NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IROBOT CORPORATION,

Appellant

v.

SHARKNINJA OPERATING LLC, SHARKNINJA 

MANAGEMENT LLC, SHARKNINJA SALES 

COMPANY,

Cross-Appellants

______________________ 

2023-1398, 2023-1416

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2021-

00544.

______________________ 

Decided: August 7, 2024

______________________ 

LAUREN ANN DEGNAN, Fish & Richardson P.C., Washington, DC, argued for appellant. Also represented by 

WALTER KARL RENNER, ROSALYND UPTON; OLIVER 

RICHARDS, San Diego, CA.

 LUKE MCCAMMON, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Washington, DC, argued for crossCase: 23-1398 Document: 44 Page: 1 Filed: 08/07/2024
2 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

appellants. Also represented by ERIKA ARNER; DANIEL C.

TUCKER, MICHAEL VINCENT YOUNG, SR., Reston, VA.

______________________ 

Before MOORE, Chief Judge, LOURIE and STARK, Circuit 

Judges.

LOURIE, Circuit Judge. 

iRobot Corporation (“iRobot”) appeals from the final 

written decision of the U.S. Patent and Trademark Office 

Patent Trial and Appeal Board (“the Board”) holding that 

claims 1−4, 6−8, 10, 12−15, 18−23, 25, and 26 of U.S. Patent 

9,884,423 (“the ’423 patent”) are unpatentable as obvious 

over the asserted prior art. SharkNinja Operating LLC v. 

iRobot Corp., No. IPR2021-00544 (P.T.A.B. Nov. 14, 2022), 

J.A. 1−62 (“Decision”). SharkNinja Operating LLC, 

SharkNinja Management LLC, and SharkNinja Sales Co.

(collectively, “SharkNinja”) cross-appeal the decision that 

claim 9 of the ’423 patent had not been shown to have been 

obvious. For the following reasons, we affirm. 

BACKGROUND

This appeal pertains to an inter partes review (“IPR”) 

in which SharkNinja challenged claims 1−4, 6−10, 12−15, 

18−23, 25, and 26 of the ’423 patent, which recite methods 

of docking a robotic cleaning device at a base station to 

charge. For example, claim 1 recites: 

1. A method of docking a robotic cleaning device 

with a base station that includes a plurality of signal emitters including a right signal emitter and a 

left signal emitter, the method comprising:

directing the robotic cleaning device about a 

room at a first velocity;

detecting, by a sensor mounted on the robotic 

cleaning device, a right signal transmitted by 

the right signal emitter of the base station and 

Case: 23-1398 Document: 44 Page: 2 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 3

a left signal transmitted by the left signal emitter of the base station;

controlling forward movement of the robotic 

cleaning device toward the base station at a 

second velocity less than the first velocity while 

orienting the robotic cleaning device in relation 

to the right signal and the left signal;

detecting contact with charging terminals on 

the base station; 

stopping the forward movement of the robotic 

cleaning device in response to detecting contact 

with the charging terminals on the base station; and

charging a battery of the robotic cleaning device.

’423 patent, col. 19 ll. 32−52 (emphases added).

SharkNinja raised five grounds of invalidity in its petition. Ground 1 challenged claims 1−4, 6−10, and 12 in view 

of a U.S. Patent Application Publication (“Jeon”)1 and a 

textbook on sensors for mobile robots (“Everett”).2 Ground 

2 challenged the same claims over the same two references 

in view of an additional U.S. Patent Application (“Abramson”)3. Grounds 3 and 4 challenged only claim 9 in view of 

Jeon, Everett, and another textbook (“Jones”)4, with 

1 U.S. Patent Application Publication 2004/0178767; 

J.A. 780−90. 2 H. R. Everett, “Sensors for Mobile Robots: Theory 

and Application,” ISBN 1-56881-048-2, 1995; J.A. 

791−1243. 3 U.S. Patent Application Publication 2005/0010330; 

J.A. 1350−78. 4 J. L. Jones, “Mobile Robots: Inspiration to Implementation,” ISBN 1-56881-097-0, 1998; J.A. 1379−1620.

Case: 23-1398 Document: 44 Page: 3 Filed: 08/07/2024
4 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

Ground 4 further adding Abramson to the list of asserted 

references. Finally, Ground 5 challenged claims 13−15, 

18−23, 25, and 26 in view of a U.S. Patent (“Kim”)5 and Everett. Each of the asserted references describes autonomous cleaning robots with charging base stations.

