iRobot vs. SharkNinja: What should investors expect from the patent battle?
Zachary Silbersher
A veritable patent storm has developed between two purveyors of robotic vacuum cleaners, iRobot ($IRBT) and SharkNinja. In September 2019, SharkNinja launched the Shark IQ Robot, which iRobot claims is a knock-off of its highly-innovative Roomba® “i” and “s” Series products. By October 15, 2019, the parties had each filed their own lawsuits, and iRobot has asked a Court to immediately enjoin the Shark® IQ Robot from the market in advance of the critical holiday shopping season. What can we make of these cases?
Overview of the cases
These cases erupted fairly quickly. On October 7, 2019, iRobot sent a letter to SharkNinja that accused SharkNinja’s Shark® IQ Robot series of infringing multiple patents owned by iRobot. iRobot’s letter demanded that SharkNinja confirm by October 14, 2019 that it will cease selling the infringing products. SharkNinja responded on October 11 by filing its own lawsuit in Delaware for a declaratory judgment that it does not infringe eleven iRobot patents. A few days later, on October 15, iRobot responded by filing its own lawsuit in Massachusetts alleging infringement of six of its patents.
If both lawsuits were garden-variety patent cases, it would be months or years before there would be any substantive determination on the merits. Yet, the key feature of iRobot’s case is that it has simultaneously moved for a preliminary injunction. The Court in Massachusetts has already set a status conference for October 21. At that conference, the Court is likely to set a schedule for iRobot’s preliminary injunction motion, including the date by which SharkNinja must respond as well as the date of any applicable hearing. That hearing is likely to constitute a mini-trial, where each party is likely to call witnesses.
By moving for a preliminary injunction, iRobot is essentially arguing to the Court that if it is not granted near-term relief, its business will suffer irreparable harm. At the conference scheduled on October 21, iRobot is likely to ask for resolution of its preliminary injunction motion in advance of the holiday shopping season. That would create a very tight schedule. Whether the Court agrees or not is likely to be one of the first material decisions of this case.
A peripheral, but nonetheless important issue, that is also likely to be addressed at the conference, will be where this case will proceed. Technically, SharkNinja made it to the courthouse first with its DJ action in Delaware. That was likely a tactical play to jam up iRobot’s anticipated preliminary injunction motion. Typically, two pending lawsuits in different jurisdictions would slow everything down, but iRobot is likely to argue that it faces irreparable harm if the parties are forced to litigate venue for months before reaching the merits.
Both companies are headquartered in Massachusetts, which as a practical matter, means that iRobot has a strong argument that, regardless of whether SharkNinja filed first, SharkNinja’s Delaware case should be transferred to Massachusetts and consolidated with iRobot’s case. Right now, this issue could break many ways, and the October 21 conference is likely to shed light on whether the Court will move ahead with iRobot’s preliminary injunction motion before addressing venue, which would theoretically nullify the near-term import of SharkNinja’s Delaware case.
Overview of the patents
Although iRobot asserted six patents in its lawsuit against SharkNinja, it appears to be moving for a preliminary injunction on the basis of only three of those patents, including U.S. Patent Nos. 9,492,048, 9,921,586, and 9,550,294. These patents generally cover “self-empty” (‘048 patent), “selected cleaning” (‘586 patent) and “recharge/resume” (‘294 patent). A brief review of each patent, iRobot’s claims and SharkNinja’s preliminary response is below.
The ‘048 patent is directed to a robot vacuum that can autonomously remove its own collected debris. The claims cover a robot vacuum cleaner with specific brushes that rotate parallel to the floor, a cleaning bin for housing the debris, and a maintenance station for pneumatically removing debris from the cleaning bin (with particular structural fits) using an air mover and specific “centripetal acceleration of the debris.” This is a long claim with several structural requirements, which theoretically makes it harder to prove infringement. That said, iRobot makes a fairly strong preliminary showing of infringement. SharkNinja’s DJ complaint appears to suggest that, whereas the patent requires the cleaning bin evacuates debris from its “bottom,” SharkNinja’s products do not do that. SharkNinja’s defense has some traction, but it likely will revolve around how the Court ultimately interprets the scope of the patent.
The ‘586 patent is directed to a navigation control system for a robotic vacuum cleaner. The claims cover a robot vacuum that can wirelessly receive instructions to clean rooms in a house at pre-scheduled times. The really impressive feature of this patent is, arguably, that the robot vacuum can create a map of the home as well as a floor plan for reach room so that the robot can efficiently traverse all parts of each floor of each room. iRobot’s infringement analysis looks fairly strong. SharkNinja’s DJ complaint indicates that it lacks a processor required to infringe this patent, but it is not entirely clear which precise features SharkNinja is currently claiming are lacking from its products. This should become more clear in SharkNinja’s response to iRobot’s preliminary injunction motion.
