Northwestern University v. Universal Robots As

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Northwestern University (Illinois)
  • Defendant: Universal Robots A/S (Denmark) and Universal Robots USA, Inc. (Delaware)
  • Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP
• Case Identification: 1:21-cv-00149, D. Del., 06/17/2021
• Venue Allegations: Venue is alleged to be proper over Universal Robots A/S as a foreign defendant and because a substantial part of the events occurred in the district. Venue is alleged to be proper over Universal Robots USA, Inc. because it is a Delaware corporation and thus is deemed to reside in the district.
• Core Dispute: Plaintiff alleges that Defendant’s collaborative robotic arm systems infringe patents related to modular architecture, multi-function hubs, and configuration systems for intelligent assist devices.
• Technical Context: The technology domain is collaborative robotics ("cobots"), where programmable robotic manipulators are designed to operate safely in close proximity to human workers in a shared industrial workspace.
• Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the patents-in-suit based on their citation as prior art during Defendants' own patent prosecution activities, and on receipt of a notice letter from Plaintiff’s counsel dated May 5, 2020.

Case Timeline

Date	Event
2001-02-12	Earliest Priority Date for ’336, ’317, and ’508 Patents
2005-06-14	’317 Patent Issued
2005-08-09	’336 Patent Issued
2006-10-10	’508 Patent Issued
2008-01-01	Accused Product UR5 Launch Date (approx.)
2012-01-01	Accused Product UR10 Launch Date (approx.)
2015-01-01	Accused Product UR3 Launch Date (approx.)
2018-01-01	Accused Products UR3e, UR5e, UR10e Launch Date (approx.)
2019-01-01	Accused Product UR16e Launch Date (approx.)
2020-01-01	Accused Product 3PE Teach Pendant Launch Date (approx.)
2020-05-05	Plaintiff sent notice letter to Defendants
2021-06-17	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,928,336 - System and Architecture for Providing a Modular Intelligent Assist System (Issued Aug. 9, 2005)

The Invention Explained

• Problem Addressed: The patent’s background section describes ergonomic and productivity limitations of existing material handling systems. Unpowered overhead rail systems cause strain due to anisotropy (uneven resistance to movement) and steering difficulty, while powered gantry cranes are often slow and lack an intuitive operator interface (’336 Patent, col. 1:39-53). A further problem identified is the difficulty in connecting and integrating different components into a cohesive system (’336 Patent, col. 2:50-57).
• The Patented Solution: The patent proposes a "modular architecture" for creating "Intelligent Assist Devices" (IADs) from a number of distinct components (’336 Patent, col. 2:58-62). This architecture coordinates modules such as trolleys, lifts, and sensors using computational nodes interconnected by digital communication links, as depicted in Figure 1 of the patent (’336 Patent, Fig. 1; col. 6:39-51). This allows for flexible configurations tailored to specific applications, merging powered assistance with intuitive control.
• Technical Importance: This networked, modular approach enabled the creation of flexible and adaptable robotic assist systems that could be customized for various industrial tasks, moving beyond the limitations of prior monolithic or purely mechanical designs (Compl. ¶38).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶61).
• Essential elements of claim 1 include:
  • An intelligent assist system having a modular architecture, comprising:
  • a motion module for supporting and moving a payload;
  • a plurality of computational nodes, at least one of the plurality of computational nodes being configured to control the motion module; and
  • a plurality of communication links, at least one of the plurality of communication links being between two of the plurality of computational nodes to carry information between the nodes to actuate the motion module.

U.S. Patent No. 6,907,317 - Hub for a Modular Intelligent Assist System (Issued Jun. 14, 2005)

The Invention Explained

• Problem Addressed: Within the context of a modular IAD, the patent addresses the need for a centralized and user-friendly point of interaction for both the human operator and system integrators who may add task-specific tooling to the system (’317 Patent, col. 3:29-37). The challenge is to provide a single component that can manage communications, user inputs, and connections for a distributed system.
• The Patented Solution: The patent discloses a "multi-function hub" that serves as a communication and control center for the modular IAD (’317 Patent, Abstract). As illustrated in Figure 1, the hub (105) contains its own computational node (106) and provides a physical interface for operator controls (115, 116), tooling (111), and communication with other system modules over a network (’317 Patent, Fig. 1; col. 8:46-54). It includes an I/O interface for connecting to the information network and programmable logic for implementing user-defined functions.
• Technical Importance: This invention centralized user control and system integration for a distributed robotic architecture, enhancing the usability, programmability, and configuration flexibility of the overall system (Compl. ¶80).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶83).
• Essential elements of claim 1 include:
  • A multi-function hub for use in an intelligent assist system, comprising:
  • a physical interface configured and arranged to be a central interface point for an operator;
  • a computational node disposed on the physical interface, the computational node comprising programmable logic for implementing program controlled functions; and
  • an input/output (“I/O”) interface for interfacing with an information network, adapted to communicate with the computational node on the physical interface and at least one computational node on another module via a common data link using a digital communication protocol.