In its Final Written Decision, the Board found that 

SharkNinja had established the unpatentability of all challenged claims, except claim 9. Both parties 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 finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

On appeal, iRobot contends that the Board erred in 

concluding that Jeon and Abramson constituted prior art 

under 35 U.S.C. § 102(e) after finding that iRobot failed to 

sufficiently establish and corroborate a prior date of conception. iRobot further contends that the Board erred in 

reaching its obviousness determination in the context of 

Ground 5, asserting that the Board impermissibly relied on 

hindsight in finding a motivation to combine and in reaching its conclusions as to iRobot’s proffered evidence of objective indicia of nonobviousness. On cross-appeal, 

SharkNinja challenges the Board’s conclusion that it failed 

to establish the unpatentability of claim 9 by a preponderance of the evidence. We address each argument in turn.

5 U.S. Patent 5,440,216; J.A. 1636−66. 

Case: 23-1398 Document: 44 Page: 4 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 5

I 

iRobot first argues that the Board erred in evaluating 

whether or not conception had been established prior to the 

publication of two asserted references: Jeon, which was 

filed on June 23, 2003, and Abramson, which was filed on 

July 11, 2003. J.A. 780, Field (22); id. at 1350, Field (22). 

In comparison, the application for the ’423 patent was filed 

on April 19, 2017, with claims of priority back to January 

21, 2004.6 J.A. 63−64, Fields (22) & (60). 

To antedate an asserted reference, the patent owner 

must establish “an earlier conception followed by a diligent 

reduction to practice.” Purdue Pharma L.P. v. Boehringer 

Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001). 

The burden for establishing prior invention falls squarely 

on the patent owner. In re Magnum Oil Tools Int’l, Ltd., 

829 F.3d 1364, 1375−76 (Fed. Cir. 2016) (citing Dynamic 

Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 

1379 (Fed. Cir. 2015)). 

In addition to providing evidence of conception that encompasses all limitations of the claimed invention, see 

Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000), a patent owner must provide independent corroborating evidence. Apator Miitor s ApS v. Kamstrup A/S, 887 F.3d 

1293, 1295 (Fed. Cir. 2018) (“It is well established . . . that 

when a party seeks to prove conception through an inventor’s testimony the party must proffer evidence, ‘in addition 

to [the inventor’s] own statements and documents,’ corroborating the inventor’s testimony.”) (quoting Mahurkar v. 

C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996)). Such 

corroborating evidence must exist “so that a sound 

6 Because the effective filing date of the patent at issue is before March 16, 2013, pre-AIA provisions apply. See

Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-

29, § 3(n)(1), 125 Stat. 284 (2011). 

Case: 23-1398 Document: 44 Page: 5 Filed: 08/07/2024
6 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

determination of the credibility of the inventor’s story may 

be reached.” NFC Tech., LLC v. Matal, 871 F.3d 1367, 

1372 (Fed. Cir. 2017) (internal quotation marks omitted); 

see also Berges v. Gottstein, 618 F.2d 771, 776 (CCPA 1980) 

(“[E]ach corroboration case must be decided on its own 

facts with a view to deciding whether the evidence as a 

whole is persuasive.”).

The Board held that iRobot failed to establish that the 

claimed invention was conceived before Jeon and Abramson. Decision at 14–21. In particular, the Board held that 

iRobot’s proffered evidence:

d[id] not specifically show conception of detecting 

contact with the charging terminals or stopping 

movement of the robot in response to detecting contact with the charging terminals. Moreover, this 

purported evidence of prior conception fails because it is not corroborated by independent evidence of conception of the relevant elements of the 

claimed invention.

Decision at 20; see also id. at 19, 19 n.17 (considering code 

files and “not find[ing] corroboration”); id. at 20 n.18, (addressing a former employee’s testimony and holding that it 

“does not corroborate that the inventors conceived of detecting contact with the charging terminals or stopping 

movement of the robot in response to detecting contact with 

the charging terminals prior to June 23, 2003). 

The Board thus concluded that Jeon and Abramson are 

prior art to the ’423 patent under pre-AIA 35 U.S.C. 

§ 102(e), which, in pertinent part, provides that a “person 

shall be entitled to a patent unless . . . the invention was 

described in . . . an application for patent, published under 

section 122(b), by another filed in the United States before 

the invention by the applicant for patent.”

Conception is a question of law predicated on subsidiary factual findings, one of which is the sufficiency of 

Case: 23-1398 Document: 44 Page: 6 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 7

corroboration. REG Synthetic Fuels, LLC v. Neste Oil Oyj, 

841 F.3d 954, 958 (Fed. Cir. 2016). As indicated above, the 

Board found a lack of proof of conception before Jeon and 

Abramson. iRobot argues that the Board erred in reaching 

that conclusion, but we need not address conception because the issue regarding the applicability of Jeon and 

Abramson can be resolved by looking only to corroboration. 

iRobot contends that we should review the Board’s 

analysis on corroboration de novo, asserting that the Board 

legally erred by requiring that the evidence “recite ‘magic 

words’ corresponding to the words used in the claims.” Appellant’s Br. at 3. We disagree with that characterization. 

