Case: 23-1151 Document: 53 Page: 1 Filed: 03/15/2024
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`NOTE: This disposition is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
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`SHARKNINJA OPERATING LLC, SHARKNINJA
`MANAGEMENT LLC, SHARKNINJA SALES
`COMPANY,
`Appellants
`
`v.
`
`IROBOT CORPORATION,
`Appellee
`______________________
`
`2023-1151
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2021-
`00545.
`
`______________________
`
`Decided: March 15, 2024
`______________________
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`DANIEL C. TUCKER, Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP, Reston, VA, argued for appellants.
`Also represented by ERIKA ARNER, Washington, DC;
`BENJAMIN AARON SAIDMAN, Atlanta, GA.
`
` JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
`DC, argued for appellee. Also represented by WILLIAM H.
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`SHARKNINJA OPERATING LLC v. IROBOT CORPORATION
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`BURGESS, GREGG LOCASCIO, SEAN M. MCELDOWNEY, TERA
`JO STONE.
`
`______________________
`
`Before LOURIE, HUGHES, and STARK, Circuit Judges.
`LOURIE, Circuit Judge.
`SharkNinja Operating LLC, SharkNinja Management
`LLC, and SharkNinja Sales Company (“SharkNinja”) ap-
`peal from a final written decision of the U.S. Patent and
`Trademark Office Patent Trial and Appeal Board (“the
`Board”) holding that claims 24, 25, 32−34, 36, 37, 55, 56,
`and 62 of U.S. Patent 7,571,511 had not been shown to
`have been unpatentable as obvious in view of the asserted
`prior art. SharkNinja Operating LLC v. iRobot Corp., No.
`IPR2021-00545, 2022 WL 4111189 (P.T.A.B. Sept. 6, 2022)
`(“Decision”). For the following reasons, we affirm.
`BACKGROUND
`This appeal pertains to an inter partes review (“IPR”)
`
`in which SharkNinja challenged various claims of the ’511
`patent directed to an autonomous floor-cleaning robot vac-
`uum. Independent claim 24 is presented below:
`24. A self-propelled floor-cleaning robot com-
`prising
`a housing defining a round housing perime-
`ter;
`a powered primary brush assembly disposed
`within the round housing perimeter and posi-
`tioned to engage a floor surface;
`a powered side brush extending beyond the
`round housing perimeter and positioned to
`brush floor surface debris from beyond the
`round housing perimeter;
`an obstacle detector responsive to obstacles
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`SHARKNINJA OPERATING LLC v. IROBOT CORPORATION
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`encountered by the robot; and
`a control circuit in electrical communication
`with the motor drive and configured to control
`the motor drive to maneuver the robot about
`detected obstacles across the floor surface
`during a floor-cleaning operation.
`’511 patent, col. 17 ll. 50–63 (emphases added).
`
`Independent claim 55 similarly recites a self-propelled
`floor-cleaning robot comprising “a cleaning head disposed
`within the round housing perimeter” and “a powered rotat-
`ing side brush extending beyond the round housing perim-
`eter.” Id. col. 20 ll. 5–29. Only the primary brush assembly
`and cleaning head limitations are at issue in this appeal;
`thus, the patentability of the corresponding dependent
`claims rests on the fate of independent claims 24 and 55.
`
`In its petition, SharkNinja raised multiple grounds of
`invalidity under 35 U.S.C. § 103 based on Bisset1 in view
`of various additional references including Toyoda.2 Bisset
`describes a self-propelled floor-cleaning robot comprising
`wheels, a controller, and a housing, as well as a cleaning
`head comprising a brush. Decision at *4; J.A. 2001−04,
`2018−22. Bisset’s cleaning head, however, extends beyond
`the perimeter of the robot’s housing, yielding a protuber-
`ance described as being useful for cleaning edges and cor-
`ners.
` See J.A. 2003 (“[T]he cleaner head 122 is
`asymmetrically mounted on the chassis 102 so that one
`side of the cleaner head 122 protrudes beyond the general
`circumference of the chassis 102. This allows the cleaner
`100 to clean up to the edge of a room on the side of the
`cleaner 100 on which the cleaner head 122 protrudes.”),
`
`International Patent Application Publication
`1
`2000/38026; J.A. 1997.
