What is the status of the iRobot v. SharkNinja patent war?

Zachary Silbersher

I previously blogged about the patent tussle between iRobot and SharkNinja when the dispute originally erupted in late 2019.  At the time, the prevalent concern was that iRobot would secure a quick injunction against SharkNinja’s sales in advance of the critical holiday shopping season.  More than two years on, what started as a single pre-emptive suit commenced by Shark Ninja has ballooned into a multi-front war over whether SharkNinja is infringing iRobot’s patents. This has involved multiple litigations filed in district court, scores of invalidity proceedings filed at the Patent Office, and an investigation commenced before the International Trade Commission.  What is the status of this ongoing patent war?

The District Court Litigations

First, the district court litigations.  After iRobot sent a letter to SharkNinja claiming that the Shark® IQ Robot series of products infringed iRobot’s patents, SharkNinja launched a pre-emptive strike by filing a suit for declaratory judgment of non-infringement in Delaware federal court.  iRobot responded with its own suit in Massachusetts.  SharkNinja’s Delaware suit was quickly transferred to Massachusetts.

Soon after that, iRobot lost an early skirmish where it sought a preliminary injunction against SharkNinja’s continued sales of the robotic vacuums claimed to infringe two of the six iRobot patents asserted in the complaint, namely, U.S. Patent Nos. 9,492,048 and 9,550,294.  The case continued, the balance of patents asserted shifted slightly, the parties engaged in discovery and, in January 2021, the court issued a claim construction order.

The IPRs at the Patent Office

Meanwhile, when the Massachusetts litigation was pending, SharkNinja filed a series of petitions for inter partes review (IPR) against the patents asserted by iRobot within the Massachusetts litigation.  In light of these parallel proceedings at the Patent Office, shortly after the court issued its claim construction order, both iRobot and SharkNinja eventually agreed to stay the Massachusetts litigation pending the outcome of those IPRs (specifically pending the outcome of the IPRs challenging U.S. Patent Nos. 9,550,294, 10,045,676 or 8,418,303.)

SharkNinja continued filing IPRs as well as petitions for post-grant review (PGR) against many other patents owned by iRobot.  In particular, in some cases, SharkNinja filed invalidity proceedings at the Patent Office challenging patents that iRobot owned, but had not yet asserted against SharkNinja.  (This includes U.S. Patent Nos. 7,389,156 and 10,990,110.) This suggests that SharkNinja’s strategy has been to clear the field of potential patents that iRobot can eventually wield to block SharkNinja’s sales of its robotic vacuum cleaners.

A summary of the IPRs and PGRs that SharkNinja has filed against iRobot patents are listed below:  

Overall, SharkNinja has enjoyed much success at the Patent Office invalidating many, but not all, of iRobot’s patents.  In some cases, SharkNinja has completely invalidated a patent, whereas in other cases, SharkNinja has only managed to invalidate some, but not all of the claims of a particular patent.  

More specifically, in the ‘863 IPR, SharkNinja successfully invalidated all challenged claims of the ‘303 patent—including claims 1, 2, 4–12, 14, and 15.  In the ‘733 IPR, SharkNinja successfully invalidated all challenged claims of the ‘294 patent—including claims 1-13.  In the ‘734 IPR, SharkNinja successfully invalidated some of the challenged claims of the ‘586 patent—including claims 8, 10 and 13—but failed to show that other challenged claims were invalid—including claims 14-16.  (iRobot disclaimed several other challenged claims, including claim 1–7, 9, 11–12, and 17–19.)  In the ‘735 IPR, SharkNinja successfully invalidated some of the challenged claims of the ‘’676 patent—including claims 1, 2, 4-10, 12 and 14-18—but failed to show that other challenged claims were invalid—including claim 13.

The IPRs challenging the ‘303 patent, the ‘294 patent, the ‘586 patent and the ‘676 patent—which includes the three patents on which the Massachusetts litigation was stayed—wrapped up at the end of 2021.  Those decisions are currently on appeal at the Federal Circuit, and therefore, the stay of the Massachusetts litigation remains in place.  These appeals were filed generally at the turn of the year, which means that there will not likely be a decision on these appeals until closer to the end of 2022. 

