iRobot Corporation

Patent Trials and Appeals Board

Oct 21, 2021

IPR2020-00863 (P.T.A.B. Oct. 21, 2021)

Trials@uspto.gov Paper 33
Tel: 571-272-7822 Date: October 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SHARKNINJA OPERATING LLC,
SHARKNINJA MANAGEMENT LLC, AND
SHARKNINJA SALES COMPANY,
Petitioner,

v.

IROBOT CORPORATION,
Patent Owner.
____________

IPR2020-00863
Patent 8,418,303 B2
____________

Before BARRY L. GROSSMAN, TERRENCE W. McMILLIN, and
AMANDA F. WIEKER, Administrative Patent Judges.

McMILLIN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
SharkNinja Operating LLC, SharkNinja Management LLC, and
SharkNinja Sales Company (collectively “Petitioner”) filed a Petition
requesting an inter partes review of claims 1, 2, 4–12, 14, and 15 of U.S.
Patent No. 8,418,303 B2 (Ex. 1001, “the ’303 patent”). Paper 1 (“Pet.”).
iRobot Corporation (“Patent Owner”) filed a Response. Paper 19 (“PO
Resp.”). Petitioner filed a Reply. Paper 22 (“Reply”). Patent Owner filed a
Sur-reply. Paper 24 (“Sur-reply”). Oral argument was heard on August 4,
2021, and a transcript was entered into the record. Paper 32 (“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1, 2, 4–12, 14, and 15 of the ’303 patent are unpatentable.
B. Related Matters
The parties identify the following matters related to the ’303 patent:
SharkNinja Operating LLC v. iRobot Corp., Case No. 1:19-cv-01935
(D. Del.) (filed Oct. 11, 2019);
iRobot Corp. v. SharkNinja Operating LLC, Case No. 1:19-cv-12135
(D. Mass.) (filed Oct. 15, 2019); and
SharkNinja Operating LLC v. iRobot Corp., Case No. 1:19-cv-12236
(D. Mass.) (filed Oct. 30, 2019).
Pet. 88; Paper 4, 2.
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C. The ’303 Patent
The ’303 patent is titled “Cleaning Robot Roller Processing.”
Ex. 1001, code (54). The disclosed invention “relates to coverage robots,
cleaning rollers, and roller cleaning systems.” Id. at 1:17–18. The disclosed
device includes a cleaning assembly having at least one driven roller/flapper
brush with an elongated core, mounting features extending beyond axial
ends of the core, and a compliant flap extending radially outward from the
core. Id. at 1:35–45. The flap is configured to prevent filaments from
spooling tightly about the core, and axial end guards adjacent the ends of the
core prevent spooled filaments from traversing axially from an outer surface
of the core onto the mounting features. Id. at 1:46–52. In particular,
roller 100 is depicted in Figure 3, reproduced below.

Figure 3 is a side view of a cleaning roller for a coverage robot or cleaning
device. Id. at 1:62–63. “[R]oller 100 includes an end cap 144, which is a
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substantially circular plate at either or both ends of the roller 100 supporting
integral ribs 125 and/or a brush core 140.” Id. at 5:6–9. Roller 100 also
includes “[r]emovable conical end guards 130 made of a soft elastomer
[that] limit the longitudinal travel of filaments 33,[1] keep filaments 33 and
collected hair 33 within the brush ends 135A-B, and/or prevent hair 33 from
spilling over onto bearings 143.” Id. at 5:16–20. “Elastomeric (e.g. soft)
flaps 120 are supported by the core 140 of the roller 100 and extend
longitudinally. These elastomeric or inner pliable flaps 120 are arranged
between the bristles 110.” Id. at 5:22–25. Roller 100 is part of cleaning
head assembly 40 that is installed in chassis 31 of a robotic floor cleaner.
See id. at 4:50–54, Fig. 1B.
D. Challenged Claims
Petitioner challenges claims 1, 2, 4–12, 14, and 15 of the ’303 patent.
The ’303 patent includes two independent claims: 1 and 10 (both directed to
a floor cleaner). Claim 1 recites:
1. A floor cleaner comprising:
a chassis; and
a cleaning assembly carried by the chassis and comprising:
a cleaning assembly housing; and
at least one driven brush rotatably coupled to the cleaning
assembly housing and comprising:
an elongated core having an outer surface and end mounting
features extending beyond respective axial ends of the outer
surface of the core and defining a central longitudinal axis of
rotation;
a compliant portion extending radially outward from the core to
sweep a floor surface as the core is rotated about the central

1 Apparently, mislabeled as 31 in Figure 3. Reference number 31 is also
used in Figure 1B to designate the chassis. See, e.g., Ex. 1001, 1:45–46.
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longitudinal axis of rotation; and
an axial end guard mountable about one of the end mounting
features, the axial end guard configured to prevent spooled
filaments from traversing axially beyond the extremity of the
mounting feature about which the axial end guard is mounted,
wherein the end guard is removable from a longitudinal end
of the core.
Ex. 1001, 17:27–45.
E. Prior Art and Asserted Grounds
Claim(s) Challenged 35 U.S.C.
§2
Reference(s)
1, 4–7, 9–11, 14, 15 102(b) Lang3
1, 4–7, 9–11, 14, 15 103(a) Lang, Fahlen4
8 103(a) Lang, Krier5
8 103(a) Lang, Fahlen, Krier
1, 2, 4–12, 14, 15 103(a) Brundula,6 Lang
1, 2, 4–12, 14, 15 103(a) Brundula, Fahlen, Lang
Pet. 2–3. Petitioner relies on the Declaration of Mr. Joseph A. Fester
(Ex. 1003). Patent Owner relies on the Declaration of Donald A. Coates,
Ph.D. (Ex. 2016).7

2 Because the application leading to the ’303 patent was filed before
March 16, 2013, patentability is governed by the versions of 35 U.S.C.
§§ 102 and 103 preceding the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (2011).
3 U.S. Patent 1,680,741, issued Aug. 14, 1928 (Ex. 1005).
4 U.S. Patent 4,238,870, issued Dec. 16, 1980 (Ex. 1008).
5 U.S. Patent 3,588,945, issued June 29, 1971 (Ex. 1012).
6 U.S. Patent 5,452,490, issued Sept. 26, 1995 (Ex. 1013).
7 Patent Owner’s Updated Exhibit List (Paper 30) filed on July 30, 2021,
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II. ANALYSIS
A. Summary of the Arguments and Dispute
The dispute between the parties is primarily related to the phrase “an
elongated core having . . . end mounting features” as recited in the context of
independent claims 1 and 10. See Ex. 1001, 17:33–36 (claim 1), 18:23–26
(claim 10). Petitioner relies on teachings from the prior art showing
bearings as “end mounting features.” Patent Owner contends that these prior
art teachings do not meet the claim language because the entirety of the
“elongated core” including the “end mounting features” must rotate and
portions of the bearings disclosed in the cited prior art do not rotate. At oral
argument both parties acknowledged that their dispute is primarily one of
claim construction. Tr. 7:24–25 (Petitioner’s counsel: “Claim construction
is dispositive in this case.”), 30:1–3 (Patent Owner’s counsel agreeing that
Petitioner’s counsel “had that exactly right.”). Thus, claim construction is
dispositive as to challenged claims 1, 4, 5, 7, 9–12, 14, and 15.
Patent Owner also raises issues relating to the limitations found in
dependent claims 2 and 6, and motivation to combine the relevant teachings
of Brundula and Lang. See, e.g., PO Resp. 6–7.
B. Claim Construction
Claim construction in this proceeding is governed by 37 C.F.R.

does not list the Coates Declaration (Exhibit 2016) as an exhibit. We
consider this to be an inadvertent error and have considered the Coates
Declaration (Ex. 2016) in preparing this Decision. The Coates Declaration
(Ex. 2016) was listed as an exhibit in Patent Owner’s Response (PO Resp. 4)
and Sur-Reply (Sur-reply iv) and was referred to and relied upon in both of
those papers. We can find no record of the Coates Declaration (Ex. 2016)
being withdrawn and it was not stricken.
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§ 42.100 (b), which provides:
In an inter partes review proceeding, a claim of a patent,
or a claim proposed in a motion to amend under §42.121, shall
be construed using the same claim construction standard that
would be used to construe the claim in a civil action under
35 U.S.C. 282(b), including construing the claim in accordance
with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent.

Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–
19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
customary meaning, as would have been understood by a person of ordinary
skill in the art at the time of the invention, in light of the language of the
claims, the specification, and the prosecution history of record. See Thorner
v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
There is a “heavy presumption,” however, that a claim term carries its
ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
We are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for the purpose of the proceeding.
See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary
to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
The parties agree that the claim terms should be interpreted according
to their plain meaning consistent with the Specification. PO Resp. 11
(“The[ ] claim limitations should . . . be given their ordinary and customary,
i.e., plain, meaning.”); Reply 11 (“The parties agree that the plain meaning
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of the claim language controls.”); Sur-reply 1 (“Correctly framed, resolution
of the claim construction dispute turns on plain meaning of the claim
language in light of the specification.”). In light of this, we construe the
disputed claim terms by identifying the plain meaning consistent with the
Specification.
Patent Owner’s primary argument is a claim construction issue
relating to the following language recited in independent claims 1 and 10
(see PO Resp. 10–17 (headed “Claim Construction”)):
an elongated core having an outer surface and end mounting
features extending beyond respective axial ends of the outer
surface of the core and defining a central longitudinal axis of
rotation . . . [and]

the core is rotated about the central longitudinal axis of rotation

Ex. 1001, 17:33–36, 38–39 (claim 1), 18:23–26, 29–30 (claim 10). Patent
Owner labels these limitations “the ‘core’ limitations” and argues:
Based on plain meaning, these two limitations—the “core”
limitations—collectively include three distinct requirements of
the “core:” (i) that it “ha[s]” both “an outer surface” and “end
mounting features,” (ii) that it “defin[es] a central longitudinal
axis of rotation,” and (iii) that it is “rotated about the central
longitudinal axis of rotation.”

PO Resp. 10 (alterations in original). According to Patent Owner, “because
the ‘outer surface’ and ‘end mounting features’ are each parts of the ‘core’
(i.e., ‘core having an outer surface and end mounting features’), the two
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claim limitations require that both the ‘outer surface’ and the ‘end mounting
features,’ as parts of the ‘core,’ also rotate with it.” Id. at 11.8
We agree with Patent Owner that the plain meaning of the claim
language requires that the “core” rotate but we discern nothing in the plain
meaning of the claim language that requires that all constituent parts of the
“end mounting features” must rotate. Stated differently, we determine that
the “core” limitations can be met even if some of the parts of the “end
mounting features” do not rotate.
Patent Owner contends that use of the word “having” in the phrase
“an elongated core having . . . end mounting features” dictates that
independent claims 1 and 10 should be construed such that the “end
mounting features” must rotate with the core in order to meet the further
limitation that “the core is rotated about the central axis of rotation.” See PO
Resp. 11 (“[B]ecause the ‘outer surface’ and ‘end mounting features’ are
each parts of the ‘core’ (i.e., ‘core having an outer surface and end mounting
features’), the two claim limitations require that both the ‘outer surface’ and
the ‘end mounting features,’ as parts of the ‘core’ also rotate with it.”), 15,
20 (“Under plain meaning, these two limitations require that the ‘end
mounting features,’ as parts of the ‘core’ that is ‘rotated,’ also rotate.”), 24
(“Petitioner’s mappings to Lang and Brundula for the ‘end mounting
features’ are each deficient because they include one or more components
that would not be understood to rotate as part of what Petitioner identifies as
representing the ‘core.’”).

8 Patent Owner does not argue that the cited art fails to disclose “an
elongated core having an outer surface” as recited in the claims. See
generally PO Resp.
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In response to this argument, Petitioner argues that “the plain meaning
of ‘having’ does not require physical integration or co-rotation.” Reply 11.
In support of this argument, Petitioner contends:
[A] larger object can “have” a component even if the
component is not integral to and does not rotate with the larger
objects. For example, a car “having” wheels that rotate to move
the car does not mean that the car and wheels must rotate
together. Likewise, a carousel “having” a base that is attached
to the ground will rotate during operation, but the base will not
rotate with it. This is because “have” is a broad word that
means “possess,” “be made up of” or “comprise,” Ex-1032
[Concise Oxford English Dictionary]; or “to hold, include, or
contain as a part or whole,” Ex-1033 [Merriam-Webster’s
Collegiate Dictionary]. It does not require physical integration,
nor does it require every component of the larger object to
rotate with the rest of the larger object.

Id. at 11–12. We agree with Petitioner that neither the word “having”
considered alone nor with the phrases “an elongated core having . . . end
mounting features” and “the core is rotated about the central axis of
rotation” as recited in the context of claims 1 and 10 require that the “end
mounting features” rotate.
Patent Owner also relies on the Specification of the ’303 patent to
support its claim construction argument. Specifically, Patent Owner cites to
Figure 5 and its related description in the Specification (Ex. 1001, 6:20–52).
PO Resp. 11–13 (citing Ex. 1001, 6:20–52, Fig. 5). Figure 5 is reproduced
below.
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Figure 5 depicts the end of the roller. Ex. 1001, 6:38. The related
description in the Specification states:9
FIGS. 5 and 6 provide additional details of the spool
roller 100. As shown in FIG. 4, the end guard 130, in some
examples, is removable, in order to facilitate installation and/or
removal of the spool roller 100 from a robot 10 or other
primary cleaning device. In particular, the end guard 130 may
take the form of a flat torus 131 and a mounting ring 132. The
mounting ring 132 may be made of plastic, with sector tabs 133
(e.g. curved trapezoids or crenellations formed therein) and
defined notches 134, and a slightly tapering inner diameter that
tapers down from a slip fit (with the roller axle 145 of the roller
core 140) at the flat torus 131 to a tight slip fit or very slight
interference fit at the ends of the tabs 133. The ends of the
tabs 133 are deformed as the end guard 130 is mounted to the
axle 145, and maintain a relatively tight fit during use, yet are
easily removed. As shown in FIG. 5, the notches 134 defined
between the sector tabs 133 may mate with corresponding

9 In interpreting the figures and the related description of the invention in the
Specification, we note that the ’303 patent provides: “[l]ike reference
symbols in the various drawings indicate like elements.” Ex. 1001, 4:40–41.
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angles or protrusions 146 on the axle 145, preventing the end
guard 130 from rotating.
FIG. 5 shows the end of the roller 100 (turned so the
ribs 125 are orthogonal to a viewer) with the end guard 130
about to be mounted. The end guard 130 is slid onto the
axle 145 of the roller 100 until the tabs 130 abut the end
cap 144, or until the protrusions 146 on the axle 145 and/or end
cap 144 abut the flat torus of the end guard 130. The
bearing 143 is a plastic-housed metal bushing that is mounted
on a metal axle pin within the axle 145 of the roller 140, and the
bushing 143 is mounted to a compatible holder on the robot 10,
such that the roller 100 rotates on the metal axle pin about the
bushing 143. For example, the axle 145 and the end guard 130
can be mounted in a robot 10 to rotate about the bearing 143,
which mates with the mount in the robot 10. Triangular shaped
features 147 on the roller 100 act as ramps, allowing the end
guards 130 to be easily twisted off the roller 100 for servicing.

Id. at 6:20–52. With regard to the embodiment depicted in Figure 5 and
described in this passage from the Specification, Patent Owner states, “the
brush roller core [140], defines an axis 101 representing the recited
‘longitudinal axis of rotation’” and “[t]he brush roller core [140] also
includes axle 145 and protrusions 146, which represent exemplary ‘end
mounting features’” and contends a person of ordinary skill in the art “would
have further understood that since axle 145 and protrusions 146 are part of
the brush roller core [140], these components rotate about axis 101 with the
brush roller core [140].” PO Resp. 12.
Patent Owner further states, “[t]he ‘303 patent further describes that
‘the bushing 143 is mounted to a compatible holder on the robot 10, such
that the roller 100 rotates on the metal axle pin about the bushing 143.’
[Ex. 1001], 6:45-48” and contends, “a POSITA [person of ordinary skill in
the art] would have understood that the brush roller core [140], which, being
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part of the roller 100, would also all rotate about axis 101. Ex-2016, ¶39.
Specifically, these elements would rotate ‘about the bushing 143,’ i.e., about
axis 101 with bushing 143 being stationary.” PO Resp. 12.
However, we determine that the Specification of the ’303 patent does
not support Patent Owner’s further contention that “[b]ecause bushing 143
does not rotate, it does not represent one of the ‘end mounting features.’”
Id.10 Although we can find no explicit statement in the ’303 patent as to
whether the “end mounting features” rotate in whole or in part, we determine
that the Specification contradicts Patent Owner’s argument, including the
passage Patent Owner cites. The cited passage includes these two sentences:
The bearing 143 is a plastic-housed metal bushing that is
mounted on a metal axle pin within the axle 145 of the roller
140, and the bushing 143 is mounted to a compatible holder on
the robot 10, such that the roller 100 rotates on the metal axle
pin about the bushing 143. For example, the axle 145 and the
end guard 130 can be mounted in a robot 10 to rotate about the
bearing 143, which mates with the mount in the robot 10.