The Board did not require that the proffered evidence recite claim language. Rather, it correctly required the independent evidence to corroborate that the claimed 

invention, which included a method comprising the robotic 

cleaning device making contact with charging terminals on 

the base station and subsequently stopping movement 

upon detecting contact with said charging terminals, had 

been conceived prior to June 23, 2003. The Board concluded that it did not, and that finding was supported by 

substantial evidence.

In particular, iRobot attempted to rely upon a “user.tl” 

source code file to corroborate that the inventors had conceived of a robotic cleaning device that could detect contact 

with the charging terminals, and subsequently stop movement in response to that detection, as claimed. The source 

code file provides a “charger-available?” macro, but no additional detail to corroborate that electrical contacts were 

being made or detected. See J.A. 6735. Similarly, although 

the source code includes a subsequent “stop-all” macro, no 

additional detail is provided to establish if that command 

pertains specifically to stopping movement of the robotic 

cleaning device in response to detecting contact with charging terminals. See id. Expert testimony submitted by iRobot did not further clarify the matter, as it stated only that 

the “charger-available?” condition “outputs an indicator” if 

Case: 23-1398 Document: 44 Page: 7 Filed: 08/07/2024
8 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

the robotic cleaning device is “electrically connected” to the 

charger. J.A. 6648. 

iRobot also cited a Design Strategies document as corroborating conception of having the robot detect and respond to contact with charging terminals, but that 

document describes only how a “logic input” indicates 

“when the external charger is available (that is, when good 

contact has been made).” J.A. 6765. It further indicates 

that docking at the charger “depends on the mechanical 

configuration of the charger,” which suggests that the Design Strategies document applied to more than one charging configuration. Id. And, as the Board correctly noted, 

the document’s reference to making “good contact” is insufficient to corroborate conception in view of the ’423 patent’s 

disclosure of detecting contact via depression of the robot’s 

bumper, rather than by an electrical contact. Decision at 

18–19; ’423 patent, col. 15 ll. 13–24.

To be clear, the proffered evidence need not recite the 

specific claim language to corroborate conception, but it 

must nevertheless be specific enough to evidence conception of the claimed electrical contacts, rather than contact 

via bumper depression. As the Board correctly identified, 

such language is absent from that document. See Decision

at 18 (“[T]here is no specific reference to the charging terminals of the base station. . . . And there is no reference in 

[the Design Strategies document] to stopping the robot in 

response to detecting contact with the charging terminals 

of the base station or otherwise.”). That the documents 

could also theoretically have been interpreted to describe 

electrical contacts is insufficient to overturn the Board’s 

factual finding on corroboration. Velander v. Garner, 

348 F.3d 1359, 1378–79 (Fed. Cir. 2003)) (“If the evidence 

will support several reasonable but contradictory conclusions, we will not find the Board’s decision unsupported by 

substantial evidence simply because the Board chose one 

conclusion over another plausible alternative.”).

Case: 23-1398 Document: 44 Page: 8 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 9

iRobot also generally cited a former employee’s declaration as independent evidence corroborating conception. 

J.A. 294 (Patent Owner Response, broadly asserting that a 

declaration by a former employee “corroborates the testimony of the inventors’ conception”), 7505–12 (former employee declaration). But the Board found that that also

failed to sufficiently corroborate conception. Decision at 17

n.16. In particular, as explained by the Board:

In addition to the evidence cited by Patent Owner 

in the section of the Response relating to conception (see Resp. 12), Patent Owner contends that the 

Declaration of Scott Miller (Ex. 2067), a former employee, “corroborates the testimony of the inventor’s conception” (see Resp. 3). Patent Owner does 

not expound on or explain this contention. Nonetheless, we considered the testimony of Mr. Miller 

in Exhibit 2067. Exhibit 2067 does not corroborate 

that the inventors conceived of detecting contact 

with the charging terminals or stopping movement 

of the robot in response to detecting contact with 

the charging terminals prior to June 23, 2003.

