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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SHENZHEN ZHIYI TECHNOLOGY CO. LTD., D/B/A ILIFE,
`Petitioner
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`v.
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`IROBOT CORP.,
`Patent Owner
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`Case IPR2017-02061
`Patent 6,809,490
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`PATENT OWNER’S
`PRELIMINARY RESPONSE
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`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
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`TABLE OF CONTENTS
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`B.
`C.
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`Pages
`INTRODUCTION ........................................................................................... 1
`OVERVIEW OF the ’490 PATENT ............................................................... 1
` LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2
` THE PETITION FAILS TO MEET THE REQUIREMENTS OF 37 C.F.R.
`§ 42.104(B) FOR CLAIM ELEMENTS THAT INVOKE 35 U.S.C. § 112,
`PARA. 6. .......................................................................................................... 5
`A.
`Petitioner has Failed to “Identify the Specific Portions of the
`Specification that Describe the Structure” Under 37 C.F.R. §
`42.104(b) ............................................................................................... 6
`Petitioner’s Failure Warrants Denial of Institution ............................... 7
`Reliance on Arguments or Citations in the ITC Claim Construction
`Constitutes Improper Incorporation by Reference .............................. 10
`THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(d) .............................................................................................. 11
`A. Ueno-642 Discloses the Same Random and Spiral Travel Modes as
`Ueno-025 ............................................................................................. 13
`A Version of Ueno Having an Obstacle Follow Mode was Considered
`During Prosecution .............................................................................. 15
`Portions of Ueno-642 Cited for the Added “select…” Limitation are
`Present in Ueno-025 and have Already Been Considered by the Patent
`Office ................................................................................................... 17
`D. Application of 35 U.S.C. § 325(d) is Appropriate .............................. 22
` UENO-642 FAILS TO DISCLOSE ELEMENT 1[d] – “said control system
`configured to … select from among the plurality of modes in real time in
`response to signals generated by the obstacle detection sensor” .................. 23
`A. Ueno-642’s “travel mode pointer” Does Not Change in Response to
`Sensor Signals ..................................................................................... 26
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`B.
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`C.
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`TABLE OF CONTENTS (cont’d)
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`B.
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`Pages
`Transitioning Modes After the Robot has Traveled “for a planned time
`(or distance)” is Not in Response to Sensor Signals ........................... 27
`Uneo-642 Prioritizes “Operations,” not Operating Modes ................. 28
`C.
` CONCLUSION .............................................................................................. 29
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`TABLE OF AUTHORITIES
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`CASES
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`PAGES
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`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00456 ................................ 7, 9
`Apple Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01902 ............................. 8
`Arctic Cat, Inc., v. Polaris Industries, Inc., IPR2017-00199 .................................. 23
`Carefusion Corp. v. Baxter Int., Inc, IPR2016-01456 ............................................... 7
`Conopco v. The Procter & Gamble Company, IPR2013-00510 ............................. 10
`Conopco, Inc. v. The Procter & Gamble Co., IPR2014-00628 ......................... 16, 23
`Cultec, Inc. v. Stormtech LLC, IPR2017-00777 ...................................................... 23
`Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-00985 ........................... 9
`Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp., IPR2014-00489 .................. 10
`HP Inc. v. Memjet Technology Ltd., IPR2016-00356 ................................................ 8
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge LTD., IPR2013-00517 .......... 10
`Kingston Technology Company, Inc. v. Polaris Innovations Ltd.,
`IPR2017-00114 .................................................................................................... 8
`Oil States Energy Servs. LLC v. Greene’s Energy Group, LLC, Case No. 16-712,
`certiorari granted (U.S. Jun. 12, 2017) ................................................................ 1
`Panel Claw, Inc. v. Sunpower Corp., IPR2014-00388 .............................................. 8
`Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) .................... 9
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp., IPR2014-01419, ........................ 10
`Unified Patents Inc. v. John L. Berman, IPR2016-01571 ................................. 12, 22
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`STATUTES
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`PAGES
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`35 U.S.C. § 112(f) .............................................................................................. 1, 5, 8
`35 U.S.C. § 323 .......................................................................................................... 1
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`35 U.S.C. § 325(d) ................................................................................. 11, 12, 22, 23
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`REGULATIONS
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`37 C.F.R. § 42.104(b) ............................................................................... 1,5, 6, 8, 11
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 10
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`EXHIBIT LIST
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`IR2001
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`Prosecution History of U.S. Patent No. 6,809,490 (Serial No.