Ex. 1001, 6:43–50. These sentences state that bearing/bushing 143 is
mounted on a pin within the brush roller core 140 such that the core rotates
and the bearing/bushing 143 is also mounted to the robot 10 such that the

10 The only support Patent Owner cites is paragraph 39 of the Declaration of
Donald A. Coates, Ph.D. (Ex. 2016). Paragraph 39 is a verbatim copy of the
first paragraph on page 12 of the Patent Owner’s Response. Compare
Ex. 2016 ¶ 39, with PO Resp. 12 (first paragraph). However, neither
Dr. Coates in his Declaration nor Patent Owner in its Response provides any
reasoning or explanation to support the conclusion that “[b]ecause bushing
143 does not rotate, it does not represent one of the ‘end mounting
features.’” We find Dr. Coates’s testimony conclusory and do not find it
persuasive to support the stated conclusion. And, thus, we reject this
conclusion based on Dr. Coates’s testimony in the Response.
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bearing/bushing 143 would be prevented from rotating. Thus, the
bearing/bushing is explicitly described as one of the “end mounting
features” and the bearing/bushing does not rotate. Thus, there is no basis for
concluding “[b]ecause bushing 143 does not rotate, it does not represent one
of the ‘end mounting features.’”
Although not cited by Patent Owner, we also look to other figures and
their related descriptions in order to interpret the claims. With regard to the
brush roller core 140, we refer to Figures 7A and 7B, reproduced below, that
show the brush roller core 140 more clearly.

Figures 7A and 7B depict “exploded views of cleaning rollers.” Ex. 1001,
3:66–67. “In FIGS. 7A and 7B, for the purposes of illustration, only the
brush core 140, and not bristles 110 or beaters 111 are shown.” Id. at 7:2–4.
In Figures 7A and 7B, brush roller core 140 is depicted as a long, thin,
center piece of the roller. This is consistent with the plain meaning of
“core.” In Figures 7A and 7B, the “core” is not depicted as including any
“end mounting features.”
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Figure 3 of the ’303 patent, reproduced below, shows the
bushing/bearing 143 on the end of the brush roller core 140.

Figure 3 depicts “a side view of a cleaning roller.” Ex. 1001, 3:62–63. As
described in the Specification, Figure 3 shows, “bushings or bearings 143
rotatably supporting the roller.” Id. at 5:1–12. Claims 1 and 10 recite, “end
mounting features extending beyond respective axial ends of the outer
surface of the core and defining a central longitudinal axis of rotation.” Id.
at 17:33–36, 18:23–27. Figure 3 shows the bearing/bushing 143 “extending
beyond respective axial ends of the outer surface of the core and defining a
central longitudinal axis of rotation.” As shown in Figure 3, the
bearing/bushing 143 meets the recited limitations of “end mounting
features” in claims 1 and 10 and conforms to the plain meaning of “end
mounting features.” We disagree that the Specification of the ’303 patent
supports Patent Owner’s claim construction argument.
Petitioner points out that Patent Owner’s argument that the
bearing/bushing 143 is not part of the “end mounting features” is
inconsistent with arguments that Patent Owner made in the District Court
litigation between the parties involving the ’303 patent. Reply 7–8. Patent
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Owner’s demonstrative exhibits from the Markman11 (claim construction)
hearing included a slide, reproduced below, with annotated Figures 3 and 5
from the ’303 patent.

Ex. 1027, 179. Annotated Figures 3 and 5 depict the “mounting features” as
including the bearing/bushing 143. And, Patent Owner’s counsel argued to
the District Court that the “end mounting features” include the
bearing/bushing. See Reply 7–8. Patent Owner’s counsel during the
Markman hearing before the District Court said: “the end mounting feature,
in this case the bearing,” and “[i]n figure 5 that mounting feature would be
this kind of peach and yellow bearing that’s also on the right just before the
blue end guard.” Ex. 1026 (Transcript of Markman hearing), 14:16, 220:17–
20. And, in a technology tutorial submitted to the District Court, Patent
Owner “also represented that the end mounting features were the bearings.”
Reply 8 (citing Ex. 1028, 21 (“mounting features (e.g., the bearings)”).
Petitioner also points out that Patent Owner’s claim construction
argument is inconsistent with Patent Owner’s prosecution of a continuation
application of the ’303 patent. Reply 9. In this continuation application,
Patent Owner presented a claim that recited, “the end mounting features

11 Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996) (“[W]e
hold that the interpretation of [a claim term] is an issue for the judge.”).
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include a bushing.” Id. (citing Ex. 1030, 215). We rely on the intrinsic
evidence in construing the claims, but note that Patent Owner has taken
actions in other proceedings that are inconsistent with the claim construction
argued here.
Patent Owner’s argument that the “core” limitations of the
independent claims only cover “end mounting features” that rotate with the
core fails. Given its plain meaning, nothing in claim language or
Specification indicates whether the “end mounting features” rotate or do not
rotate. The plain meaning of the claim language is broad enough to include
“end mounting features” that rotate or that do not rotate. And, we decline to
read into the plain meaning of the claim language any unstated
characteristics not dictated by the plain meaning.
C. Legal Standards
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Anticipation “requires that every element and limitation of the claim was
previously described in a single prior art reference, either expressly or
inherently, so as to place a person of ordinary skill in possession of the
invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed.
Cir. 2008) (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373,
1379 (Fed. Cir. 2003); Cont’l Can Co. USA v. Monsanto Co., 948 F.2d
1264, 1267–69 (Fed. Cir. 1991)). “[U]nless a reference discloses within the
four corners of the document not only all of the limitations claimed but also
all of the limitations arranged or combined in the same way as recited in the
claim, it cannot be said to prove prior invention of the thing claimed and,
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thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Consideration of the Graham factors “helps inform the ultimate obviousness
determination.” Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034,
1048 (Fed. Cir. 2016) (en banc).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
We analyze the challenges presented in the Petition in accordance
with the above-stated principles.
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D. Level of Ordinary Skill in the Art
Petitioner identifies the appropriate level of skill in the art as
“someone with at least a four-year degree in mechanical engineering, or
closely related field, and at least one year of experience in the design and
implementation of vacuum cleaning systems.” Pet. 8 (citing Ex. 1003
(Fester Decl.) ¶ 30). Patent Owner does not provide an assessment of the
appropriate skill level. See generally PO Resp. For purposes of this
Decision, we adopt Petitioner’s assessment, which is undisputed and appears
consistent with the level of skill reflected in the Specification and prior art.
E. Claims 1, 4–7, 9–11, 14, 15: Consideration of Alleged Anticipation by
Lang and Obviousness in View of Lang and Fahlen
We begin our analysis with a consideration of Petitioner’s allegations
that Lang anticipates claims 1, 4–7, 9–11, 14, and 15 and that the
combination of Lang and Fahlen would have rendered claims 1, 4–7, 9–11,
14, and 15 obvious. See Pet. 3, 17–53. We start with a description of the
disclosures of Lang and Fahlen and then consider the arguments and
evidence presented relating to the limitations of the challenged claims.
1. Lang (Ex. 1005)
Lang issued on August 14, 1928 (Ex. 1005, 212) and is prior art to the
’303 patent under 35 U.S.C. § 102(b), because it was patented more than one
year prior to the earliest priority date of May 19, 2006, claimed for the ’303
patent (Ex. 1001, codes (22), (60), (63), 1:3–13). Lang was not a reference
cited during examination of the application for the ’303 patent. Id. at

12 Lang has two sets of page numbers. We refer to the page numbers in the
lower, left corner, because, in this set, all pages are numbered.
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code (56); see also Pet. 87 (“No reference relied upon in this Petition was
considered by the U.S. Patent and Trademark Office (‘Office’) during
prosecution.”).
Lang is titled, “Bearing Structure for Vacuum Cleaner Brushes and
the Like.” Ex. 1005, 2. Figure 1 of Lang is reproduced below.