Id. at 20 n.18.

iRobot asserts that “Miller’s unrebutted, disinterested 

testimony” corroborates “‘detecting’ and monitoring electrical contact between the robot and the base station—exactly 

as claimed.” Appellant’s Br. at 47. But, as the Board correctly noted, that testimony does not describe the claimed 

charging terminals. It therefore cannot, on its own, sufficiently corroborate their alleged conception date. The former employee’s testimony further cites a Technical

Specifications document as purported corroborating evidence of conception, but, as the Board correctly found, that 

document similarly contains no reference to the charging 

terminals of the base station, detecting the charging terminals, or stopping the robot in response to detecting contact 

with the charging terminals of the base station. Decision at 

Case: 23-1398 Document: 44 Page: 9 Filed: 08/07/2024
10 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

17 n.16. It therefore also fails to corroborate earlier conception of those claim elements.

The remaining cited paragraphs of iRobot’s technical 

expert’s declaration are insufficient to fill the gaps in iRobot’s corroborative evidence. Indeed, other than reciting 

the relevant claim elements and quoting the user.tl source 

code file and Design Strategies document, the expert declaration offers only two conclusory sentences: that “[t]he 

iRobot documents and source code files provide these elements,” J.A. 6648, ¶ 55, and that the Design Strategies 

document “indicates that the Roomba would stop its forward movement to dock at the charger when it detects contact with the charging terminals on the base station,” J.A. 

6648, ¶ 57. Such testimony, without more, is only conclusory with inadequate supporting evidence. It was appropriate, therefore, for the Board to accord it little or no 

weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does 

not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In particular, the expert declaration never provided a supported 

explanation for what a person of ordinary skill in the art 

would have understood the “charger-available?” macro to 

mean. 

Instead, the record provides evidence that (1) the inventors had not yet coded a charger that utilized the 

claimed charging contacts, J.A. 4919−20 at 122:22–123:5; 

(2) the inventors could not testify to the meaning of the

“charger-available?” function without additional supporting evidence to provide “context,” J.A. 5135–36 at 115:3–

116:3; and (3) as admitted by iRobot’s counsel at oral argument before the Board, such context was never provided to 

iRobot’s technical expert or to SharkNinja, J.A. 481 (“I’m 

not sure that that code existed or where it was located, or 

you know, where it was from. But it wasn’t – we didn’t 

have detailed code from 19 years ago on that one specific 

feature.”). 

Case: 23-1398 Document: 44 Page: 10 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 11

In view of the above, we find that the Board’s determination that the proffered evidence is insufficient to corroborate earlier conception was supported by substantial 

evidence. We therefore affirm the Board’s ultimate determination that iRobot did not successfully swear behind 

Jeon and Abramson and that therefore those references 

were available as prior art to assert against the ’423 patent.

II

iRobot next asserts that the Board legally erred in finding a motivation to combine two prior art references asserted in SharkNinja’s fifth asserted ground of 

obviousness, as well as in evaluating iRobot’s proffered evidence of objective indicia of nonobviousness. We address 

each argument in turn.

A 

iRobot first argues that the Board erred in finding a 

motivation to combine Kim and Everett when evaluating 

the obviousness of claims 13–15, 18–23, 25, and 26. According to iRobot, the Board’s motivation analysis was erroneously cursory, improperly concluding that a person of 

ordinary skill in the art would have been motivated to combine the two references simply because of their similarities. 

iRobot further contends that the Board erred by limiting 

its own analysis on the matter to a single sentence declaring that “Petitioner’s reasoning is sound.” See Decision at 

56. We disagree.

The Board first identified that “motivation to combine 

is the only disputed issue as to the challenge” to claims 

13−15, 18−23, 25, and 26 in view of Kim and Everett, and 

thus it elected to “take up that issue first.” Id. at 54. The 

Board next identified how Kim teaches each and every 

claim limitation except one pertaining to a “second velocity,” which is taught by Everett. Id. at 55. The Board thus 

only had to address whether or not a person of ordinary 

skill in the art would have been motivated to combine 

Case: 23-1398 Document: 44 Page: 11 Filed: 08/07/2024
12 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

Everett’s teachings of a second velocity with Kim’s robotic 

cleaning device. Its subsequent analysis considering and 

weighing the arguments raised by SharkNinja and iRobot 

on the matter spanned several pages. Id. at 55–57. 

As explained by the Board, SharkNinja first proposed 

that a skilled artisan would have had a motivation to combine Kim and Everett given the similarities between the 

two references’ teachings. Decision at 55. iRobot countered 

that the devices taught in the asserted references “have 

significant differences in size, weight, configuration, and 

operation.” Id. The Board agreed with SharkNinja that 

iRobot’s arguments were “not supported, speculative, and 

incorrect,” as well as “a legally insufficient bodily incorporation argument.” Id. at 56 (citing Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 

1381 (Fed. Cir. 2016)).

