SharkNinja Inc v. Dyson Technology Ltd

1. Case Identification

• Case #: IPR2023-01322
• Patent #: 10,433,687
• Filed: August 21, 2023
• Petitioner(s): SharkNinja, Inc., SharkNinja Operating LLC, SharkNinja Management LLC, and SharkNinja Sales Company
• Patent Owner(s): Dyson Technology Limited
• Challenged Claims: 1-4, 8, and 10

2. Patent Overview

• Title: Handheld Cyclonic Vacuum Cleaner
• Brief Description: The ’687 patent discloses a handheld cyclonic vacuum cleaner featuring a pistol grip handle and a dirt collector that empties from the front via a pivoting end wall. The design purports to offer improved ergonomics, particularly during the dirt disposal process.

3. Grounds for Unpatentability

Ground 1: Obviousness over Conrad/Conrad - Claims 1-4, 8, and 10 are obvious over Conrad’630 in view of Conrad’787.

• Prior Art Relied Upon: Conrad’630 (Application # 2011/0314630) and Conrad’787 (Application # 2016/0174787).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Conrad’630, discloses a handheld cyclonic vacuum cleaner that meets every limitation of the challenged claims except for the specific handle configuration. Conrad’630 teaches a dirt collector positioned at the front of the unit with a pivoting front end wall (wall 158) that opens for emptying. Petitioner emphasized that this design meets the key limitations added during prosecution to secure allowance of the ’687 patent, namely that the vacuum’s longitudinal axis passes through the region bounded by the perimeter of this end wall. The secondary reference, Conrad’787, by the same inventor, was argued to supply the missing handle limitations, explicitly disclosing a "pistol grip configuration" on a similar handheld vacuum. This includes a handle inclined at approximately 105 degrees relative to the cyclonic unit's axis—well within the claimed 85-140 degree range—and an intersection of the handle and longitudinal axes within the vacuum cleaner body.
  • Motivation to Combine: A POSITA would combine these references because Conrad’630’s own specification expressly states that its handle can be relocated "at the rear" of the vacuum and be of "any design." This statement would directly encourage a POSITA to explore alternative, known handle designs for that location. A POSITA would have looked to ergonomic solutions like the pistol grip in Conrad’787 to improve comfort and control, particularly since both vacuums are designed for use with attachments. Petitioner argued that using a pistol grip provides a better, more comfortable grip when manipulating the vacuum in one hand and an attachment in the other, a key benefit taught by Conrad’787.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as the combination involves the straightforward mechanical substitution of one known handle design for another on a vacuum body. This is a predictable design choice that would not interfere with the separate and distinct cyclonic separation and dirt collection systems taught by Conrad’630.

Ground 2: Obviousness over Matsumoto/Conrad - Claims 1-4, 8, and 10 are obvious over Matsumoto in view of Conrad’787.

• Prior Art Relied Upon: Matsumoto (EP Publication No. 1,199,023) and Conrad’787 (Application # 2016/0174787).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Matsumoto discloses a stick-type cyclonic vacuum cleaner whose core components meet the challenged claims' structural limitations. Specifically, its dust collecting part includes a dust chamber (chamber 8) with a movable end lid (lid 8c) for emptying, which functions as the claimed "end wall" in its open and closed configurations. Critically, Matsumoto explicitly suggests "miniaturizing" its design to "enhance the operability," which Petitioner argued would lead a POSITA to a handheld configuration by, for example, shortening its connection pipe. The primary deficiency of this miniaturized Matsumoto design would be its unergonomic, nearly horizontal handle. Conrad’787 was asserted to provide the claimed ergonomic pistol grip handle configuration, including the specific angle and intersecting axes.
  • Motivation to Combine: A POSITA, following Matsumoto's own suggestion to create a handheld device, would immediately recognize that the existing handle is uncomfortable, unergonomic, and likely to strain a user's wrist during handheld operation. Petitioner argued a POSITA would thus be motivated to replace it with a more comfortable and robust handle design that was common for handheld tools by the patent's priority date. The pistol grip handle taught in Conrad’787, which provides superior comfort and control, represents a logical and advantageous replacement to overcome the clear deficiencies of Matsumoto’s original handle in a handheld context.
  • Expectation of Success: The combination represented a predictable modification. Replacing an existing handle on the rear of a vacuum body with a different, more ergonomic handle is a routine design task. A POSITA would have a high expectation of success, as this modification would not affect the independent operation of Matsumoto's cyclone and dust collection mechanism.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations using Dyson (International Publication No. WO 2008/009888) as an alternative to Conrad’787, arguing Dyson similarly teaches the claimed pistol grip handle configuration and provides the same motivations for combination with both Conrad’630 and Matsumoto.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a), stating that because the petition was filed before any infringement complaint, the Fintiv factors are neutral or weigh in favor of institution.
• Petitioner also argued against denial under 35 U.S.C. §325(d), asserting that the grounds are new and non-cumulative. Petitioner contended that neither Matsumoto nor Dyson were before the examiner, and the specific combinations of Conrad’630 and Matsumoto with Conrad’787 were not previously considered during prosecution of the ’687 patent.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-4, 8, and 10 of Patent 10,433,687 as unpatentable under 35 U.S.C. §103.