Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 9
`Entered: October 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SHENZHEN SILVER STAR INTELLIGENT TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00897
`Patent 6,809,490 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, TERRENCE W. McMILLIN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §314(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 9
`Entered: October 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SHENZHEN SILVER STAR INTELLIGENT TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00897
`Patent 6,809,490 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, TERRENCE W. McMILLIN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §314(a)
`
`
`
`
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`
`I.
`INTRODUCTION
`Shenzhen Silver Star Intelligent Technology Co., Ltd. (“Petitioner”)
`filed a Petition requesting an inter partes review of claims 1, 2–5, 7, 8, and
`12 (“the challenged claims”) of U.S. Patent No. 6,809,490 B2 (Ex. 1001,
`“the ’490 patent”). Paper 3 (“Pet.”). iRobot Corp. (“Patent Owner”) filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”); see also Paper 8 (denying
`Petitioner’s request to file a Reply, for lack of good cause).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary Response shows that “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`For the reasons that follow, we do not institute an inter partes review
`of any of the challenged claims of the ’490 patent.
`
`A. Related Matters
`The parties identify the following matters related to the ’233 patent
`(Pet. 1–2; Paper 4, 2–3):
`In re Certain Robotic Vacuum Cleaning Devices And Components
`Thereof Such As Spare Parts, Inv. No. 337-TA-1057 (USITC);
`iRobot Corporation v. Hoover, Inc., et al., Case No. 1:17-cv-10647
`(D. Mass.);
`iRobot Corporation v. The Black & Decker Corp., et al., Case No.
`1:17-cv-10648 (D. Mass.);
`
`2
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`iRobot Corporation v. Bissell Homecare, Inc., et al., Case No. 1:17-
`cv-10649 (D. Mass.);
`iRobot Corporation v. Bobsweep, Inc., et al., Case No. 1:17-cv-
`10651(D. Mass.);
`iRobot Corp. v. Shenzhen Zhiyi Technology Co. Ltd., Case No. 1:17-
`cv-10652 (D. Mass.); and
`Shenzhen Zhiyi Technology Co., Ltd. v. iRobot Corp., IPR2017-02061
`(PTAB) (the “-2061 IPR”)
`
`B. The ’490 Patent
`The ’490 patent is directed to a mobile robot used, e.g., in vacuum
`cleaning or mowing. Ex. 1001, 1:9–12. A challenge in the prior art is
`designing an algorithm that allows the robot to cover all of an area of
`unknown geometry in an efficient amount of time. Id. at 1:22–2:19. The
`’490 patent discloses a robot that moves through various operational modes,
`including spot cleaning, edge cleaning, and room cleaning modes to
`effectively cover the area. Id. at 8:35–47. These high-level operating modes
`are, in turn, effected by the robot giving priority to various behaviors
`dictating how the robot reacts in various situations (e.g., hitting a wall). Id.
`at 8:48–9:5, 13:26–35.
`
`C. Challenged Claim
`Petitioner challenges claims 1, 2–5, 7, 8, 12, and 42 of the ’490 patent.
`Independent claims 1 and 42 are reproduced below.
`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;
`
`3
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`(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 in the obstacle
`following mode, the robot travels adjacent to an obstacle for
`a distance at least twice the work width of the robot.
`
`
`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.
`
`
`
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1, 2–5, 7, 8, 12, and 42 would have been
`obvious on the following grounds:
`Reference(s)
`Ueno1
`
`Claim(s) Challenged
`1, 2–5, 7, 8, and 12
`
`
`1 Japanese Unexamined Patent App. Pub. H11-212642, pub. Aug. 6, 1999
`
`4
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`Claim(s) Challenged
`Reference(s)
`1, 2–5, 7, 8, and 12
`Ueno and AAAI Article2
`1, 2–5, 7, 8, and 12
`Ueno and Kawagoe3
`12
`Ueno and Bisset4
`12
`Ueno, AAAI Article, and Bisset
`12
`Ueno, Kawagoe, and Bisset
`12
`Ueno and Erwin5
`12
`Ueno, AAAI Article, and Erwin
`12
`Ueno, Kawagoe, and Erwin
`42
`Ueno and Bottomley6
`Ueno, AAAI Article, and Bottomley 42
`Ueno, Kawagoe, and Bottomley
`42
`Ueno and Öhman7
`42
`Ueno, AAAI Article, and Öhman
`42
`Ueno, Kawagoe, and Öhman
`42
`Uneo and Bissett-6128
`42
`Bottomley and AAAI Article
`1 and 42
`
`
`
`
`(certified translation) (Ex. 1007); see also Ex. 1014 (original Japanese).