Figure 1 of Lang depicts “a vacuum cleaner having a brush.” Id. at 2:70–71.
Lang is directed to “an improved bearing structure for a vacuum cleaner
brush which permits the safe and continuous use of ball and similar accurate
bearings . . . and which may be easily assembled and disassembled without
injury to any of the parts thereof.” Id. at 2:47–54. Lang’s vacuum cleaner 5
includes nozzle 6 in which a brush and bearing unit is mounted. Id. at 2:85–
87, Fig. 1. A bearing structure is depicted in Lang’s Figure 2, reproduced
below.
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Figure 2 is a sectional view of the improved bearing construction. Id. at
2:72–74. Lang’s brush tube 17 having cleaning bristles thereon (see Fig. 1)
is secured to cylindrical bearing housing 20 that has flanged end 21 with
annular groove 22. Id. at 3:4–8. Bearing housing 20 is adapted to be
pressed onto brush tube 17, but “it is easily removable therefrom if
necessary without injury to itself or the brush tube.” Id. at 3:9–15. Inside
the bearing housing is “a simple ball bearing having an annular row of balls
held between an outer shell or race 29 and an inner race 30.” Id. at 3:35–38.
Inner race 30 includes fixed stud 35, which is connected to knurled
supporting nut 8. Id. at 3:59–61. Knurled supporting nut 8 clamps
cylindrical cup-shaped thread guard 41 to flanged end 21 so as to surround
and substantially enclose the flanged end of bearing housing 20. Id. at 3:78–
82. The bearing is thus protected by two dead air chambers or spaces 42 and
43 and sealing packing 40, and “is protected from dust or dirt, which may
work down through a brush tuft and along the space between the brush
tube 17 and dowel 18, by a packing provided by felt disk 27 and metal disk
26 which form practically a solid seal.” Id. at 3:97–108. Thread guard 41
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sufficiently extends over bearing housing 20 and flange 21, “to prevent
threads from wrapping about the hub of the bearing housing and climbing
the shoulder 48 formed by the flange thereby eliminating this common form
of annoyance.” Id. at 4:1–8.
2. Fahlen (Ex. 1008)
Fahlen issued on December 16, 1980 (Ex. 1008, code (45)) and is
prior art to the ’303 patent under 35 U.S.C. § 102(b), because it was patented
more than one year prior to the earliest priority date of May 19, 2006,
claimed for the ’303 patent (Ex. 1001, codes (22), (60), (63), 1:3–13).
Fahlen was not a reference cited during examination of the application for
the ’303 patent. Id. at code (56); see also Pet. 87.
Fahlen is titled “Brush-Beater Roller for a Vacuum Cleaner”
(Ex. 1008, code (54)) and is directed to a roller comprising an elongated
body of generally rectangular cross section, which includes dovetail slots to
accommodate bristle holders or beating bars. Ex. 1008, 1:10–16. Brush-
beater roller 19 is depicted in Fahlen’s Figure 2, reproduced below.

Figure 2 depicts a brush-beater roller of an upright type vacuum cleaner. Id.
at 2:4–9. Brush-beater roller 19 includes an elongated body 20 and dovetail
slots 21 and 22 forming channels to accommodate elongated holders 23a and
23b for bristle bundles 25 and a beating bar 24. Id. at 2:38–43.
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3. Discussion
It is undisputed that the cited art teaches or suggests all the limitations
of claims 1, 4, 5, 7, 9–11, 14, and 15 except the “core” limitations. See,
supra, § II.B. (“Claim Construction”). With regard to claims 1, 4–7, 9–11,
14, and 15, Patent Owner contests whether the cited art meets the “core”
limitations as construed to require that the “end mounting features” rotate in
their entirety. Patent Owner also disputes whether the cited art discloses the
limitations recited in dependent claim 6.
Claim 1
A floor cleaner comprising:
Petitioner does not take a position as to whether the preamble of
claim 1 is limiting. Pet. 17 (“If the Board finds the preamble limiting, Lang
discloses this element in vacuum cleaner 5.”) (citing Ex. 1005, 1:69–72,
1:85–87, Fig. 1; Ex. 1003 (Fester Decl.) ¶¶ 53–54).
We determine that the preamble of claim 1 is not limiting because a
structurally complete invention is recited in the body of claim 1 and the
preamble only states the purpose or intended use of the invention. Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“[W]here a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation.”). However, we also agree with Petitioner that Lang
discloses a floor cleaner, i.e., a vacuum cleaner.
a chassis; and
Petitioner asserts, “Lang discloses [a chassis] in at least the base of
nozzle 6 and its wheels.” Pet. 18 (citing Ex. 1003 (Fester Decl.) ¶¶ 55–59).
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The Petition states, “The skilled artisan would have understood the base of
Lang’s nozzle and its wheels . . ., along with other support along the base of
the vacuum cleaner, discloses a ‘chassis’ upon which the components,
including the nozzle body and brush assembly, are mounted” (id. at 19
(citing Ex. 1003 ¶ 55)) and:
Dictionary definitions support this broad understanding
of a chassis as “the supporting frame of a structure” or “the
frame and working parts . . . exclusive of the body or housing.”
Ex. 1014 [definition of “chassis,” Merriam Webster’s
Collegiate Dictionary (10th ed. 2001)]. Lang’s nozzle base and
wheels likewise provide a supporting frame that supports its
cleaning assembly, i.e., Lang’s nozzle body and brush.

Id. at 20.
Petitioner also contends that “[i]f [Patent Owner] argues Lang does
not expressly disclose a ‘chassis,’ this limitation is inherent in Lang.”
Pet. 20 (citing Ex. 1003 (Fester Decl.) ¶ 57). In support of this contention,
the Petitioner argues:
Lang’s vacuum cleaner would need a chassis to support its
brush and nozzle so it could clean the floor. Without a chassis
to support them, the brush and nozzle would fall to the floor.
And without a chassis with mounted wheels, it would not be
possible to push and steer Lang’s vacuum cleaner. All vacuum
cleaners include a chassis for these reasons.

Id. at 20–21 (citations omitted).
Petitioner’s showing with regard to this limitation is undisputed,
supported, and persuasive. See Pet. 18–22. We find Lang discloses a
“chassis” as recited in claim 1.
a cleaning assembly carried by the chassis and comprising:
Petitioner asserts, “Lang discloses [a cleaning assembly] in the brush
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and nozzle body.” Pet. 22 (citing Ex. 1003 (Fester Decl.) ¶¶ 60–61). The
Petition states,
Lang’s bearing structures are “mounted as units with the brush
in the nozzle of the vacuum cleaner,” and its brush is “driven
from the motor.” Lang, [2]:1–7. The brush loosens dirt on the
surface, which is removed by suction. Id., [2]:7–11. The brush
and nozzle body are the claimed cleaning assembly, because
they agitate debris and suction it from the floor. [Ex. 1003]
¶ 60.

Id. at 22–23.
Petitioner’s showing with regard to this limitation is undisputed,
supported, and persuasive. See Pet. 22–24. We find Lang discloses a
“cleaning assembly carried by the chassis” as recited in claim 1.
a cleaning assembly housing; and
Petitioner asserts, “Lang discloses [a cleaning assembly housing] in
the body of nozzle 6, including its ‘brush supporting means.’” Pet. 24
(citing Ex. 1003 (Fester Decl.) ¶ 62). In support, the Petition includes an
annotated version of Figure 1 of Lang, reproduced below.