`2 Japanese Patent Application Publication 2000-
`353014 A, published December 19, 2000; J.A. 2046.
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`SHARKNINJA OPERATING LLC v. IROBOT CORPORATION
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`2022 (FIGS. 5A & 5B). Toyoda teaches a self-propelled
`cleaning robot that comprises side brushes. Decision at *4;
`J.A. 2049, 2082.
`The Board construed claims 24 and 55 to require that
`their respective primary brush assembly and cleaning head
`be “entirely within” the housing perimeter, Decision at *3–
`4, and found that Bisset’s robot did not meet that limita-
`tion, id. at *7−8. The Board further held that SharkNinja
`had not met its burden to establish that a person of ordi-
`nary skill in the art would have had a motivation to rede-
`sign the Bisset structure such that its cleaning head no
`longer protruded beyond the housing perimeter. Id. at *7–
`8. The Board thus concluded that SharkNinja had failed
`to establish that the combination of Bisset and Toyoda ren-
`dered independent claims 24 and 55, as well as the claims
`that depend therefrom, obvious. Id.
`SharkNinja appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
`DISCUSSION
`We review the Board’s legal determinations de novo, In
`re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
`Board’s factual findings for substantial evidence, In re
`Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
`is supported by substantial evidence if a reasonable mind
`might accept the evidence as adequate to support the find-
`ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
`SharkNinja argues that the Board erred in construing
`claim 24’s “primary brush assembly disposed within the
`round housing perimeter” and claim 55’s “cleaning head
`disposed within the round housing perimeter” to require
`that those structures be “entirely within” the round hous-
`ing perimeter. It further argues that the Board erred in
`finding that it failed to establish a motivation to modify
`Bisset such that the cleaning head would have been posi-
`tioned entirely within the housing perimeter. We address
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`each argument in turn.
`Claim construction is ultimately a question of law that
`we review de novo. Intel Corp. v. Qualcomm Inc., 21 F.4th
`801, 808 (Fed. Cir. 2021). “It is a ‘bedrock principle’ of pa-
`tent law that ‘the claims of a patent define the invention[,]
`which the patentee is entitled . . . to exclude’” others from
`practicing. Phillips v. AWH Corp., 415 F.3d 1303, 1312
`(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari
`Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
`2004)); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
`1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims
`themselves . . . to define the scope of the patented inven-
`tion.”).
`We begin with the language of the claims, which ex-
`pressly require that the primary brush assembly and
`cleaning head be “within” the housing perimeter. The term
`“within” establishes a relationship between the primary
`brush assembly, or alternatively, the cleaning head, and
`the boundary structure of the housing perimeter. See ’511
`patent, col. 17 ll. 52–54; id. col. 20 ll. 17–18. In contrast, a
`different limitation reciting a side brush establishes a re-
`lationship between that side brush and the housing perim-
`eter such that the side brush “extend[s] beyond the housing
`perimeter.” See id. col. 17 ll. 55–57; see also id. col. 20 ll.
`19−25. Given that the claims expressly contemplate that
`the side brush “extend[s] beyond” the housing perimeter,
`while the primary brush assembly and cleaning head exist
`“within” the perimeter, the plain language of the claims
`supports that the primary brush assembly and cleaning
`head be located entirely within the housing perimeter.
`The specification similarly describes how the primary
`brush assembly is “mounted in the deck 82 recess,” which
`is consistently depicted as existing entirely within the
`housing perimeter. See ’511 patent, col. 12 ll. 29−38; id.
`FIGS. 3A−3Β, 6−7Β. That placement of the primary brush
`assembly, or cleaning head, allows for macroscopic and
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`microscopic particulates to be directed into the removable
`dust cartridge, which is also consistently depicted as being
`entirely within the round housing perimeter of the robot.
`Id. col. 12 ll. 38−53. In contrast, the specification repeat-
`edly describes how the side brush “direct[s] particulates
`outside the envelope of the robot into the self-adjustable
`cleaning head [or primary brush assembly] subsystem.”
