iRobot Corporation

Patent Trials and Appeals Board

Nov 17, 2021

IPR2021-00544 (P.T.A.B. Nov. 17, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Date: November 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SHARKNINJA OPERATING LLC,
SHARKNINJA MANAGEMENT LLC,
and SHARKNINJA SALES COMPANY,
Petitioner,
v.
IROBOT CORPORATION,
Patent Owner.

IPR2021-00544
Patent 9,884,423 B2

Before TERRENCE W. McMILLIN, AMANDA F. WIEKER, and
JASON W. MELVIN, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.

DECISION
Granting Petitioner’s Request on Rehearing
37 C.F.R. § 42.71(d)
Granting Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
SharkNinja Operating LLC, SharkNinja Management LLC, and
SharkNinja Sales Company (“Petitioner”)1 filed a Petition to institute an
inter partes review of claims 1–4, 6–10, 12–15, 18–23, 25, and 26 (the
“challenged claims”) of U.S. Patent 9,884,423 B2 (Ex. 1001, the “’423
patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 1 (“Petition” or “Pet.”).
iRobot Corporation (“Patent Owner”)2 filed a Preliminary Response.
Paper 6 (“Preliminary Response” or “Prelim. Resp.”). The Preliminary
Response addressed only the issue of discretion under 35 U.S.C. § 314(a).
After considering the Petition, the Preliminary Response, and the evidence
of record, we exercised our discretion under 35 U.S.C. § 314(a) to deny
institution of inter partes review. Paper 7 (“Decision Denying Institution”
or “DDI”).
Petitioner filed a timely Request for Rehearing of Institution Decision.
Paper 8 (“Request for Rehearing” or “Request”). As authorized by the
Board, Patent Owner filed a Response to Petitioner’s Request for Rehearing
of Institution Decision in which Patent Owner opposes the Request for
Rehearing. Paper 11 (“Response”).
In its Request for Rehearing, Petitioner argues, “the [Board] panel
should rehear and institute this proceeding.” Request 1. We have
considered the arguments set forth in the Request for Rehearing and the
Response. Petitioner has persuaded us that our Decision Denying Institution
should be changed. Accordingly, for the reasons stated below, we grant the

1 Petitioner identifies SharkNinja Operating LLC, SharkNinja Management
LLC, and SharkNinja Sales Company as the real parties-in-interest. Pet. 80.
2Patent Owner identifies iRobot Corporation as the real party-in-interest.
Paper 4, 2.
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Request for Rehearing and we determine that the information presented in
the Petition 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(a) (2018). Thus, we institute an inter partes
review as to all of the challenged claims of the ’423 patent on the grounds of
unpatentability presented in the Petition.
A. Related Proceedings
The parties identify the following related proceedings:
In the Matter of Certain Robotic Floor Cleaning Devices and
Components Thereof, Inv. No. 337-TA-12523 (US International Trade
Commission) (the “ITC investigation”); and
iRobot Corp. v. SharkNinja Operating LLC, Case No. 1:21-cv-10155
(Mass.) (the “District Court litigation”). Pet. 80; Paper 4, 2.
B. The ’423 Patent
The ’423 patent is titled “Autonomous Robot Auto-Docking and
Energy Management Systems and Methods.” Ex. 1001, code (54). The
patent relates “to auto-docking and energy management systems for
autonomous robots.” Id. at 1:35–37. The patent describes “a need for a
robot and base station that can ensure proper mating regardless of location of
the base station. Moreover, a system that can prevent inadvertent dislocation
of the base station by eliminating collisions between the station and robot is
desirable.” Id. at 2:30–34.

3 Petitioner refers to this as 337-TA-3530, but the ITC website indicates
3530 is the docket number, not the investigation number. See
https://pubapps2.usitc.gov/337external/3979.
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The ’423 patent describes “an autonomous system including a base
station, that includes charging terminals for contacting external terminals of
robotic device, and a first signal emitter and a second signal emitter,” where
in some embodiments, “the first signal emitter transmit[s] a base station
avoidance signal and the second signal emitter transmit[s] a base station
homing signal.” Id. at 3:35–42. The patent also discloses “a robotic device
for performing a predetermined task, the robotic device having at least one
energy storage unit with an external terminal for contacting the charging
terminal, and at least one signal detector.” Id. at 3:47–51.
Robotic device 40 “uses a variety of behavioral modes to vacuum
effectively a working area,” where a “microprocessor is operative to execute
a prioritized arbitration scheme to identify and implement one or more
dominant behavioral modes for any given scenario, based upon inputs from
the sensor system,” and “also operative to coordinate avoidance, homing,
and docking maneuvers with the base station 10.” Id. at 8:35–43.
Figure 5, annotated by Petitioner and reproduced below, shows an
isometric view of a base station and robotic device.

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Figure 5 depicts robotic device 40 completely docked with base station 10.
Id. at 15:29–30.
C. Challenged Claims
Petitioner challenges claims 1–4, 6–10, 12–15, 18–23, 25, and 26 of
the ’423 patent. Pet. 1. Claim 1 is reproduced below.
1. A method of docking a robotic cleaning device with a base
station that includes a plurality of signal emitters including a
right signal emitter and a left signal emitter, the method
comprising:
directing the robotic cleaning device about a room at a first
velocity;
detecting, by a sensor mounted on the robotic cleaning
device, a right signal transmitted by the right signal
emitter of the base station and a left signal transmitted by
the left signal emitter of the base station;
controlling forward movement of the robotic cleaning device
toward the base station at a second velocity less than the
first velocity while orienting the robotic cleaning device
in relation to the right signal and the left signal;
detecting contact with charging terminals on the base station;
stopping the forward movement of the robotic cleaning
device in response to detecting contact with the charging
terminals on the base station; and
charging a battery of the robotic cleaning device.

