DCT
1:18-cv-02071
Endeavor Robotics Inc v. QinetiQ North America Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Endeavor Robotics, Inc. (Delaware)
- Defendant: QinetiQ North America, Inc. and Foster-Miller Inc. (Delaware / Massachusetts)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP; Sheppard, Mullin, Richter & Hampton LLP
- Case Identification: 1:18-cv-02071, D. Del., 12/28/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant QinetiQ North America, Inc. is a Delaware corporation and is therefore deemed a resident of the district.
- Core Dispute: Plaintiff alleges that Defendant’s unmanned ground robots infringe two patents related to articulated "flipper" technology used for traversing obstacles and climbing stairs.
- Technical Context: The technology at issue involves mobility platforms for Unmanned Ground Vehicles (UGVs), which are used in defense, law enforcement, and industrial applications.
- Key Procedural History: The complaint notes that both Plaintiff and Defendant were awarded U.S. Army contracts in March 2018 for the engineering and manufacturing development phase of the Common Robotic System—Individual (CRS(I)) program, placing the parties in direct competition. Subsequent to the filing of this complaint, an inter partes review proceeding (IPR2019-01549) resulted in a certificate issued on November 16, 2021, cancelling all claims of the ’296 Patent.
Case Timeline
| Date | Event |
|---|---|
| 1998-03-27 | ’296 Patent Priority Date |
| 2002-08-13 | ’296 Patent Issue Date |
| 2008-12-09 | ’752 Patent Priority Date |
| 2011-12-13 | ’752 Patent Issue Date |
| 2018-03-01 | U.S. Army CRS(I) contract awarded to both parties (approximate date) |
| 2018-11-01 | Photograph taken of accused product (approximate date) |
| 2018-12-28 | Complaint Filing Date |
| 2021-11-16 | All claims of ’296 Patent cancelled via Inter Partes Review |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,431,296, "Robotic platform," Issued August 13, 2002
The Invention Explained
- Problem Addressed: The patent addresses the shortcomings of prior robotic platforms in navigating complex and hazardous environments for civilian, military, and law enforcement applications, such as searching structurally damaged buildings or performing bomb disposal (’296 Patent, col. 2:21-38).
- The Patented Solution: The invention is an articulated tracked vehicle featuring a main chassis and a pivoting forward arm, or "flipper." This design allows the robot to climb stairs by first pivoting the arm up and over a stair riser, using the arm to gain purchase, and then pivoting it further to extend the vehicle's effective wheelbase for stability while the main tracks drive the vehicle upward (’296 Patent, col. 2:57-67; Fig. 11).
- Technical Importance: This articulated flipper design provided a method for small, portable UGVs to surmount significant obstacles like stairs, greatly enhancing their operational mobility and utility in varied terrains (’296 Patent, col. 3:31-37).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶15).
- The essential elements of Claim 1 are:
- A method for operating an articulated tracked vehicle with a main tracked chassis and a pivoting forward arm to climb stairs.
- Pivoting the arm to raise it higher than the first stair.
- Approaching the stair until the arm makes contact.
- Driving the main tracks to propel the vehicle until the main tracks contact the first stair.
- Pivoting the arm to extend the vehicle's tracked base.
- Driving the main tracks to ascend the stairs.
U.S. Patent No. 8,074,752, "Mobile robotic vehicle," Issued December 13, 2011
The Invention Explained
- Problem Addressed: The patent seeks to improve the ability of miniaturized robots to surmount obstacles, a recurring challenge in reconnaissance, surveillance, and security patrols (’752 Patent, col. 1:24-37).
- The Patented Solution: The invention is a method for a mobile robot to climb an obstacle using a trailing articulated arm, which rotates about an axis located rearward of the robot's center of gravity. The method involves pivoting this trailing arm downward against the ground to lift the forward end of the robot, allowing it to begin ascending the obstacle. The arm is then used to stabilize and further propel the robot over the obstacle (’752 Patent, Abstract; col. 2:45-58).
- Technical Importance: This trailing-arm lift mechanism offers an alternative approach to obstacle traversal for small UGVs, which may provide different stability and performance characteristics compared to forward-flipper designs.