`2 Keith L. Doty and Reid R. Harrison, “Sweep Strategies for a Sensory-
`Driven, Behavior-Based Vacuum Cleaning Agent,” AAAI 1993 Fall
`Symposium Series Instantiating Real-World Agents (Oct. 22–24, 1993)
`(Ex. 1019).
`3 U.S. Patent No. 6,574,536 B1, iss. June 3, 2003 (Ex. 1007).
`4 WO 00/38025, pub. June 29, 2000 (Ex. 1010).
`5 German Patent App. 19849978 A1, pub. May 11, 2000 (translated copy)
`(Ex. 1011); see also Ex. 1015 (original German).
`6 WO 00/04430, pub. Jan. 27, 2000 (Ex. 1006).
`7 WO 93/03399, pub. Feb. 18, 1993 (Ex. 1008).
`8 U.S. Patent No. 6,493,612 B1, iss. Dec. 10, 2002 (Ex. 1026).
`
`5
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`II.
`35 U.S.C. § 314(a) ANALYSIS
`For the reasons that follow, we exercise our discretion to deny
`institution under 35 U.S.C. § 314(a).
`
`A. Legal Framework
`35 U.S.C. § 314(a) provides that:
`The Director [of the USPTO] may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Section 314(a) does not require the Director to institute an inter partes
`review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed.
`Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an
`IPR proceeding.”). Rather, a decision whether to institute is within the
`Director’s discretion, and that discretion has been delegated to the Board.
`See 37 C.F.R. § 42.4(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
`committed to the Patent Office’s discretion.”).
`In a precedential decision in General Plastic Industries Co., Ltd. v.
`Canon Kabushiki Kaisha, Case IPR2017-01357, the Board articulated a non-
`exhaustive list of factors to be considered in evaluating whether to exercise
`discretion, under 35 U.S.C. § 314(a), to deny a petition that challenges a
`patent that was previously challenged before the Board. These factors are:
`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;
`
`6
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`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.
`Gen. Plastic, slip op. at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9)). These factors are “a
`non-exhaustive list” and “additional factors may arise in other cases for
`consideration, where appropriate.” Id. at 7, 8. With that in mind, we weigh
`an additional factor:
`8.
`the extent to which the petitioner and any prior
`petitioner(s) were similarly situated defendants or otherwise
`realized a similar-in-time hazard regarding the challenged patent.
`Shenzhen Silver Star Intelligent Technology Co., Ltd. v. iRobot Corp.,
`IPR2018-00761, Paper 15, 18 (PTAB Sept. 5, 2018) (Saindon, concurring).
`
`B. Application of the General Plastic Factors
`Patent Owner has provided an extensive analysis of how the General
`Plastic factors apply to this proceeding. Prelim. Resp. 4–23. Petitioner does
`not address General Plastic or otherwise discuss the fact that the ’490 patent
`
`7
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`was recently challenged by another entity.9
`In general, the following timeline of events is relevant to our
`discussion. On April 18, 2017, Patent Owner filed a complaint with the
`International Trade Commission (ITC) proposing as respondents, inter alia,
`Shenzhen ZhiYi Technology Co., Ltd. d/b/a/ iLife (“iLife”) and Petitioner,
`Shenhzen Silver Star Intelligent Technology Co., Ltd. Ex. 2012, 6. iLife
`filed a petition requesting inter partes review of claims 1–3, 7, 12, and 42 of
`the ’490 patent on September 6, 2017, in the -2061 IPR. Ex. 2005. Patent
`Owner filed a preliminary response in that proceeding on December 14,
`2017, and we issued a decision instituting inter partes review on March 12,
`2018. See Exs. 2006, 2007. The instant Petition was filed April 16, 2018.
`Factor 1
`The first General Plastic factor asks “whether the same petitioner
`previously filed a petition directed to the same claims of the same patent.”
`Gen. Plastic, slip op. at 16. Factor 1 favors Petitioner because Petitioner has
`not filed previously a petition directed to the same claims of the same patent.