Multi-Patent Capsule: U.S. Patent No. 7,120,508 - System and Architecture for Providing a Modular Intelligent Assist System (Issued Oct. 10, 2006)

• Technology Synopsis: This patent claims a configuration system for an IAD, addressing the need for a user-friendly method to program, operate, and monitor the system’s status (’508 Patent, col. 2:50-57). The solution involves a host computer system running a program with a graphical user interface (GUI) that communicates with a computational node on an IAD module, enabling a user to manipulate objects related to the module and providing visual indicators of the system's status (’508 Patent, Abstract).
• Asserted Claims: Independent claim 1 (Compl. ¶106).
• Accused Features: The complaint alleges that the control boxes sold with the accused robots function as the claimed host computer system, while the accompanying teach pendants provide the claimed graphical user interface and visual indicators, thereby forming an infringing configuration system (Compl. ¶107, ¶111, ¶112).

III. The Accused Instrumentality

• Product Identification: The Accused Products are the Universal Robots UR3, UR3e, UR5, UR5e, UR10, UR10e, and UR16e industrial robots, along with their accompanying control boxes and teach pendants (Compl. ¶45).
• Functionality and Market Context: The Accused Products are described as collaborative robots, or "cobots," which are designed to share a workspace and interact safely with human operators (Compl. ¶62). Each system is alleged to comprise a modular architecture including an articulated robot arm, a control box, and a teach pendant that functions as a multi-function hub for programming and control (Compl. ¶46, ¶63). The complaint includes an image of the articulated robot arm to show its physical structure (Compl. p. 14). It also provides an image of the control box, which houses the system's primary processing hardware (Compl. p. 14). The complaint alleges that over 50,000 such robots have been sold (Compl. ¶52).

IV. Analysis of Infringement Allegations

’336 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a motion module for supporting and moving a payload	The accused articulated robot arm comprises one or more motion modules, each containing at least one actuator, and is capable of supporting and moving a payload.	¶65	col. 6:65-67
a plurality of computational nodes, at least one of the plurality of computational nodes being configured to control the motion module	The robot arm, control box, and teach pendant each allegedly contain one or more computational nodes. Sensors embedded in the arm, such as force and torque sensors, are also alleged to be computational nodes. At least one node controls the arm.	¶66, ¶68	col. 7:9-11
a plurality of communication links, at least one... being between two... computational nodes to carry information between the nodes to actuate the motion module	The system allegedly contains communication links connecting the computational nodes in the control box, teach pendant, and robot arm. These links carry information to actuate the articulated robot arm.	¶67, ¶69	col. 7:36-46

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the accused system's fixed architecture of an arm, controller, and pendant constitutes the "modular architecture" described in the patent, which emphasizes the combination of physically distinct functional modules like trolleys and lifts (’336 Patent, Fig. 1). The complaint’s allegation of modularity based on "customization, user-friendliness, and rapid update of software" (Compl. ¶63) raises the question of whether software flexibility can satisfy a structural claim limitation.
  • Technical Questions: The complaint alleges that sensors embedded in the robot arm, such as the force/torque sensor shown in a product brochure, are themselves "computational nodes" (Compl. ¶68, p. 23). This raises the evidentiary question of whether these sensors perform the processing and communication functions required of a "computational node" as described in the patent specification, or if they are primarily data-providing peripherals to a separate node (’336 Patent, col. 7:9-19).

