SharkNinja Operating LLC v. iRobot Corp

1. Case Identification

• Case #: IPR2020-01641
• Patent #: 8,950,038
• Filed: October 1, 2020
• Petitioner(s): SharkNinja Operating LLC, SharkNinja Management LLC, and SharkNinja Sales Company
• Patent Owner(s): iRobot Corporation
• Challenged Claims: 1, 5, 7, 9-12

2. Patent Overview

• Title: Modular Robot
• Brief Description: The ’038 patent discloses a "modular robot," specifically an autonomous floor cleaning robot, with discrete components designed to be separately and independently removable from receptacles in the robot's chassis. This modularity is intended to simplify servicing and replacement of parts like wheel assemblies, cleaning bins, and batteries.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jones, Rakocy, and Yan - Claims 1, 5, 7, and 9-12 are obvious over Jones in view of Rakocy and Yan.

• Prior Art Relied Upon: Jones (Application # 2004/0049877), Rakocy (Patent 5,440,780), and Yan (Chinese Patent No. CN 2664579Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Jones, Rakocy, and Yan taught every limitation of the challenged claims. Jones served as the primary reference, disclosing the foundational autonomous floor-cleaning robot with a chassis, multiple drive wheel assemblies, a cleaning assembly, and a caster wheel assembly. However, Jones did not explicitly teach that its wheel assemblies were removable as complete, independent units.
    • To remedy this, Petitioner asserted that Rakocy, which taught a tip-resistant canister vacuum, disclosed a caster wheel assembly that was removable as a complete unit and capable of rotating about a vertical axis. Modifying Jones’s caster wheel with the known, removable press-fit caster design from Rakocy would have been a simple substitution of known components.
    • Similarly, Petitioner argued that Yan, which disclosed a robotic floor cleaner, explicitly taught drive wheel assemblies (propulsion wheels) housed in a "seat body" that were designed to be detachably removed from the robot's chassis as a complete unit for "maintenance and replacement." A POSITA would combine Yan’s removable drive wheel module with the Jones robot to improve its serviceability.
    • Petitioner further contended that the dependent claims recited conventional features also found in the prior art. For example, Jones and Yan both disclosed an electric battery (claim 5), Jones disclosed a linkage (tension spring) for suspending a wheel (claim 7), a removable cover (claim 9), and a bumper (claim 10), and both references disclosed a removable cleaning bin (claim 11) with a filter (claim 12).
  • Motivation to Combine: Petitioner argued a POSITA would combine these references to solve the known problem of component wear and tear in robotic vacuums, a problem the ’038 patent itself purports to address. The motivation was to improve the Jones robot by incorporating known techniques for serviceability. A POSITA would combine Yan's removable drive wheel module and Rakocy's removable caster wheel with the Jones robot to create a more durable and easily maintained device, a predictable improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the proposed modifications involved the straightforward application of known, modular components (removable wheels) to a similar device (a robotic vacuum) to achieve a predictable result (improved serviceability). The combination required only simple substitution, not substantial changes or reinvention.

4. Arguments Regarding Discretionary Denial

• §325(d) Factors: Petitioner argued that discretionary denial under §325(d) was improper because the asserted grounds and prior art were not previously considered by the USPTO. It was argued that Rakocy and Yan were never before the examiner. While Jones was listed in a 51-page Information Disclosure Statement containing over 1200 references, it was never substantively discussed or applied in a rejection during prosecution. Therefore, Petitioner contended the core arguments of the petition were new to the Office.
• §314(a) Fintiv Factors: Petitioner argued that discretionary denial based on a parallel district court litigation would be improper. The primary reasons asserted were that no trial date had been set in the parallel case, the presiding judge had indicated that civil trials were likely to be "massively delayed" due to the pandemic, and the specific invalidity grounds asserted in the IPR petition (relying on Yan) were not included in the invalidity contentions in the district court case, thus avoiding significant overlap.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 5, 7, and 9-12 of the ’038 patent as unpatentable.