Id. Annotated Figure 1 depicts the “brush supporting means” of Lang in
blue.
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Petitioner’s showing with regard to this limitation is undisputed,
supported, and persuasive. See Pet. 24–25. We find Lang discloses a
“cleaning assembly housing” as recited in claim 1.
at least one driven brush rotatably coupled to the cleaning assembly
housing and comprising:
Petitioner relies on the brush and bearing unit 7 (Ex. 1005, 2:87), the
brush cylinder 17 (id. at 2:101), and the “belt 13 which runs on a pulley 14
on the brush” (id. at 2:93–94) shown in Figure 1 of Lang for disclosing “one
driven brush rotatably coupled to the cleaning assembly.” Pet. 25–26. The
Petition provides, “Lang states the ‘brush is driven by a belt 13 which runs
on a pulley’ that is driven by a motor” (id. at 26 (citing Ex. 1005, 2:92–97))
and “Lang’s ‘brush and bearing unit’ is ‘mounted’ in the nozzle, and
‘supported at its ends by knurled or roughened end nuts 8 which are held in
slots 9 in disks 10 by means of spring fingers 11 . . . suitably fixed to the end
walls of the nozzle 6 by screws 12’” (id. (citing Ex. 1005, 2:88–92, 3:54–64,
Fig. 3)). Petitioner contends, “This allows the brush to rotate and clean the
floor.” Id. at 27; see also Ex. 1003 (Fester Decl.) ¶ 65.
Petitioner’s showing with regard to this limitation is undisputed,
supported, and persuasive. See Pet. 25–27. We find Lang discloses a
“driven brush rotatably coupled to the cleaning assembly housing” as recited
in claim 1.
an elongated core having an outer surface and end mounting features
extending beyond respective axial ends of the outer surface of the core and
defining a central longitudinal axis of rotation;
Petitioner asserts that “Lang’s driven brush includes an ‘elongated
core having an outer surface’ because Lang’s brush cylinder 17 is a ‘metal
tube provided with a wooden dowel or core 18 over which, at each end, the
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tube edges are rolled . . . to firmly secure the dowel” (Pet. 27 (alteration in
original) (citing Ex. 1005, 1:100–2:3; Ex. 1003 (Fester Decl.) ¶¶ 66–71) and
“Lang discloses the claimed ‘end mounting features’ in its bearing structure,
which allows the brush to be rotatably mounted in the nozzle” (id.).
Petitioner further asserts that “Lang’s bearing structures . . . extend beyond
the axial ends of the brush core and cylinder” (id. at 29 (citing Ex. 1005,
2:100–3:7); Ex. 1003 (Fester Decl.) ¶ 67) and “Lang’s core 18, cylinder 17,
and bearing structure ‘defin[e] a central longitudinal axis of rotation’” (id. at
30 (citing Ex. 1003 (Fester Decl.) ¶ 71) (alteration in original)).
As noted above, Patent Owner disputes whether the cited art discloses
the “core” limitations on the basis that claim 1, as properly construed,
requires that all parts of the “end mounting features” must rotate. See, e.g.,
PO Resp. 24 (“Petitioner’s mappings to Lang and Brundula for the ‘end
mounting features’ are each deficient because they include one or more
components that would not be understood to rotate as part of what Petitioner
identifies as representing the ‘core.’”). Specifically, Patent Owner argues:
After identifying Lang’s brush cylinder 17 as
corresponding to the recited “core,” the Petition asserts that
“[t]ogether, bearing housing 20, bearing proper 28, stud 35,
and knurled supporting nut 8 disclose the ‘end mounting
features” (emphasis added). Pet., 27-29. Lang, however,
discloses that stud 35 and knurled supporting nut 8 are
stationary relative to the rotating cylinder 17. Lang, 3:54-61
(“[i]n operation, supporting nut 8, stud 35, the thread guard 41
and the inner race 30 of the bearing are held stationary[]”)
(emphasis added). Similarly, bearing proper 28 is also
stationary relative to the rotating cylinder 17 since, as a “simple
ball bearing,” it includes a stationary inner race 30. Lang, 2:59-
65 (“The inner race 30 is stationary in operation…”)
(emphasis added). Lang’s bearing proper 28, stud 35, and
knurled supporting nut 8 therefore cannot be mapped to “end
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mounting features” since they are stationary and thus do not
“rotate[] about [a] central longitudinal axis of rotation.” Ex-
2016, ¶¶51-52.

PO Resp. 21 (alterations in original). As can be readily appreciated, this
argument by Patent Owner rests on its claim construction argument that we
have rejected. See, supra, § II.B. (“Claim Construction”). Accordingly, we
also reject this argument as not supported by properly construed claim 1.
Petitioner’s showing with regard to this limitation is supported and
persuasive. See Pet. 27–30. We find Lang discloses “an elongated core
having an outer surface and end mounting features extending beyond
respective axial ends of the outer surface of the core and defining a central
longitudinal axis of rotation” as recited in claim 1.
a compliant portion extending radially outward from the core to
sweep a floor surface as the core is rotated about the central longitudinal
axis of rotation; and
Petitioner asserts Lang discloses “a compliant portion” as recited and
Lang and Fahlen would have rendered this limitation obvious. Pet. 31–33.
With regard to Lang disclosing the recited “compliant portion,” Petitioner
relies on the brush bristles shown extending radially outward from the core
as shown in Figure 1 (reproduced above) and Figure 3 of Lang. Id. at 31.
Petitioner also relies on Lang’s disclosure that, “[t]he brush operates directly
on the surface being cleaned and serves to loosen the dirt, grit and other
clinging material, such as threads and the like, so that the suction may
remove them” (Ex. 1005, 2:7–11) and that the brush rotates about the “axis
of the stud 35” (shown in Figures 2 and 4) (id. at 4:54–64). Petitioner
contends, “[a] skilled artisan would have understood Lang’s disclosure to
mean the bristles ‘sweep a floor surface as the core is rotated about the
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central longitudinal axis of rotation’” as recited in this limitation. Pet. 32
(citing Ex. 1003 (Fester Decl.) ¶ 73).
Alternatively, Petitioner contends, “[i]f [Patent Owner] argues that the
‘compl[ia]nt portion’ also requires a ‘compliant flap’ or ‘beater,’ e.g., ’303
patent, Abstract, 7:4-6, 11:1-21, Lang and Fahlen render[] this element
obvious.” Pet. 32. The Petition includes an annotated Figure 1 from Fahlen,
reproduced below.

Id. Annotated Figure 1 of “Fahlen discloses a helically twisted ‘brush-
beater roller’ with bristles 25 (green) and beater bars 24 (yellow).” Id. And,
Petitioner asserts that “Fahlen’s beating bar is compliant.” Id. (citing
Ex. 1003 (Fester Decl.) ¶ 74).
With regard to the reason to combine the relevant teachings of Lang
and Fahlen relating to the “compliant portion” recited in this limitation of
claim 1, the Petition states:
It was well known to use flaps or beater bars with brush
bristles on a brushroll before the ’303 patent. [Ex. 1003] ¶ 75.
The skilled artisan knew that combining bristles and an
agitating element, a beater bar or flap, improved the loosening
of dirt from carpet. Id. For example, in addition to Fahlen’s
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teaching to combine bristles and beater bars, other prior art
patents taught the same combination, touting its advantages. Id.
(citing Lyman,[13] Abstract, 1:10-45, 2:38-42, Fig. 2; Mertes,[14]
1:14-21; Butler,[15] ¶ 35). Thus, one skilled in the art would
have found it obvious to incorporate Fahlen’s beater elements
into Lang’s brushroll because doing so would have been the
combination of a known element (Fahlen’s combination of
bristles and beater bars) with a known system (Lang’s) to
achieve the desirable and predictable result of a vacuum cleaner
that more effectively removes dirt from carpet. Id.

Pet. 32–33.
As discussed previously, Patent Owner argues solely that the “core”
of Lang is not rotated because the “end mounting features” are an integral
part of the “core” and all the “end mounting features” from Lang do not
rotate. PO Resp. 21. However, this argument is based on Patent Owner’s
claim construction contentions which we have rejected and is not effective.
Petitioner’s showing with regard to this limitation is supported and
persuasive. See Pet. 31–33. We find Lang discloses, and that the
combination of Lang and Fahlen teaches, “a compliant portion” as recited in
claim 1.
an axial end guard mountable about one of the end mounting features,
the axial end guard configured to prevent spooled filaments from traversing
axially beyond the extremity of the mounting feature about which the axial
end guard is mounted, wherein the end guard is removable from a
longitudinal end of the core.
Petitioner asserts, “Lang discloses [an axial end guard] in cylindrical

13 U.S. Patent No. 4,429,430, issued Feb. 7, 1984 (Ex. 1010).
14 U.S. Patent No. 6,810,559 B2, issued Nov. 2, 2004 (Ex. 1009).
15 U.S. Patent Application Publication 2006/0272122 A1, published Dec. 7,
2006 (Ex. 1011).
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cup-shaped thread guard 41, alone or in combination with nut 31, washer 34,
and packing 40.” Pet. 33 (citing Ex. 1003 (Fester Decl.) ¶¶ 77–83).
Petitioner contends that “Lang’s bearing housing 20, bearing proper 28,
stud 35, and supporting nut 8 disclose the claimed ‘end mounting features.’”
Id. And, that, “[t]his configuration is shown unassembled in Figure 4 and
assembled in Figure 2.” Id. at 34. The Petition includes annotated versions
of Figure 4 (assembled) and Figure 2 (unassembled), reproduced below, to
illustrate this arrangement.

