UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SHENZHEN SILVER STAR INTELLIGENT CO. LTD.,
`Petitioner
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`v.
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`IROBOT CORP.,
`Patent Owner
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`Case IPR2018-00897
`Patent 6,809,490
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`PATENT OWNER’S
`PRELIMINARY RESPONSE
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` 
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`c) 
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`e) 
`f) 
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`INTRODUCTION ........................................................................................... 1 
`
`OVERVIEW OF the ’490 PATENT ............................................................... 2 
`  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 3 
`  THE PETITION’S RELIANCE ON PREVIOUSLY CONSIDERED
`REFERENCES, ACCESS TO PATENT OWNER’S EARLIER
`PRELIMINARY RESPONSE, ACCESS TO THE BOARD’S EARLIER
`INSTITUTION DECISION, AND EXCESSIVE NUMBER OF
`CHALLENGES WARRANT DENIAL OF INSTITUTION ......................... 3 
`A. 
`The Guidelines of General Plastic Compel Non-Institution ................ 7 
`a)  Whether at the time of the filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it (factor two) ........................................ 11 
`b)  Whether at the time of filing of the second petition, the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition (factor three) ... 13 
`The length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition (factor four) .................................. 17 
`d)  Whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent (factor five) .................. 18 
`The finite resources of the Board (factor six) ........................... 18 
`Statutory requirement to issue a final determination not later
`than 1 year after the date of institution (factor seven) .............. 20 
`g)  Whether the same petitioner previously filed a petition directed
`to the same claims of the same patent (factor one) ................... 21 
`
`
`Case IPR2018-000897
`Attorney Docket No: 44360-0004IP2
`
`
`TABLE OF CONTENTS
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`Pages
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`i
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`

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`Case IPR2018-000897
`Attorney Docket No: 44360-0004IP2
`
`
`TABLE OF CONTENTS
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` 
`
`B. 
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`Pages
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`THE ZHANG DECLARATION SHOULD BE AFFORDED LITTLE OR
`NO WEIGHT ................................................................................................. 23 
`A. 
`The Zhang declaration should be afforded little or no weight because
`it largely repeats attorney argument .................................................... 24 
`The Zhang declaration should be afforded little or no weight because
`Dr. Zhang was not a POSITA at the time of the invention ................. 25 
`  NEITHER UENO NOR BOTTOMLEY IN VIEW OF THE AAAI
`ARTICLE DISCLOSE “A SPOT-COVERAGE MODE WHEREBY THE
`ROBOT OPERATES IN AN ISOLATED AREA” (CLAIM 1 – ELEMENT
`1[F]; CLAIM 42 – ELEMENT 42[G]) .......................................................... 25 
`A. 
`Claim construction for “a spot-coverage mode whereby the robot
`operates in an isolated area” ................................................................ 26 
`Ueno fails to disclose “a spot-coverage mode whereby the robot
`operates in an isolated area” ................................................................ 30 
`Bottomley in view of AAAI Article fails to disclose “a spot-coverage
`mode whereby the robot operates in an isolated area” ........................ 32 
`  UENO FAILS TO DISCLOSE “A BOUNCE MODE WHEREBY THE
`ROBOT TRAVELS SUBSTANTIALLY IN A DIRECTION AWAY
`FROM AN OBSTACLE AFTER ENCOUNTERING THE OBSTACLE”
`(CLAIM 1 – ELEMENT 1[H]; CLAIM 42 – ELEMENT 42[I]) WHILE
`BOTTOMLEY FAILS TO DISCLOSE “AN OBSTACLE FOLLOWING
`MODE” (CLAIM 1 – ELEMENT 1[G]; CLAIM 42 – ELEMENT 42[H]) . 34 
`A. 
`Claim construction for “bounce mode whereby the robot travels
`substantially in a direction away from an obstacle after encountering
`the obstacle” ........................................................................................ 34 
`Ueno fails to disclose “a bounce mode” ............................................. 37 
`Bottomley in view of AAAI Article fails to disclose “an obstacle
`following mode” .................................................................................. 38 
`
`B. 
`
`C. 
`
`B. 
`C. 