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶26).
- The essential elements of Claim 1 are:
- A method for a mobile robotic vehicle to climb a stair.
- Driving a support surface of the vehicle toward the stair.
- Pivoting a trailing arm downward against the underlying surface to cause the vehicle's forward end to raise up, with the arm contacting the surface forward of the vehicle's center of gravity.
- Further driving the support surface to cause the forward end to ascend the stair riser.
- Pivoting the trailing arm so its distal end contacts the underlying surface at a point behind the vehicle as it ascends.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the "QNA CRS(I) Product," an Unmanned Ground Vehicle (UGV) (Compl. ¶¶12, 17).
Functionality and Market Context
The complaint alleges the accused product is an articulated tracked vehicle designed to traverse obstacles and climb stairs (Compl. ¶18). This capability was allegedly a requirement for the U.S. Army’s CRS(I) contract, for which the Defendant submitted a bid and was selected for the engineering and manufacturing development phase (Compl. ¶¶12, 18). This positions the product in direct competition with Plaintiff's UGVs in the U.S. military market.
IV. Analysis of Infringement Allegations
’296 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for operating an articulated tracked vehicle having a main tracked chassis and a pivoting forward arm to climb a series of stairs... | The complaint alleges the QNA CRS(I) Product is an articulated tracked vehicle with a main tracked chassis and a pivoting forward arm that is used to climb stairs. A photograph provided in the complaint shows a tracked robot with articulated arms. (Compl. p. 5) | ¶17 | col. 2:42-53 |
| pivoting the arm to raise the arm higher than the rise of the first stair; | The complaint alleges, on information and belief, that the accused product performs this step as part of its stair-climbing method. | ¶19 | col. 2:60-62 |
| approaching the first stair until the arm contacts the first stair; | The complaint alleges, on information and belief, that the accused product performs this step as part of its stair-climbing method. | ¶19 | col. 2:62-63 |
| driving the main tracks to propel the vehicle until the main tracks contacts the first stair; | The complaint alleges, on information and belief, that the accused product performs this step as part of its stair-climbing method. | ¶19 | col. 2:63-65 |
| pivoting the arm to extend the tracked base of the vehicle; and | The complaint alleges, on information and belief, that the accused product performs this step as part of its stair-climbing method. | ¶19 | col. 2:65-66 |
| driving the main tracks to ascend the series of stairs. | The complaint alleges, on information and belief, that the accused product performs this step as part of its stair-climbing method. | ¶19 | col. 2:66-67 |
- Identified Points of Contention:
- Legal Question: A threshold issue is the legal status of the ’296 Patent. An inter partes review proceeding subsequent to the filing of the complaint resulted in the cancellation of all patent claims. The court will need to determine the effect of this cancellation on the viability of Plaintiff's cause of action for infringement of this patent.
- Evidentiary Question: The complaint's infringement allegations are largely conclusory, asserting that the accused product practices the claimed method by restating the claim language (Compl. ¶19). A central question, should the claim be considered valid, would be whether discovery produces evidence that the accused product performs each of the specific, ordered steps of the claimed method.
’752 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method performed by a mobile robotic vehicle for climbing a stair... | The complaint alleges that the QNA CRS(I) Product, identified as a mobile robotic vehicle, practices the claimed stair-climbing method. A photograph in the complaint shows the accused product, which has pivoting arms. (Compl. p. 8) | ¶28 | col. 2:45-49 |
| driving a support surface of the vehicle over an underlying surface towards the stair; | The complaint alleges, on information and belief, that the accused product's tracks are driven toward a stair. | ¶30 | col. 2:49-51 |
| pivoting a trailing arm downward against the underlying surface and causing a forward end of the vehicle to raise up off the underlying surface... | The complaint alleges, on information and belief, that the accused product's arm performs this function. | ¶30 | col. 2:51-54 |
| further driving the support surface to cause the forward end of the vehicle to ascend a riser of the stair... | The complaint alleges, on information and belief, that the accused product's tracks are driven to ascend a stair riser. | ¶30 | col. 2:49-51 |
| pivoting the trailing arm so that the distal end contacts the underlying surface at a point behind the vehicle while the vehicle ascends the stair. | The complaint alleges, on information and belief, that the accused product's arm pivots to a position behind the vehicle during ascent. | ¶30 | col. 2:58-61 |
- Identified Points of Contention:
- Technical Question: The complaint accuses the same product of infringing both the ’296 Patent (requiring a "pivoting forward arm") and the ’752 Patent (requiring a "pivoting trailing arm"). This raises the question of whether the accused product's single articulated arm system can and does operate in both distinct modes.