Id. at 34. Annotated Figures 4 and 2 depict “Figs. 4, 2 (both annotated)
(showing thread guard 41 (orange), mounted to stud 35 (purple) and held in
place by knurled supporting nut 8 (purple), and showing nut 31, washer 34,
and packing 40 (all orange) threaded onto bearing housing 20 (purple)).” Id.
Petitioner contends “thread guard 41 is ‘configured to prevent spooled
filaments from traversing axially beyond the extremity of the mounting
feature about which the axial end guard is mounted’” as recited in this
limitation. Pet. 35 (citing Ex. 1003 (Fester Decl.) ¶ 79). To show this
feature, the Petition states, “thread guard 41 includes central opening 44 that
is ‘flat on one side, as indicated at 45, to correspond in shape to section 46 of
the stud adjacent to shoulder 36 over which section the guard is located
when [clamped] against shoulder 36’” (id. at 34–35 (quoting Ex. 1005,
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3:115–123) (alteration in original); see also id. at Fig. 6) and “[h]aving the
thread guard extend over the bearing housing ‘prevent[s] threads from
wrapping around the hub of the bearing housing and climbing the shoulder
48’” (id. at 35 (quoting Ex. 1005, 4:4–7) (second alteration in original)).
To show that “the end guard is removable from a longitudinal end of
the core” as recited in this limitation, the Petition quotes the following three
passages from Lang (Pet. 36):
The interior of the bearing housing at one end is adapted to be
pressed onto the brush tube for a distance sufficient to make a
firm connection therewith and being tubular and having a
flange, it is easily removable therefrom if necessary without
injury to itself or the brush tube.

* * *
The bearing is thus amply protected, at the same time being
easily accessible by unscrewing the knurled nut 8, sliding off
the thread guard 41 and unscrewing the retaining or clamping
nut 31, the assembly and disassembly relation of these parts
being shown more clearly in Fig. 4 [reproduced above].

* * *
By the construction shown, the entire bearing assembly
may be easily taken apart for cleaning, repair or replacement of
the parts, and the entire housing may be removed from the
brush cylinder to replace the brush when worn out or if
damaged.

Ex. 1005, 3:8–15, 3:108–114, 4:65–70.
Other than disputing that Petitioner has shown Lang discloses the
recited “end mounting features,” Patent Owner does not dispute that Lang
discloses this limitation. Petitioner’s showing with regard to this limitation
is supported and persuasive. See Pet. 33–37. We find Lang discloses “an
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axial end guard” (thread guard 41 alone, or in combination with nut 31,
washer 34, and packing 40) as recited in claim 1.
Summary as to Claim 1
Considering claim 1 of the ’303 patent and the asserted prior art and
other evidence, Petitioner’s unpatentability showing is factually and legally
sound. Based on the foregoing analysis, we conclude that claim 1 of the
’303 patent is unpatentable in view of Lang alone and in combination with
Fahlen.
Claim 4
The floor cleaner of claim 1, wherein the outward radial
extension of the brush is greater than the outward radial
extension of the axial end guard mounted on the end mounting
feature.
Petitioner relies on Lang for disclosing the additional limitation of
dependent claim 4. Pet. 38–39. In support, Petitioner provides annotated
Figures 1 and 3, reproduced below. Id.

Annotated “Figures 1 and 3 show the radial extension of the brush (green) is
greater than that of the thread guard (orange).” Id. Patent Owner does not
specifically address claim 4 and Petitioner’s assertions regarding the
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limitations recited in claim 4 are undisputed. See generally PO Resp.
We find, based on Petitioner’s showing as summarized above, that
Lang discloses the limitation recited in claim 4 and conclude that claim 4 is
unpatentable in view of Lang with or without Fahlen.
Claim 5
The floor cleaner of claim 1, wherein the axial end guard
defines a through hole through which extends the end mounting
feature about which the axial end guard is mounted.
Petitioner relies on Lang for disclosing the additional limitation of
dependent claim 5. Pet. 39–40. In support, Petitioner provides annotated
Figure 6, reproduced below. Id. at 39.

Annotated “Figure 6 . . . illustrates a cross-sectional view of thread guard 41
that includes central opening 44 through which section 46 of stud 35
extends.” Id. (citing Ex. 1005, 2:115-125). And, Petitioner provides
annotated Figure 2, reproduced below. Id. at 40.
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Annotated “Figure 2 shows stud 35 (purple) passing through the central
openings of nut 31, washer 34, and packing washer 40 (all orange).” Id.
(citing Ex. 1005, 2:70-77, Fig. 7 (showing the central opening of nut 31)).
Patent Owner relies on its claim construction argument that claim 1’s
“end mounting features” must rotate in discussing dependent claim 5. PO
Resp. 24. As noted above, we reject this claim construction argument.
Other than contesting that the cited art does not disclose “end mounting
features” that rotate, Patent Owner does not dispute that the cited art
discloses the further limitation recited in dependent claim 5. Id.
We find that Lang discloses the limitation recited in claim 5 and
conclude that claim 5 is unpatentable in view of Lang with or without
Fahlen.
Claim 6
The floor cleaner of claim 1, further comprising a
bearing circumscribed by the axial end guard, wherein the core
is rotatable relative to the bearing.
Petitioner relies on Lang for disclosing the additional limitation of
dependent claim 6. Pet. 40–43. In support, Petitioner provides annotated
Figures 2 and 4, reproduced below. Id. at 42.
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“[A]s seen in Figures 2 and 4, Lang’s thread guard 41 (orange)
circumscribes bearing proper 28 (purple) because the cup-shaped thread
guard is installed over and surrounds bearing proper 28” and “as Lang
explains regarding Figure 2, nut 31 is tightened to ‘fully seat the bearing
[proper 28]’” and “[w]hen tightened, washer 34, which is ‘placed between
[nut 31] and the bearing,’ ‘engages only the outer race of the bearing.’” Id.
at 41–42 (citing Ex. 2005, 2:43–46, 2:52–58) (second and fourth alteration
in original).
With regard to the “wherein” clause which recites, “the core is
rotatable relative to the bearing,” the Petitioner cites the following paragraph
in Lang (Pet. 43):
In operation, supporting nut 8, stud 35, the thread guard
41 and the inner race 30 of the bearing are held stationary,
while the brush tube or cylinder 17 bearing housing 20, disk 26,
packing disk 27, retaining nut and packing 31 and 40
respectively, and the outer bearing race 29 all rotate about a
common axis of the stud 35, or, more briefly, the stud, thread
guard and inner race are stationary, while the housing, outer
race and packings rotate with the brush.

Ex. 1005, 3:54–64.
In addition to its claim construction argument relating to the “core”
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limitations, Patent Owner presents a separate argument relating to claim 6.
See PO Resp. 32–36. Patent Owner’s argument is based on the use of
“further comprising” in claim 6. Id. Specifically, Patent Owner argues,
Claim 6 recites “[t]he floor cleaner of claim 1, further
comprising a bearing…” (emphasis added), signaling that the
recited “bearing” is an additional structure within the recited
“floor cleaner” that is distinct from the earlier recited structures,
including the “driven brush” and its constituent components,
such as its “end mounting features,” previously recited in claim
6 via its dependency from claim 1.

Id. at 32–33 (alterations in original). Thus, Patent Owner argues that
the same bearing in the prior art cannot be both a part of the “end
mounting features” as recited in claim 1 and the bearing recited in
claim 6. In response to this argument, Petitioner argues this argument
is “unsupportable” because “claim 6’s broad recitation that the cleaner
‘further comprises a bearing’ does not mean that bearing must be
separate from the previously recited ‘end mounting features.’ [Patent
Owner] cites no case to support such an overly narrow reading of the
open-ended phrase ‘further comprises.’”16 Reply 23. We agree with
Petitioner and reject this argument.
Claim 1 recites, “an elongated core having . . . end mounting
features” and sets forth characteristics of the “end mounting features”
of the “core”: “extending beyond respective axial ends of the outer
surface of the core and defining a central longitudinal axis of

16 “In the patent claim context, the term ‘comprising’ is well understood to
mean ‘including but not limited to’.” CIAS, Inc. v. Alliance Gaming Corp.,
504 F.3d 1356, 1360 (Fed. Cir. 2007).
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rotation.” Ex. 1001, 17:33–36. Claim 6 further specifies that, in
addition to “an elongated core having . . . end mounting features,” the
floor cleaner is required to include a “bearing.” Petitioner has shown
that Lang meets all these recited limitations. Patent Owner does not
explain why the same structure (the bearing of Lang) may not be used
to show the prior art discloses or teaches or suggests both “an
elongated core having . . . end mounting features” with the recited
characteristics and a “bearing.”
We find that Lang discloses the limitation recited in claim 6 and
conclude that claim 6 is unpatentable in view of Lang with or without
Fahlen.
Claim 7
The floor cleaner of claim 1, wherein the compliant
portion further comprises multiple floor cleaning bristles
extending radially outward from the core.
As to the additional limitation of dependent claim 7, Petitioner
contends, “Lang discloses this element . . . , and/or Lang in view of Fahlen
renders this element obvious.” Pet. 43. In support, Petitioner provides
annotated Figure 1, reproduced below. Id. at 44.