`10/167,851)
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`IR2002
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`U.S. Patent No. 6,076,025 to Ueno et al. (“Ueno-025”)
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`INTRODUCTION
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`The Board should deny all grounds in this Petition because (1) the Petition
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`does not satisfy the requirements of 37 C.F.R. § 42.104(b) to “identify the specific
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`portions of the specification that describe the structure” for claim elements that
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`invoke Pre-AIA 35 U.S.C. § 112, para. 6; (2) the Petition relies on substantially the
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`same art applied and overcome during prosecution; and (3) elements of the
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`independent claims are not disclosed or suggested by the cited references. 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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`1 Arguments presented herein are presented without prejudice to presenting
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`additional arguments in a later response should the Board institute IPR review. No
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`waiver is intended by Patent Owner and no waiver attaches to arguments not
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`presented in a patent owner’s preliminary response. 35 U.S.C. § 323. Moreover,
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`as the Board is aware, the United States Supreme Court is currently considering
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`certain aspects of the inter partes review process in Oil States Energy Servs. LLC
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`v. Greene’s Energy Group, LLC, Case No. 16-712, certiorari granted (U.S. Jun. 12,
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`2017). Patent Owner respectfully reserves its right to timely request permission to
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`brief the implications of that decision on this proceeding.
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`1
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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” cycles through “operational modes,”
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`including “spot cleaning,” “edge cleaning,” and “room cleaning.” Id., 8:35-47. By
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`autonomously cycling through different types of cleaning modes, the ’490 patent
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`invented techniques to more effectively clean a room of unknown size or geometry
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`with less user involvement. Id., 8:59-9:5; 2:27-35. The user need not pre-program
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`a path or otherwise plan operation modesthe ’490 patent’s cleaning robot
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`autonomously selects the operation modes based on sensor signals. Id., 8:59-9:5;
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`2:27-35; 3:55-62; 4:20-25; 16:1-10.
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` LEVEL OF ORDINARY SKILL IN THE ART
`Since the instant Petition was filed, the ITC issued a claim construction
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`order (IR2003) that addressed the definition of a POSITA proposed by Petitioner
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`in the ITC. In that order, the ITC agreed that experience in robotics was needed,
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`but found that even more experience was needed than proposed by Petitioner.
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`Indeed, the ITC found that a POSITA should have at least three years of
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`experience in the design and implementation of robotics and embedded systems,
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`rather than the one year of experience that the Petitioner proposed in that
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`proceeding. IR2003, p. 13. Here, Petitioner proposes no robotics experience,
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`substituting that relevant experience with experience in “embedded computer
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`devices,” tailored to Dr. Locke’s background. Thus, for the purpose of this
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`proceeding, Petitioner’s definition of a POSITA should be rejected. Patent Owner
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`proposes that the Board adopt the same definition of a POSITA as the ITC;
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`namely, “a person having an ordinary level of skill would hold a bachelor’s degree
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`in physics, electrical engineering, mechanical engineering, computer science, or a
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`related discipline, and have at least three years of experience in the design and
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`implementation of robotics and embedded systems, or some other equivalent
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`combination of education and experience.” Id.
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`In contrast, Petitioner proposes a definition of a person of ordinary skill in
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`the art that differs from not only for the adopted definition from the ITC action, but
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`even differs from the definition they proposed in the co-pending ITC case (Inv. No.
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`337-TA-1057). Petitioner provides no explanation why the definition here should
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`differ. The inconsistent defintitions of a POSITA as set forth by Petitioner in this
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`Petition and in the parallel ITC case are shown below:
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`Definition from IPR Petition
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`Definition from ITC Proceeding
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`“A POSITA in the field of the ’490
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`A POSITA in the field of the ’490
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`patent at the time of the earliest
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`patent would have “a bachelor’s degree
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`possible priority date (June 12, 2001)
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`in physics, electrical engineering,
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`would have had at least an
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`mechanical engineering, computer
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`undergraduate degree in computer
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`science, or a related discipline, and
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`3
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`science or electrical engineering, or
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`have at least one year of experience in
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`equivalent experience and, in addition,
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`the design and implementation of
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`two years of experience in the design
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`robotics and embedded systems, or
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`and implementation of embedded
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`some other equivalent combination of
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`computer devices controlling sensors
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`education and experience.” (IR2003, p.