- Scope Question: The infringement analysis may turn on whether the accused product’s arm, depicted as a forward "flipper," can be considered a "trailing arm" that pivots "downward... causing a forward end of the vehicle to raise up" as required by Claim 1. The complaint does not provide specific evidence showing the arm performing this particular lifting action from a trailing position.
V. Key Claim Terms for Construction
For the ’296 Patent
- The Term: "extend the tracked base of the vehicle"
- Context and Importance: This term describes a key functional step for achieving stability during a climb. The dispute may focus on whether the accused robot’s arm movement achieves this specific function in the manner contemplated by the patent, or if it achieves stability through a different mechanism.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition, which could support an argument for applying the term’s plain and ordinary meaning to any arm movement that increases the length of the vehicle's contact with the ground/stair.
- Evidence for a Narrower Interpretation: The specification describes the method as "pivoting the arm to extend the tracked base of the vehicle" immediately before "driving the main tracks to ascend the set of stairs" (’296 Patent, col. 2:65-67). Figure 11 illustrates this as creating a relatively co-planar, elongated base formed by the main tracks and the arm. This may support a narrower construction limited to this specific geometric configuration.
For the ’752 Patent
- The Term: "trailing arm"
- Context and Importance: The definition of this term is critical, as the complaint accuses a product that appears to have forward-mounted flippers of infringing a patent on a method using a "trailing arm." Practitioners may focus on this term because the entire infringement theory depends on the accused flipper qualifying as a "trailing arm."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract states the arm "is pivotable to trail the robot" and is rotatable about an axis "rearward of the center of gravity" (’752 Patent, Abstract). This could support an interpretation where any arm capable of being positioned behind the main chassis to perform the claimed function qualifies as a "trailing arm."
- Evidence for a Narrower Interpretation: Claim 1 requires the "trailing arm" to pivot "downward... causing a forward end of the vehicle to raise up" (’752 Patent, col. 7:27-29). This specific cause-and-effect relationship—pushing down from the rear to lift the front—may be argued as an essential functional limitation of what constitutes a "trailing arm," potentially distinguishing it from a device that primarily functions as a forward flipper.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement of both the ’296 and ’752 patents by "providing support, training, and instruction for its QNA CRS(I) Product" which allegedly enables and encourages customers to use the product in an infringing manner (Compl. ¶¶21, 32).
- Willful Infringement: Willfulness allegations are based on knowledge of the patents "at least as of the filing of this Complaint" (Compl. ¶¶21, 32). The complaint does not allege pre-suit knowledge but seeks treble damages for willful infringement in its prayer for relief (Prayer for Relief ¶D).
VII. Analyst’s Conclusion: Key Questions for the Case
- Threshold Legal Issue: A dispositive question for the first cause of action is one of viability: What is the legal effect of the post-filing cancellation of all claims of the ’296 Patent by the U.S. Patent and Trademark Office on Plaintiff's infringement claim?
- Definitional and Technical Scope: A central issue for the second cause of action will be one of technical duality: Can the accused product's articulated arm, which the complaint also characterizes as a "pivoting forward arm," be construed to be the "trailing arm" recited in the ’752 Patent, and does it perform the claimed method of lifting the vehicle's front end by pivoting downward from a rearward position?
- Evidentiary Proof: A key question underlying the entire dispute will be one of demonstration: Beyond the photographs and conclusory allegations, what specific evidence will be presented to prove that the accused UGV actually performs the precise, ordered sequence of steps recited in the asserted method claims of either patent?