Ex. 1001, 19:32–52.
D. The Asserted Grounds
Petitioner challenges claims 1–4, 6–10, 12–15, 18–23, 25, and 26 of
the ’423 patent based on the grounds set forth in the table below.
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Claim(s) Challenged 35 U.S.C. § References
1–4, 6–10, 12 1034 Jeon5, Everett6
1–4, 6–10, 12 103 Jeon, Everett, Abramson7
9 103 Jeon, Everett, Jones8
9 103 Jeon, Everett, Abramson, Jones
13–15, 18–23, 25, 26 103 Kim9, Everett
Petitioner supports its showing of unpatentability of the challenged claims
with the Declaration of Maxim Likhachev, Ph.D. (Ex. 1012, “Likhachev
Decl.”). Patent Owner has not submitted a declaration or other testimonial
evidence of an expert. See generally Prelim. Resp. As such, the testimony
of Dr. Likhachev is unrebutted by any contrary testimony.

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
Because the challenged patent claims priority to applications filed before
March 16, 2013, we refer to the pre-AIA version of § 103. Our opinions on
the present record would not change if the AIA versions of § 103 were to
apply.
5 US 2004/0178767 A1, published Sept. 16, 2004 (Ex. 1003). Petitioner
contends that this reference is prior art under 35 U.S.C. § 102(e). Pet. 8.
6 H. R. Everett, “Sensors for Mobile Robots: Theory and Application,” ISBN
1-56881-048-2, 1995 (Ex. 1004). Petitioner contends that this reference is
prior art under 35 U.S.C. § 102(b). Pet. 10.
7 US 2005/0010330 A1, published Jan. 13, 2005 (Ex. 1006). Petitioner
contends that this reference is prior art under 35 U.S.C. § 102(e). Pet. 11.
8 Joseph L. Jones, et al., “Mobile Robots: Inspiration to Implementation,”
ISBN 1-56881-097-0, 1998 (Ex. 1007). Petitioner contends that this
reference is prior art under 35 U.S.C. § 102(b). Pet. 46.
9 US 5,440,216, issued Aug. 8, 1995 (Ex. 1009). Petitioner contends that
this reference is prior art under 35 U.S.C. § 102(b). Pet. 49.
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II. ANALYSIS
A. Request for Rehearing10
1. Standard of Review for Request for Rehearing
A request for rehearing must identify specifically all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or a reply.
37 C.F.R. § 42.71(d). Petitioner, as the party challenging the Decision
Denying Institution, has the burden of showing that the Decision Denying
Institution should be modified. Id. When rehearing a decision on a petition,
the Board reviews the decision for an abuse of discretion. Id. § 42.71(c).
“An abuse of discretion occurs if the decision (1) is clearly unreasonable,
arbitrary, or fanciful; (2) is based on an erroneous conclusion of law;
(3) rests on clearly erroneous fact findings; or (4) involves a record that
contains no evidence on which the Board could rationally base its decision.”
Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed.
Cir. 2015). Patent Owner argues that “Petitioner identifies no such abuse of
discretion, misapprehension, or overlooked issues of fact or law in the
Board’s decision denying institution of inter partes review.” Response 1.
2. Petitioner’s Argument That the Board Misapprehended the Application of
Fintiv Factor 2
Fintiv11 factor 2 is “proximity of the court’s trial date to the Board’s
projected statutory deadline for a final written decision.” Fintiv, IPR2020-

10 Familiarity with the Decision Denying Institution (Paper 7) is assumed.
We do not repeat information found in the Decision Denying Institution
except as necessary to our decision here.
11 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
2020) (precedential) (“Fintiv”).
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00019, Paper 11, 6. When considering Fintiv factor 2 in the Decision
Denying Institution, in light of the parallel ITC investigation, we determined
that “this factor weighs in favor of exercising our discretion to deny
institution.” DDI 9. Petitioner argues the Board “misapprehended the
application of Fintiv Factor 2 by basing its analysis on the ITC initial
determination date rather than the ITC target date.” Request 1. Specifically,
Petitioner contends, “[b]y mistakenly treating the initial determination date
of April 29[, 2022,] as the ‘final determination,’ D.I. 9, and overlooking the
ITC’s target date of August 29[, 2022], Ex. 2004 at 5, the D.I.
misapprehended Factor 2 and incorrectly weighed the Fintiv factors. D.I. 8-
9.” Id. at 3.
In its Response to the Request for Rehearing, Patent Owner argues
that the Board’s analysis of Fintiv factor 2 was correct and consistent with
Fintiv because it compared the deadline for the Board’s final written
decision with the trial date set in the ITC investigation. Response 1 (“The
Board’s approach is consistent with the explicit language of Fintiv . . .
requiring a comparison between the Board’s ‘projected statutory deadline’
and the ‘trial date’ in the parallel proceeding.”). Patent Owner contends,
“even if considering the ITC’s target date as well as its trial date is
appropriate in some instances, the Board did not abuse its discretion in
following Fintiv’s instruction to compare its projected statutory deadline to
the ‘ITC trial date.’” Id. at 2 (citing Fintiv at 8–9). And, Patent Owner
observes that now, “even if post-trial proceedings at the ITC are also
considered, the ITC’s August 29, 2022 target date would still be ‘earlier than
the projected statutory deadline’” and thus, based on the current
circumstances, Fintiv factor 2 favors denying institution. Id. at 2–3.
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The mistake Petitioner refers to is that the Decision Denying
Institution stated, “[t]he evidentiary hearing in the ITC investigation is
scheduled to begin January 5, 2022, and the final determination is due
April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is
correct that the statement did not correctly state the target date for the ITC’s
final determination. According to the Adopted Procedural Schedule for the
ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target
Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date
for final determination is more appropriate for evaluating Fintiv factor 2,
consistent with the Board’s prior decisions. See Request 2–3 (identifying
numerous proceedings).
Applying the August 29, 2022, date, we conclude that Fintiv factor 2
is neutral in this proceeding, because of the close proximity between the
ITC’s target final determination and our expected final written decision
based on the mailing date of this Decision.
3. Petitioner’s Argument That Its Updated Stipulation Makes Rehearing
and Institution of Trial Appropriate
Petitioner argues, “[r]ehearing and institution would also be
appropriate under Sotera[12] and Sand Revolution,[13] allowing the Board to
consider Petitioners’ update to its initial stipulation that was made before the
ITC case had even begun.” Request 1. Petitioner contends that, “[b]y
stipulating to accept full IPR estoppel upon institution, Petitioners remove
any ‘concerns of duplicative efforts between the [ITC and] district court and