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`and motors.” (Petition, p. 7)
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`12)
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`Notably, the definition of a POSITA proposed by Petitioner in this IPR is
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`devoid of any experience in mechanical design, physics, or even robotics. This
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`definition seems aligned with the software engineering background of Petitioner’s
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`declarant, Dr. Locke, whose CV describes his expertise to be in the area of
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`“software development management and organization.” Ex. 1003, pp. 50-51,
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`Appendix A. Although Dr. Locke purports to have “experience in designing and
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`building navigation systems,” this experience appears to be solely software related
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`and Dr. Locke does not mention any direct experience in robotics design or
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`mechanical design, which are at issue in the challenged claims. Ex. 1003, pp. 5-6;
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`50-51.
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` THE PETITION FAILS TO MEET THE REQUIREMENTS OF 37
`C.F.R. § 42.104(B) FOR CLAIM ELEMENTS THAT INVOKE 35
`U.S.C. § 112, PARA. 6.
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`In Inter Partes Review, “[w]here the claim to be construed contains a
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`means-plus-function or step-plus-function limitation as permitted under 35 U.S.C.
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`112(f),” this Board requires the petition to “identify the specific portions of the
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`specification that describe the structure, material, or acts corresponding to each
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`claimed function.” 37 C.F.R. § 42.104(b).2 Here, elements [1a] and [42a] and
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`claim 12 recite “means for” limitations, but the Petition provides no evidence or
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`argument that identifies structure in the specification for the claimed functions.
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`Petitioner even admits that it has not, because it cannot, met its burden, relying on
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`alleged “constructions” offered in a related ITC litigation without any additional
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`2 37 C.F.R. § 42.104(b) requires that:
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`“the petition must set forth . . . [h]ow the challenged claim is to be
`construed. Where the claim to be construed contains a means-plus-
`function or step-plus-function limitation as permitted under 35 U.S.C.
`112(f), the construction of the claim must identify the specific
`portions of the specification that describe the structure, material, or
`acts corresponding to each claimed function.”
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`details. As the Board has previously recognized, this deficiency is fatal to the
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`Petition and justifies denial of institution.
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`A.
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`Petitioner has Failed to “Identify the Specific Portions of the
`Specification that Describe the Structure” Under 37 C.F.R. §
`42.104(b)
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`The Petition admits that “means-plus-function” treatment applies to
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`elements [1a] and [42a] and claim 12. See Petition, 8, 15, 34, 39. Yet, the Petition
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`does not:
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` provide a proper construction of these claims, failing to “identify the
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`specific portions of the specification that describe the structure” of
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`the claimed functions in any capacity whatsoever, citing wholesale to
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`Exhibit 1008 with no analysis;
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` provide any identification of the precise “means-plus-function”
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`elements that the Petition seeks construction for; or
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` provide any detail with respect to the allegedly “agreed constructions”
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`from a related ITC action and their applicability to the instant
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`proceedings. Id.
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`The Petition’s sole attempt to construe these terms amounts to citation to
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`Exhibit 1008, which allegedly includes “agreed constructions” from a related ITC
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`action. Id. The Petition asserts that these “constructions are consistent with the
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`broadest reasonable constructions” and that “Petitioner is not aware of any
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`reasonable alternative interpretation that affects the outcome of this Petition.” Id.
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`The Petition’s reference to allegedly agreed constructions in an entirely different
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`proceeding with a different claim construction standard is not a proper claim
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`construction analysis. And, the Petition’s unsupported statement that Petitioner “is
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`not aware of” alternatives does nothing to help. Indeed, the Petition does not
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`identify any “portions of the specification” of the ’490 patent or even any specific
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`portions of Exhibit 1008. Id. at 15, 34, 39.
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`B.
