Irobot Patent Challenge '233

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Shenzhen Zhiyi Technology Co. Ltd., d/b/a iLife,

Petitioner
v.
iRobot Corp.,
Patent Owner.
Patent No. 9,038,233 to Jones et al.
Issue Date: May 26, 2015
Title: Autonomous Floor-Cleaning Robot
IPR Case No.: IPR2017-02050
PETITION FOR INTER PARTES REVIEW OF CLAIMS 1,

10-11, AND 14-16 OF U.S. PATENT NO. 9,038,233 UNDER 35
U.S.C. 311-319 AND 37 C.F.R. 42.100 ET SEQ.
Patent No. 9,038,233 Petition Requesting Inter Partes Review
TABLE OF CONTENTS
TABLE OF EXHIBITS ...........................................................................................iv

I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) FOR
INTER PARTES REVIEW..............................................................................1
A. Real Party in Interest Under 37 C.F.R. 42.8(b)(1) ............................1
B. Related Matters Under 37 C.F.R. 42.8(b)(2) ....................................1
C. Lead and Backup Counsel Under 37 C.F.R. 42.8(b)(3) and
Service Information under 37 C.F.R. 42.8(b)(4)...............................2
II. PAYMENT OF FEES UNDER 37 C.F.R. 42.15 ........................................3
III. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R.
42.24(D) ..........................................................................................................3
IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. 42.104 ...........................3
A. Grounds for Standing Under 37 C.F.R. 42.104(a) ............................3
B. Identification of Challenge Under 37 C.F.R. 42.104(b) and
Relief Requested...................................................................................4
V. OVERVIEW OF CHALLENGED PATENT ................................................4
A. The Challenged Claims ........................................................................4
B. Priority Date .........................................................................................6
C. The Prosecution History of the 233 patent .........................................6
D. Claim Construction ............................................................................10
VI. OVERVIEW OF THE PRIOR ART ............................................................11
A. Person of Ordinary Skill in the Art ....................................................11
B. Overview of Bisset .............................................................................12
C. Overview of Tangenberg ....................................................................15
D. Overview of Jones ..............................................................................16
E. Overview of Edlund ...........................................................................18
VII. SPECIFIC GROUNDS FOR PETITION .....................................................19
A. GROUND 1: Bisset in view of Tangenberg renders obvious
claims 1, 11, and 14-16. .....................................................................19
ii
1. The scope and content of the prior art. ....................................19

2. Rationale for combining Bisset and Tangenberg..................... 19
3. Challenged Claims for Ground 1 .............................................22
B. GROUND 2: Bisset in view of Tangenberg and Jones renders
obvious claim 10. ...............................................................................44
1. The scope and content of the prior art .....................................44
2. Rationale for combining Bisset and Tangenberg with
Jones. ........................................................................................44
3. Challenged Claim for Ground 2...............................................46
C. GROUND 3: Bisset in view of Tangenberg and Edlund renders
obvious claim 10. ...............................................................................47
1. The scope and content of the prior art .....................................47
Edlund. .....................................................................................47
3. Challenged Claim for Ground 3...............................................49
VIII. CONCLUSION.............................................................................................49
CERTIFICATE OF SERVICE ...............................................................................51
iii
TABLE OF EXHIBITS
Exhibit Description
1001 U.S. Patent No. 9,038,233 (233 patent)
1002 U.S. Provisional Patent Application No. 60/345,764.
1003 File history of U.S. Patent Application No. 10/818,073
1006 Declaration of Dr. Douglas Locke Regarding Invalidity of the

Challenged Claims of U.S. Patent No. 9,038,233 (Locke
Decl.)
1007 U.S. Patent No. 6,493,612 (Bisset)
1008 U.S. Patent No. 500,976 (Tangenberg)
1009 Jones, Joseph L. et al., MOBILE ROBOTS: INSPIRATION TO

IMPLEMENTATION 2nd ed. (A.K. Peters, 1998) (Jones)
1010 U.S. Copyright Office, Copyright Registation No. TX 4 917-

627 (Jones Copyright Registration)
1011 U.S. Patent No. 5,682,313 (Edlund)
1012 Joint Claim Construction Chart from ITC Investigation No.

337-TA-1057
1013 U.S. Patent No. 5,293,955 (Lee)
iv
Shenzhen Zhiyi Technology Co. Ltd., d/b/a iLife (Petitioner) hereby seeks
inter partes review of Claims 1, 10, 11, 14, 15, and 16 (the Challenged Claims)
of U.S. Patent No. 9,038,233 (Ex. 1001 (the 233 patent)). The Challenged
Claims of the 233 patent claim autonomous robot vacuum cleaner technology that
was already known well before the priority date of the 233 patent. The
Challenged Claims in the patent should therefore be canceled for the reasons
described in this Petition.
I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) FOR INTER

PARTES REVIEW
A. Real Party in Interest Under 37 C.F.R. 42.8(b)(1)

The real parties-in-interest in this Petition are: Shenzhen Zhiyi Technology
Co. Ltd. d/b/a iLife and iRobot Corp.
B. Related Matters Under 37 C.F.R. 42.8(b)(2)

There is a pending proceeding before the U.S. International Trade
Commission that involves the Challenged Claims of the 233 patent: In re Certain
Robotic Vacuum Cleaning Devices And Components Thereof Such As Spare Parts,
Investigation No. 337-TA-1057 (the ITC Investigation).
There is also a federal district court litigation filed by iRobot Corporation
against Petitioner that also involves the Challenged Claims of the 233 patent:
iRobot Corp. v. Shenzhen Zhiyi Technology Co. Ltd. d/b/a iLife, Case No. 1:17-cv-
10652 (D. Mass.) (the District Court Case).
1
C. Lead and Backup Counsel Under 37 C.F.R. 42.8(b)(3) and

Service Information under 37 C.F.R. 42.8(b)(4)
Petitioner designates the following lead and backup counsel:
Lead Patrick J. McCarthy

Counsel: Registration No. 62,762
mccarthyp@gtlaw.com
Greenberg Traurig LLP
2101 L Street, N.W., Suite 1000
Washington, D.C. 20037
Phone: (202) 533-2386
Fax: (202) 331-3101
Backup Herbert H. Finn

Counsel: Registration No. 38,139
finnh@gtlaw.com
Cameron M. Nelson
Registration No. 55,486
nelsonc@gtlaw.com
Jonathan E. Giroux
girouxj@gtlaw.com

77 W. Wacker Dr.
Suite 3100
Chicago, IL 60601
Phone: 312-456-8400
Fax: 312-456-8435
Service on Petitioner may be made by mail or hand delivery to: Greenberg
Traurig, LLP, 2101 L Street N.W., Suite 1000, Washington, D.C. 20037.
Petitioner also consents to electronic service by emailing counsel of record at
2
mccarthyp@gtlaw.com, finnh@gtlaw.com, nelsonc@gtlaw.com, and
girouxj@gtlaw.com.
II. PAYMENT OF FEES UNDER 37 C.F.R. 42.15