12 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB
Dec. 1, 2020) (precedential as to § II.A).
13 Sand Revolution II, LLC v. Continental Intermodal Group – Trucking
LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative).
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the Board, as well as concerns of potentially conflicting litigation.’” Id. at 6
(quoting Sotera, IPR2020-01019, Paper 12, 19) (second alteration in
original).
Because Petitioner’s broader stipulation accepting full estoppel was
not filed until after the Decision Denying Institution was issued, Patent
Owner argues that it is improper for Petitioner to supplement its Petition or
present new arguments or evidence in a request for rehearing. Response 3.
And, Patent Owner argues, “the Board cannot overlook or misapprehend
information not presented to it before its decision.” Id. Patent Owner
contends that Sotera and Sand Revolution “involved unique circumstances
absent here” and “do not stand for a general rule that Petitioners are free to
delay filing broad stipulations until after the Board has denied institution.”
Id. at 3–4.
Finitv factor 4 is “overlap between issues raised in the petition and in
the parallel proceeding.” Fintiv, IPR2020-000019, Paper 11, 6. In the
Decision Denying Institution, the Board considered the stipulation identified
in the Petition (Pet. 4–5) that “if this IPR is instituted, [Petitioner] will not
pursue the grounds presented in this Petition in the ITC or district court.”
DDI 11–12. With specific regard to the stipulation in the Petition, the
Decision Denying Institution said:
Petitioner’s stipulation “mitigates to some degree the concerns
of duplicative efforts between the district court and the Board,
as well as concerns of potentially conflicting decisions.” See
Sand Revolution II, LLC v. Continental Intermodal Group –
Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB
June 16, 2020) (informative). We note, however, that a broader
stipulation than that provided by Petitioner “might better
address concerns regarding duplicative efforts and potentially
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conflicting decisions in a much more substantial way.” Id. at
12 n.5.

Id. at 12. After considering the Petitioner’s stipulation in light of the
informative decision in Sand Revolution and the other evidence of record at
the time, the Board determined “[t]here is overlap between issues raised in
the Petition and the ITC investigation” (id. at 11) and Fintiv factor 4 “weighs
marginally in favor of not exercising discretion to deny institution” (id. at
12).
As noted above, after the Decision Denying Institution was entered,
Petitioner broadened its stipulation to match the stipulation that the Board’s
informative decision in Sand Revolution suggested “might better address
concerns regarding duplicative efforts and potentially conflicting decisions
in a much more substantial way.” Sand Revolution, IPR2019-01393, Paper
24, 12 n.5. Specifically, Petitioner’s counsel stated in an email to Patent
Owner’s counsel that, “if the IPR petition is instituted they will not assert
grounds that were raised or reasonably could have been raised in the IPR
against the ’423 patent in the parallel ITC and district court proceedings.”
Ex. 1024. We grant rehearing based on Petitioner’s persuasive showing of
error in our determination with respect to the ITC’s final determination date,
and we acknowledge Petitioner’s broad stipulation consistent with that
asserted in related IPR2021-00545.
Based on Petitioner’s broadened stipulation, there will not be
duplication of substantive arguments between this proceeding and the ITC
investigation (or the District Court litigation). Petitioner’s stipulation
(regardless of its timing) promotes efficiency by eliminating duplication
between proceedings, and thus promotes one of the Board’s primary
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interests in determining whether to discretionarily deny institution. See
Fintiv, IPR2020-000019, Paper 11, 5–6. Petitioner’s stipulation “mitigates
any concerns of duplicative efforts” between this proceeding and others,
along with “concerns of potentially conflicting decisions.” Sotera Wireless,
IPR2020-01019, Paper 12, 15. Having considered Petitioner’s broadened
stipulation, we determine that Fintiv factor 4 weighs strongly in favor of not
exercising our discretion to deny institution.
4. Holistic Assessment of Fintiv Factors and Conclusion
Fintiv provides that we take “a holistic view of whether efficiency and
integrity of the system are best served by denying or instituting review.”
Fintiv, IPR2020-000019, Paper 11, 6. We determine that our mistake with
regard to the final determination date of the ITC proceeding justifies
rehearing and reconsideration of our decision denying institution. And,
based on both the correct date and Petitioner’s broadened stipulation, we
determine that it is not appropriate to exercise our discretion to deny
institution based on the parallel proceedings involving the ’423 patent. We,
therefore, consider the merits of the Petition.
B. Legal Standards
A patent claim is unpatentable as obvious if the differences between
the claimed subject matter and the prior art are such that the subject matter,
as a whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
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skill in the art; and (4) objective evidence of non-obviousness. Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). Petitioner cannot satisfy its
burden of proving obviousness by employing “mere conclusory statements.”
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
C. Claim Construction
Claim construction in this proceeding is governed by 37 C.F.R.
§ 42.100 (b), which provides:
In an inter partes review proceeding, a claim of a patent,
or a claim proposed in a motion to amend under §42.121, shall
be construed using the same claim construction standard that
would be used to construe the claim in a civil action under
35 U.S.C. 282(b), including construing the claim in accordance
with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent.

Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–
19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
customary meaning, as would have been understood by a person of ordinary
skill in the art at the time of the invention, in light of the language of the
claims, the specification, and the prosecution history of record. See Thorner
v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
There is a “heavy presumption,” however, that a claim term carries its
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ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002).
We are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for the purpose of the proceeding.
See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary
to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
The Petition states, “no terms need construction because the claims
encompass the prior-art mappings under any construction consistent with
Phillips.” Pet. 4. Patent Owner does not address claim construction. See
generally Prelim. Resp. In this Decision, we give the claim terms their
ordinary and customary meanings, without express construction.
D. Level of Ordinary Skill in the Art
With regard to the level of ordinary skill in the art, Petitioner
contends, “[a] skilled artisan would have had at least a four-year degree in
mechanical or electrical engineering, or a closely related field and at least
one year’s experience in the design and implementation of robotics and
embedded systems. Additional education could substitute for professional
experience and vice-versa.” Pet. 3–4 (citing Ex. 1012 (Likhachev Decl.)
¶¶ 45–47). Patent Owner does not address the level of ordinary skill in the
art. See generally Prelim. Resp.
Petitioner’s undisputed proposal is consistent with the technology
described in the Specification and the cited prior art. In order to determine
whether Petitioner has demonstrated a reasonable likelihood of showing the
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unpatentability of at least one of the challenged claims, we adopt Petitioner’s
proposed level of skill in the art.
E. Obviousness Analysis
We determine that Petitioner has shown a reasonable likelihood of
establishing the obviousness of claim 1 in view of Jeon, Everett, and
Abramson and, on that basis, institute inter partes review of all the
challenged claims. See 37 C.F.R. § 42.108(a) (“When instituting inter
partes review, the Board will authorize the review to proceed on all the
challenged claims.”). We begin our analysis with summaries of Jeon,
Everett, and Abramson and then consider the arguments and evidence
presented by Petitioner relating to claim 1.
1. Jeon
Jeon is titled, “Automatic Charging System and Method of Robot
Cleaner.” Ex. 1003, code (54). In Jeon, a “power supply unit 400 includes a
charging unit 403 for charging the battery 301 of the robot cleaner; and first
and second infrared ray generators 401 and 402 positioned at left and right
sides of a charge terminal of the charging unit 403.” Id. ¶ 45. Jeon discloses
a “robot cleaner 500” that performs a cleaning operation in a specific region.
Id. ¶ 54. Infrared ray receiving units 304 and 305 are mounted on rotating
plate 306 mounted to the body of Jeon’s robot cleaner. Id. ¶¶ 50, 58, Fig. 3.
In Jeon, a “remaining battery capacity detecting unit 302 of the robot
cleaner checks a remaining capacity of the battery 301 installed in the robot
cleaner.” Id. ¶ 55. If remaining battery capacity is below a reference value,
microcomputer 303 of Jeon’s robot causes plate 306 to rotate, allowing
infrared ray receiving units 304 and 305 to detect infrared rays emitted by
infrared ray generators 401 and 402. Id. ¶¶ 58–59. Microcomputer 303
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moves the robot cleaner to the charging unit 403, along a center between the
detected directions of the infrared rays, where “the robot cleaner is
connected to the charge terminal of the charging unit 403 and performs a
battery charging operation.” Id. ¶¶ 66, 69–71.
2. Everett
Everett is an excerpt from “a textbook on sensors for autonomous
mobile robots, including cleaning robots.” Pet. 11. Everett discloses a
mobile robot capable of detecting a near-infra-red homing beacon emitted by
a base station and using that beacon to travel towards the base station. Ex.
1004, 449–451.14 “Once the battery monitor circuit on the robot detects a
low-battery condition,” a scheduler “activates the homing beacon on the
recharging station.” Id. at 450. Everett’s mobile robot moves towards the
charging station and “reduces speed as a function of standoff distance based
on sonar range measurements.” Id. at 451. Everett discloses detecting
electrical contact between the battery on its robot and the charging station
using a low-current source that continuously energizes the station’s contacts
and measuring a drop in a sense voltage. Id. at 450.
3. Abramson
Abramson is titled, “Autonomous Machine for Docking with a
Docking Station and Method for Docking.” Ex. 1006, code (54). Abramson
“is directed to autonomous machines, such as robots, these robots typically
designed to perform tasks such as vacuum cleaning, lawnmowing, floor
weeping and maintenance” and, particularly, “to methods and systems for
docking these autonomous machines in docking stations.” Id. ¶ 1.

