Invention Held Nonobvious Where Asserted Modification Was Design Choice or Unnecessary

– Intellectual Property and Technology Law Journal

Manatt Intellectual Property Protection and Enforcement Partner Irah Donner and Incoming 2026 Associate Catherine Yang wrote an article for Intellectual Property and Technology Law Journal discussing the importance of the Federal Circuit decision for SharkNinja Operating LLC v. iRobot Corporation. 

iRobot filed suits against SharkNinja alleging that they infringed on patents significant to iRobot’s autopilot vacuum, Roomba, and created knockoff robot vacuums based on new technologies and features developed for the Roomba models. While SharkNinja argued that iRobot’s patents were invalid as “the claimed invention would have been obvious to a person having ordinary skill” in the related art and that some of iRobot’s designs were a combination of prior existing art, the court found otherwise, stating that SharkNinja failed to provide evidence and establish that a person of ordinary skill would have chosen to alter the discussed features of iRobot’s product.  

The authors emphasized how this case shows the importance of drafting claims clearly to define the scope of the patented invention as well as avoiding broad and vague claims when writing patent applications. “A comprehensive, proactive prior art search before filing may assist in identifying patentable features and minimize the risk of future invalidation,” they wrote. Additionally, when arguing to invalidate a patent, supporting claims with evidence of a reason to modify prior art to show obviousness is crucial.  

Intellectual Property and Technology Law Journal subscribers can read the full article here

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