The Board also considered SharkNinja’s argument that 

a “skilled artisan would have been motivated to reduce 

base station approach velocity as taught by Everett in 

[]Kim’s robot to achieve a predictable, desired result (avoiding collision and/or increased robot maneuverability for accurate alignment with the base station),” finding that 

rationale “sound.” Decision at 55–56. 

The Board additionally assessed SharkNinja’s argument that a person of ordinary skill in the art would have 

been motivated to combine Kim with Everett in view of the 

magnet system that Kim disclosed for aligning the robotic 

cleaning device on the base station. In particular, the 

Board credited SharkNinja’s argument that such a magnet-based system would “not prevent misalignment of a robot, traveling at a higher velocity, with its charging 

station.” Id. at 56. It then concluded that “the system disclosed in Kim would benefit from the robot approaching the 

base station to recharge at a lesser velocity than its cleaning velocity.” Id. The Board’s analysis was thus not impermissibly cursory as iRobot contends.

Case: 23-1398 Document: 44 Page: 12 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 13

The Board also does not appear to have impermissibly 

relied on hindsight in finding a motivation to combine. Rather, it simply accepted SharkNinja’s argument that a person of ordinary skill in the art would have recognized that 

reducing velocity upon an attempt to dock, as taught by 

Everett, would beneficially reduce the momentum of Kim’s 

robot to promote better alignment at the charging base station. The Final Written Decision thus properly “reflects 

that the Board considered [the patent owner’s] arguments 

regarding motivation to combine, weighed them against 

the competing evidence and argument, and concluded that 

despite [the patent owner’s] contentions, one of skill in the 

art would have been motivated to combine” the asserted 

prior art. Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 

1316, 1327 (Fed. Cir. 2017).

We thus see no error in the way in which the Board 

addressed or weighed the evidence of record in assessing 

motivation to combine and find its conclusions to be supported by substantial evidence. We therefore affirm the 

Board’s determination that SharkNinja established by a 

preponderance of the evidence that a person would have 

had a motivation to combine Kim with Everett, rendering 

claims 13–15, 18–23, 25, and 26 obvious. 

B 

iRobot next argues that the Board’s determinations regarding objective indicia of nonobviousness were also infected by hindsight and contrary to this court’s precedent. 

We disagree. Although the Board was quite particular in 

its analysis, it correctly required sufficiently detailed evidence to support a nexus between evidence of nonobviousness and the claims. Indeed, as the Board noted, much of 

iRobot’s evidence of nonobviousness referred to a broad array of Roomba devices and was not limited to ones that are 

specifically pertinent to the claims at issue. Decision at 27–

34.

Case: 23-1398 Document: 44 Page: 13 Filed: 08/07/2024
14 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

A patent owner is entitled to a presumption of nexus 

when it shows that the asserted objective evidence is tied 

to a specific product that “embodies the claimed features, 

and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 

(Fed. Cir. 2000). The “existence of and weight assigned to 

any objective indicia of nonobviousness” is an “underlying 

factual question[].” Adapt Pharma Operations Ltd. v. Teva 

Pharms. USA, Inc., 25 F.4th 1354, 1364 (Fed. Cir. 2022); 

see also Bosch Auto. Serv. Sols., LLC v. Matal, 878 F.3d 

1027, 1036–38 (Fed. Cir. 2017) (“[W]hether the requisite 

nexus exists is a question of fact.” (citation omitted)).

We agree with the Board that iRobot failed to provide 

sufficient support that any of its products embodied any of 

the challenged claims. See Decision at 27 (“Patent Owner 

has not shown any commercial product is within the scope 

of the challenged claims”). Indeed, iRobot asserts that it 

offered evidence relating to its Roomba 900 series which 

was alleged to “embody at least claims 13 and 21 of the ’423 

patent,” Appellant’s Br. at 65, but admits that it did not 

submit evidence establishing that the Roomba 900 series

products approach the docking station at a “second velocity 

less than the first velocity before completing a cleaning 

task in the room and in response to detecting a need to 

charge the energy storage unit” as required by the claims. 

’423 patent, col. 20 ll. 47–50; see Appellant’s Br. at 66–67 

(“iRobot had specifically pointed to the CES video as showing the robot slowing down as it approached” the base station, but “in the video, the return to the base station was 

initiated by the demonstrator using a mobile phone application,” rather than by detecting a need to charge.). 

Moreover, iRobot never provided an analysis to establish coextensiveness, and therefore could not have established a presumption of nexus for its products. Decision at 

28 (“Patent Owner does not provide an analysis demonstrating that its evidence or products are coextensive (or 

nearly coextensive) with the challenged claims.”). 