14 Everett has two sets of page numbers. We refer to the page numbers in
the bottom left corner of each page (e.g., “Page 449 of 543”). “Page 449 of
543” corresponds to original page 434 (see upper left corner) of Everett.
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Abramson discloses performing a “seek for the docking beam 120,” during
which the robot “operate[s] in accordance with a random scan pattern” until
“docking beam 122” is detected by a sensor on the robot. Id. ¶¶ 43, 47.
Abramson discloses “confirming that the at least one signal for the docking
station has been located,” “moving the robot towards the docking station,”
and “ceasing robot movement once the robot has docked in the docking
station and a docking contact between the robot and the docking station is
established.” Id. ¶ 10.
4. Claim 1
Petitioner presents a detailed analysis of the obviousness of claim 1
supported by citations to Jeon, Everett, and Abramson and the Declaration of
Maxim Likhachev, Ph.D. (Ex. 1012 (“Likhachev Decl.”)).15 See Pet. 12–26.
Our element-by-element consideration of whether Petitioner has shown a
reasonable likelihood of establishing the obviousness of claim 1 in view of
Jeon, Everett, and Abramson is provided below.
A method of docking a robotic cleaning device with a base
station that includes a plurality of signal emitters including a
right signal emitter and a left signal emitter, the method
comprising:
Petitioner does not take a position as to whether the preamble of claim
1 is limiting. Pet. 12 (“If the preamble is limiting, [ ]Jeon/Everett discloses
it.”) (citing Ex. 1012 (Likhachev Decl.) ¶¶ 62–64). Petitioner relies on Jeon

15 Patent Owner’s Preliminary Response and other filings are limited to
arguing that institution should be denied under 35 U.S.C. § 314(a). As such,
at this stage, we do not have any arguments or evidence submitted by Patent
Owner to consider as to the obviousness of claim 1 (or any other challenged
claim).
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in support of its contentions relating to the preamble of claim 1. Id. at 12–
13. The Petition contains an annotated Figure 3 of Jeon, reproduced below.

Id. at 13. Figure 3 depicts, “infrared sensors of the automatic charging
system of a robot cleaner.” Ex. 1003 ¶ 37. The Petition states:
[ ]Jeon discloses “an automatic charging system and method of
a robot cleaner.” [ ]Jeon, ¶ [0002]. [ ]Jeon discloses “a power
supply unit 400” (base station) including “a charging unit 403
for charging the battery 301 of the robot cleaner; and first and
second infrared ray generators 401 and 402 positioned at left
and right sides of a charge terminal of the charging unit 403”
and outputting signals to guide robot 500 to charging unit 403.
Id., ¶¶ [0044]-[0045], Fig. 3. [ ]Jeon’s “infrared ray generators
401 and 402” correspond to the claimed left or right signal
emitters, respectively. Likhachev, ¶ 64.

Pet. 12–13. Petitioner’s contentions relating to the preamble of claim 1 are
supported by Jeon.
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Our preliminary, non-binding, determination16 is that the preamble of
claim 1 is not limiting because a complete invention is recited in the body of
claim 1 and the preamble only states the purpose or intended use of the
invention. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“[W]here a
patentee . . . uses the preamble only to state a purpose or intended use for the
invention, the preamble is not a claim limitation.”). However, on the current
record, we also determine that, for purposes of institution, Petitioner has
shown sufficiently that the cited art teaches all the elements of the preamble
of claim 1.
directing the robotic cleaning device about a room at a first
velocity;
Petitioner relies on Jeon as teaching all the elements of this limitation.
Pet. 14 (citing Ex. 1012 (Likhachev Decl.) ¶¶ 65–67). Petitioner cites the
following passages in Jeon: “the robot cleaner includes . . . a microcomputer
for moving the robot cleaner” and “robot cleaner 500 performs a cleaning
operation according to a user’s command in a specific region.” Id. (citing
Ex. 1003 ¶¶ 46, 54). Petitioner contends:
Because [ ]Jeon’s robot performs cleaning in a specific region
(room), and includes a microcomputer to control its
movements, [ ]Jeon directs its robot about a room. Likhachev,
¶ 65.
The term “first velocity” only appears in the ’423 patent
claims, but the specification does not describe this term. ’423
patent, claims 1, 13, 21. Thus, any velocity used by [ ]Jeon’s

16 Even where we do not explicitly indicate that our determinations at this
stage are preliminary and non-binding, any determination, finding, or
conclusion set forth within this document is preliminary and non-binding.
At this stage, we have not heard from Patent Owner with regard to any issue
other than discretionary denial and wish to have the record developed before
making any non-preliminary and binding determination other than whether
to institute trial.
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robot during cleaning corresponds to the first velocity.
Likhachev, ¶ 66-67.

Id. The cited passages in Jeon support these contentions.
We determine that, for purposes of institution, Petitioner has shown
sufficiently that the cited art teaches this limitation.
detecting, by a sensor mounted on the robotic cleaning device,
a right signal transmitted by the right signal emitter of the
base station and a left signal transmitted by the left signal
emitter of the base station;
Petitioner relies on Jeon as teaching all the elements of this limitation.
Pet. 14–16 (citing Ex. 1012 (Likhachev Decl.) ¶¶ 68–69). In support, the
Petition includes an annotated Figure 3, reproduced below.

