a sensor or sensors that are not only able to tell if a surface has been
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`contacted (or is nearby), but also the angle relative to the robot at which the
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`contact was made.”)(emphasis added).
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`The parties’ briefs in the related ITC case are also in agreement that the
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`word “bounce” does not require actual contact, and the change in direction may be
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`triggered by proximity sensors. Compare Ex. 1021, 31-32 and Ex. 1022, 16-17.
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`Ex. 1025, 14.
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`Thus, Petitioner’s construction for “bounce mode” should be adopted.
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`c.
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`“isolated area”
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`Claims 1 and 42 recite “a spot-coverage mode whereby the robot operates in
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`an isolated area.” The claims do not say whether (a) the area is isolated physically
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`in the sense that it is a limited area with an identifiable physical boundary, e.g., an
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`area behind a couch or in a corner, or (b) the extent of isolation may be determined
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`by the robot itself, such as an algorithm in its controller.
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`Unhelpfully, the specification uses the term “isolated” just once, stating that
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`“[s]pot coverage or, for example, spot cleaning allows the user to clean an isolated
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`dirty area.” Id., 9:11-12. That usage sheds little to no light on the meaning of the
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`term “isolated.” However, the specification teaches that both situations (a) and (b)
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`are possible ways to terminate the spot-coverage mode, and thus determine the area
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`it covers.1 When the area has one or more obstacles around it, the robot can exit the
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`spot-coverage mode and switch to another mode upon reaching the obstacle
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`(situation (a)). Id., Fig. 7 at 240 and 9:34-10:8. See also id., 10:18-21 (“In a
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`preferred embodiment, as detailed in step 220, the robot 10 exits spot cleaning
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`mode upon the first obstacle encountered by a bump sensor 12 or 13.”) and Fig. 14.
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`Likewise, when the robot is in an open area free of obstacles, the specification
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`states that the spiraling action of this spot-coverage mode continues outwardly for
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`a prescribed distance and then ends (situation (b)). Ex. 1001, 9:17 (“defined
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`radius”); Fig. 7 at 240 and 9:57-10:8 (“In other embodiments, the robot tracks its
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`total distance travelled in spiral mode . . . .If the maximum spiral is reached
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`without a bump, the robot gives control to a different behavior. . . .”). Thus, the
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`broadest reasonable interpretation of an “isolated area” in the context of the “spot
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`coverage mode” should be an area with its perimeter determined either at least in
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`part by a physical boundary/obstacle, or by the cleaning robot itself. That is, the
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`
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`1 It would make no sense to read “isolated” as meaning an area that is entirely
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`bounded or enclosed from the rest of the room being cleaned, because then the
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`robot could not even enter such a completely “isolated area.” Thus, the general
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`context of the specification is more informative.
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`broadest reasonable interpretation of the claim language includes within its scope a
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`robot configured to react to a physical boundary/obstacle of the “isolated area,” a
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`robot that has a pre-programmed size limit for the “isolated area,” or a robot that
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`has the ability to react to either one (i.e., whichever event occurs first). The
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`specification teaches that the spot coverage mode can be terminated by either the
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`robot deciding it has covered sufficient distance (and thus area) in this mode or
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`striking a boundary or an obstacle, and thus either event can define the extent of
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`the area’s isolation.
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`Moreover, the specification describes a “preferred embodiment” where the
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`“a standard spiral” mode is used in which “the device should continue until any
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`bump sensor event.” Id., 16:42-43. In that embodiment, the bump sensor event
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`triggers switching to wall following mode, as shown in Fig. 14. Id., 16:43-45.
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`Thus, the specification contemplates that the “spot coverage mode” exemplified by
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`this spiraling can be configured to run until hitting a physical object, and not
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`necessarily be limited by a set distance in the robot controller. Further, it should be
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`noted that claim 1, for example, recites a control system that selects “from among
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`the plurality of operational modes in real time in response to signals generated by
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`the obstacle detection sensor.” Accordingly, such claim language indicates that the
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`robot continues in a “spot coverage mode” until the robot detects an obstacle, at
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`which time, the control system is configured to select another mode.
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`14
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`In addition, the parties agreed in the related ITC case with the Petitioner’s
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`construction that the term “isolated area” means “a limited area that is cleaned
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`according to a non-random coverage algorithm.” Ex. 1023, 7. Ex. 1024, 104-105.
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`Ex. 1025, 15. That interpretation is broad enough to include all the embodiments
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`discussed above, including embodiments where the isolated area is defined by a
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`physical boundary detected by the obstacle detection sensor.
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`Hence, the proper construction should include robots that use either or both
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`options for determining the size of its “spot coverage mode’s” “isolated area.”
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`d.
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`“means for manually selecting an operational mode”
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`This is a means plus function clause. The function is straightforward –
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`manually selecting an operational mode. The corresponding structure in the ‘490
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`patent specification performing that function is straightforward also. The disclosed
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`embodiment includes “a remote control” to change or influence operational modes
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`or “a switch mounted on the shell itself” to set the operational mode. Ex. 1001,
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`17:5-10. The parties in the related ITC case are in agreement that the structure for
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`manually selecting an operational mode in the ‘490 Patent is an input element such
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`as a selector switch, push button, or remote control by which the user can select a
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`particular operational mode. Ex. 1023, 5. Ex. 1025, 14. Accordingly, this should
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`be considered the corresponding structure for purposes of claim construction.
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`e.
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`“a control system operatively connected to said obstacle
`detection sensor and said means for moving” and “said
`control system configured to operate in a plurality of
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`operational modes and to select from among the plurality
`of modes in real time in response to signals generated by
`the obstacle detection sensor.”
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`In the ITC litigation, Patent Owner has taken the position that the “control
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`system” limitation deserves its plain and ordinary meaning. Ex. 1023, 7 and 8.
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`Petitioner contended in that litigation that the “control system” is a means clause.
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`Id. For the purposes of this Petition, Petitioner is willing to accept Patent Owner’s
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`position on this issue.
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`If, however, the “control system” is interpreted as a mean plus function
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`clause, the corresponding structure performing the functions of being operatively
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`connected, operating in a plurality of operating modes, and selecting from among a
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`plurality of modes is a processor/microcontroller 22 in Fig. 3 of the ‘490 Patent
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`and the associated behavio