SharkNinja Operating LLC v. iRobot Corp

1. Case Identification

• Case #: IPR2020-01640
• Patent #: 7,389,156
• Filed: September 25, 2020
• Petitioner(s): SharkNinja Operating LLC, SharkNinja Management LLC, and SharkNinja Sales Company
• Patent Owner(s): iRobot Corporation
• Challenged Claims: 1-3, 20, 35-41

2. Patent Overview

• Title: Autonomous Cleaning Robot
• Brief Description: The ’156 patent discloses an autonomous cleaning robot capable of performing both wet and dry cleaning operations. The robot’s core design features a chassis with a collecting apparatus for loose particles arranged to precede a liquid applicator during forward movement, enabling a dry-then-wet cleaning sequence on a surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aoyama and Seojima - Claims 1, 3, and 20 are obvious over Aoyama in view of Seojima.

• Prior Art Relied Upon: Aoyama (Japanese Publication No. JPH0833598), Seojima (Japanese Publication No. JP09192069).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Aoyama discloses an autonomous cleaning robot that meets most limitations of independent claim 1. Aoyama teaches a chassis, a liquid applicator (spray opening 42), a scrubbing element (cleaning brushes 13a-13c), and a second collecting apparatus for waste liquid (squeegee 43). To supply the missing element of a first collecting apparatus for loose particulates, Petitioner cited Seojima. Seojima discloses a "floor washing car" with a forward-mounted suction tool (6) specifically designed to collect dust before it reaches the subsequent wet cleaning components, such as its floor washing brush (3) and squeegee (5).
  • Motivation to Combine: A POSITA would combine Seojima’s front-mounted suction tool with Aoyama's cleaning robot to solve a known and predictable problem. Petitioner asserted that Seojima explicitly explains that collecting large dust particles first prevents the clogging of subsequent wet-cleaning components. This modification would directly improve the operational efficiency and reliability of Aoyama's robot by preventing its squeegee from becoming clogged with debris, a clear benefit a skilled artisan would seek.
  • Expectation of Success: A POSITA would have a high expectation of success, as adding a conventional suction nozzle to the front of a cleaning robot was a simple mechanical integration of known components to achieve a predictable result.

Ground 2: Obviousness over Aoyama, Seojima, and Bernini - Claims 35-39 are obvious over Aoyama in view of Seojima, further in view of Bernini.

• Prior Art Relied Upon: Aoyama, Seojima, and Bernini (WO 2002/062194).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner established the base robot structure using the Aoyama and Seojima combination from Ground 1. To meet the system control limitations of dependent claims 35-39, Petitioner introduced Bernini. Bernini discloses a "fully autonomously operated floor cleaning apparatus" with the requisite control architecture: a motive drive subsystem, a power module (rechargeable batteries), and a master control module (a microprocessor with updatable software). For claim 36, Bernini teaches a sensor module to sense external (obstacles) and internal (low battery) conditions. For claims 37-39, Bernini discloses a user control module (control panel), and an interface module for communicating with external elements like a battery-charging device or a data processor (an external computer for software updates).
  • Motivation to Combine: A POSITA would incorporate Bernini's sophisticated control, power, and sensor systems into the Aoyama/Seojima robot to improve its autonomy, power efficiency, and user interactivity. These features represented known solutions for enhancing the functionality of autonomous robots, allowing for more complex navigation, better power management, and user-initiated command responses.
  • Expectation of Success: Success was predictable because the integration involved combining well-understood electronic control modules common in the field of robotics. The functionality of these modules was already proven in Bernini's own autonomous cleaning system.

Ground 3: Obviousness over Sawalski - Claims 1 and 2 are obvious over Sawalski.

• Prior Art Relied Upon: Sawalski (Application # 2005/0229340).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the single reference of Sawalski discloses all elements of claims 1 and 2. Sawalski teaches an "autonomous/robotic surface treating device" with a chassis supporting a first collecting apparatus (a "main brush 60") that collects large particulate matter. Positioned behind this brush is a liquid applicator (a "fluid outlet 48"). This configuration ensures the collecting apparatus precedes the liquid applicator during forward travel, as required by claim 1. For claim 2, Sawalski discloses a "platen 66" attached to the chassis that follows the liquid applicator. The platen presses a cleaning sheet against the floor to smear and uniformly spread the dispensed cleaning fluid.
  • Motivation to Combine: Not applicable for a single-reference obviousness ground. Petitioner contended that the teachings within Sawalski were sufficient on their own to render the claims obvious.
  • Expectation of Success: Not applicable for a single-reference obviousness ground.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 40 is obvious over Seojima in view of Bernini, and claim 41 is obvious over Seojima and Bernini in further view of Kirkpatrick (Patent 6,481,515), which teaches a circular robot chassis for improved maneuverability and rotation away from obstacles.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the petition raises new arguments and prior art combinations not previously considered by the USPTO. Petitioner emphasized that the primary references Aoyama, Seojima, and Sawalski were never presented to the Examiner during original prosecution. Furthermore, while Bernini and Kirkpatrick were listed in an Information Disclosure Statement, Petitioner contended they were never substantively discussed or applied in any rejection, and thus the Examiner did not consider their specific teachings in the context of the claimed invention.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 20, and 35-41 of Patent 7,389,156 as unpatentable.