Petitioner authorizes the U.S. Patent & Trademark Office to charge Deposit
Account No. 50-2638 for the fee set in 37 C.F.R. 42.15(a) for this Petition and
further authorizes any additional fees to be charged to this Deposit Account.
III. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. 42.24(D)
Petitioner certifies that the word count in this Petition is 8,432 words, as
counted by the word-processing program (Microsoft Word 2010) used to generate
this Petition, where such word count excludes the table of contents, table of
authorities, mandatory notices, certificate of service, appendix of exhibits, and this
certificate of word count. This Petition is in compliance with the 14,000 word
limit set in 37 C.F.R. 42.24(a)(1)(i).
IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. 42.104
A. Grounds for Standing Under 37 C.F.R. 42.104(a)

Petitioner certifies that the 233 patent is available for inter partes review,
and that Petitioner is not barred or estopped from requesting an inter partes review
on the grounds identified in the Petition.
3
B. Identification of Challenge Under 37 C.F.R. 42.104(b) and Relief

Requested
Petitioner respectfully requests that the Challenged Claims of the 233 patent
(Ex. 1001) be cancelled based on the following grounds of unpatentability:
Ground of 233 patent Claim(s) Basis for Rejection

Unpatentability
Ground 1 1, 11, 14, 15, and 16 Rendered obvious by Bisset in

view of Tangenberg.
Ground 2 10 Rendered obvious by Bisset in

view of Tangenberg and Jones.
Ground 3 10 Rendered obvious by Bisset in

view of Tangenberg and Edlund.
V. OVERVIEW OF CHALLENGED PATENT

The 233 patent describes a floor cleaning robot. (Ex. 1001 at Abstract.)
As further explained below, the Challenged Claims relate more specifically to a
floor-cleaning robot that includes a side brush assembly to entrain particulates
outside the periphery of the housing infrastructure. (Ex. 1001 at 2:28-33.)
A. The Challenged Claims
The Challenged Claims are claims 1, 10-11, and 14-16 of the 233 patent.
Claims 1 and 15 are independent claims.
All of the challenged claims require a side brush that passes between a cliff
detector and the floor, where the side brush has bundles of bristles that are
4
separated by a gap configured to prevent occlusion of the cliff detector beam
during at least part of the rotation of the side brush. For example, Claim 1 of the
233 patent reads:
1. A self-propelled floor-cleaning robot comprising

a housing defining a housing perimeter;
a powered primary brush assembly disposed within the housing
perimeter and positioned to engage a floor surface, the primary brush
assembly being configured to rotate about an axis generally parallel to
the floor surface;
a cliff detector carried by the housing and configured to direct a beam
toward the floor surface and to respond to a falling edge of the floor
surface; and
a powered side brush extending beyond the housing perimeter and
positioned to brush floor surface debris from beyond the housing
perimeter, the side brush being configured to rotate about an axis
generally perpendicular to the floor surface and to rotate in a direction
to direct debris toward the robot along a projected direction of
movement of the powered primary brush assembly, the side brush
having bundles of bristles and being positioned such that the bundles
of bristles pass between the cliff detector and the floor surface during
a rotation of the side brush around the axis, the bundles of bristles
being separated by a gap, the gap being configured to prevent
occlusion of the cliff detector beam during at least part of the rotation
of the side brush around the axis;
a particulate receptacle positioned to receive and collect particulates
brushed from the floor surface by the primary brush assembly and the
powered side brush;
an obstacle detector responsive to obstacles encountered by the robot;
and
a control circuit in electrical communication with a motor drive and
configured to control the motor drive to maneuver the robot about
detected obstacles across the floor surface during a floor-cleaning
operation.
(Ex. 1001 at 16:38-17:4.)
5
B. Priority Date
The 233 patent claims priority to a provisional application filed on January
3, 2002. (Ex. 1001). However, the challenged claims of the 233 patent are not
entitled to the priority date of the provisional application. All of the challenged
claims require a side brush that passes between a cliff detector and the floor. The
233 patent describes cliff detectors as an emitter and detector combination that is
operative to detect a predetermined drop in the path of the robot. (Ex. 1001 at
7:56-58.)
The provisional to which the 233 patent alleges priority includes no
discussion or disclosure of a cliff detector or any sensor resembling a cliff detector.
(Ex. 1002; Ex. 1006 at 12.) Nor does it contain any discussion or disclosure of a
side brush that passes between a cliff detector and the floor. (Ex. 1002; Ex. 1006
at 12.) The first mention of any sensor similar to the claimed cliff detectors in
the 233 patent lineage is found in Application No. 10/320,729 which was filed
nearly a year after the provisional, on December 16, 2002. (Ex. 1001). Thus, the
earliest possible priority date for the challenged claims is the December 16, 2002.
C. The Prosecution History of the 233 patent

The patentee first added claims that required both a cliff detector and a side
brush on December 14, 2012 when they filed Application No. 13/714,546. (Ex.
1005 at 329, 331 (claims 86 and 98); see generally Exs. 1014, 1003, 1004, 1005.)
6
On Sept. 13, 2013, the patentee amended the claims to add the requirement
that the side brush not occlude the cliff detector. (Ex. 1005 at 263, 266.)
On December 10, 2013, the examiner rejected most of the pending claims
based on the combination of U.S. Patent No. 6,493,612 (Bisset) and U.S. Patent
No. 5,293,955 (Lee). (Ex. 1005 at 235-236.) Bisset describes an autonomous
floor-cleaning robot with a sensor system that includes cliff detectors, which it
describes as downward looking wheel sensors for sensing the presence of a
surface in front of the wheels. (Ex. 1007 at 1:46-47.) More specifically, Bisset
describes [i]nfra-red sensors 272, 274, and 276, which are shown in Fig. 5:
Each of these sensors looks downwardly towards the surface across which the
cleaner 100 travels, and is capable of detecting the presence or absence of the
surface across which the cleaner 100 travels. (Ex. 1007 at 7:51-65; see also id. at
Fig. 10.) The examiner pointed out that Bisset meets most of the claim limitations,
7
but lacks a powered side brush. (Ex. 1005 at 236-237.) Lee, which issued in
1994, teaches the use of a powered side brush on a vacuum robot, as shown below:
(Ex. 1013 at Fig. 10.) The examiner found that Lee teaches that [it] is old and
well known in the art to provide a cleaner with a powered side brush (13). (Ex.
1005 at 237.) The examiner then explained that it was obvious to combine Lee
with Bisset:
It would have been obvious to one of ordinary skill in the art to

modify the device of Bisset et al., with the known technique of
providing a powered side brush, as taught by Lee and the results
would have been predictable. In this situation, one could provide a
more advantageous cleaner capable of removing material from
corners.
8
(Ex. 1005 at 237-238.) The examiner pointed out that in the combination of Bisset
and Lee, the side brushes of Lee would not occlude Bissets central cliff detector
(282, see Figure 5a). (Ex. 1005 at 237.)
In response to this rejection, on April 10, 2014, the applicant did not dispute
the examiners finding that it would be obvious to combine Bisset with known side
brushes to provide a more advantageous cleaner capable of removing material
from corners. Instead, the applicant amended the claims to add the further
requirement that the side brush have bundles of bristles, the bundle being
separated by a gap, the gap being configured to prevent occlusion of the cliff
detector. (Ex. 1005 at 203, 206.) The applicant then argued that this amendment
distinguished the side brush taught by Lee:
Lee's brush appears to be a single collection of bristles rotating about