`See ’511 patent, col. 1 ll. 25−34 (emphasis added); see also
`id. col. 8 ll. 24−28, 58−65 (describing how the side brush
`arms “extend beyond the outer periphery of the autono-
`mous floor-cleaning robot” (emphasis added)). Each of
`those disclosures naturally aligns with the adopted “en-
`tirely within” construction.
`SharkNinja suggests that such a construction improp-
`erly imports the word “entirely” from the disclosed embod-
`iments into the claims. Appellants’ Br. at 26−28. We
`disagree, as the claim construction arises from the claim
`language itself. That it is consistent with the embodiments
`and other disclosures in the specification does not mean it
`improperly imports limitations from the specification. Ra-
`ther, it supports our conclusion that the construction is cor-
`rect. See Phillips, 415 F.3d at 1316 (“The construction that
`stays true to the claim language and most naturally aligns
`with the patent’s description of the invention will be, in the
`end, the correct construction.”).
`We next turn to SharkNinja’s argument that, even if
`the “entirely within” construction was correct, the Board
`abused its discretion by failing to address all arguments
`raised in the petition, and its resulting conclusion that
`SharkNinja failed to establish a motivation to alter Bisset
`such that its cleaning head fit entirely within the housing
`perimeter was not supported by substantial evidence. See
`Appellants’ Br. at 36−47; Decision at *7−8. We review the
`Board’s assessment of the arguments set forth in a petition
`for abuse of discretion. Corephotonics, Ltd. v. Apple Inc.,
`84 F.4th 990, 1002−03 (Fed. Cir. 2023). The Board’s moti-
`vation to combine determinations are fact findings that we
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`review for substantial evidence. Gartside, 203 F.3d at
`1316.
`The entirety of SharkNinja’s argument regarding a mo-
`tivation to modify Bisset’s cleaning head in the context of
`claims 24 and 55 is the assertion that “Petitioners showed
`for claim 1 in Section VII.E.6” that such modification would
`have been obvious. J.A. 1064 (claim 24), 1075 (claim 55).
`Section VII.E.6 of the petition describes the protrusion of
`Bisset’s cleaning head as “no longer be necessary for edge
`cleaning” following the addition of a side brush to the robot
`structure. Id. at 1039. We agree with the Board that “it is
`not enough to simply state that the protruding brush bar
`is ‘unnecessary,’” rather, “a skilled artisan would need
`some reason to change the brush bar” of Bisset to be en-
`tirely within the housing perimeter. See Decision at *8.
`Section VII.E.6 of the petition next provides a single
`sentence asserting that “with Bisset’s protruding configu-
`ration, debris in the cleaning path will disadvantageously
`contact wheels before they can be cleaned by the brush
`bar.” J.A. 1039 (italics in original). That sentence cites an
`expert declaration, which repeats the same assertion, but
`otherwise does not cite anything in the prior art for sup-
`port. See J.A. 1903−04. It was not error for the Board to
`be unpersuaded by this one sentence argument.
`The petition otherwise merely refers to the placement
`of Bisset’s protruding cleaning head as “simply a design
`choice.” The Board’s finding that this does not establish a
`sufficient motivation to modify the intentionally protrud-
`ing structure in Bisset is supported by substantial evi-
`dence. See Decision at *8.
`In view of the above, we find the Board’s conclusion
`that SharkNinja failed to establish that a person of ordi-
`nary skill in the art would have been motivated to redesign
`Bisset such that its cleaning head fit entirely within the
`housing perimeter was supported by substantial evidence.
`Furthermore, we conclude that the Board adequately
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`considered the arguments raised in the petition and thus
`did not abuse its discretion.
`CONCLUSION
`We have considered SharkNinja’s remaining argu-
`ments and do not find them persuasive. For the foregoing
`reasons, we affirm the Board’s final written decision hold-
`ing that claims 24, 25, 32−34, 36, 37, 55, 56, and 62 of the
`’511 patent were not shown to have been unpatentable in
`view of the asserted prior art.
`AFFIRMED
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`