Id. at 15. This annotated Figure 3 depicts, “robot cleaner 500, base station
component 403, left and right signal emitters 401 and 402, and sensor(s)
304, 305.” Id. The Petition states:
[ ]Jeon’s robot has “a rotating plate 306 mounted at a main
body.” [ ]Jeon, ¶ [0046]. In charge mode, [ ]Jeon’s
microcomputer 303 causes rotation of the rotating plate 306.
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[ ]Jeon, ¶ [0058]. [ ]Jeon’s “first and second infrared ray
receiving units 304 and 305 mounted at the rotating plate 306
are rotated accordingly.” Id. [ ]Jeon explains that “first and
second infrared ray receiving units 304 and 305 of the robot
cleaner receive first and second infrared signals respectively
outputted from the first and second infrared ray generators 401
and 402.” Id., ¶ [0059], [0065]. [ ]Jeon discloses that plate 306
may have only one sensor. Id., ¶ [0060]. Receiving units 304
and 305 or the one sensor on plate 306 correspond to the
claimed sensor. Likhachev, ¶ 68.

Id. at 14–15. Jeon supports Petitioner’s showing as to this limitation.
We determine that, for purposes of institution, Petitioner has shown
sufficiently that the cited art teaches this limitation.
controlling forward movement of the robotic cleaning device
toward the base station at a second velocity less than the first
velocity while orienting the robotic cleaning device in
relation to the right signal and the left signal;
Petitioner relies on Jeon as teaching elements of this limitation.
Pet. 16–19 (citing Ex. 1012 (Likhachev Decl.) ¶¶ 70–83). With regard to
“controlling forward movement of the robotic cleaning device toward the
base station . . . while orienting the robotic cleaning device in relation to the
right signal and the left signal,” Jeon teaches:
[T]he microcomputer 303 of the robot cleaner detects a
direction of the charging unit 403 on the basis of the first and
second infrared signals received from the first and second
infrared ray generators 401 and 402, and moves the robot
cleaner in the detected direction. That is, the robot cleaner is
moved in the direction that the first and second infrared ray
signals are generated. . . .
[T]he microcomputer 303 moves the robot cleaner 500
along the center between the detected direction in which the
first infrared signal is generated and the detected direction in
which the second infrared signal is generated.
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As the robot cleaner 500 keeps moving to the direction
that the first and second infrared signals are generated, it
eventually reaches the charging unit 403.

Ex. 1003 ¶¶ 64, 66, 67. On this record, we determine that Jeon teaches these
elements of this limitation.
Petitioner acknowledges that Jeon “does not explicitly state a velocity
of its robot as it moves toward the charging unit,” but contends “a skilled
artisan would have found it obvious that [ ]Jeon’s robot would approach the
charging unit at a second velocity lower than its cleaning velocity (first
velocity). Pet. 17 (citing Ex. 1003 ¶¶ 72–78). Petitioner supports this
obviousness contention with two arguments. Id. at 17–19. Petitioner
argues:
[A] skilled artisan would understand that because [ ]Jeon’s
robot approaches and docks with the charging unit for charging
its battery, the robot must come to a stop at the charging unit.
[Ex. 1003] ¶ 72. Moreover, to ensure [ ]Jeon’s robot stops, its
microcomputer must reduce the robot’s velocity from its initial
cleaning velocity (first velocity) until the velocity becomes
zero. Id.
A skilled artisan would recognize that a robot traveling at
a higher velocity would require a longer stopping distance. Id.,
¶ 73. To timely stop the robot and prevent it from colliding
with the charging station, a skilled artisan would have been
motivated to reduce the robot’s velocity towards the charging
unit. Id., ¶ 74.

Id. The second of Petitioner’s arguments is:
[T]o charge the robot’s battery, electrical connections on
[ ]Jeon’s robot must align with and engage terminals on
[ ]Jeon’s charging unit (base station). Likhachev, ¶ 75. As Dr.
Likhachev explains, “it takes time for a robot to turn and if the
robot is traveling forward too fast, there may be insufficient
time to turn the robot,” for example, to align it with charging
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terminals on the base station. Id. A robot traveling at a lower
speed can follow an intended path more accurately, making it
easier to turn, maneuver, and align the robot’s electrical
contacts with those of the charging unit. Id., ¶ 76. A skilled
artisan would recognize that it is essential to dock the robot
accurately and accurate placement is easier and more likely
achieved at lower speeds. Id. . . .
A skilled artisan would understand that maneuvering near
a base station may require making sharp turns, at small radii of
curvature, which would be easier at low speeds. Id., ¶ 77.
Reducing the speed of a robot when maneuvering in tight
spaces was well known. . . Likhachev, ¶ 77. Accordingly, it
would have been obvious to a skilled artisan that [ ]Jeon’s robot
cleaner would move towards the base station at a second,
slower velocity than the first velocity to achieve known,
predictable results (avoiding collision with and/or increased
maneuverability for accurate alignment with the base station).
Id.