`Patent Owner acknowledges that Factor 1 “might be said to favor
`Petitioner,” and attempts to make its case on the basis of the other Factors.
`Prelim. Resp. 9.
`
`
`9 After Patent Owner filed its Preliminary Response, Petitioner sought to file
`a reply brief addressing General Plastic. See Paper 8. However, as we
`explained during a conference call, “Petitioner’s failure to foresee the
`applicability of § 314(a) does not demonstrate good cause [to file a reply
`brief]” because “Petitioner should have been aware that []§ 314(a) . . .
`[would] be at issue.” Id. at 4; see also 37 C.F.R. § 42.108(c) (“A petitioner
`may seek leave to file a reply to the preliminary response . . . . Any such
`request must make a showing of good cause.”).
`
`8
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`
`Factor 2
`The second General Plastic factor asks “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.” Gen. Plastic, slip op. at 16.
`Factor 2 favors Patent Owner because at the time iLife filed its petition,
`Petitioner knew or should have known of the prior art asserted in its Petition.
`In particular, Petitioner and iLife both submitted invalidity contentions in the
`ITC proceeding effectively identifying all of the prior art asserted in this
`proceeding on September 29, 2017, over 6 months prior to Petitioner filing
`the Petition on April 16, 2018. See Ex. 2009, 4, 8, 13, 15, 17–19, 23, 25.
`Petitioner knew about the prior art asserted in this proceeding at the time the
`iLife petition was submitted and thus had apparent opportunity to file this
`Petition at a time on par with the iLife petition. Petitioner offers no
`explanation for why it waited until after Patent Owner filed its Preliminary
`Response and we issued our Decision on Institution in that proceeding.
`Accordingly, Factor 2 favors Patent Owner.
`Factor 3
`The third General Plastic factor asks “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.” Gen. Plastic, slip op. at 16.
`Factor 3 favors Patent Owner because, as outlined in our timeline above,
`Petitioner had about 4 months to review and adjust the Petition (filed April
`16, 2018) in light of Patent Owner’s preliminary response to iLife’s petition
`(filed December 14, 2017). Similarly, Petitioner filed its Petition one month
`after we issued our Decision on Institution of the iLife petition (March 12,
`
`9
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`2018). Although these intervals may not be enough time to completely
`revamp a theory of unpatentability, it is certainly enough time to hone
`existing arguments in light of Patent Owner’s preliminary response and our
`Decision on Institution.10 Petitioner offers no explanation for why it waited
`so long. Thus, Factor 3 favors Patent Owner.
`Factor 4
`The fourth General Plastic factor considers “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.” Gen. Plastic, slip op.
`at 16. Factor 4 favors Patent Owner because, as evident from our timeline
`above, Petitioner’s invalidity contentions filed with the ITC on
`September 29, 2017 identified effectively each prior art reference in this
`Petition, which was filed on April 16, 2018, a little over 6 months later.
`Thus, Petitioner had the same theory of unpatentability fleshed out but
`waited until after a ruling on iLife’s petition, without an explanation for why
`it waited so long. Thus, Factor 4 favors Patent Owner.
`Factor 5
`The fifth General Plastic factor asks “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.” Gen. Plastic, slip
`op. at 16. Although a separate Factor, we largely addressed the lack of
`adequate explanation in our treatment of the other Factors. Factor 5 favors
`Patent Owner because Petitioner has not provided any explanation for the
`
`
`10 Indeed, Patent Owner argues that Petitioner in fact modified its earlier ITC
`positions in light of these papers. Prelim. Resp. 13–14. We take no position
`on that argument.
`
`10
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`time elapsed between the filings of multiple petitions directed to the same
`claims of the same patent. See Paper 8.
`Factors 6 and 7
`The sixth General Plastic factor considers “the finite resources of the
`Board.” Gen. Plastic, slip op. at 16. The seventh General Plastic factor
`considers “the requirement . . . to issue a final determination not later than 1
`year after the date on which the Director notices institution of review.” Id.
`Patent Owner argues that Petitioner raises 17 “overlapping and redundant
`grounds.” Prelim. Resp. 18–19. Indeed, there are 9 grounds asserted against
`claim 12 and 8 grounds asserted against claim 42. Petitioner offers no
`explanation for why so many grounds should be considered.