a central hub. Therefore, even if one were to combine the teachings
of Lee and Bisset, the result would not be a the side brush having
bundles of bristles, the bundles being separated by a gap, the gap
being configured to prevent occlusion of the cliff detector as recited
in the amended claims.
(Ex. 1005 at 213 (emphasis added).)
On June 13, 2014 the examiner again rejected the claims based on Bisset and
Lee in further combination with the Yonkers reference (U.S. Patent No.
3,978,539). (Ex. 1005 at 178-179.)
9
On August 11, 2014, the applicant conducted a telephonic interview with the
examiner. (Ex. 1005 at 157.) In the interview, the applicant proposed further
defining the location of the cliff detector in combination with a gap formed
between the bundles of bristles wherein the location of the detector is such that
the light emitted from the detector passes through the gap to prevent occlusion
during normal operation. (Ex. 1005 at 157.) The examiner indicated that such an
amendment would overcome the prior art of record. (Ex. 1005 at 157.)
Accordingly, on August 13, 2014 the applicant further amended the claims to
require the side brush to be positioned such that the bundles of bristles pass
between the cliff detector and the floor surface during a rotation of the side brush
around the axis. (Ex. 1005 at 160, 163.)
On September 18, 2014 the examiner issued a further rejection, this time on
the grounds of double patenting. (Ex. 1005 at 129-130.) The applicant then filed a
terminal disclaimer on December 18, 2014. (Ex. 1005 at 125-126.) In response,
the examiner allowed the claims. (Ex. 1005 at 38.)
D. Claim Construction
Pursuant to 37 C.F.R. 42.100(b), the claims in inter partes review are
given the broadest reasonable construction in light of the specification. For
purposes of this proceeding, Petitioner requests that each of the various claim
terms be given their plain meaning.
10
Petitioner does not propose any specific claim constructions for the terms in
the Challenged Claims.
Petitioner notes that in the related ITC Investigation, Petitioner and Patent
Owner agreed that in claim 14, the phrase passes between a portion of a drive
wheel of the robot and the cleaning surface means passes under a portion of a
drive wheel not in contact with the floor surface being cleaned. (Ex. 1012 at 5.)
Petitioner also notes that in the related ITC Investigation, Petitioner has proposed
that in claims 1 and 15, the phrase pass between the cliff detector and the floor
surface means pass through the cliff detector beam. (Ex. 1012 at 6-7.) In both
cases, Petitioner believes that the proposed construction reflects the plain meaning
of the term.
VI. OVERVIEW OF THE PRIOR ART
A. Person of Ordinary Skill in the Art

The 233 patent relates to mobile robots generally, and more particularly to
mobile cleaning robots. (Ex. 1001 at 1:23-34; Ex. 1006 at 28-29.) A person of
ordinary skill in the field of the 233 patent as of the December 2002 timeframe
would have had at least an undergraduate degree in computer science or electrical
engineering, and, in addition, two years of experience in the design and
implementation of embedded computer devices managing sensors and controlling
11
motors, or some other equivalent combination of education and experience. (Ex.
1006 at 19.)
B. Overview of Bisset
U.S. Patent No. 6,493,612 to Bisset (Bisset) claims priority to a British
application filed on December 18, 1998, and has a PCT publication date of June
29, 2000. Bisset is prior art to the 233 patent under at least pre-AIA 102(b).
Bisset describes an autonomous floor-cleaning robot with a sensor system
allowing navigation around a room while avoiding obstacles, including stairways.
As illustrated in Fig. 1 above, the Bisset robot uses a well-known
configuration with a circular body and two drive wheels (104) that are mounted on
its diameter, in order to allow it to spin in place and thus avoid getting stuck. (Ex.
1007 at 2:47-3:9.)1 Bisset cleans the surface with cleaner head 122 which
1
See also, e.g. Ex. 1008 at pp 172-173.
12
includes suction opening 124 and brush bar 125 that rotates on an axis parallel
to the floor. (Ex. 1007 at 3:22-34.)
Bisset also uses downward looking wheel sensors for sensing the presence
of a surface in front of the wheels. (Ex. 1007 at 1:46-47.) In particular, Bisset
uses [i]nfra-red sensors 272, 274, and 276:
Fig. 10.) These sensors send signals to the control software in order to halt or turn
immediately if one of the sensors detects that the surface is absent, because this
likely indicates the presence of a stairway or other edge of the surface. (Ex.
1007 at 7:65-8:4.)
Bisset also uses side downlooking sensors 278, 280:
13
These sensors look diagonally downwards in order to detect the presence of a
surface adjacent a side edge of the vehicle outside of the path of the wheel and
forward of the wheel. (Ex. 1007 at 7:65-8:4; Fig. 13.) These sensors are used for
following an edge of a floor surface. (Ex. 1007 at 9:30-45.)
One disadvantage of the Bisset cleaning robot is that it cannot clean in
corners. As illustrated below, the configuration of its cleaning head and circular
body prevents the cleaning head from reaching all the way into a corner:
14
(Ex. 1006 at 44.)
Bisset was cited during prosecution of the 233 patent.
C. Overview of Tangenberg
U.S. Patent No. 500,976 to Tangenberg (Tangenberg) issued in 1893.
Tangenberg is prior art to the 233 patent under at least pre-AIA 102(b).
Tangenberg describes a carpet sweeper that was manually pushed along
the floor with a handle. Like prior-art carpet-sweepers, Tangenberg used a wheel-
driven main brush D that rotates on an axis parallel to the floor, in order to
sweep dirt and dust up through opening a and into its housing:
The improvement described in Tangenberg is the use of a pair of side brushes M,
whose object is to enter corners and crevices that cannot be reached by brush
D. (Ex. 1008 at 2:4-6.) These side brushes operate to throw the dirt inward and
into the path of the main brush. (Ex. 1008 at 2:37-41; 2:4-9.) As shown in Figure
15
3 below, the side brushes are located so that the bristles of the brush project
beyond the front and sides of the casing:
This positioning is what allows the side brushes to enter corners and crevices that
cannot be reached by brush D. (Ex. 1008 at 2:4-6.)
Tangenberg was not cited during prosecution of the 233 patent.
D. Overview of Jones
The book Mobile Robots: Inspiration to Implementation (2nd edition), by
Joseph L. Jones et al. (Jones) was published in the United States on October 15,
1998. (Ex. 1009 at 3; see also Ex. 1010 at 3).
Jones teaches that contact sensors were well known, and particularly that
contact sensors were advantageous to use in mobile robots because they have
proven the most reliable, exhibit the lowest noise, and produce the most easily
interpreted signal of all sensors. (Ex. 1009 at pp. 137-138.)
16
Jones teaches how to implement a full coverage, force-detecting bumper
in a cylindrical robot:
(Ex. 1009 at p. 138.) Jones teaches that contact sensors, such as the force-
detecting bumper depicted above, can be used to determine when the robot is in
contact with another object and where that object is in relation to the robot, and
that [s]uch information allows the robot to maneuver away from collisions. (Ex.
1009 at p. 138.) Jones also teaches that contact sensors are helpful to use as a
fail-safe for other obstacle sensors, so that a robot will not find itself stuck
against an obstacle with motors at full powerneedlessly wasting battery charge
and stressing components. (Ex. 1009 at p. 322.)
Jones was not cited during prosecution of the 233 patent.
17
E. Overview of Edlund
U.S. Patent No. 5,682,313 to Edlund (Edlund) claims priority to a Swedish
application filed on June 6, 1994, and issued on October 28, 1997. Edlund is prior
art to the 233 patent under at least pre-AIA 102(b).
Edlund, like Bisset, discloses an autonomous vacuum cleaner that is
generally cylindrical in shape and that has two driven wheels 12 and 13. (Ex.
1011 at 4:37-40.)
(Ex. 1011 at Fig. 2, Fig. 3.) The front portion of the housing of the Edlund
cleaning robot is a displaceable bumper that mechanically senses obstacles:
a front portion of the housing 11 at a space 19 constitutes (FIG. 3) a