Id. at. 17–19. At least at this stage, we find Petitioner’s arguments and
evidence that a skilled artisan would have found it obvious that Jeon’s robot
would approach the charging unit at a second velocity lower than its
cleaning velocity (first velocity) sufficient to support institution of trial.
Petitioner additionally cites Everett as “disclos[ing] a mobile robot
capable of detecting a near infra-red homing beacon emitted by a base
station and traveling towards it to recharge its battery” and that “teaches that
it was well known for a robot to travel to its docking station at a second
velocity lower than a first velocity while using a homing beacon to adjust its
heading.” Id. at 19 (citing Ex. 1004, 449–451; Ex. 1012 (Likhachev Decl.)
¶¶ 80–81). Everett states, “[t]he robot relies on [an] optical tracking system
to control heading while closing on the charger and reduces speed as a
function of stand-off distance based on sonar range measurements.”
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Ex. 1004, 451. Everett supports Petitioner’s contention that the cited art
teaches this limitation.
With regard to combining the relevant teachings of Jeon and Everett
relating to this limitation, the Petition states:
It would have been obvious to combine this well-known,
reduced base station approach velocity with [ ]Jeon . . . Doing
so is nothing more than substituting a known feature (e.g.,
Everett’s reduced base station approach velocity) in an existing
system ([ ]Jeon’s robot cleaner) according to known methods
(e.g., function of stand-off distance) to achieve a predictable
result (avoiding collision with and/or increased maneuverability
for accurate alignment with the base station). Id.; KSR, 550
U.S. at 416-418.
Selecting a reduced base station approach velocity is a
known, obvious, trivial selection from a limited number of
options (increasing, decreasing, or maintaining velocity).
Likhachev, ¶ 82. Given the benefits of reducing the velocity
(e.g., avoiding collision and/or increased maneuverability), to
the extent not already understood from [ ]Jeon and the
knowledge of a skilled artisan, a skilled artisan would have
found it obvious to try reducing the base station approach
velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.;
KSR, 550 U.S. at 421.

Pet. 19–20. At least at this stage of the proceedings, we determine that
Petitioner provides sufficient rationale for combining the relied upon
teachings of Jeon and Everett.
We determine that, for purposes of institution, Petitioner has shown
sufficiently that the cited art teaches this limitation.
detecting contact with charging terminals on the base station;
Petitioner cites Jeon as teaching this limitation. Pet. 14–16 (citing
Ex. 1012 (Likhachev Decl.) ¶¶ 68–69). Petitioner cites this passage from
Jeon: “as the power terminal of the robot cleaner and the charge terminal of
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the charging unit 403 are connected to each other, the remaining battery
capacity detecting unit 302 outputs a docking complete signal to the
microcomputer 303. Id. at 21 (citing Ex. 1003 ¶ 72). Petitioner contends,
“[a] skilled artisan would understand that [ ]Jeon’s robot detects contact with
charging terminals on the base station based on transmission of the docking
complete signal.” Id. (citing Ex. 1003 ¶¶ 84–86). Jeon supports Petitioner’s
showing for this limitation.
Petitioner also cites Everett as teaching this limitation. Pet. 21–22
(citing Ex. 1012 (Likhachev Decl.) ¶¶ 88–92). The Petition states, “Everett
provides a solution for confirming the robot’s contacts are connected to the
charging terminal[’s contacts] by detecting a change in the sense voltage.”
Id. at 22 (citing Ex. 1012 (Likhachev Decl.) ¶ 89). Everett states, “[t]his
‘sense’ voltage (about 20 volts DC) allows the robot to know when a valid
electrical connection has been established with the recharger.” Ex. 1004,
450. Everett supports Petitioner’s contentions.
With regard to combining the relevant teachings of Jeon and Everett
as related to this limitation, the Petition states:
A skilled artisan would recognize that if charging current
cannot flow to [ ]Jeon’s battery to charge it, the very purpose
for which [ ]Jeon’s robot returns to the base station would be
defeated. Likhachev, ¶ 90. A skilled artisan would, therefore,
have been motivated to combine Everett’s method of
confirming connection between the contacts of [ ]Jeon’s robot
and the base station charging terminals to ensure the robot’s
battery can receive charging current. Id. Implementing a
method of detecting contact with the charging terminals on
[ ]Jeon’s robot in view of Everett would have improved the
robot’s ability to ensure its battery can be charged by the
charging unit. Id. Doing so would have simply combined a
known feature (Everett’s sense-voltage monitoring) in [ ]Jeon’s
robot to achieve a predictable result (ensuring charging current
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can flow from the charging unit to the robot battery). Id.; KSR,
550 U.S. at 416-418.
A skilled artisan would have been able to make this
modification and reasonably expect success. Likhachev, ¶ 91.
Everett teaches a sense voltage drop indicates connection of the
robot’s battery as a load across the base station charging
terminals. Everett, 435. [ ]Jeon’s charging unit already includes
charging terminals for engaging contacts on [ ]Jeon’s robot.
[ ]Jeon, ¶¶ [0071]-[0074]. A skilled artisan would therefore
have reasonably expected that implementing Everett’s sense
voltage measurement on [ ]Jeon’s robot would allow it to
confirm contact between its power terminal and the base station
charge terminals. Likhachev, ¶¶ 91-92.