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`ii
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`Case IPR2018-000897
`Attorney Docket No: 44360-0004IP2
`
`
`TABLE OF CONTENTS
`
`Pages
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`  THE PETITION FAILS TO ESTABLISH THAT THE AAAI ARTICLE
`WAS PUBLICLY AVAILABLE PRIOR TO THE CRITICAL DATE ...... 39 
`  THE PETITION FAILS TO NAME ALL REAL PARTIES IN INTEREST
` ....................................................................................................................... 40 
`CONCLUSION .............................................................................................. 48 
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`iii
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
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`PAGES
`
`Alcatel-Lucent USA Inc. v. Oyster Optics LLC, IPR2018-00257 .............................. 9
`Alere Inc. v. Rembrandt Diagnostics, LP, IPR2017-01130 ................................. 9, 18
`Apple Inc. v. Chestnut Hill Sound Inc., IPR2015-01464 ......................................... 24
`Applications in Internet Time, LLC v. RPX Corp., 2018 U.S. App.
`LEXIS 20605, *34 (Fed. Cir. 2018) .................................................................. 43
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
`(Fed. Cir. 1985) .................................................................................................. 24
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453 .. 46
`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) ................... 32, 33
`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) ........ 40
`Corning Inc. v. DSM IP Assets B.V., IPR2013-00048 ............................................. 24
`Fisher & Paykel Healthcare Ltd. v. ResMed Ltd., IPR2017-01789 ........................ 20
`Galderma S.A. v. Allergan Industrie, SAS, Case IPR2014-01422 ..................... 46, 47
`General Electric Co. v. TAS Energy Inc., IPR2014-00163 ..................................... 24
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357 ..........................................................................7, 8, 9, 12, 21, 23
`Google LLC v. Uniloc Luxembourg S.A., IPR2017-02081...................................... 22
`Google v. Uniloc, IPR2017-01665 ........................................................................... 23
`Google v. Uniloc, IPR2017-02067 ..................................................................... 17, 23
`H&S Mfg. Co., Inc., v. OXBO Int’l Corp, IPR2016-00909 ..................................... 40
`In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986) .................................................. 39
`
`iv
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
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`In re Wyer, 655 F.2d 221, 227 (CCPA 1981) .......................................................... 39
`NetApp Inc. v. Realtime Data LLC, IPR2017-01354 ............................................... 22
`NetApp Inc. v. Realtime Data LLC, IPR2017-01660 ......................................... 12, 22
`NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134 ............................................. 9
`ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865–66 (Fed. Cir. 2010) ............ 40
`RPX Corp. v. Virnetx Inc., Case IPR2014-00171 .................................................... 42
`Samsung Electronics Co., Ltd v. Elm 3DS Innovations, LLC, IPR2017-01305 ...... 22
`SAS Institute Inc. v. Iancu, 2018 WL 1914661, (U.S. Apr. 24, 2018) .... 4, 16, 19, 20
`Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358 ......................... 25
`TCL Corp. v. Lexington Luminance LLC, IPR2017-01780 ..................................... 22
`Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997) 32, 33
`
`STATUTES
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`PAGES
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`35 U.S.C. § 102(b) ................................................................................................... 40
`35 U.S.C. § 312(a)(2) ............................................................................................... 40
`35 U.S.C. § 314(a) ......................................................................................... 7, 21, 23
`35 U.S.C. § 316(a)(11) ............................................................................................... 8
`35 U.S.C. § 323 .......................................................................................................... 2
`35 U.S.C. § 325(d) ............................................................................................... 7, 23
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`v
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`
`REGULATIONS
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`PAGES
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`37 C.F.R. § 42.108(a) ............................................................................................... 21
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`vi
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`Case IPR2018-00987
`Attorney Docket No: 44360-0004IP2
`
`
`EXHIBIT LIST
`
`Description
`Claim Construction Order from Investigation No. 337-TA-1057,
`August 18, 2017
`Definition of “spot,” The Oxford Essential Dictionary: American
`Edition, p. 580 (1998)
`Definition of “spot,” Webster’s II New College Dictionary, p. 1068
`(1999)
`Definition of “isolated,” The New Shorter Oxford English
`Dictionary, Volume 1, p. 1425 (1993)
`Petition in Shenzhen Zhiyi Technology Co. LTD., d/b/a/ iLife v.