Case: 23-1398 Document: 44 Page: 14 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 15

Nevertheless, a patent owner is further “afforded an opportunity to prove nexus by showing that the evidence of 

secondary considerations is the ‘direct result of the unique 

characteristics of the claimed invention.’” Fox Factory, Inc. 

v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) 

(quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). 

But iRobot failed to establish that the proffered evidence of 

secondary considerations was the direct result of any 

unique characteristics of the claims. Instead, as the Board 

found, the evidence proffered by iRobot “is of broad scope 

relating to Roomba and not shown to be related to the 

claimed invention.” Decision at 33. iRobot did allege recognition, praise, and copying in view of an “auto charge and 

resume functionality,” see J.A. 349−53, but it rested its arguments only on the patent’s independent claims, which do 

not recite such a feature, and iRobot failed to argue that 

any other subset of claims was separately patentable. See

J.A. 341−42; Decision at 33–34 (quoting SharkNinja’s analysis that “claim 1 recites no such functionality and claims 

13 and 21 recite only auto-charging, not resuming”); see 

also, e.g., Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. 

Cir. 2013) (holding that there is no nexus unless the evidence presented is “reasonably commensurate with the 

scope of the claims” (quoting In re Huai-Hung Kao, 

639 F.3d 1057, 1068 (Fed. Cir. 2011))). Accordingly, we 

find that the Board’s conclusion that iRobot did not establish a nexus between its products and the claims was supported by substantial evidence.

We therefore affirm the Board’s determination that

iRobot did not establish sufficient objective indicia of nonobviousness to overcome SharkNinja’s prima facie case.

III

On cross-appeal, SharkNinja argues that the Board 

erred in holding that it failed to establish the obviousness 

of claim 9 by a preponderance of the evidence.

Case: 23-1398 Document: 44 Page: 15 Filed: 08/07/2024
16 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

SharkNinja challenged the patentability of claim 9 in 

four of its five asserted grounds. In its first ground, 

SharkNinja asserted obviousness in view of Jeon and Everett, but the Board held that that combination failed to 

teach certain elements of claim 1—a determination that 

SharkNinja did not challenge on appeal. In its second 

ground, SharkNinja asserted Jeon and Everett in further 

view of Abramson. Its third and fourth grounds (collectively, the “Jones grounds”) repeated the challenges of 

Grounds 1 and 2 further in view of the Jones reference. See 

Decision at 52. 

Claim 9 depends from claim 1 and recites that the 

method further comprises “avoiding, by the robotic cleaning device, the right signal and the left signal while an energy level of the battery of the robotic cleaning device 

remains above a predetermined energy level.” ’423 patent, 

col. 20 ll. 20−24.

SharkNinja argues that the Board erred in considering

the second ground by incorrectly reading embodiments into 

the claim, yielding a too-narrow construction for the term 

“avoiding.” It further contends that the Board’s determinations that the claims had not been shown to have been 

obvious by the Jones grounds were unsupported by substantial evidence. We address each argument in turn.

A 

SharkNinja’s first argument hinges on claim construction. Although the parties disputed what “avoiding” in the 

context of claim 9 meant, neither argued for a formal construction. Decision at 53. The Board held that “avoiding” 

required “more than not attempting to detect the signals”

after consulting the ’423 patent specification, which consistently describes “avoidance” features as involving the robotic cleaning device actively keeping away from the base 

station’s signals. Id. We review claim construction based 

on the intrinsic record de novo. Teva Pharms. USA, Inc. v. 

Sandoz, Inc., 574 U.S. 318, 331 (2015).

Case: 23-1398 Document: 44 Page: 16 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 17

We begin by looking to the language of the claim itself. 

Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1374 

(Fed. Cir. 2019). Claim 9 depends from claim 1 and recites

that the method comprises “avoiding, by the robotic cleaning device, the right signal and the left signal while an energy level of the battery of the robotic cleaning device 

remains above a predetermined energy level.” ’423 patent, 

col. 20 ll. 20−24. Some understanding of the meaning of 

claim 9 can be gleaned from claim 1, which first introduces 

said right and left signals. 

Claim 1 describes two different types of interplay between the robotic cleaning device and those signals. The 

claim first requires that the device detects the signals. ’423 

patent, col. 19 ll. 38–41 (“detecting, by a sensor mounted on 

the robotic cleaning device, a right signal transmitted by 

the right signal emitter of the base station and a left signal 

transmitted by the left signal emitter of the base station”). 

