SharkNinja Operating LLC v. iRobot Corp

1. Case Identification

• Case #: IPR2020-00733
• Patent #: 9,550,294
• Filed: March 23, 2020
• Petitioner(s): SharkNinja Operating LLC, SharkNinja Management LLC, and SharkNinja Sales Company
• Patent Owner(s): iRobot Corporation
• Challenged Claims: 1-13

2. Patent Overview

• Title: Energy Management for a Robot
• Brief Description: The ’294 patent relates to energy management for an autonomous cleaning robot. The technology enables the robot to detect a low battery, return to a base station for recharging, and subsequently resume cleaning from its prior location, a feature known as "recharge and resume."

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Samsung-Kim - Claims 1-5, 8, 9, and 11-13 are anticipated under 35 U.S.C. §102 or, in the alternative, obvious under 35 U.S.C. §103 over Samsung-Kim.

• Prior Art Relied Upon: Samsung-Kim (Patent 5,440,216).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Samsung-Kim, which disclosed a "self-moving robot cleaner," taught every limitation of the challenged claims. Specifically, Samsung-Kim’s microprocessor and memory were alleged to form a navigational control system that performed an "initial circulation" to "memorize[] a structure and a size of the room" using walls as reference points, satisfying the mapping limitation of claim 1. It further disclosed detecting a low battery level, autonomously returning to an "automatic charging unit," docking, recharging, and then returning "to the discontinued cleaning location... to again carry out its cleaning operation," satisfying the "recharge and resume" limitations.
  • Key Aspects: This ground asserted that a single prior art reference, which predated the ’294 patent by many years and was not considered by the examiner, disclosed the entire inventive concept.

Ground 2: Obviousness over Samsung-Kim and Samsung-Jeong - Claims 1-5, 8, 9, and 11-13 are obvious over Samsung-Kim in view of Samsung-Jeong.

• Prior Art Relied Upon: Samsung-Kim (Patent 5,440,216) and Samsung-Jeong (Patent 5,896,488).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1, specifically addressing the claim limitation of "mapping the room with respect to objects as points of reference." If Samsung-Kim was found to only disclose mapping relative to walls, Petitioner argued that Samsung-Jeong explicitly taught creating an "environmental map" of a work area that included both walls and non-wall obstacles, such as furniture. Samsung-Jeong further characterized this type of mapping as "conventional" at the time of its filing.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references as both relate to autonomous cleaning robots and their navigation systems. A POSITA would have been motivated to incorporate Samsung-Jeong’s more detailed mapping of both walls and obstacles into Samsung-Kim’s system to achieve the predictable result of improved navigation, better cleaning coverage, and enhanced obstacle avoidance.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining known mapping techniques from two similar robotic cleaning systems was a straightforward integration of compatible technologies.

Ground 3: Obviousness over Core References and Fiegert - Claims 2, 4, and 5 are obvious over Samsung-Kim (or Samsung-Kim in view of Samsung-Jeong) in view of Fiegert.

• Prior Art Relied Upon: Samsung-Kim (Patent 5,440,216), Samsung-Jeong (Patent 5,896,488), and Fiegert (Patent 6,240,342).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted dependent claims 2 and 4, which require tracking a cleaning route and monitoring the amount of the room remaining to be cleaned. Petitioner argued that Fiegert explicitly disclosed a method for surface cleaning machines that divides an area into a grid and uses memory to track which grid cells have been cleaned and which have "not yet been cleaned." Fiegert’s system was designed to determine the remaining surface area to ensure complete coverage.
  • Motivation to Combine: A POSITA would have been motivated to integrate Fiegert's granular, grid-based tracking system into the robotic platform of Samsung-Kim. Doing so would predictably improve the efficiency of the "recharge and resume" feature by allowing the robot to more accurately determine how much of the room remained to be cleaned. This would, in turn, allow the robot to calculate the minimum charge needed to complete the task, reducing unnecessary charging time.
  • Expectation of Success: Combining a known area-tracking method (Fiegert) with a known autonomous cleaning robot (Samsung-Kim) to improve cleaning efficiency was presented as a predictable application of known technologies.

• Additional Grounds: Petitioner asserted additional obviousness challenges for specific claims based on combinations including Samsung-Han (Patent 5,646,494) for using a charging station as a mapping reference point (claim 3), Sony (Japanese Patent No. JP 2001-125641) for partial recharging (claims 6-7), and Kopmann (Patent 4,677,363) for using coulometry to determine battery energy (claim 10).

4. Key Claim Construction Positions

• Petitioner argued that the claim term "objects" should be construed according to its plain and ordinary meaning to include both walls and other obstacles (e.g., furniture). This position was supported by the patent’s specification, which provided "a wall or a piece of furniture" as an example of an "obstacle," and by a patent incorporated by reference that explicitly referred to a wall as an "object." This construction was central to Petitioner's argument that Samsung-Kim anticipated the mapping limitation by teaching mapping based on room walls.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The core argument was that the primary prior art references, Samsung-Kim and Samsung-Jeong, were not substantively considered by the examiner during prosecution of the ’294 patent. Because the petition presented new references and a non-cumulative invalidity rationale, Petitioner asserted that the Becton factors strongly favored institution of the inter partes review (IPR).

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-13 of Patent 9,550,294 as unpatentable.