mechanical sensor movable in the x and y directions to also
mechanically sense an obstacle
(Ex. 1011 at 4:54-58.)
Edlund was cited during prosecution of the 233 patent.
18
VII. SPECIFIC GROUNDS FOR PETITION
A. GROUND 1: Bisset in view of Tangenberg renders obvious claims

1, 11, and 14-16.
1. The scope and content of the prior art.

For Ground 1, the prior art consists of Bisset and Tangenberg.
2. Rationale for combining Bisset and Tangenberg.

As explained above, Bisset describes an autonomous floor-cleaning robot
with cleaner head 122 which includes suction opening 124 and brush bar
125 that rotates on an axis parallel to the floor. (Ex. 1007 at 3:22-34; Fig 5a.)
A person of ordinary skill in the art would have recognized that, because of
its geometry, the Bisset cleaning robot cannot maneuver its cleaner head 122 all
the way into corners:
19
(Ex. 1006 at 44.)
A person of ordinary skill in the art would have been motivated to modify
Bisset in order to allow it to clean in corners that cannot be reached by its cleaner
head 122 and brush bar 125. (Ex. 1006 at 45.)
Tangenberg describes an improvement to carpet-sweepers that, like Bisset,
use a main brush that is contained within a housing and that rotates on an axis
parallel to the floor in order to sweep up dirt. In particular, Tangenberg teaches the
use of a pair of side brushes M, whose object is to enter corners and crevices
that cannot be reached by the main brush. (Ex. 1008 at 2:4-6.)
Notably, the 233 patent describes including a side brush for the same reason
promoted by Tangenberg 100 years earlier. The 233 patent explains that its side
brush provides the robot 10 with the capability of cleaning surfaces adjacent to
baseboards. (Ex. 1001 at 8:32-34.)
20
A person of ordinary skill in the art would have been motivated to add the
side brushes described in Tangenberg to the Bisset cleaning robot, in order to allow
the Bisset cleaning robot to clean in corners and crevices. (Ex. 1006 at 45-
46.) This would have predictably resulted in the Bisset cleaning robot with the
Tangenberg side brushes mounted on it in a way that would allow the bristles of
the brush to project beyond the front and sides of the casing, as taught in
Tangenberg:
The figure above illustrates the result of applying the teaching of Tangenberg to
Bisset, i.e. mounting side brushes that extend beyond the front and sides of the
casing, so that the side brushes can reach into corners and crevices as described
in Tangenberg. (Ex. 1008 at 2:4-6; Ex. 1006 at 78.)
21
3. Challenged Claims for Ground 1

The combination of Bisset and Tangenberg renders obvious claims 1, 11, 14,
15, and 16 for the reasons described below.
[CLAIM 1-PREAMBLE] A self-propelled floor-cleaning robot comprising

Bisset discloses the preamble, whether or not it is a limitation. Specifically,
Bisset states that it describes a robotic cleaning device that is autonomous and
that is propelled by two driven wheels 104. (Ex. 1007 at Abstract, 2:49-50.)
Each driven wheel is connected to a motor 105 which is capable of driving the
respective wheel 104. (Ex. 1007 at 2:65-67; see also, e.g. id. at 4:32-40.)
Thus, Bisset discloses [CLAIM 1-PREAMBLE], whether or not it is a
limitation. (Ex. 1006 at 54-55.)
[1a] a housing defining a housing perimeter;

Bisset discloses this limitation. The Bisset robot includes housing 142.
(Ex. 1007 at 3:62.) The outside edges of the robot define a housing perimeter.
Thus, Bisset discloses [1a]. (Ex. 1006 at 56-57.)
[1b] a powered primary brush assembly disposed within the housing