`iRobot Corp. (IPR2017-02061, Paper 1) (“First Petition”)
`Patent Owner’s Preliminary Response in Shenzhen Zhiyi
`Technology Co. LTD., d/b/a/ iLife v. iRobot Corp. (IPR2017-02061,
`Paper 7)
`Institution Decision in Shenzhen Zhiyi Technology Co. LTD., d/b/a/
`iLife v. iRobot Corp. (IPR2017-02061, Paper 8)
`Decision Granting Petitioner’s Request for Rehearing in Shenzhen
`Zhiyi Technology Co. LTD., d/b/a/ iLife v. iRobot Corp. (IPR2017-
`02061, Paper 11)
`Respondents’ Disclosure of Invalidity Contentions, International
`Trade Commission Investigation No. 337-TA-1057
`Appendix A to Respondents’ Disclosure of Invalidity Contentions,
`International Trade Commission Investigation No. 337-TA-1057
`
`
`vii
`
`Exhibit No.
`IR2001
`
`IR2002
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`IR2003
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`IR2004
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`IR2005
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`IR2006
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`IR2007
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`IR2008
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`IR2009
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`IR2010
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`
`
`

`

`IR2014
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`IR2015
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`IR2016
`
`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`
`IR2011
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`IR2012
`IR2013
`
`PTO Guidance on the Impact of SAS on AIA Trial Proceedings
`(April 26, 2018)
`Complaint in ITC Investigation No. 337-TA-1057
`Shenzhen Silver Star Intelligent Technology Co., Ltd. Response to
`Amended Complaint in ITC Investigation No. 337-TA-1057
`Hoover Inc. Response to the Complaint in ITC Investigation No.
`337-TA-1057
`Hearing Transcript from March 9, 2018 in ITC Investigation No.
`337-TA-1057
`Respondents’ Identification of Expert Witnesses in ITC
`Investigation No. 337-TA-1057
`IR2017 Machine Translation and Original Document from Guangdong
`Province Shenzhen Intermediate People's Court No. 767
`IR2018 Machine Translation and Original Document from Guangdong
`Province Shenzhen Intermediate People's Court No. 768
`IR2019 Machine Translation and Original Document from Guangdong
`Province Shenzhen Intermediate People's Court No. 769
`IR2020 Machine Translation and Original Document of Enterprise Report
`for Ye Weixiong
`IR2021 Machine Translation and Original Document of Enterprise Report
`for Ye Li-Rong
`IR2022 Machine Translation and Original Document of Enterprise Report
`for Yang Zhiwen
`IR2023 Machine Translation and Original Document of Enterprise Report
`for Shenzhen Karina Robot Software Development Co., Ltd.
`
`viii
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`

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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`
`IR2024 Machine Translation and Original Document of Enterprise Report
`for Shenzhen Star-sheng Robot Partnership
`IR2025 Machine Translation and Original Document of Enterprise Report
`for Shenzhen Intelligent Technology Co., Ltd.
`IR2026 Machine Translation and Original Document of Enterprise Report
`for Shenzhen Sik Luo robot Co., Ltd.
`IR2027 Machine Translation and Original Document of Enterprise Report
`for Silver Star Investment Group Co., Ltd.
`IR2028 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/business/index/id/2.html
`IR2029 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/business/subsidiary/company_id/1.html
`IR2030 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/58.html
`IR2031 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/56.html
`IR2032 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/54.html
`IR2033 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/47.html
`IR2034 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/23.html
`IR2035 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/memorabilia/index.html (2015 Tab
`Selected)
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`ix
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`

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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`
`IR2036 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/memorabilia/index.html (2005 Tab
`Selected)
`IR2037 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/about/contact.html
`IR2038 Machine Translation and Original Document of Corporate Credit
`Information Publicity Report for Shenzhen Intelligent Technology
`Co., Ltd.
`IR2039 Machine Translation and Original Document of Corporate Credit
`Information Publicity Report for Silver Star Investment Group Co.,
`Ltd.