’317 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a physical interface configured and arranged to be a central interface point for an operator	The accused teach pendant, an example of which is depicted in the complaint, provides a physical device and graphical screen for an operator to interact with and control the robotic system.	¶84, ¶85, p. 26	col. 8:46-49
a computational node disposed on the physical interface... comprising programmable logic for implementing program controlled functions	The teach pendant is alleged to contain at least one computational node and to offer "suitable programming logic" that allows users to create and implement customized programs for controlling the robot arm.	¶86, ¶87	col. 8:54-57
an input/output (“I/O”) interface... adapted to communicate with the computational node on the physical interface and at least one computational node disposed on the other module via a common data link...	The teach pendant allegedly contains an I/O interface that communicates with its internal computational node as well as with nodes in the control box or robot arm over a common data link using a digital protocol.	¶88, ¶89, ¶90	col. 8:46-54

• Identified Points of Contention:
  • Scope Questions: The preamble of claim 1 requires the hub to be for use in an "intelligent assist system." Infringement may depend on whether the accused "cobot" system falls within the patent's specific definition of an IAD, which the patent distinguishes from traditional industrial robots based on the nature of human collaboration (’317 Patent, col. 1:8-14).
  • Technical Questions: The claim requires a "computational node disposed on the physical interface" that comprises programmable logic. This raises the question of where the logic for user-created programs is executed. The analysis may focus on whether the teach pendant itself executes these functions, or if it primarily acts as a terminal for a more powerful computational node located in the separate control box, and whether that architectural distinction is material to the claim language.

V. Key Claim Terms for Construction

• The Term: "modular architecture" (’336 Patent, Claim 1)

• Context and Importance: This term from the preamble is foundational to the scope of the ’336 patent. Its construction will determine whether the accused architecture of an articulated arm, a controller, and a teach pendant infringes. Practitioners may focus on whether "modular" requires the physical interchangeability of different functional units (e.g., trolleys, lifts) as shown in the patent’s figures, or if it can be read more broadly to cover systems that are customizable through software and component integration.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the goal as allowing "ease of configuration to a variety of applications" and the ability to "connect and integrate a number of IAD components to work together" (’336 Patent, col. 2:50-52, 66-67), which may support an interpretation focused on flexible integration rather than specific hardware swapping.
  • Evidence for a Narrower Interpretation: The primary embodiment described and illustrated focuses on combining discrete physical modules like a trolley (101) and a lift (103) on an overhead rail system (’336 Patent, Fig. 1; col. 6:65-67). This could support a narrower construction limited to systems with such physically interchangeable components.

• The Term: "multi-function hub" (’317 Patent, Claim 1)

• Context and Importance: This term defines the claimed invention of the ’317 patent. Its construction is critical to determining whether the accused teach pendant meets this limitation. The dispute will likely center on whether the term is broad enough to cover any handheld user interface for a robot, or if it is limited to an interface that acts as a "hub" in the specific context of the modular, multi-component IAD described in the specification.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent describes the hub in general terms as a "central interface point for an operator and for the system integrator" (’317 Patent, col. 8:46-49). This language could support construing the term to cover the primary user control device in any robotic system.
  • Evidence for a Narrower Interpretation: The specification consistently describes the hub's role within the larger modular architecture containing trolleys, lifts, and sensors (’317 Patent, Fig. 1). The term "hub" itself suggests a central connection point for multiple, distinct peripherals, which may support a narrower construction tied to the specific type of system disclosed.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on allegations that Defendant provides instructions and guidance that lead customers to use the Accused Products in an infringing manner (Compl. ¶72, ¶95, ¶116). Contributory infringement is based on allegations that the Accused Products are a material part of the invention, are especially adapted for infringing use, and are not staple articles of commerce (Compl. ¶75, ¶98, ¶119).
• Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this allegation on purported pre-suit knowledge from two sources: Defendant’s citation of the patents-in-suit as prior art during its own patent prosecution activities, and its receipt of a notice letter from Plaintiff on May 5, 2020 (Compl. ¶55, ¶76-77, ¶100, ¶121).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of architectural scope: can the term "modular architecture" from the ’336 patent, which is described in the context of physically interchangeable modules like trolleys and lifts, be construed to cover the accused system's architecture of an articulated robotic arm, a controller, and a teach pendant?
• A key evidentiary question will be one of functional equivalence: do the components of the accused system perform the specific functions required by the claims? This will likely involve determining whether the accused teach pendant is a "multi-function hub" and whether its embedded sensors are "computational nodes" within the meaning of the patents.
• The litigation may also turn on technology classification: do the accused "cobots" fall within the patents' specific definition of an "Intelligent Assist Device" (IAD), a term which the patent documents appear to distinguish from conventional industrial robots, or are they a separate class of device to which the patents' claims do not apply?