SharkNinja Operating LLC v. iRobot Corp

1. Case Identification

• Case #: IPR2021-00544
• Patent #: 9,884,423
• Filed: February 24, 2021
• Petitioner(s): SharkNinja Operating LLC, SharkNinja Management LLC, and SharkNinja Sales Company
• Patent Owner(s): iRobot Corporation
• Challenged Claims: 1-4, 6-10, 12-15, 18-23, 25, and 26

2. Patent Overview

• Title: Auto-Docking and Energy Management for a Robotic Device
• Brief Description: The ’423 patent discloses systems and methods for an autonomous robotic cleaning device. The technology enables the robot to automatically locate and dock with a base station to recharge its battery when the energy level is low, and then resume its cleaning task.

3. Grounds for Unpatentability

Ground 1: Obviousness over LG-Jeon, Everett, and Abramson - Claims 1-4, 6-10, and 12 are obvious over LG-Jeon in view of Everett, with certain limitations additionally rendered obvious by Abramson.

• Prior Art Relied Upon: LG-Jeon (Application # 2004/0178767), Everett (H.R. Everett, Sensors for Mobile Robots (1995)), and Abramson (Application # 2005/0010330).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that LG-Jeon, the primary reference, discloses the core features of independent claim 1: a method of docking a robotic cleaner using a base station with left and right infrared signal emitters. LG-Jeon’s robot detects a low battery, seeks the signals, and moves toward the base station to charge. Petitioner contended that while LG-Jeon teaches moving toward the charger, it does not explicitly disclose reducing speed. Everett was introduced to supply this limitation, as it teaches a robot that “reduces speed as a function of stand-off distance” when approaching its charging station. For the limitation of stopping movement in response to detecting electrical contact, Petitioner relied on either Everett’s teaching of detecting a voltage drop upon connection or Abramson’s explicit disclosure that its robot “stops” for approximately two seconds once contact is detected.
  • Motivation to Combine: Petitioner asserted a POSITA would combine these references because they all address the same problem of autonomous robot docking and charging. A POSITA would have been motivated to incorporate Everett’s well-known technique of slowing a robot during its final docking approach into the LG-Jeon system to achieve the predictable result of increased docking accuracy and collision avoidance. Similarly, substituting LG-Jeon’s ultrasonic-based stop signal with Abramson’s more reliable contact-based stop signal was presented as a simple replacement of one known element with another to achieve a more robust docking process.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because combining these elements involved applying known, predictable solutions (e.g., speed reduction, contact detection) to a known system (a robotic cleaner) to improve its performance.

Ground 2: Obviousness over Samsung-Kim and Everett - Claims 13-15, 18-23, 25, and 26 are obvious over Samsung-Kim in view of Everett.

• Prior Art Relied Upon: Samsung-Kim (Patent 5,440,216) and Everett (H.R. Everett, Sensors for Mobile Robots (1995)).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Samsung-Kim discloses all elements of independent claim 13 except for the specific limitation of controlling the robot’s movement toward the base station at a "second velocity less than the first velocity." Samsung-Kim describes a self-moving robot cleaner that maps a room, cleans, detects a low battery, returns to an "automatic charging unit," recharges, and then resumes cleaning from its interrupted position. To address the velocity limitation, Petitioner again relied on Everett, which explicitly teaches reducing a robot’s speed based on sonar measurements as it approaches the charger. Dependent claims related to tracking a cleaning route (claim 14) and returning to an unfinished area (claim 15) were argued to be taught directly by Samsung-Kim’s disclosure of memorizing the room structure and returning to the "discontinued cleaning location."
  • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA would have found it obvious to apply the known docking technique from Everett (reducing approach speed) to the autonomous cleaning system of Samsung-Kim. This combination would predictably improve the Samsung-Kim robot’s ability to dock accurately and avoid damaging itself or the charging station, representing a simple and logical design improvement.
  • Expectation of Success: Petitioner contended that success was expected because the modification was straightforward. Implementing a speed reduction algorithm, as taught by Everett, into the microprocessor-controlled Samsung-Kim robot was a known technique for improving docking performance in the field of mobile robotics.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claim 9 based on combinations including Jones (a 1998 textbook on autonomous robots), which taught an "Avoid" behavior for obstacle avoidance that could be adapted to avoid base station signals when the robot’s battery is not low.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, emphasizing that the petition was filed very early in a parallel ITC proceeding, before an ITC schedule was set. Critically, Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the ITC or district court, which Petitioner argued weighs heavily against denial by eliminating concerns of duplicative efforts.
• §325(d): Petitioner contended that denial under §325(d) was inappropriate because the petition’s arguments and prior art combinations were not cumulative to those considered during prosecution. It was noted that key references like Samsung-Kim, Abramson, and Jones were never cited by the examiner. While Everett and a patent corresponding to LG-Jeon were of record, they were never applied in any rejection. Petitioner argued this petition presented the art in new combinations and with different rationales than those previously before the USPTO.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6-10, 12-15, 18-23, 25, and 26 of the ’423 patent as unpatentable.