Thereafter, claim 1 describes physical movement of the device in relation to the signals. Id. col. 19 ll. 42–46 (“controlling forward movement of the robotic cleaning device 

toward the base station . . . while orienting the robotic 

cleaning device in relation to the right signal and the left 

signal”). Such orientating allows the device to dock onto 

the base station such that the final step in the claimed 

method, “charging a battery of the robotic cleaning device,” 

can be achieved. Id. col. 19 l. 52. But ultimately, claim 1 

does not provide much clarity as to whether avoidance of 

those signals, as recited in claim 9, requires an active

movement component or if mere avoidance of detection suffices.

Additional context for understanding the scope of claim

9 may be gleaned from claim 3, which also depends directly 

from claim 1, and recites “seeking, by the robotic cleaning 

device, the right signal and the left signal when the energy 

level of the battery is less than a predetermined energy 

level.” Id. col. 19 ll. 61–65 (emphasis added). Claim 3, with 

its seeking behavior at a lower battery level, thus appears 

Case: 23-1398 Document: 44 Page: 17 Filed: 08/07/2024
18 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

as somewhat of a counterpart to claim 9, with its avoiding 

behavior at a higher battery level. Claim 6, which depends 

from claim 3, further recites “altering a movement characteristic of the robotic cleaning device in seeking the right 

signal and the left signal.” Id. col. 20 ll. 6–8 (emphasis 

added). There is no claim 6 counterpart that depends from 

claim 9, however. Thus, whether claim 9 requires something more than not detecting the signal, such as by, e.g., 

altering a movement characteristic in avoiding the right 

and left signal requires us to consult the rest of the intrinsic record, focusing on the patent’s specification, as the parties have not pointed to anything in the prosecution history 

that could meaningfully impact our analysis. See Phillips

v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (noting 

that the specification is “highly relevant to the claim construction analysis” and the “single best guide to the meaning of a disputed term” (quoting Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).

The specification clarifies the matter. For example, it 

confirms that the “seek” behavior of claim 3 and the “avoid” 

behavior of claim 9 are not perfectly parallel counterparts. 

That is—the “seek” behavior is one that may be engaged 

“passively” as well as “actively,” depending on the battery 

level and state of operation of the robotic cleaning device. 

See, e.g., ’423 patent, FIG. 7. The patent does not describe 

a passive version of avoidance, however. Instead, as the 

Board correctly noted, avoidance behaviors are consistently described as active ones, requiring a movement component. See Decision at 53 (citing ’423 patent, col. 2 ll. 52–

57 (describing that, “when the quantity of energy stored [in 

the robot’s battery] exceeds the high energy level,” the robot performs a “task including movement of the robotic device away from the base station in response to reception, by 

the signal detector, of a base station avoidance signal”), col. 

3 l. 65–col. 4 l. 1 (describing how “the first signal emitter 

transmits an avoidance signal, thereby restricting a movement of the robotic device to directions away from the base 

Case: 23-1398 Document: 44 Page: 18 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 19

station, [while] the second signal emitter transmits a homing signal, thereby directing a movement of the robotic device to the base station”), col. 6 ll. 17–22 (describing how 

“an avoidance signal” is generated “in a diffuse region near 

the base station 10 to prevent generally the robot from 

coming into inadvertent direct contact with the base station 10 while performing a task, such as vacuuming”), col. 

11 l. 62–col. 12 l. 21 (similar)).

SharkNinja protests that such an analysis impermissibly reads embodiments into the claims while also ignoring 

the plain claim language that recites that the robotic cleaning device avoid the right and left signals, rather than the 

base station. That is not correct. The examples above 

serve only to demonstrate that the patent consistently describes avoidance as an active behavior that alters the 

movement of the robotic cleaning device. Although some of 

those examples involve actively moving away from the base 

station, the patent specification also describes actively 

avoiding signals generated therefrom. For example, the 

patent provides: 

If an avoidance signal 60 is detected, the robot 40

chooses a turning direction 120. The robot 40 then 

begins to turn in the chosen direction until the 

avoidance signal 60 is no longer detected 130. 

Once the avoidance signal 60 is no longer detected, 

the robot 40 continues turning for an additional 

amount 140 such as 20°, or the robot may turn randomly between 0° and 135°.

’423 patent, col. 13 ll. 17–26 (emphasis added); see also id.

at FIG. 6A.