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`Petitioner’s Failure Warrants Denial of Institution
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`Numerous cases support denial of institution in these circumstances. For
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`example, in Carefusion Corp. v. Baxter Int., Inc., the Board denied institution
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`where, as here, the Petitioner pointed to litigation constructions, instead of offering
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`“its own construction … by identifying corresponding structure, material, or acts
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`described in the Specification.” IPR2016-01456, Paper 9 at 10, 13, 19 (PTAB Feb.
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`6, 2017). Reference to litigation constructions is insufficient because “it is the
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`Petition, and not an external document, that must set forth an identification of the
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`corresponding structure.” Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-
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`00456, Paper 9 at 7 (PTAB June 15, 2015).
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`Similarly, as the Petition does here, referencing “agreed” litigation
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`constructions has been deemed insufficient in numerous decisions from the Board.
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`Id. at 8. For example, in Apple v. ContentGuard Holdings, the Board considered a
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`statement that “[t]he parties to the co-pending litigation have agreed the ‘[u]ser
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`interface 1305 described [in Ex. 1009] at 16:35-44’ is this means element.” Id.
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`Even though that statement identified a portion of the specification, this was not
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`enough to meet the requirements of 37 C.F.R. § 42.104(b). As the Board
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`explained, “by couching it in terms of what Petitioner allegedly agreed to in district
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`court, Petitioner has not identified necessarily what it considers to be the
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`corresponding structure under the claim construction standard applicable to an
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`inter partes review.” Id.3
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`Similar reasoning controls here, where Petitioner relies exclusively on
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`allegedly agreed constructions in an external document from a different court,
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`3 See also Kingston Technology Company, Inc. v. Polaris Innovations Ltd.,
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`IPR2017-00114, Paper 10 at 7-9, 32-33 (PTAB April 3, 2017) (denying institution
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`for claims subject to 112/6 where the Petition failed to “identify what structure in
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`the Specification . . . corresponds to the means-plus-function limitations.”); HP
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`Inc. v. Memjet Technology Ltd., IPR2016-00356, Paper 7 at 10-11 (PTAB June 16,
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`2016); Apple Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01902, Paper 7 at
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`31 (PTAB Feb. 17, 2016); Panel Claw, Inc. v. Sunpower Corp., IPR2014-00388,
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`Paper 10 at 8-9 (PTAB June 30, 2014).
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`which this Board is not bound to follow. See, e.g., Facebook, Inc. v. Sound View
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`Innovations, LLC, IPR2017-00985, Paper 17 at 11-12, 13-14 (PTAB Sept. 5, 2017)
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`(noting same, as the Board “will not make arguments for Petitioner”); see also
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`Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is
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`no dispute that the board is not generally bound by a prior judicial construction of a
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`claim term”). This Petition has far more deficiencies than the petitions at issue in
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`ContentGuard or Facebook, as Petitioner has failed to identify any “specific
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`portions of the specification” of the ’490 patent for the corresponding structure of
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`elements [1a] and [42a] and claim 12. Patent Owner and the Board are thus unable
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`to assess Petitioner’s purported construction. Because “means” elements are found
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`in each challenged independent claim, the Petition has not established a reasonable
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`likelihood of success for any challenged claim and the Petition should be denied in
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`its entirety.4
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`4 The Petition’s analysis of element [42a] does not correct the deficiency of
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`claim 1 because it merely references back to element [1a]. Petition, 39. The same
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`deficiencies also can be found in dependent Claim 12, where the Petition fails to
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`even offer a citation to Exhibit 1008, much less proper citation to “specific
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`portions of the specification” of the ’490 patent. Petition, 34.
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`C. Reliance on Arguments or Citations in the ITC Claim
`Construction Constitutes Improper Incorporation by Reference
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`The Board has recognized on multiple occasions that “[a]rguments must not
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`be incorporated by reference from one document into another document.”
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge LTD., IPR2013-00517, Paper
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`87 at 16 (PTAB Feb. 11, 2015) (quoting 37 C.F.R. § 42.6(a)(3)). Here, as
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`discussed above, the Petition incorporates Ex. 1008 as a whole for element [1a].
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`Petition, 8, 15, 34, 39. With this treatment, it is unclear exactly what arguments
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`the Petition relies on from Ex. 1008. Id.