As depicted in annotated Figure 1, “Lang’s brush includes ‘multiple floor
cleaning bristles extending radially outward from the core.’” Id. at 43.
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Petitioner further contends, “if [Patent Owner] argues the claimed
‘compl[ia]nt portion’ also requires a ‘compliant flap’ or ‘beater,’ Lang in
view of Fahlen renders this element obvious.” Id. at 44.
Patent Owner does not specifically address claim 7 and Petitioner’s
assertions regarding the limitation recited in claim 7 are undisputed. See
generally PO Resp.
We find that Lang discloses the limitation recited in claim 7 and
conclude that claim 7 is unpatentable in view of Lang with or without
Fahlen.
Claim 9
The floor cleaner of claim 1, wherein the axial end guard
forms a labyrinth seal about the end mounting feature on which
the axial end guard is mounted.
Petitioner contends that Lang discloses the further limitation recited in
dependent claim 9. Pet. 44. In support, Petitioner provides annotated
Figure 2, reproduced below. Id. at 46.

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In Figure 2, “Lang shows the labyrinth seal (red) formed by the thread guard
(orange) about the bearing structure (purple), including along the non-
threaded portion of stud 35 (purple) that protects bearing proper 28
(uncolored).” Id. at 45–46. And, the Petition also states:
Lang teaches that bearing proper 28 is protected by “two
dead air chambers or spaces 42 and 43 and a sealing packing
40, which is located between two sealing walls provided by the
bearing clamping ring or nut 31 and washer 34.” Lang [Ex.
1005], 2:97-102. These features form a labyrinth seal that
protects the bearings from debris.

Id. at 45.
Patent Owner does not specifically address claim 9 and Petitioner’s
assertions regarding the limitation recited in claim 9 are undisputed. See
generally PO Resp.
We find that Lang discloses the limitation recited in claim 9 and
conclude that claim 9 is unpatentable in view of Lang with or without
Fahlen.
Claim 10
Claim 10 is an independent claim that includes most of the same
limitations as independent claim 1. Compare Ex. 1001, 17:27–45 (claim 1),
with id. at 18:16–36 (claim 10). However, the fourth limitation of claim 1
recites, “at least one driven brush” (id. at 17:31 (emphasis added)) and the
fourth limitation in claim 10 does not recite the word “driven” (id. at 18:21).
Another difference between claim 1 and claim 10 is that claim 10 in the fifth
limitation recites “the core rotatable relative to the cleaning assembly
housing.” Id. at 18:26–27. Petitioner relies on its showing as to claim 1 for
this limitation of claim 10. Pet. 47 (“[A]s noted above, Lang’s brush is
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rotatably mounted to the nozzle body (the claimed ‘cleaning assembly
housing’).”).
There are two additional differences between claim 1 and claim 10
recited in the seventh (last) limitation. Compare Ex. 1001, 17:40–45 (claim
1), with id. at 18:31–36 (claim 10). Petitioner accounts for these differences
(referred to by Petitioner as elements 1(h) and 10(h)) as follows:
Element 10(h) is substantially identical to element 1(h)
with two differences. Fester [Ex. 1003], ¶ 105. First, element
10(h) additionally requires that the axial end guard is
“mountable in a fixed axial position relative to the core.” Both
thread guard 41 and nut 31 (and washer 34 and packing 40)
disclose this feature. Fester [Ex. 1003], ¶ 106. Thread guard
41 is keyed together with shoulder 36 of stud 35 and “drawn
tightly against the shoulder 36” by tightening supporting nut 8.
Lang [Ex. 1005], 2:115-131. A skilled artisan would have
understood from this description and Figure 2 that Lang’s
thread guard is mounted in a fixed axial position relative to the
core 18. Fester [Ex. 1003], ¶ 106. Likewise, Lang discloses
that nut 31 and washer 24 are tightened with a screwdriver to
seat the bearing. Lang [Ex. 1005], 2:43-58. When the nut is
tightened, the washer engages the bearing and the prick-
punched nut prevents it from loosening. Id. Lang thus
discloses this requirement of element 10(h). Fester [Ex. 1003],
¶ 106.
Second, while element 1(h) recites “beyond the extremity
of the mounting feature about which the axial end guard is
mounted,” element 10(h) more broadly recites “beyond the
extremity of at least one of the end mounting features.” Thus
the unpatentability proofs discussed in Section VII.A.1.h [Pet.
33–37] demonstrate that Lang discloses this feature and the rest
of element 10(h). Fester [Ex. 1003], ¶ 107.

Pet. 48–49. We determine that Petitioner shows that all the limitations of
claim 1 are disclosed in Lang and are taught or suggested by the
combination of Lang and Fahlen.
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Patent Owner presents the same arguments for claim 10 as it does for
claim 1. See, e.g., PO Resp. 5 (“[A]ll grounds advanced in the Petition are
deficient because they fail to properly address the requirements of [the ‘core’
limitations] of independent claims 1 and 10.”). For the reasons discussed
above, we reject Patent Owner’s arguments relating to the “core” limitations.
Considering claim 10 of the ’303 patent and the asserted prior art,
Lang alone and in combination with Fahlen, Petitioner’s unpatentability
showing is factually and legally sound. Based on the foregoing analysis, we
conclude that claim 10 of the ’303 patent is unpatentable.
Claim 11
The floor cleaner of claim 10, further comprising an end
cap disposed at an axial end of the core, between the core and
the mounted axial end guard.
Petitioner contends that Lang discloses the further limitation recited in
dependent claim 11. Pet. 49. In support, Petitioner provides annotated
Figures 2 and 4, reproduced below. Id. at 50.

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Annotated Figures 2 and 4 depict partial side views of the end of a cleaning
roller. Ex. 1005, 3:60–61, 3:64–65. With regard to how these annotated
figures illustrate the limitation of claim 11, the Petition states:
Lang discloses this element in metal disk 26 and/or
packing 27. Fester [Ex. 1003], ¶¶ 108-111. Figure 4 shows
cylindrical bearing housing 20 (purple) secured at the end of the
brush (green). Lang [Ex. 1005], 1:100-105, 2:4-7. The bearing
includes “[s]houlder 24 [which supports] metal disk 26” (teal)
which slides into the bearing chamber and “forms a closure for
the inner end of [the] chamber when seated on the shoulder”
(teal outline). Id., 2:25-29 (emphases added). Packing 27
(teal)—also “a simple flat disk”—is disposed between metal
disk 26 and the end of the brush tube. Id., 2:29-33. “Seated
against disk 26 is the bearing proper 28 [(purple)],” which is
covered by washer 34 that is attached to stud 35 (purple) and
secured by nut 8 (purple). Id., 2:34-58. . . .
As shown by comparing Figure 4 . . . with Figure 2 . . .
thread guard 41 (orange) slides over bearing housing 20
(purple) and sandwiches bearing proper 28 (purple), metal disk
26 (teal), and packing 27 (teal) between itself and brush core 18
(green). See id., 2:59-96; Fester [Ex. 1003], ¶ 109. . . .
The skilled artisan would have understood metal disk 26
and/or packing 27 as the “end cap,” because both are “disposed
at an axial end of the core [Lang’s core 18], between the core
and the mounted axial end guard [Lang’s thread guard 41
and/or nut 31, washer 34, and packing 40],” as shown above.
Fester [Ex. 1003], ¶ 110.
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Id. at 49–51.
Patent Owner does not specifically address claim 11 and Petitioner’s
assertions regarding the limitation recited in claim 11 are undisputed. See
generally PO Resp.
We find that Lang discloses the limitation recited in claim 11 and
conclude that claim 11 is unpatentable in view of Lang with or without
Fahlen.
Claim 14
The floor cleaner of claim 10, wherein the axial end
guard is mountable to circumscribe one of the end mounting
features extending beyond respective axial ends of the outer
surface of the core.
Petitioner contends that Lang discloses the further limitation recited in
dependent claim 14. Pet. 51 (“Lang discloses this element because thread
guard 41 is mountable to circumscribe stud 35 and the bearing housing’s
flanged end 21, which both extend beyond the axial end of outer surface 17
of core 18.”). In support, Petitioner provides annotated Figure 2, reproduced
below. Id. at 50.