Pet. 22–23. At least at this stage of the proceedings, we determine that
Petitioner provides sufficient rationale for combining the relied upon
teachings of Jeon and Everett.
We determine that, for purposes of institution, Petitioner has shown
sufficiently that the cited art teaches this limitation.
stopping the forward movement of the robotic cleaning device
in response to detecting contact with the charging terminals
on the base station; and
Petitioner relies on Abramson for “disclos[ing] stopping forward
movement in response to detecting contact with the charging terminals on
the base station.” Pet. 24 (citing Ex. 1012 ¶¶ 95–97). Petitioner refers to the
detailed description of Figure 12, reproduced below, of Abramson. Id.
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Figure 12 is “a flow diagram detailing the end game or final docking phase”
of an autonomous robot. Ex. 1006 ¶ 22. The detailed description of
Figure 12 provides:
[O]nce a contact, between docking contacts 110 of the docking
station 100 and docking contacts 68 of the apparatus 20, is
detected by the control system 40 (through voltage sensors 69
in the power system 52) of the apparatus 20 (at block 224, and
equivalent blocks 404 and 410), the apparatus 20 stops, at block
430. This stop is for a period of approximately 2 seconds . . .
With the stop or rest period expired, the voltage on the docking
contacts 68 of the apparatus 20 is measured, at block 432.
If a rise in the voltage is present, such as a rise in voltage
to at least a predetermined voltage level, for example,
approximately 20 volts, as sensed by the voltage sensors 69
electrically coupled to the docking contacts 68 (as detailed
above), a docking contact (between the docking contacts 68 of
the apparatus 20 and the docking contacts 110 of the docking
station 100) is present, and the process moves to block 230
[“STOP—DOCKING SUCCESSFUL END”]. With an
established docking contact (for example, at or above the
predetermined level, here, 20 or more volts), the process is
complete, as the apparatus 20 is charging.

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Id. ¶¶ 74–75. On this record, we determine that Abramson teaches this
limitation.
With regard to combining the relevant teachings of Jeon, Everett, and
Abramson, the Petition states:
A skilled artisan would have been motivated to combine
Abramson’s teaching of stopping forward movement of the
robot upon detecting contact with [ ]Jeon. Likhachev, ¶ 98.
Doing so would help prevent collision of [ ]Jeon’s robot with
the base station, and confirm the robot’s battery is electrically
connected to [ ]Jeon’s charging unit, ensuring uninterrupted
flow of charging current to the robot’s battery. Id. The
combination of Abramson’s teaching with [ ]Jeon would be
nothing more than substitution of one element (stopping based
on an ultrasonic sensor) with another (stopping in response to
detecting electrical contact) to produce a predictable result
(ensuring charge current can flow to the robot battery). Id.;
KSR, 550 U.S. at 416-418. Because [ ]Jeon/Everett discloses
detecting contact of [ ]Jeon’s robot with the base station, a
skilled artisan would have been able to implement Abramson’s
teaching of stopping forward movement upon detecting such
contact without undue burden or dramatic alteration to the
design and purpose of [ ]Jeon’s robot. Likhachev, ¶ 99.

Pet. 23–25. At least at this stage of the proceeding, we determine that
Petitioner provides sufficient rationale for combining the relied upon
teachings of Jeon, Everett, and Abramson.
We determine that, for purposes of institution, Petitioner has shown
sufficiently that the cited art teaches this limitation.
charging a battery of the robotic cleaning device.
Petitioner relies on Jeon as teaching all the elements of this limitation.
Pet. 25–26 (citing Ex. 1012 (Likhachev Decl.) ¶¶ 101–102). In support, the
Petition includes an annotated Figure 4, reproduced below.
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Id. at 26. Annotated Figure 4 depicts, “a flow chart of an automatic charging
method of a robot cleaner.” Ex. 1003 ¶ 38. Petitioner also cites this
sentence in Jeon: “[t]he docking mode in this connection is a mode for
connecting the power terminal of the robot cleaner and the charge terminal
of the charging unit 402 in order to charge the battery 301 of the robot
cleaner.” Pet. 25 (citing Ex. 1003 ¶ 70). On this record, we determine that
Jeon teaches charging a battery of a robotic cleaning device.
We determine that, for purposes of institution, Petitioner has shown
sufficiently that the cited art teaches this limitation.
Summary as to Claim 1
Petitioner has shown a reasonable likelihood of showing that claim 1
of the ’423 patent would have been obvious in view of the combined
teachings of Jeon, Everett, and Abramson.
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5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26
Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and
26 would have been obvious in view of a combination of the asserted
references. See Pet. 26–80. As noted previously, Patent Owner does not
address the merits of any portion of the Petitioner’s obviousness showing.
See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness
showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed.
We have determined that there is a reasonable likelihood that the
Petitioner will prevail with respect to at least one of the claims challenged in
the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should
be instituted. Accordingly, we institute as to all the challenged claims and
all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct.
1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter
partes review, the Board will authorize the review to proceed on all of the
challenged claims and on all grounds of unpatentability asserted for each
claim.”).
III. CONCLUSION
Petitioner has persuaded us that rehearing is appropriate and we grant
the Request for Rehearing. After reconsidering our discretionary denial of
the Petition, we determine that discretionary denial is inappropriate. And,
we determine that Petitioner has demonstrated a reasonable likelihood of
showing at least one of the claims challenged in the Petition would have
been obvious.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Request for Rehearing is granted;
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FURTHER ORDERED that an inter partes review is instituted on all
challenged claims under all challenged grounds; and
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
partes review of the ʼ423 patent is hereby instituted commencing on the
entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37
C.F.R. § 42.4, notice is hereby given of the institution of a trial.
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FOR PETITIONER:
Erika Arner
Daniel Tucker
Michael Young
Abhay Watwe
Jency Mathew
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
erika.arner@finnegan.com
daniel.tucker@finnegan.com
michael.young@finnegan.com
abhay.watwe@finnegan.com
jency.mathew@finnegan.com

FOR PATENT OWNER:

Walter Renner
Roberto Devoto
Jeremy Monaldo
Fish & Richardson PC
axf-ptab@fr.com
devoto@fr.com
jjm@fr.com