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`The Board has long “decline[d] to consider information presented in a
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`supporting [exhibit], but not discussed in a petition” and should not change course
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`here. Conopco v. The Procter & Gamble Company, IPR2013-00510, Paper 9 at 8-
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`9 (PTAB Feb. 12, 2014). When “information is not discussed adequately in the
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`Petition” this information should “not be incorporated by reference” from an
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`Exhibit. Tempur Sealy Int’l, Inc. v. Select Comfort Corp., IPR2014-01419, Paper 7
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`at 7-8 (PTAB Feb. 17, 2015); see also Fidelity Nat’l Info. Serv., Inc. v.
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`Datatreasury Corp., IPR2014-00489, Paper 9 at 9-10 (PTAB Aug. 13, 2014) (“the
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`Petition’s extensive reliance on citations to the [Expert] Declaration in lieu of
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`citations to the references themselves amounts to an incorporation by reference of
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`arguments made in the [Expert] Declaration into the Petition . . . We, therefore,
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`decline to consider the information found only in the [Expert] Declaration.”).
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`Here, such improper incorporation by reference of Exhibit 1008 should not
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`be allowed and therefore denial of institution is proper for failure to meet the
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`requirements of § 42.104(b).
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` THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(D)
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`Institution also should be denied because the Petition relies on “substantially
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`the same prior art or arguments previously … presented to the Office.” 35 U.S.C.
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`§ 325(d). Specifically, the Petition relies on a Japanese publication from Ueno
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`(Ueno-642, Ex. 1004) as the sole primary reference. Petition, 4. Although this
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`Japanese version of Ueno was not explicitly considered during examination, a U.S.
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`patent with substantially similar disclosure (Ueno-025, U.S. Patent No. 6,076,025
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`(IR2002)) was thoroughly considered and distinguished. Ueno-025 served as the
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`basis of several rejections issued by the Examiner, and was overcome by Patent
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`Owner during prosecution based on similar, if not the same, issues presented by the
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`Petition here. IR20015, pp.320, 759. Because: (1) the arguments presently
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`advanced for Ueno-642 are substantially similar to arguments made by the
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`Examiner for the combination of the Ueno-025 and Noonan references; and (2)
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`Petitioner offers no justification for why limited Board resources should be
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`devoted to rehashing the Examiner’s decision to allow the ’490 patent over
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`common disclosure from Ueno, institution should be denied under § 325(d).
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`Unified Patents Inc. v. John L. Berman, IPR2016-01571, Paper 10 at 11-12 (PTAB
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`Dec. 14, 2016) (Designated Informative).6
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`5 The Petition identifies Exhibit 1002 as “File history of U.S. Patent No.
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`6,809,490” (Petition, iv) but the file submitted as Exhibit 1002 is the file history
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`for U.S. Pat. Appl. No. 10/818,073, not the application that eventually matured into
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`the ’490 patent. Ex. 1002, 4. Patent Owner submits the correct file history for the
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`’490 patent (Appl. No. 10/167,851) as Exhibit IR2001.
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`6 The Petition insists that Ueno-642 includes “additional disclosures that
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`were not available to the examiner” including “more than two operational modes.”
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`Petition, 7. However, as addressed below, these additional disclosures relate to the
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`obstacle following mode already found to be present in Noonan.
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`A. Ueno-642 Discloses the Same Random and Spiral Travel
`Modes as Ueno-025
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`During prosecution, the Examiner relied on Ueno-025 as disclosing the
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`claimed “spot-coverage” and “bounce” modes. IR2001, pp. 759-760. (“Ueno et
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`al. teach[es] … a spiral pattern running motion, which presents the spot-coverage
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`pattern … [and a] random pattern running motion … [that] represents the claimed
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`bounce mode.”). Ueno-642 discloses the same spiral and random travel modes.
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`Petition, at 10, 19. For example, FIGs. 5 and 6 of Ueno-642, which show motions
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`of the robot during random and spiral travel modes, are substantially identical to
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`FIGs. 5 and 6 of Ueno-025:
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`Japanese Ueno
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`U.S. Ueno
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`Ueno-642, FIG. 5
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`Ueno-025, FIGs. 5a-b
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`U.S. Ueno
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`Ueno-642, FIG. 6
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`Ueno-025, FIGs. 6a-c
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`The description of FIGs. 5-6 is also substantially similar. Compare Ex.
