Sharkninja Operating LLC, Sharkninja Management LLC, Sharkninja Sales Company v. Irobot Corporation

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
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
______________________
D ANIEL C. T UCKER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Reston, VA, argued for appellants.
Also represented by ERIKA ARNER , Washington, DC;
BENJAMIN AARON SAIDMAN, Atlanta, GA.
J OHN C. O'Q UINN, Kirkland & Ellis LLP, Washington,
DC, argued for appellee. Also represented by WILLIAM H.
Case: 23-1151 Document: 53 Page: 1 Filed: 03/15/2024

-- 1 of 8 --

SHARKNINJA OPERATING LLC v. IROBOT CORPORATION 2
BURGESS , G REGG L OCASCIO, SEAN M. MCELDOWNEY , T ERA
J O STONE.
______________________
Before L OURIE, H UGHES , and STARK, Circuit Judges.
L OURIE, 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
Case: 23-1151 Document: 53 Page: 2 Filed: 03/15/2024

-- 2 of 8 --

SHARKNINJA OPERATING LLC v. IROBOT CORPORATION 3
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.”),
1 International Patent Application Publication
2000/38026; J.A. 1997.
2 Japanese Patent Application Publication 2000-
353014 A, published December 19, 2000; J.A. 2046.
Case: 23-1151 Document: 53 Page: 3 Filed: 03/15/2024

-- 3 of 8 --

SHARKNINJA OPERATING LLC v. IROBOT CORPORATION 4
2022 (F IGS . 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).
D ISCUSSION
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
Case: 23-1151 Document: 53 Page: 4 Filed: 03/15/2024

-- 4 of 8 --

SHARKNINJA OPERATING LLC v. IROBOT CORPORATION 5
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.
F IGS . 3A−3Β, 6−7Β. That placement of the primary brush
assembly, or cleaning head, allows for macroscopic and
Case: 23-1151 Document: 53 Page: 5 Filed: 03/15/2024

-- 5 of 8 --

SHARKNINJA OPERATING LLC v. IROBOT CORPORATION 6
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
Case: 23-1151 Document: 53 Page: 6 Filed: 03/15/2024

-- 6 of 8 --

SHARKNINJA OPERATING LLC v. IROBOT CORPORATION 7
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
Case: 23-1151 Document: 53 Page: 7 Filed: 03/15/2024

-- 7 of 8 --

SHARKNINJA OPERATING LLC v. IROBOT CORPORATION 8
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
Case: 23-1151 Document: 53 Page: 8 Filed: 03/15/2024

-- 8 of 8 --