perimeter and positioned to engage a floor surface, the primary brush
assembly being configured to rotate about an axis generally parallel to the
floor surface;
Bisset discloses this limitation. The Bisset robot has a cleaner head 122
that contains brush bar 125, which is rotatably mounted in the suction opening
124. (Ex. 1007 at 3:27-28.) The brush bar assists with pickup [of dirt],
22
particularly on carpets. (Ex. 1007 at 4:47-48.) The brush bar is driven by a
motor. (Ex. 1007 at 3:28-32; see also id. at 4:45-47 (battery packs 160 are also
used to power the motor which drives the brush bar 125 which, in turn assists with
pick-up, particularly on carpets.) Thus, brush bar 125 is a powered primary
brush assembly.
FIG. 5A, which is a bottom view of the Bisset robot, shows brush bar 125
and suction opening 124:
As can be seen from Fig. 5A, brush bar 125 is positioned to engage a floor
surface and is configured to rotate about an axis generally parallel to the floor
surface. (Ex. 1007 at Fig. 5A, 3:22-34.)
Fig. 5A also shows that the housing perimeter extends around the outside of
cleaner head 122 and that brush bar 125 is disposed therein:
23
(Ex. 1007 at Fig. 5A; Ex. 1006 at 59-60.) While a small portion of brush bar
125 projects outside the otherwise circular perimeter of the robot, Fig 5A shows
that it is still inside the housing of the robots cleaning head and is thus still within
the housing perimeter of the robot. (See Ex. 1006 at 59.) Confirming this, the
examiner found during prosecution that Bisset disclosed a powered primary brush
assembly (125) disposed within the housing perimeter. (Ex. 1005 at 563
(emphasis added.) The Patent Owner did not challenge this finding. See supra
V.C.
Thus, Bisset in combination with Tangenberg discloses limitation [15d].
(Ex. 1006 at 58-59.)
Additionally, even if cleaner head 122 is not considered to be disposed
within the housing perimeter because a small portion of it projects outside the
generally circular outline of the robot (on the robots left side), it would have been
obvious to a person of skill in the art who was adding the Tangenberg side brushes
24
to the Bisset robot to alter the Bisset cleaning head so that it was fully contained
within the generally circular outline of the robot (i.e. such that the left side of the
cleaner head was the mirror image of the right side). (Ex. 1006 at 61.) A person
of ordinary skill in art would be motivated to make this modification to improve
the maneuverability of the robot, particularly because with the addition of the side
brushes, there would be no need to have the Bisset cleaning head extend out to the
edge of the left wheel. (Ex. 1006 at 61.) This modification would have
predictably resulted in a cleaning robot that was able to successfully maneuver
even closer to walls and corners than the unmodified Bisset robot. (Id.)
Thus, Bisset in combination with Tangenberg discloses limitation [15d] for
this additional reason as well. (Id.)
[1c] a cliff detector carried by the housing and configured to direct a beam
toward the floor surface and to respond to a falling edge of the floor surface;
and
Bisset discloses this limitation. Specifically, the Bisset robot has
downward looking wheel sensors for sensing the presence of a surface in front of
the wheels. (Ex. 1007 at 1:46-47.) In particular, Bisset uses [i]nfra-red sensors
272, 274, and 276:
25
Fig. 10.) These sensors send signals to the control software in order to halt or turn
immediately if one of the sensors detects that the surface is absent, because this
likely indicates the presence of a stairway or other edge of the surface. (Ex.
1007 at 7:65-8:4.)
Bisset also uses side downlooking sensors 278, 280:
26
These sensors look diagonally downwards in order to detect the presence of a
surface adjacent a side edge of the vehicle outside of the path of the wheel and
forward of the wheel. (Ex. 1007 at 7:65-8:4; Fig. 13.) Fig. 13 illustrates the
operation of the side downlooking sensors, and shows the beam that they direct
towards the floor surface:
These sensors are used for following an edge of a floor surface. (Ex. 1007
at 9:30-45; see also id. at 10:18-19.)
27
Thus, Bisset discloses [1c]. (Ex. 1006 at 62-67.)
[1d] a powered side brush extending beyond the housing perimeter and
positioned to brush floor surface debris from beyond the housing perimeter,
Bisset does not disclose a side brush.
Tangenberg describes the use of a pair of side brushes M, whose object
is to enter corners and crevices that cannot be reached by [main] brush D. (Ex.
1008 at 2:4-6.) These side brushes are illustrated below:
As shown in Figure 3 below, the side brushes are located so that the bristles of the
brush project beyond the front and sides of the casing:
28
The side brushes operate to throw the dirt inward and into the path of the main
brush. (Ex. 1008 at 2:37-41; 2:4-9.) The side brushes in Tangenberg are driven
by a gear assembly that spins the side brush as the user-powered sweeper traverses
the floor. (Ex. 1008 at 1:95-2:4.)
If the side brushes of Tangenberg were mounted on the Bisset cleaning
robot, they would be powered by a electric motor, in the same way that the Bisset
main brush is powered by an electric motor. (Ex. 1006 at 69.) Further, since a
person of ordinary skill would be motivated to combine Bisset with Tangenberg in
order to provide the Bisset robot with the Tangenberg side brushes ability to clean
in corners and crevices (e.g., adjacent to wall baseboards), the side brushes would
extend beyond the housing perimeter and be positioned to brush floor surface
debris from beyond the housing perimeter into the path of the main brush. (Ex.
1006 at 44-47, 69, 75-78.)
Thus, the combination of Bisset with Tangenberg discloses [1d]. (Ex. 1006
at 68-69. )
[1e] the side brush being configured to rotate about an axis generally
perpendicular to the floor surface and to rotate in a direction to direct debris
toward the robot along a projected direction of movement of the powered
primary brush assembly,
The combination of Bisset with Tangenberg discloses this limitation.
Tangenberg describes the side brushes as having upright axes. (Ex. 1008 at
29
2:45-46.) Also, Figure 2 in Tangenberg shows that the side brushes are configured
to rotate about an axis generally perpendicular to the floor surface:
(Ex. 1008 at Fig. 2.)
Tangenberg discloses that the side brushes rotate in a direction to direct
debris toward the robot along the direction of movement of the primary brush. For
example, Tangenberg states that the side brushes throw the dirt inward and into
the path of the main brush. (Ex. 1008 at 2:37-41; 2:4-9.) Figure 3 confirms this
with an arrow showing how the right side brush rotates to throw dirt inward and
into the path of the main brush. (Ex. 1008 at Fig. 3.)
Finally, as discussed above the main brush in the Bisset robot is motor-
powered.
Thus, the combination of Bisset with Tangenberg discloses [1e]. (Ex. 1006
at 70-71.)
30
[1f] the side brush having bundles of bristles

Tangenberg discloses this limitation. For example, Figure 3 shows that the
side brushes have bundles of bristles:
Thus, the combination of Bisset with Tangenberg discloses [1f]. (Ex. 1006 at
72-73.)
[1g] and being positioned such that the bundles of bristles pass between the
cliff detector and the floor surface during a rotation of the side brush around
the axis,
The combination of Bisset with Tangenberg discloses this limitation. As
discussed above, a person of ordinary skill in the art would have been motivated to
add the side brushes described in Tangenberg to the Bisset cleaning robot, in order
to allow the Bisset cleaning robot to clean in corners and crevices, as taught in
Tangenberg. (Ex. 1006 at 39-57.) Tangenberg teaches that to accomplish this,
the side brushes should be mounted so that the bristles of the brushes project
31
beyond the front and sides of the casing. (Ex. 1008 at 2:4-6, 2:36-37, Fig. 3; Ex.
1006 at 75, 78.)
The image above illustrates the result of applying the teaching of Tangenberg to
casing of the Bisset robot, so that the side brushes can reach into corners and
crevices. (Ex. 1006 at 78; Ex. 1008 at 2:4-6.) As can be seen from the figure, if
side brushes are mounted on Bisset so that they extend beyond the front and sides
of the casing, they will necessarily pass between the cliff detectors 274, 276 and
the floor surface. (Ex. 1006 at 79.) They will also necessarily pass between cliff
detectors 278, 280 and the floor surface. (Ex. 1006 at 79.) This is because of the
32
geometry of the Bisset robot, and the fact that the cliff detectors 274, 276, 278, and
280 are located in front of the drive wheels. (Ex. 1006 at 74-80.)
Furthermore, a person of ordinary skill in the art would not relocate the cliff
detectors 274, 276, 278, and 280 when mounting the Tangenberg side brushes on
the Bisset robot. The cliff detectors 274 and 276 need to be located immediately in
front of the drive wheels to operate as designed. (Ex. 1006 at 76.) Similarly, the
cliff detectors 278, and 280 need to be located in front of the drive wheels and near
the sides of the robot in order to operate as designed. (Ex. 1006 at 76.) Bisset
explains that its cliff detectors are positioned to specifically detect the surface in
front of the wheels supporting the vehicle:
According to a first aspect of the invention, there is provided an

autonomous vehicle comprising wheels for supporting a vehicle and
for allowing the vehicle to traverse a surface, downward looking
wheel sensors for sensing the presence of a surface in front of the
whells[sic], a further sensor at or near a leading edge of the vehicle for
sensing the presence of surface beneath the leading edge of the
vehicle, and control apparatus for controlling movement of the
vehicle, the control apparatus being arranged to permit movement of
the vehicle when the leading edge sensor detects the absence of a
surface beneath the leading edge of the vehicle, providing the wheel
sensors indicate the presence of a surface adjacent the wheel.
33
(Ex. 1007 at 1:46-49 (emphasis added).) Bisset also teaches that these sensors
should be mounted within the housing: [m]ounting the sensor within the envelope
of the vehicle has the advantage that the vehicles exterior is not cluttered by
sensors, which could become caught on obstacles or become damaged. (Ex. 1007
at 9:39-42.)
Accordingly, for the cliff detectors 274, 276, 278, and 280 to operate as
designed, they must be mounted in locations where the Tangenberg side brushes
pass between them and the floor surface. (Ex. 1006 at 74-80.) Finally, a person
of ordinary skill in the art would understand that the cliff detectors would be able
to see through the rotating side brushes because of the gaps between brushes
bundles of bristles, just as one can see through the spoke of a wheel or propeller. In
fact, a person of ordinary skill in the art would recognize that approximately 2/3
of the full rotation of a side brush of Tangenberg would not occlude the IR
beams of the cliff detectors. (Ex. 1006 at 84.) Accordingly, the combination of
Bisset with Tangenberg would predictably result in side brushes with bundles of
bristles positioned to pass between cliff detectors 274, 276, 278, 280 and the floor
surface. (Ex. 1006 at 77-80.)
Thus, the combination of Bisset with Tangenberg discloses [1g]. (Ex. 1006
at 74-80.)
34
[1h] the bundles of bristles being separated by a gap,