The Investigation at the International Trade Commission

In addition to the Massachusetts district court litigation and the parallel invalidity proceedings at the Patent Office, iRobot opened up a new front.  In January 2021, iRobot commenced an investigation at the U.S. International Trade Commission (ITC).  In the ITC proceeding, iRobot claims that Shark Ninja is infringing U.S. Patent Nos. 9,884,423, 10,813,517, 10,835,096 and 7,571,511.  (iRobot initially asserted U.S. Patent No. 10,296,007, but subsequently dropped it from the investigation.)  Importantly, these patents are technically different from the patents asserted by iRobot within the pending, but currently stayed Massachusetts litigation.

A brief comment about all of these different courts.  If the heart of this dispute is whether SharkNinja’s robotic vacuums are infringing iRobot’s patents, then why are so many different courts and proceedings involved?  The explanation is that each court provides different forms of relief.  In the federal court litigation in Massachusetts, iRobot can seek generally two forms of relief—either damages (money, lost profits, reasonable royalties) or an injunction against SharkNinja’s further sales within the U.S.  In the IPRs at the Patent Office, iRobot can only seek an order invalidating the challenged patent.  The Patent Office does not examine whether or not SharkNinja’s products are infringing iRobot’s patents, and it cannot award iRobot any damages or injunctive relief.  Finally, in the ITC investigation, the ITC will examine whether or not SharkNinja is infringing iRobot’s patents, but the relief granted by ITC is different from that awarded by a district court.  In the ITC, the principle form of relief is an injunction against SharkNinja’s importation of the infringing robotic vacuums (otherwise known as an “exclusion order”).  The ITC cannot grant any money damages to iRobot.

In the ITC investigation, iRobot has asserted the following patent claims: the ‘511 Patent:  claims 12, 13; the ‘423 Patent:  claims 9, 12, 23; the ‘517 Patent:  claims 1, 9 and ‘096 Patent:  claims 17, 26.  As shown above, SharkNinja has filed IPRs or PGRs against all four of these patents, but has received mixed success to date.  One of those challenges (against the ‘517 patent) was denied outright.  Another challenge (against the ‘096 patent) was withdrawn by SharkNinja because a change of inventorship mooted one of the asserted primary art references.  (SharkNinja can most likely re-file that PGR proceeding in the future, provided it comes up with different prior art.) 

iRobot’s ITC investigation has different implications than its Massachusetts litigation.  Whereas the Massachusetts litigation was eventually halted—or, technically, “stayed”—pending the outcome of the IPRs, the same may not happen at the ITC.  Rather, iRobot has cited precedent suggesting that the ITC has never delayed issuing an exclusion order in light of a pending IPR or PGR.  Here, the timing matters.  The IPRs/PGRs against the patents asserted by iRobot within the Patent Office are unlikely to wrap up until the third-quarter of 2022, which is around the same time the ITC is likely to issue its decision.  Specifically, a Final Initial Determination in the ITC investigation is due by April 29, 2022, and a target date (final decision) is due by August 22, 2022.

One interesting issue at stake in the ITC investigation relates to Shark Ninja’s “Series 3” products.  Shark Ninja claims these products constitute design-arounds of the asserted patents, and the ITC should therefore adjudge that they are not infringing and can continue to be imported and sold.  iRobot, for its part, appears to concede that some embodiments of the “Series 3” products reviewed during discovery do not infringe its patents, but iRobot has told the Commission that SharkNinja is nevertheless selling products labelled as “Series 3” that purportedly differ materially from the “Series 3” products produced by SharkNinja in discovery.

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There are many moving pieces in this multi-front patent war between iRobot and SharkNina.  Indeed, this year—2022—will provide multiple milestones to further assess the respective leverage each party gains within the dispute.  This includes the appeals of the IPRs challenging the patents asserted in the Massachusetts litigation, the outcomes of the IPRs challenging the patents asserted in the ITC investigation as well as the decision issued by the Commission in the ITC investigation.  I will address the particular merits, and substantive arguments on both sides for some of these upcoming milestones in future blog posts.