`Post-SAS,11 Factors 6 and 7 are viewed in a new light, as the option of
`partial institution is no longer a tool for panels of the Board to manage the
`size of a trial. Factors 6 and 7 induce the Board to consider passing on a
`potentially meritorious petition in order to police the general behavior of
`petitioners as a whole; they permit a panel to conclude that a given petition
`(assuming no mitigating circumstances) may present too many challenges to
`be considered on the merits. Not all challenges represent equal taxes on
`Board resources, however, so this will necessarily be a case-specific inquiry
`not amenable to bright line rules. Notwithstanding, given the strength of the
`other Factors towards denial, we do not find it necessary to determine
`whether this case presents a fact pattern where the number of grounds
`asserted against the same claims would result in enough of a strain on Board
`
`
`11 SAS Institute Inc. v. Iancu, 584 U.S. ___, 138 S. Ct. 1348 (2018)
`(requiring the agency to decide patentability on all claims raised in a
`petition).
`
`11
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`resources to merit consideration towards denial, and leave that issue open for
`another case. Accordingly, we do not make a determination on Factors 6
`and 7.
`
`Proposed Factor 8
`We adopt the eighth factor considered in a prior Shenzhen Silver Star
`
`case, “the extent to which the petitioner and any prior petitioner(s) were
`similarly situated defendants or otherwise realized a similar-in-time hazard
`regarding the challenged patent.” Shenzhen Silver Star, IPR2018-00761,
`Paper 15, 18 (Saindon, concurring); see also id. at 16–19 (explaining the
`reasons for proposed adoption of the factor). The purpose of proposed
`Factor 8 is to discourage tactical filing of petitions over time by parties that
`faced the same litigation threat at the same time.12 Factor 8 favors Patent
`Owner because Petitioner and iLife were co-respondents in the ITC
`litigation and filed their invalidity contentions at the same time. See
`generally Ex. 2009. Accordingly, Petitioner and iLife both faced a similar-
`in-time hazard regarding the ’490 patent, yet Petitioner waited until after our
`Decision on Institution on iLife’s petition to file this Petition. Absent
`mitigating explanation, of which we have none, this suggests an attempt to
`
`
`12 As acknowledged and explained in more detail in IPR2018-00761,
`proposed Factor 8 does not preclude non-tactical filing situations, where a
`later-filing petitioner files later due to circumstances outside that petitioner’s
`control, for example, having been charged with infringement later in time, a
`change in the nature of the infringement charge (e.g., claims identified for
`the first time), availability of key personnel required for preparation of the
`petition, or unusually early filing of the earlier-filing petitioner. See
`Shenzhen Silver Star, IPR2018-00761, Paper 15, 18–19 (Saindon,
`concurring) (“There are legitimate reasons why a petition may be filed after
`[a preliminary response or a decision on institution].”).
`
`12
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`secure tactical advantage by waiting for iLife to file a “test case.” Factor 8
`weighs against tactical filing of petitions. Thus, proposed Factor 8 favors
`Patent Owner.
`
`C. Conclusion Regarding General Plastic Factors
`Factor 1 favors Petitioner, Factors 2–5 and 8 favor Patent Owner,
`Factors 3 and 4 strongly favor Patent Owner, and proposed Factor 8
`overwhelmingly favors Patent Owner, all for the reasons explained above.
`Petitioner has effectively no mitigating explanation. The story our analysis
`of these Factors tells indicates that it is appropriate to exercise our discretion
`under 35 U.S.C. § 314(a) to deny institution.
`
`III. ORDER
`In view of the foregoing, it is hereby:
`ORDERED that we exercise a discretionary denial of inter partes
`review of the ’490 patent under 35 U.S.C. § 314(a), and that no trial is
`instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13
`
`
`
`IPR2018-00897
`Patent 6,809,490 B2
`PETITIONER:
`Shen Wang
`shenwang@archlakelaw.com
`
`Hao Tan
`haotan@archlakelaw.com
`
`PATENT OWNER:
`Walter Renner
`axf-ptab@fr.com
`
`Jeremy Monaldo
`jjm@fr.com
`
`Patrick Bisenius
`bisenius@fr.com
`
`Tonya Drake
`tdrake@irobot.com
`
`
`
`
`14
`
`
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