The ‘294 patent is directed to an energy management system for a robotic vacuum cleaner. The claims cover a robot vacuum with an energy storage unit, a base station and a navigational control system for moving the robot around the room, mapping the room, and returning the robot to the base station when the need for recharge need is detected. SharkNinja’s DJ complaint claims that its products do not return the robot to a base station to recharge, and then return to cleaning. However, iRobot cites from SharkNinja’s user manual, which states, “when battery power is low, [the Shark® IQ Robot] returns to the base to empty and recharge, then resumes right where it left off.”
A brief infringement analysis of the other three patents asserted by iRobot are addressed below. These patents include: 8,950,038; 8,418,303; and 10,045,676.
The ‘038 patent is directed to a robot vacuum that has modular components that can be swapped out and replaced. This is one of the older patents asserted by iRobot, issuing in 2015. SharkNinja claims that the drive-wheel assemblies and caster wheel assemblies are not each separately removable, although they appear to be removable from iRobot’s claim charts filed along with its complaint. Infringement looks fairly strong, although it is likely to turn on how the Court interprets the scope of the patent.
The ‘303 patent is directed to a vacuum cleaner (although not necessarily a robot vacuum cleaner) that has special elongated core brushes with unique end caps (described as “axial end guards”) to prevent hair and other “filaments” from wrapping around ends of the brush. iRobot accuses the “self-cleaning brushroll” feature of the SharkNinja’s products, which appear to have the required “axial end guard.” SharkNinja claims its products do not have the “axial end guard.” This is most likely a claim construction issue that will require resolution by the Court before determining who has the better argument on infringement.
The ‘676 patent is directed to a method for remote control scheduling of a robot vacuum to clean by using a mobile device, such as a smart-phone. The methods claimed by this patent are really performed by the customer, and therefore, despite claiming that SharkNinja directly infringes based upon “testing,” iRobot’s claim is really one for induced infringement. The reason that is important is because it increases the ultimate burden on iRobot to prove infringement. This patent may also face invalidity challenges under Alice Corp. v. CLS Bank since the patent essentially covers transmitting information between a vacuum cleaner and a smart-phone. SharkNinja claims its product does not issue an error report based upon the brush or filter, but iRobot’s claim chart appears to clearly show error signals related to stuck brush. Overall, even though iRobot has fairly strong infringement allegations for this patent, iRobot will likely face additional inducement and invalidity hurdles, making it harder to prevail on this patent.
How likely is settlement?
Overall, iRobot’s claim charts make a relatively strong showing that, for the most part, SharkNinja’s Shark® IQ Robot is infringing iRobot’s patents. Furthermore, iRobot marshals considerable evidence that SharkNinja has blatantly copied its device, including copying iRobot’s marketing materials as well as touting that Shark® IQ Robot as half the price of iRobot’s Roomba® devices. Moreover, iRobot argues that SharkNinja has copied the very features (selected-cleaning, self-empty, recharge/resume) that purportedly drive sales of these products. Together, if true, these are compelling facts that favor that an equitable remedy, such as a near-term injunction, is warranted.
On the other hand, iRobot will have to contend with invalidity challenges to its three patents. While the technology built into iRobot’s Roomba® products is undoubtedly very sophisticated, the patents themselves generally claim this technology in a relatively functional way. In addition, the first few pages of each patent reveals that this is a very crowded art. Together, that means that iRobot cannot easily write off any invalidity challenge that will surely be mounted by SharkNinja. In addition, though iRobot makes a strong case that SharkNinja has expressly copied its products, it noticeably lacks evidence that SharkNinja expressly copied iRobot’s patents. While that is not terminal to its pitch for a preliminary injunction, the equitable nature of injunctions is typically boosted by strong evidence of copying the patents themselves.
That said, it bears remembering what iRobot must do to prevail. It has asserted six patents, and moved for a preliminary injunction on three of them. iRobot theoretically only needs to prevail on one of those three patents at the preliminary injunction stage to be entitled to an injunction against SharkNinja’s alleged knock-off products before the holiday shopping season. In addition, SharkNinja’s exposure from losing should not be discounted. If it sells through the holiday season, but then loses the case, it may be liable for iRobot’s lost profits, which should theoretically eclipse its own profits.
Both parties face some risk here, and all of that may put pressure on the parties to reach some sort of settlement. A lot is likely to happen over the next month.