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`1004, ¶¶0028-0030 to IR2002, 6:19-7:9.7 With near identical disclosure to Ueno-
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`025, Ueno-642’s “spot-coverage” and “bounce” modes have already been
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`considered by the Office. IR2001, pp. 759-760.
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`7 The differences in specific language between Ueno-642 and Ueno-025 can
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`be attributed to the fact that Ueno-642 is an English translation from Japanese
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`language source material while Ueno-025 is a U.S. Patent. Additionally, Ueno-025
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`claims priority to Japanese Application No. 9-029768 and is therefore also possibly
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`an English translation of that Japanese application. IR2002, Face.
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`14
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`B. A Version of Ueno Having an Obstacle Follow Mode was
`Considered During Prosecution
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`The primary distinctions between Ueno-642 and Ueno-025 are (1) the
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`physical structure of the robot (which has little bearing on the claims at issue
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`here), and (2) additional disclosure in Ueno-642 related to obstacle following.8
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`Obstacle following functionality, however, was already considered as part of
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`Ueno-025 during prosecution. IR2001, 759-60. Specifically, the Examiner
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`applied a combination of Noonan and Ueno-025 with three modes – (1) Noonan’s
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`obstacle following mode, (2) Ueno-025’s spiral mode, and (3) Ueno-025’s random
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`mode. Id. In fact, the Examiner explicitly considered arguments that Noonan did
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`
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`8 Each figure of Ueno-642 not related to the structure of the robot or obstacle
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`following has a direct correlation in Ueno-025, including FIG. 9 of Ueno-642
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`(corresponding to FIG. 12 of Ueno-025); FIG. 10 of Ueno-642 (corresponding to
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`FIG. 14 of Ueno-025); FIG. 11 of Ueno-642 (corresponding to FIG. 15 of Ueno-
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`025); FIG. 12 of Ueno-642 (corresponding to FIG. 16 of Ueno-025); FIG. 17 of
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`Ueno-642 (corresponding to FIG. 3 of Ueno-025); FIGs. 18a-b of Ueno-642
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`(corresponding to FIGs. 7a-b of Ueno-025); FIG. 1 of Ueno-642 (corresponding to
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`FIG. 2 of Ueno-025); and FIG. 8 of Ueno-642 (corresponding to FIG. 11 of Ueno-
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`025).
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`15
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`
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`not disclose an “obstacle following mode” and that a POSITA would not have
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`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
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`been motivated to combine Noonan’s obstacle following mode with Ueno-025’s
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`spiral and random modes. Id., pp. 317-324; 350-364. The Examiner rejected
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`these arguments, holding firm that the combination of Noonan and Ueno-025
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`evaluated during prosecution included all three operational modes. Id.
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`The claims of the ’490 patent were not allowed until Patent Owner amended
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`claim 1 to include two additional limitations:
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`“to select from among the plurality of modes in real time in response
`to signals generated by the obstacle detection sensor,” and
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`“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”
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`IR2001, 75; 61-65. These claim amendments ultimately distinguished over the
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`combination of Ueno-025 and Noonan, with the Examiner noting that “[t]he
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`application is allowed based on [the] provided amendment after final office
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`action.” Id., 65.
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`
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`Therefore, the additional disclosure of Ueno-642 related to obstacle
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`following is immaterial because a version of Ueno having an obstacle following
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`mode was already considered during prosecution and distinguished. Conopco,
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`Inc. v. The Procter & Gamble Co., IPR2014-00628, Paper 21 at 8-9 (PTAB Oct.
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`16
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`20, 2014) (institution denied even though previously cited reference was “not
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`identical” because petitioner “appl[ied] the prior art references to support
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`substantially the same argument”).
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`C.
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`Portions of Ueno-642 Cited for the Added “select…” Limitation
`are Present in Ueno-025 and have Already Been Considered by
`the Patent Office
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`Each portion of Ueno-642 cited in the Petition for the added limitation of
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`“to select from among the plurality of modes in real time in response to signals
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`generated by the obstacle detection sensor” is found in Ueno-025. Turning to the
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`Petition’s discussion of the “select…” claim element, the Petition begins by
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`discussing the physical components and movement patterns of Ueno-642’s robot
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`that allegedly disclose the claimed “control system” and “plurality of operational
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`modes.” Petition, 18-21.