`IR2040 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/119/cate_id/1.html
`IR2041 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/22.html
`IR2042 Machine Translation and Original Document of Website Located at
`http://www.szyxjt.com/news/details/id/20.html
`IR2043 Machine Translation and Original Document of Company
`Registration Record for Shenzhen Intelligent Technology Co., Ltd.
`IR2044 Machine Translation and Original Document of By-Laws for
`Shenzhen Intelligent Technology Co., Ltd. (Excerpt)
`Declaration of Hagen Schempf on behalf of Shenzhen Silver Star
`Intelligent Technology Co., Ltd in IPR2018-00761, Exhibit 1013.
`
`
`IR2045
`
`x
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`
`

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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`
`
`
`INTRODUCTION
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`The Board should deny institution because (1) this Petition advances 17
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`grounds that recycle similar art and arguments previously considered in an earlier
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`challenge to the ’490 patent, thereby abusing the Board’s interest in efficient
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`utilization of its resources and prejudicing iRobot through redundant serial attacks
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`to the same patent (all Grounds); (2) the Petition relies on testimony from
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`Mingshao Zhang which should be afforded little or no weight because it largely
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`repeats attorney argument and Dr. Zhang was not a POSITA during the relevant
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`time frame (all Grounds); (3) neither Ueno (Grounds 1-16) nor Bottomley in view
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`of the AAAI Article (Ground 17) disclose a “spot-coverage mode”; (4) Ueno fails
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`to disclose a “bounce mode” (Grounds 1-16) and Bottomley fails to disclose an
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`“obstacle following mode” (Ground 17); and (5) the Petition fails to meet the
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`statutory requirement to name all real parties in interest (all Grounds).
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`These deficiencies remain despite the fact that, prior to filing, Petitioner had
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`the benefit of iRobot’s preliminary response and the Board’s Institution Decision
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`in the previous IPR petition on this patent. Although Petitioner clearly used the
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`previous IPR as a roadmap in crafting its positions for this proceeding, Petitioner
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`1
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`

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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`did not fix problems with the prior petition, leaving substantive deficiencies in
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`each of its 17 proposed grounds. For these reasons, denial of institution is proper.1
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` OVERVIEW OF THE ’490 PATENT
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`The ’490 patent describes an autonomous mobile cleaning robot “designed
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`to provide maximum coverage at an effective coverage rate in a room of unknown
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`geometry.” Ex. 1001, 5:29-31. To improve effective coverage rate, the ’490
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`patent’s cleaning robot “autonomously” selects “operational modes,” including
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`“spot cleaning,” “edge cleaning,” and “room cleaning.” Id., 8:35-47.2 When
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`operating in the “spot cleaning” mode, the “robot designates a specific region for
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`cleaning” such that the robot is restricted to “the immediate area within, for
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`example, a defined radius.” Ex. 1001, 8:37-39; 9:11-19; 10:22-25 (“for spot
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`coverage, any self-bounded area can be used”). In edge cleaning mode, the robot
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`“moves in such a way that it follows the edge” of a wall or object. Id., 10:26-34.
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`
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`1 Arguments presented herein are presented without prejudice to presenting
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`additional arguments in a later response should the Board institute inter partes
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`review. No waiver is intended by Patent Owner and no waiver attaches to
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`arguments not presented in a patent owner’s preliminary response. 35 U.S.C. §
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`323.
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`2 All emphasis added unless otherwise noted.
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`2
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`The ’490 patent further describes a “BOUNCE” mode embodiment in which, when
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`the robot comes in contact with an obstacle, the robot changes directions to move
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`away from the obstacle. Id., 12:53-13:10.
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`By autonomously cycling through different types of cleaning modes, the
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`’490 patent invented techniques to more effectively, clean a room of unknown size
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`or geometry with less user involvement. Id., 8:59-9:5; 2:27-35. The user need not
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`pre-program a path or otherwise plan operation modesthe ’490 patent’s cleaning
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`robot autonomously selects the operation modes based on sensor signals. Id., 8:59-
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`9:5; 2:27-35; 3:55-62; 4:20-25; 16:1-10.
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` LEVEL OF ORDINARY SKILL IN THE ART
`Patent Owner proposes that the Board adopt the same definition of a
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`POSITA as the ITC; namely, “a person having an ordinary level of skill would
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`hold a bachelor’s degree in physics, electrical engineering, mechanical
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`engineering, computer science, or a related discipline, and have at least three years
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`of experience in the design and implementation of robotics and embedded systems,
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`or some other equivalent combination of education and experience.” IR2001, p.