Such active avoidance behaviors are otherwise also in 

accordance with the general tenor of the ’423 patent disclosure. For example, starting in the abstract, the ’423 patent 

describes “systems for emitting avoidance signals to prevent inadvertent contact between the robot and the base 

station.” ’423 patent, Abstract; see also id. col. 2 ll. 21–34 

Case: 23-1398 Document: 44 Page: 19 Filed: 08/07/2024
20 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

(describing prior art systems that did not actively prevent 

inadvertent collisions between the robotic cleaning device 

and the base station). Merely ignoring a homing signal, as 

SharkNinja proposes claim 9 allows for, would not meet 

that goal, as the robotic cleaning device may still otherwise 

experience inadvertent contact with the base station. Indeed, nowhere in the patent is the robotic cleaning device 

described as merely avoiding detection of the signals without additionally altering its movement. Rather, consistently throughout the specification, the device first 

purposefully detects the signals and then either actively 

“avoid[s the] base,” where the signals are generated, see, 

e.g., id. at FIG. 7, or otherwise actively alters its path first 

so that it can subsequently avoid signal detection following 

that act of relocation. Id. col. 13 ll. 17–26, FIG. 6A.

The specification thus confirms that a reader would understand “avoiding” to require something more than 

merely not attempting to detect the signals. 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.”) (quoting Renishaw PLC v. Marposs Societa’ 

per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). 

In appealing the Board’s determination that 

SharkNinja failed to establish by a preponderance of the 

evidence that Jeon, Everett, and Abramson render claim 9 

obvious, SharkNinja contested only the Board’s construction of the term “avoiding.” Because we agree with the 

Board’s construction, we affirm its ultimate conclusion that 

claim 9 had not been shown to have been obvious. 

B 

SharkNinja finally asserts that, even if the Board’s 

construction stands, its holdings that claim 9 was not 

shown to have been obvious in view of the Jones grounds 

were unsupported by substantial evidence.

Case: 23-1398 Document: 44 Page: 20 Filed: 08/07/2024
IROBOT CORPORATION v. SHARKNINJA OPERATING LLC 21

In particular, SharkNinja seems to assert that the 

Board erred by ignoring how the petition presented the 

teachings of Jones in the context of its asserted obviousness 

grounds. Notably, there is no dispute that Jones does not 

teach the avoiding step recited in claim 9. Rather, Jones 

teaches a different “avoid” feature in which the robotic 

cleaning device avoids being distracted by IR signals that 

have reflected off objects in the cleaning field. In its petition, SharkNinja asserted that a person of ordinary skill in 

the art would have incorporated a variant of that feature 

into the device taught by Jeon such that the modified device avoided signals emitted directly from the base station. 

The Board aptly summarized SharkNinja’s argument, 

quoting its assertion that such a combination would have 

been capable of “achiev[ing] a predictable result” while further “conserv[ing] energy, sav[ing] time, and avoid[ing] accidental collisions with the base station.” Decision at 54. 

But the Board found that those arguments did not establish a prima facie case of obviousness because they were 

“too general and conclusory.” Id. The Board further noted 

that even if a person of ordinary skill in the art were to 

incorporate Jones’s avoid feature into Jeon, the references 

themselves still did not teach the element of avoiding signals emitted from the base station.

SharkNinja nevertheless appears to assert that, using 

common sense and routine skill, one of ordinary skill in the 

art would have had some non-negligible motivation to reconfigure Jones’s avoid feature to yield something that 

could read on claim 9. The Board was correct to reject such 

an argument. Although such “‘common sense’ [arguments] 

can be invoked, even potentially to supply a limitation 

missing from the prior art, [they] must still be supported 

by evidence and a reasoned explanation.” Arendi S.A.R.L. 

v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016). We see 

no error in the Board concluding that what SharkNinja 

presented was insufficient to establish a prima facie case 

of obviousness against claim 9 and find its factual findings 

Case: 23-1398 Document: 44 Page: 21 Filed: 08/07/2024
22 IROBOT CORPORATION v. SHARKNINJA OPERATING LLC

on the matter to be supported by substantial evidence.

Accordingly, we affirm the Board’s determination that 

SharkNinja failed to establish by a preponderance of the 

evidence that the asserted combinations of Jeon, Everett, 

Abramson, and Jones render claim 9 obvious.

CONCLUSION

We have considered the parties’ remaining arguments 

and do not find them persuasive. For the foregoing reasons, we affirm the Board’s determination in IPR2021-

00544 that claims 1−4, 6−8, 10, 12−15, 18−23, 25, and 26 of 

U.S. Patent 9,884,423 are unpatentable, as well as its conclusion that SharkNinja did not establish the unpatentability of claim 9 by the requisite preponderance of the 

evidence. 

AFFIRMED

COSTS

No costs.

Case: 23-1398 Document: 44 Page: 22 Filed: 08/07/2024