Tangenberg discloses this limitation. For example, Figure 3 shows that the
side brushes have bundles of bristles that are separated by gaps:
Thus, the combination of Bisset with Tangenberg discloses [1h]. (Ex. 1006 at
81-82.)
[1i] the gap being configured to prevent occlusion of the cliff detector beam
during at least part of the rotation of the side brush around the axis;
explained above, when combining the Tangenberg side brushes with the Bisset
cleaning robot, the side brushes would be positioned such that they extend beyond
the front and sides of the casing, so that they can clean in corners and crevices, as
taught in Tangenberg. As also explained above, this means that they will
necessarily pass between the cliff detectors 274, 276, 278, and 280 and the floor
surface. Furthermore, a person of ordinary skill in the art would understand that
when this was done, approximately 2/3 of the full rotation of a side brush of
35
Tangenberg would not occlude the IR beams of the cliff detectors, because each
of the bundles of bristles occupies approximately 1/3 of its 19-degree arc. (Ex.
1006 at 84.)
Thus, the combination of Bisset with Tangenberg discloses [1i]. (Ex. 1006
at 83-84.)
[1j] a particulate receptacle positioned to receive and collect particulates

brushed from the floor surface by the primary brush assembly and the
powered side brush;
Bisset discloses this limitation. Specifically, the Bisset robot has a cyclonic
separator 152 that receives and collects dust and dirt brushed from the floor:
The chassis 102 also carries a cyclonic separator 152 for separating
dirt and dust from the air drawn into the cleaner 100. The cyclonic
separator 152 is releasable from the chassis 102 in order to allow
emptying of the cyclonic separator 152. When the hooked catch is
released (by manual pressing of a button 134 located in the control
panel 144), the cyclonic separator 152 can be lifted away from the
chassis 102 by means of gripper portions 170. The cyclonic separator
152 can then be emptied.
(Ex. 1007 at 4:8-26.)
Thus, the combination of Bisset with Tangenberg discloses [1j]. (Ex. 1006
at 85-88.)
36
[1k] an obstacle detector responsive to obstacles encountered by the robot;

and
Bisset discloses this limitation. Specifically, the Bisset robot carries a
plurality of sensors which are designed and arranged to detect obstacles in the path
of the cleaner 100 and its proximity to, for example, a wall or other boundary such
as a piece of furniture. (Ex. 1007 at 3:53-57; see also id. at 3:65-4:3; 4:52-5:47
(describing ultrasonic sensor array).)
Thus, the combination of Bisset with Tangenberg discloses [1k]. (Ex. 1006
at 89-92.)
[1l] a control circuit in electrical communication with a motor drive and

configured to control the motor drive to maneuver the robot about detected
obstacles across the floor surface during a floor-cleaning operation.
Bisset discloses this limitation. Specifically, Bisset discloses processing
circuitry 23, which includes a microprocessor and field programmable gate arrays
(FPGA). (Ex. 1007 at 9:9-10; Fig. 12.) Bisset explains that the processing
circuitry processes data from the sensors and is coupled to the motor
management system. (Ex. 1007 at 9:9-10; Fig. 12.)
37
Bisset also explains that it uses [c]ontrol software, comprising navigation controls
and steering devices for navigating and maneuvering the cleaner 100 around a
defined area in order to clean the carpet or other surface within the area. (Ex.
1007 at 3:59-62.) Bisset states that the control software is able to receive the
outputs of the sensors and to drive the motors 105 so that obstacles are avoided
whilst following a path specified by algorithms appropriate to the nature of the
vehicle, as was well-known in the art. (Ex. 1007 at 3:65-4:4.)
Thus, the combination of Bisset with Tangenberg discloses [1l]. (Ex. 1006
at 93-96.)
38
[CLAIM 11] The floor cleaning robot of claim 1, wherein the control circuit is
configured to move the robot in a wall-following mode to maneuver the robot
along a wall in a direction that places the side brush against the wall.
Bisset in combination with Tangenberg discloses this limitation.
Specifically, Bisset teaches the use of sensors that are used to allow the robot to
travel parallel with the wall:
The sensor 260 is thus able to detect the distance of a wall or other
obstacle along which the cleaner 100 is intended to travel. In
combination with the emitter 224 a and the receiver 230 a, the sensor
260 is also able to maintain the direction of travel of the cleaner 100
parallel with the wall or other obstacle along which the cleaner 100 is
intended to travel. This is achieved by way of the parallel signals
being maintained essentially identical. Any variation between the two
signals can be easily recognized and the path of the cleaner 100 can
then be adjusted to compensate for the discrepancy.
(Ex. 1007 at 7:27-37.)
Tangenberg teaches that its side brushes project beyond the sides of the
casing. (Ex. 1008 at 2:35-37; 2:45-48; 2:54-56.)
A person of ordinary skill in the art who was mounting the Tangenberg side
brushes on the Bisset robot for the reasons described above would have recognized
the benefit of having the Bisset robot follow along the wall at a distance that put
the projecting side brushes in contact with the wall: this would allow the robot to
clean the floor all the way up to the wall. (Ex. 1006 at 99.)
39
Thus, the combination of Bisset with Tangenberg discloses [CLAIM 11].
(Ex. 1006 at 97-99.)
[CLAIM 14] The floor cleaning robot of claim 1, wherein a portion of the
bundles of bristles of the powered side brush passes between a portion of a
drive wheel of the robot and the cleaning surface during the rotation of the
side brush around the axis.
explained above, this combination would have predictably resulted in the Bisset
cleaning robot with the Tangenberg side brushes mounted on it in way that would
allow the bristles of the brush project beyond the front and sides of the casing, as
taught in Tangenberg:
The figure above illustrates the result of applying the teaching of Tangenberg to
40
casing, so that the side brushes can reach into corners and crevices. (Ex. 1006 at
102; Ex. 1008 at 2:4-6.) Because of the geometry of the Bisset robot, including
the size and location of its drive wheels, when side brushes are mounted on Bisset
so that they extend beyond the front and sides of the casing, a portion of the
bristles on the side brushes will necessarily pass between a portion of a drive wheel
of the robot and the floor (i.e. the cleaning surface) during the rotation of the side
brushes. (Ex. 1006 at 101-103.)
Thus, the combination of Bisset with Tangenberg discloses [CLAIM 14].
(Ex. 1006 at 100-103.)
[CLAIM 15-PREAMBLE] A self-propelled floor-cleaning robot comprising:

Bisset discloses the preamble of claim 15, whether or not it is limitation, for
the reasons described above with respect to [CLAIM 1-PREAMBLE]. (Ex. 1006
at 104-105.)
[15a] wheels operably connected to a motor drive to propel the robot across
the floor surface;
Bisset discloses this limitation. Specifically, Bisset states that it describes a
robotic cleaning device that is propelled by two driven wheels 104. (Ex. 1007
at Abstract, 2:49-50.) Each driven wheel is connected to a motor 105 which is
capable of driving the respective wheel 104. (Ex. 1007 at 2:65-67; see also, e.g.
41
id. at 4:32-40.) The Bisset robots two drive wheels propel it across the floor
surface. (Ex. 1007 at 3:1-9.)
Thus, the combination of Bisset with Tangenberg discloses [15a]. (Ex. 1006
at 106-107.)
[15b] a controller in electrical communication with the motor drive and

configured to control the motor drive to autonomously maneuver the robot
about detected obstacles encountered on the floor surface during a floor-
cleaning operation;
Bisset discloses limitation [15b] for the reasons described above with respect
to [1l]. (Ex. 1006 at 108-109.)
[15c] a housing defining a housing perimeter;

Bisset discloses limitation [15c] for the reasons described above with respect
to [1a]. (Ex. 1006 at 110-111.)
[15d] a cleaning head disposed within the housing perimeter and positioned to
engage a floor surface;
Bisset in combination with Tangenberg discloses limitation [15d] for the
reasons described above with respect to [1b]. (Ex. 1006 at 112-113.)
[15e] a cliff detector carried by the housing and configured to direct a beam
toward the floor surface and to respond to a falling edge of the floor surface;
and
Bisset discloses limitation [15e] for the reasons described above with respect
to [1c]. (Ex. 1006 at 114-115.)
42
[15f] a powered rotating side brush extending beyond the housing perimeter
and positioned to brush floor surface debris from beyond the housing
perimeter toward a projected path of the cleaning head,
Bisset in combination with Tangenberg discloses limitation [15f] for the
reasons described above with respect to [1d]. (Ex. 1006 at 116-117.)
[15g] the powered rotating side brush rotating in a direction that brushes
debris toward the robot ahead of a rotating axis of the brush along the
projected path of the cleaning head,
Bisset in combination with Tangenberg discloses limitation [15g] for the
reasons described above with respect to [1e]. (Ex. 1006 at 118-119.)
[15h] the side brush having bundles of bristles
Bisset in combination with Tangenberg discloses limitation [15h] for the
reasons described above with respect to [1f]. (Ex. 1006 at 120-121.)
[15i] and being positioned such that the bundles of bristles pass between the
cliff detector and the floor surface during a rotation of the side brush around
the axis,
Bisset in combination with Tangenberg discloses limitation [15i] for the
reasons described above with respect to [1g]. (Ex. 1006 at 122-123.)
[15j] the bundles of bristles being separated by a gap,

Bisset in combination with Tangenberg discloses limitation [15j] for the
reasons described above with respect to [1h]. (Ex. 1006 at 124-125.)
43
[15k] the gap being configured to prevent occlusion of the cliff detector beam
during at least a portion of a rotation of the side brush around the axis;
Bisset in combination with Tangenberg discloses limitation [15k] for the
reasons described above with respect to [1i]. (Ex. 1006 at 126-127.)
[15l] the controller being configured to move the robot in a wall-following

mode to maneuver the robot along a wall in a direction that places the
powered rotating side brush adjacent the wall.
Bisset in combination with Tangenberg discloses limitation [15l] for the
reasons described above with respect to [CLAIM 11]. (Ex. 1006 at 128-129.)
[CLAIM 16] The floor cleaning robot of claim 15, wherein the cleaning head
comprises a powered primary brush assembly disposed within the housing
perimeter and positioned to engage the floor surface.
Bisset in combination with Tangenberg discloses limitation [16] for the
reasons described above with respect to [1b]. (Ex. 1006 at 130-131.)
B. GROUND 2: Bisset in view of Tangenberg and Jones renders

obvious claim 10.
1. The scope and content of the prior art

For Ground 2, the prior art consists of Bisset, Tangenberg, and Jones.
2. Rationale for combining Bisset and Tangenberg with Jones.

As explained above, the Bisset cleaning robot could not clean in corners, and
a person of ordinary skill in the art would have been motivated to modify the
Bisset cleaning robot to include the Tangenberg side brushes in order to obtain a
robot that could clean in corners. (Ex. 1006 at 39-47.)
44
Further, the Bisset robot did not include a contact sensor for detecting
physical contact with obstacles. However, Jones teaches that contact sensors were
well known, and particularly that contact sensors were advantageous to use in
mobile robots because they have proven the most reliable, exhibit the lowest
noise, and produce the most easily interpreted signal of all sensors. (Ex. 1009 at
pp. 137-138.)
Jones teaches how to implement a full coverage, force-detecting bumper
in a cylindrical robot:
(Ex. 1009 at p. 138.) Jones also teaches that contact sensors, such as the force-
detecting bumper depicted above, can be used to determine when the robot is in
contact with another object and where that object is in relation to the robot, and
45
that [s]uch information allows the robot to maneuver away from collisions. (Ex.
1009 at p. 138.)
A person of ordinary skill in the art would have been motivated to combine
the force-detecting bumper for a cylindrical robot that is depicted in Jones with the
cylindrical Bisset cleaning robot in order to obtain a robot that could reliably detect
when the robot is in contact with another object, and to use that information to
allow the robot to reliably maneuver away from collisions. (Ex. 1006 at 48-50;
134-138.)
3. Challenged Claim for Ground 2
[CLAIM 10] The floor cleaning robot of claim 1, wherein the obstacle
detector comprises a displaceable bumper disposed at the housing perimeter,
and a bumper displacement sensor responsive to displacement of the bumper
with respect to the housing.
As described above, Jones teaches how to implement a bump sensor with
a displaceable bumper located at the housing perimeter. (Ex. 1009 at p. 14, Fig.
2.1; Ex. 1006 at 135.) Similarly, Jones describes a full coverage, force-
detecting bumper in a cylindrical robot:
46
(Ex. 1009 at p. 138; Ex. 1006 at 136.) As shown in the figure, this bumper is
disposed at the housing perimeter. (Ex. 1006 at 136.) The figure also shows that
Jones describes the use of three microswitches that are responsive to displacement
of the bumper with respect to the housing. (Ex. 1009 at p. 138.)
Thus, the combination of Bisset with Tangenberg and Jones discloses
[CLAIM 10]. (Ex. 1006 at 133-138.)
C. GROUND 3: Bisset in view of Tangenberg and Edlund renders

obvious claim 10.
1. The scope and content of the prior art

For Ground 3, the prior art consists of Bisset, Tangenberg, and Edlund.