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`13.
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` THE PETITION’S RELIANCE ON PREVIOUSLY CONSIDERED
`REFERENCES, ACCESS TO PATENT OWNER’S EARLIER
`PRELIMINARY RESPONSE, ACCESS TO THE BOARD’S EARLIER
`
`3
`
`
`

`

`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`INSTITUTION DECISION, AND EXCESSIVE NUMBER OF
`CHALLENGES WARRANT DENIAL OF INSTITUTION
`This Petition follows a prior petition against the ’490 patent in which the
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`challenges to all but one claim were initially denied (IPR2017-02061, “First
`
`Petition”).3 Petitioner admits it was aware of the earlier proceeding, but fails to
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`offer any reasons explaining why another challenge is justified. See Petition, p. 2.
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`This omission is especially glaring because the instant Petition relies on the same
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`primary reference (Ueno, Ex. 1005) for 16 of the 17 grounds.4 See IR2005, 4.
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`
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`3 In the First Petition, only the challenge against claim 42 was initially instituted.
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`IR2007 at 15 (Institution Decision for the First Petition). Challenged claims 1-3, 7,
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`and 12 were originally not instituted in the First Petition and were only added back
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`into the proceeding due to the recent Supreme Court decision in SAS Inst. Inc. v.
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`Iancu. See IR2008 at 2 (Decision Granting Petitioner’s Request for Rehearing for
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`the First Petition).
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`4 In addition to Ueno being relied upon in all grounds of the First Petition, a similar
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`Ueno reference, U.S. Patent No. 6,076,025 (“Ueno-025”) was cited by the
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`Examiner during prosecution and, as discussed in the earlier proceeding, includes
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`many of the same disclosures as the Ueno reference cited here. See IR2006, 11-22;
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`Ex. 1002, 319-322; 759-761.
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`4
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`Moreover, Petitioner delayed filing the instant Petition for over seven months after
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`the filing of the First Petition, over four months after Patent Owner submitted its
`
`preliminary response, and over a month after the Institution Decision initially
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`denying review of claim 1 and its dependents.5 Petitioner therefore had ample time
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`to use both iRobot’s preliminary response and the Board’s institution decision to
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`inform arguments in its challenge.
`
`Indeed, Petitioner clearly used iRobot’s prior response and the Board’s
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`reasoning in denying institution of claim 1 as a roadmap in crafting its positions.
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`Specifically, Petitioner adjusted its original arguments with respect to Ueno as
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`presented to the ITC in two ways directly in response to iRobot’s preliminary
`
`response and the Board’s institution decision finding that Ueno fails to disclose
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`“select[ing] from among the plurality of modes in real time in response to signals
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`generated by the obstacle detection sensor.” First, Petitioner changed its Ueno
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`argument from anticipation to obviousness for the very claim limitation that iRobot
`
`
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`5 Evidence from other related IPR proceedings indicates that Petitioner began
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`working on these IPRs in June of 2017 and yet delayed filing until the eve of their
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`one year bar date. IR2045, pp. 83 (indicating experts worked on IPRs from “Jun.
`
`2017 – Apr. 2018”).
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`5
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`and the Board found missing from Ueno.6 Second, Petitioner added the AAAI
`
`Article (Ex. 1019) as an alleged backup for this same limitation.
`
`Petitioner also delayed filing this Petition for 199 days after all eight
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`references relied upon in Grounds 1-17 (or an equivalent)7 were first identified in
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`its invalidity contentions in a related proceeding. See IR2009, 4; 8; 13; 15; 17-19;
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`23; 25.8 With this background, and as discussed in more detail below, Petitioner
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`unreasonably delayed its Petition to benefit from the arguments made and the
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`decision rendered in the First Petition. This is the exact type of follow-on petition
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`
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`6 As addressed in detail below, Petitioner originally argued anticipation of claim 1
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`based on Ueno before the ITC and did not make obviousness arguments until after
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`seeing iRobot’s preliminary response and the Board’s decision.