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`When asserting that the “CPU selects among these three modes based on
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`the inputs from the sensor system,” the Petition cites to FIG. 9 and paragraph 0035
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`of Ueno-642. Petition, 20. However, these sections of Ueno-642 are found in
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`Ueno-025. For example, FIG. 9 of Ueno-642 is highly similar to FIG. 12 of
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`Ueno-025 (with a few added steps related to obstacle following):
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`17
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`Japanese Ueno
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`Case IPR2017-02061
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`U.S. Ueno
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`Ueno-642, FIG. 9
`(obstacle follow steps
`highlighted in red)
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`
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`Ueno-025, FIG. 12
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`In fact, the addition of step S4 and decision block S49 in FIG. 9 of Ueno-642
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`simply adds in a few steps for obstacle following that are unrelated to mode
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`selection. Indeed, decision block S3 of FIG. 9 of Ueno-642 is equivalent to the
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`decision block S4 of FIG. 12 of Ueno-025 and simply identifies the mode the robot
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`is currently executing, which is not a process for selecting the mode, as recognized
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`by the Examiner. Ex. 1004, ¶¶0037, 0042.
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`18
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`
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`Also, paragraph 0035 of Ueno-642 (cited on page 20 of the Petition as
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`disclosing the claimed “select…” feature) corresponds to disclosure found in
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`Ueno-025:
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`Japanese Ueno
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`
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`U.S. Ueno
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`“The controlling operation in
`
`“Referring to a general flow chart
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`response to the output signals of
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`in Fig. 9, the robot travel control
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`their respective sensors is
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`operations based on the output
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`explained. Referring to a general
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`signal of each sensor described
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`flowchart of FIG. 12, an
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`above is explained. At Step S1
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`instruction for starting the spiral
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`which is the work start…”
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`running is given at Step S1…”
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`Ueno-642, ¶0035
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`Ueno-025, 9:7-16
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`
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`As another example, when asserting that the Ueno-642 robot “selects among
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`[the modes] based on signals generated from obstacle detection sensors,” the
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`Petition cites to paragraphs 0024-26, 0028-29, 0033, and 0038-40 of Ueno-642.
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`Petition, 21. However, each of these paragraphs either describes movements of
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`Ueno-642’s robot during obstacle following (¶¶0024-0025) or were already
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`disclosed in Ueno-025 (¶¶0026, 0028-29, 0033, 0038-40) and were therefore
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`19
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`
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`already considered by the Examiner during prosecution. For example, paragraph
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`Attorney Docket No: 44360-0004IP1
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`0026 of Ueno-642 corresponds to 5:55-67 of Ueno-025:
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`
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`Japanese Ueno
`
`U.S. Ueno
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`“each travel pattern of the
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`“Patterns of running of the
`
`robot by the present invention
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`robot according to the present
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`combined with the
`
`invention, which are
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`border-following travel described
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`combinations of the above
`
`above is explained. First, the
`
`motions, will now be explained.
`
`random travel which is a basic
`
`The description starts with a
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`travel pattern of robot 1 is
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`random running which is a
`
`explained. In random travel, as
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`basic running pattern of the robot
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`shown in Fig. 5, if the robot 1
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`1. In the random running pattern,
`
`positioned in the region A
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`the robot 1 usually runs straight
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`surrounded by a boundary or a
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`forward in an area A defined by
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`wall surface B makes a straight
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`boundaries or walls B as shown
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`advance…”
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`Ueno-642, ¶0026
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`in FIGS. 5A and 5B…”
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`Ueno-025, 5:55-67.
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`
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`20
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`
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`Similarly, paragraphs 0028-0030 of Ueno-642 correspond to 6:19-7:9 of
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`Case IPR2017-02061
`Attorney Docket No: 44360-0004IP1
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`Ueno-025:
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`Japanese Ueno
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`
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`U.S. Ueno
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`“The spiral/random running
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`“Here, spiral travel and random
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`pattern is now explained in
`
`travel are explained further