Edlund.
As explained above, the Bisset cleaning robot could not clean in corners, and
a person of ordinary skill in the art would have been motivated to modify the
47
Bisset cleaning robot to include the Tangenberg side brushes in order to obtain a
robot that could clean in corners. (Ex. 1006 at 39-47.)
Further, the Bisset robot did not include a bumper for detecting physical
contact with obstacles. However, such bumpers were well known in the art. For
example, Edlund teaches the use of a bumper for detecting physical contact with
obstacles. (Ex. 1011; Ex. 1006 at 142.) Edlund, like Bisset, discloses an
autonomous vacuum cleaner that is generally cylindrical in shape and that has
two driven wheels 12 and 13. (Ex. 1011 at 4:37-40.)
(Ex. 1011 at Fig. 2, Fig. 3.) The front portion of the housing of the Edlund
cleaning robot is a displaceable bumper that mechanically senses obstacles by
sensing when the front portion of the housing (11) has been displaced. (Ex. 1011
at 4:54-58.)
A person of ordinary skill in the art would have been motivated to add the
bumper from Edlund to the Bisset robot in order to obtain a robot that was able to
sense physical contact with obstacles, in order to make it more reliable and
48
improve its ability to maneuver around those obstacles. (Ex. 1006 at 51-52, 141-
142.)
3. Challenged Claim for Ground 3
[CLAIM 10] The floor cleaning robot of claim 1, wherein the obstacle
detector comprises a displaceable bumper disposed at the housing perimeter,
and a bumper displacement sensor responsive to displacement of the bumper
with respect to the housing.
Neither Bisset nor Tangenberg discloses a displaceable bumper.
Edlund discloses a displaceable bumper sensor that is disposed at the
housing perimeter and is used to detect obstacles by sensing when the front portion
of the housing has been displaced:
a front portion of the housing 11 at a space 19 constitutes (FIG. 3) a

mechanical sensor movable in the x and y directions to also
mechanically sense an obstacle when for instance the vacuum cleaner
10 moves in underneath a sofa or the like of insufficient height.
(Ex. 1011 at 4:54-58.)
Thus, the combination of Bisset with Tangenberg and Edlund discloses
[CLAIM 10]. (Ex. 1006 at 140-142.)
VIII. CONCLUSION
For the foregoing reasons, Petitioner respectfully requests that the inter
partes review of the 233 patent be instituted as the Petition establishes a
reasonable likelihood of prevailing with respect to the Challenged Claims.
49
Petitioner further respectfully requests that claims 1, 10-11, and 14-16 be cancelled
as unpatentable.
Respectfully submitted,
GREENBERG TRAURIG, LLP
Date: September 5, 2017 By: /s/ Patrick J. McCarthy

Patrick J. McCarthy
mccarthyp@gtlaw.com
Phone: (202) 533-2386
Fax: (202) 331-3101
50
CERTIFICATE OF SERVICE
The undersigned certifies that a true and correct copy of the Petition together
with all exhibits identified in the above Table of Exhibits and Petitioners Power of
Attorney, have been served on the Patent Owner via Priority Mail Express or by
means at least as fast and reliable as Priority Mail Express on the below date, at the
following addresses:
Ruffin B. Cordell
Ralph A. Phillips
Stephen A. Marshall
FISH & RICHARDSON P.C.
901 15th Street, N.W., Suite 700
Washington, DC 20005
Respectfully submitted,
GREENBERG TRAURIG, LLP
Date: September 5, 2017 By: /s/ Patrick J. McCarthy

Patrick J. McCarthy
mccarthyp@gtlaw.com
Phone: (202) 533-2386
Fax: (202) 331-3101
51

Irobot Patent Challenge '233

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Irobot Patent Challenge '233

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Shenzhen Zhiyi Technology Co. Ltd., d/b/a iLife,

Patent No. 9,038,233 to Jones et al.

Issue Date: May 26, 2015

Title: Autonomous Floor-Cleaning Robot

IPR Case No.: IPR2017-02050

PETITION FOR INTER PARTES REVIEW OF CLAIMS 1,

TABLE OF EXHIBITS ...........................................................................................iv

1. The scope and content of the prior art. ....................................19

1002 U.S. Provisional Patent Application No. 60/345,764.

1003 File history of U.S. Patent Application No. 10/818,073

1004 File history of U.S. Patent Application No. 12/201,554

1005 File history of U.S. Patent Application No. 13/714,546

1006 Declaration of Dr. Douglas Locke Regarding Invalidity of the

1007 U.S. Patent No. 6,493,612 (Bisset)

1008 U.S. Patent No. 500,976 (Tangenberg)

1009 Jones, Joseph L. et al., MOBILE ROBOTS: INSPIRATION TO

1010 U.S. Copyright Office, Copyright Registation No. TX 4 917-

1011 U.S. Patent No. 5,682,313 (Edlund)

1012 Joint Claim Construction Chart from ITC Investigation No.

1013 U.S. Patent No. 5,293,955 (Lee)

1014 File history of U.S. Patent Application No. 10/320,729

described in this Petition.

I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) FOR INTER

A. Real Party in Interest Under 37 C.F.R. 42.8(b)(1)

Co. Ltd. d/b/a iLife and iRobot Corp.

B. Related Matters Under 37 C.F.R. 42.8(b)(2)

Investigation No. 337-TA-1057 (the ITC Investigation).

There is also a federal district court litigation filed by iRobot Corporation

10652 (D. Mass.) (the District Court Case).

C. Lead and Backup Counsel Under 37 C.F.R. 42.8(b)(3) and

Petitioner designates the following lead and backup counsel:

Lead Patrick J. McCarthy

Backup Herbert H. Finn

Greenberg Traurig LLP

Service on Petitioner may be made by mail or hand delivery to: Greenberg

Petitioner also consents to electronic service by emailing counsel of record at

mccarthyp@gtlaw.com, finnh@gtlaw.com, nelsonc@gtlaw.com, and

II. PAYMENT OF FEES UNDER 37 C.F.R. 42.15

further authorizes any additional fees to be charged to this Deposit Account.

III. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. 42.24(D)

counted by the word-processing program (Microsoft Word 2010) used to generate

authorities, mandatory notices, certificate of service, appendix of exhibits, and this

limit set in 37 C.F.R. 42.24(a)(1)(i).

IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. 42.104

A. Grounds for Standing Under 37 C.F.R. 42.104(a)

on the grounds identified in the Petition.

B. Identification of Challenge Under 37 C.F.R. 42.104(b) and Relief

(Ex. 1001) be cancelled based on the following grounds of unpatentability:

Ground of 233 patent Claim(s) Basis for Rejection

Ground 1 1, 11, 14, 15, and 16 Rendered obvious by Bisset in

Ground 2 10 Rendered obvious by Bisset in

Ground 3 10 Rendered obvious by Bisset in

V. OVERVIEW OF CHALLENGED PATENT

As further explained below, the Challenged Claims relate more specifically to a

floor-cleaning robot that includes a side brush assembly to entrain particulates

outside the periphery of the housing infrastructure. (Ex. 1001 at 2:28-33.)

A. The Challenged Claims

Claims 1 and 15 are independent claims.

separated by a gap configured to prevent occlusion of the cliff detector beam

233 patent reads:

1. A self-propelled floor-cleaning robot comprising