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`7 Although the Bisset-612 patent itself was not specifically identified in
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`Petitioner’s invalidity contentions in the ITC proceeding, the invalidity contentions
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`do identify PCT Publication WO 00/38026, which is the PCT application from
`
`which the Bisset-612 patent originated. Ex. 1026, Cover Page; IR2009, 4; 17.
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`Therefore, an equivalent to Bisset-612 was known to Petitioner at the time of filing
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`of the invalidity contentions.
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`8 The AAAI Article (Ex. 1019) is referred to as “Sweeping Strategies” in the
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`invalidity contentions.
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`6
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`that the Board’s precedential jurisprudence on discretionary denial is designed to
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`prevent. Thus, the Petition should be denied.
`
`A. The Guidelines of General Plastic Compel Non-Institution
`The circumstances of this case are similar to the practices that the Board
`
`outlined in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper No. 19 at 16-17 (PTAB, Sept. 6, 2017) (precedential
`
`decision) as being “unfair to patent owners and [] an inefficient use of the inter
`
`partes review process.” For the reasons explained in detail below, the Board
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`should exercise discretion to deny institution of the Petition under 35 U.S.C. §
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`314(a) and/or § 325(d), or related authority.
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`
`
`
`
`7
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`
`(1) The General Plastic Factors
`
`The Board considers the following seven factors described in General
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`Plastic to assess the appropriateness of a follow-on petition on both efficiency of
`
`the inter partes review process and fundamental fairness to the parties:
`
`1. whether the same petitioner previously filed a
`petition directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition
`the petitioner knew of the prior art asserted in the second
`petition or should have known of it;
`3. whether at the time of filing of the second
`petition the petitioner already received the patent owner’s
`preliminary response to the first petition or received the
`Board’s decision on whether to institute review in the
`first petition;
`4. the length of time that elapsed between the time
`the petitioner learned of the prior art asserted in the
`second petition and the filing of the second petition;
`5. whether the petitioner provides adequate
`explanation for the time elapsed between the filings of
`multiple petitions directed to the same claims of the same
`patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after the
`date on which the Director notices institution of review.
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`8
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`General Plastic, IPR2016-01357 at 16; see also NVIDIA Corp. v. Samsung Elec.
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`Co., IPR2016-00134, Paper No. 9 at 6-14 (PTAB May 4, 2016) (finding that
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`different references cited in serial petitions are still “substantially the same prior
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`art” if they are relied upon in the same manner).
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`(2) Applicability to the Instant Case
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`All but one of the seven factors favor Patent Owner and non-institution (at
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`least Factors 2-7). While Factor 1 might be said to favor Petitioner, this by itself
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`does not make up for Petitioner’s improper delay. Alcatel-Lucent USA Inc. v.
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`Oyster Optics LLC, IPR2018-00257 Paper No. 14 at 17-16 (PTAB June 4, 2018)
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`(“not all the factors need to weigh against institution for us to exercise our
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`discretion” when applying the General Plastics factors). Importantly, Petitioner
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`knew of the First Petition and could have explained the reasons for its delay, but
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`chose not to do so. Alere Inc. v. Rembrandt Diagnostics, LP, IPR2017-01130,
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`Paper No. 10, concurrence at 1-2 (PTAB Sept. 28, 2017) (“[I]t is fair to place the
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`burden on petitioners in such cases to come forward with an explanation why the
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`challenge was not brought at the time of the first-filed petition. It follows that, in
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`the absence of any such explanation, we should deny the later-filed petition.”).
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`Although each factor is addressed in more detail below, the following table briefly
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`summarizes how each of Factors 2-7 weigh heavily in favor of Patent Owner:
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`
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`9
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
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`
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`Factor
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`Brief Explanation of Reasons Favoring Patent Owner
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`2
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`Petitioner’s invalidity contentions identified 7 of the 8 prior art
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`references asserted in this Petition (including primary references Ueno
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`and Bottomley) and an equivalent to the eighth reference, Bisset-612
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`(WO/00/38026) nearly 7 months before filing this IPR.
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`3
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`Petitioner delayed filing this IPR for over four months after Patent
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`Owner submitted its preliminary response to the First Petition and over a
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`month after the Board issued the institution decision in the First Petition,
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`using these filings as roadmaps for the arguments in the Second Petition.
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`4
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`Petitioner knew of 7 of the 8 references (and the PCT equivalent to the
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`eight reference, Bisset-612) asserted in this IPR at least 199 days (nearly
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`7 months) before filing its Petition.
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`5
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`Petitioner provides no explanation for the delay in filing its follow-on
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`Petition, and never explains differences between its Petition and the First
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`Petition.
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`6
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`Petitioner advances many redundant grounds (17 grounds, including 9
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`grounds challenging claim 12 and 8 grounds challenging claim 42) to the
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`detriment of efficient use of Board resources.
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`10
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`7 With 17 grounds, the number of challenges presented in the Petition
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`represents a larger than typical filing that will be difficult to sort through
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`within the 1 year deadline.
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`With this background, the General Plastic factors overwhelmingly support
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`denial of the instant Petition. Each factor is discussed in detail below.
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`a) Whether at the time of the filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it (factor two)
`The second factor favors Patent Owner. The First Petition was filed by the
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`instant Petitioner’s co-respondent in ITC Investigation No. 337-TA-1057 on
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`September 6, 2017. See IR2005. On September 29, 2017, Petitioner submitted
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`invalidity contentions at the ITC which identified all eight prior art references (or
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`an equivalent) relied upon in this Petition. See IR2009, 4; 8; 13; 15; 17-19; 23; 25
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`(invalidity contentions identifying Ueno, Bottomley, Kawagoe, Öhman, Bisset,
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`Erwin, the AAAI Article (“Sweeping Strategies”), and WO/00/38026 (PCT
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`equivalent to Bisset-612)). Petitioner therefore knew the substance of all of the
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`references that form the basis of this Petition in the same month that the first
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`petition was filed. Petitioner likely knew of all or most of these references by the
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`September 6th date on which the First Petition was actually filed given the
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`substantial preparation that would be required to prepare invalidity contentions. In
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`fact, evidence suggests that Petitioner was already working on its petitions by June
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`11
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`2017, before the First Petition was filed. See IR2045, p. 83 (“Performed exclusive
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`IPR patent –review and declaration-submissions … (Jun. 2017 – Apr. 2018)”).
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`This case thus presents similar facts to those the Board was confronted with
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`in NetApp Inc. v. Realtime Data LLC (IPR2017-01660). In NetApp, the Board
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`denied institution of a follow-on petition by a different petitioner based in part on
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`the petitioner’s five-month delay in filing its IPR petition after serving invalidity
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`contentions in a related litigation. The invalidity contentions identified the same
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`references raised in the petition. See NetApp Inc., IPR2017-01660, Paper 17 at 10-
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`11 (PTAB Jan. 25, 2018). Additionally, similar to the instant case, the petitioner’s
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`delay in NetApp was especially prejudicial because it allowed the petitioner an
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`opportunity to study the patent owner’s arguments in preliminary responses to a
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`pair of earlier-filed petitions against overlapping claims of the same patent. Id., pp.
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`10-11.
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`Because Petitioner submitted invalidity contentions citing all eight prior art
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`references (or an equivalent) only three weeks after the filing of the First Petition
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`and was already working on IPRs at that point, it is highly likely that Petitioner
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`knew of all cited references at the time of the filing of the First Petition. Petitioner
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`does not address the General Plastic factors and does not dispute its knowledge of
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`these reference at the time of filing the first petition. The second factor therefore
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`weighs in favor of Patent Owner.
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`12
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`Case IPR2018-00897
`Attorney Docket No: 44360-0004IP2
`b) Whether at the time of filing of the second petition, the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s
`decision on whether to institute review in the first petition
`(factor three)
`The third factor heavily favors Patent Owner. Patent Owner filed its
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`preliminary response in the First Petition on December 14, 2017. IR2006, 30-31.
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`The Board subsequently issued an Institution Decision in the first proceeding on
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`March 12, 2018. IR2007, 15. Remarkably, the Petitioner delayed filing the instant
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`Petition until April 16, 2018. Petitioner therefore had the benefit of over four
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`months to study the preliminary response and over a month to study the Board’s
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`reactions to Patent Owner’s argum