Annotated Figure 2 depicts the end of a cleaning roller. Ex. 1005, 3:60–61.
With regard to how this annotated figure illustrates the limitation of claim
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14, the Petition states:
Lang’s “cylindrical cup-shaped” thread guard 41
(orange) “surrounds and substantially encloses” flanged end 21
of the bearing housing (purple). Lang [Ex. 1005], 2:78-82. It
also surrounds and substantially encloses stud 35 (purple) of the
bearing unit. . . .
Lang explains regarding Figure 6, that thread guard 41 includes
central opening 44 that is “flat on one side” to key together with
“section 46 of the stud adjacent to shoulder 36” of stud 35
“when clamped against shoulder 36.” Lang [Ex. 2005], 2:115-
125. Thus, thread guard 41 and stud 35 are stationary, while
the cylinder 17 and core 18 rotate. Id., 3:54-64; Fester [Ex.
1003], ¶ 114. . . .
Lang’s brush core 18 is covered by brush cylinder 17. Lang
[Ex. 1005], 1:100-105. A skilled artisan would have
understood brush cylinder 17 to disclose the claimed “outer
surface of the core.” Fester [Ex. 1003], ¶ 115. Lang discloses
that the end mounting features (e.g., bearing housing 20 and
stud 35) extend beyond the axial end of brush cylinder 17.
Thus, Lang’s relationship between thread guard 41 and
bearing housing 20 and stud 35 discloses this feature. Fester
[Ex. 1003], ¶ 116.

Pet. 52–53.
Patent Owner does not specifically address claim 14 and Petitioner’s
assertions regarding the limitation recited in claim 14 are undisputed. See
generally PO Resp.
We find that Lang discloses the limitation recited in claim 14 and
conclude that claim 14 is unpatentable in view of Lang with or without
Fahlen.
Claim 15
The floor cleaner of claim 10, wherein the compliant
portion further comprises multiple floor cleaning bristles
extending radially outward from the core.
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The additional limitation of dependent claim 15 is identical to the
limitation of claim 7 that depends from claim 1. Compare Ex. 1001, 18:53–
55 (claim 15), with id. at 18:7–9 (claim 7). Petitioner relies on its showing
with regard to claims 1 and 7 to establish, “Lang discloses this element . . .
and/or Lang in view of Fahlen renders it obvious.” Pet. 43.
Patent Owner does not specifically address claim 15 and Petitioner’s
assertions regarding the limitation recited in claim 15 are undisputed. See
generally PO Resp.
We find that Lang discloses the limitation recited in claim 15 and
conclude that claim 15 is unpatentable in view of Lang with or without
Fahlen.
Summary
Considering claims 1, 4–7, 9–11, 14, and 15 of the ’303 patent, the
asserted prior art and other evidence, and the arguments of the parties,
Petitioner’s unpatentability showing is factually and legally sound. Based
on the foregoing analysis, we conclude that Petitioner has met its burden of
showing that claims 1, 4–7, 9–11, 14, and 15 of the ’303 patent are
unpatentable in view of Lang alone and in combination with Fahlen.
F. Claim 8: Consideration of Alleged Obviousness in View of
(1) Lang and Krier and (2) Lang, Fahlen, and Krier
Petitioner asserts that claim 8 which depends from claim 1 is
unpatentable as obvious in view of (1) Lang and Krier and (2) Lang, Fahlen,
and Krier. Pet. 5, 53–56. Claim 8 recites:
The floor cleaner of claim 7, wherein the bristles are
disposed about the core in multiple rows, each row forming a
substantially V-shaped groove configuration along the core.
Ex. 1001, 18:10–12. We begin with a description of the disclosure of Krier
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and then consider Petitioner’s undisputed showing as to the additional
elements of dependent claim 8.
Krier (Ex. 1012)
Krier relates to “floor maintenance machines.” Ex. 1012, 1:29–30.
The machine includes brush 14 having bristles arranged in a herringbone or
V-shaped pattern, which moves particles toward the apex of the V so that the
particles will be picked up more easily by the vacuum. Id. at 7:3–9, Fig. 2.
Discussion
Petitioner contends, “Lang teaches a floor cleaner with a bristled
brush, ‘wherein the bristles are disposed about the core in multiple rows’”
and “Krier teaches the limitations of claim 8 by disclosing ‘brush 14 [with]
bristles arranged in a herringbone or V-shaped pattern.’” Pet. 53–54
(alteration in original). Petitioner’s contentions are supported by the cited
art.
According to Petitioner, “the skilled artisan would have recognized
that adding Krier’s V-shaped bristles to Lang’s vacuum cleaner would have
been the substitution of one known element (Krier’s V-shaped bristles) for
another (Lang’s bristles) to achieve the predictable result of allowing the
debris to ‘be picked up more easily.’” Pet. 55 (citing Ex. 1003 (Fester Decl.)
¶ 123). We find a skilled artisan would have been motivated to combine the
relevant teachings of Krier with the relevant teachings of Lang or Lang and
Fahlen.
Patent Owner does not specifically address claim 8 and Petitioner’s
assertions regarding claim 8 are undisputed. See generally PO Resp.
We find that Krier discloses the limitations recited in claim 8 and
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conclude that claim 8 is unpatentable as obvious in view of (1) Lang and
Krier and (2) Lang, Fahlen, and Krier.
G. Claims 1, 2, 4–12, 14, 15: Consideration of Alleged Obviousness in View
of (1) Brundula and Lang and (2) Brundula, Lang, and Fahlen
Petitioner asserts that claims 1, 2, 4–12, 14, and 15 are unpatentable as
obvious in view of (1) Brundula and Lang and (2) Brundula, Lang, and
Fahlen. Pet. 5, 56–87. The claims challenged on these grounds include
claims 2 and 12 that were not challenged by Petitioner on the grounds
already discussed above and, thus, claims 2 and 12 have not been previously
considered in this Decision. The remaining claims (claims 1, 4–11, 14, and
15) have already been considered in this Decision and, for reasons already
discussed, been found to be unpatentable. Nonetheless, in the analysis that
follows, we consider all the challenged claims based on the prior art
combinations that include Brundula. We begin with a description of the
disclosure of Brundula.
Brundula (Ex. 1013)
Brundula relates to “a brushroll arrangement for floor care
appliances.” Ex. 1013, 1:7–8. Brundula’s brushroll comprises a core (dowel
10) having an outer periphery 16. Id. at 3:42–43. A plurality of bristle tufts
80, 84 extend radially outward from the core. Figs. 1, 3, 7. Brundula’s
brushroll also includes a thread guard as seen in Figure 5, reproduced below.
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Figure 5 is a cross-sectional view of an end portion of a brushroll. Id. at
3:24–25. Outer periphery 16 of the brushroll has thread guard 20 secured
thereto. Id. at 3:53–55. Shoulder 36 of thread guard 20 cooperates with
skirt 35 of an end cap to form part of a labyrinth seal that also includes inner
skirt 33 and rib 34. Id. at 4:2–4. The labyrinth seal “prevents threads or the
like from working their way along the end face of the [brushroll] so as to
become trapped adjacent the bearing 24 and interfere with the rotation of the
[brushroll] on the bearing.” Id. at 4:3–7.
Discussion
The Petition provides a detailed showing that claims 1, 2, 4–12, 14,
and 15 are unpatentable as obvious in view of (1) Brundula and Lang and
(2) Brundula, Lang, and Fahlen. See Pet. 56–87. Brundula does not
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explicitly depict or describe a floor cleaner. Id. at 57 (“Brundula does not
depict the vacuum cleaner in which its ‘brushroll or agitator is provided.’”).
However, Brundula does teach that “the present invention relates to a
brushroll arrangement for floor care appliances” and that “[t]he invention is
particularly applicable to brushrolls for vacuum cleaners.” Ex. 1013, 1:7–
10.
Petitioner contends that one of ordinary skill in the art would have
understood that Brundula’s brushroll would have been incorporated into a
vacuum cleaner and that such a vacuum cleaner would include a chassis and
cleaning assembly. Pet. 56–57. Petitioner asserts that Lang discloses these
elements with a brushroll, and because Brundula discloses using a brushroll
in “a vacuum cleaner,” there is “motivation for combining [Brundula’s]
brushroll with the floor cleaner described in Lang.” Id. at 59 (citing
Ex. 1003 (Fester Decl.) ¶ 132). According to Petitioner, Brundula discloses
a “compliant portion” because Brundula’s bristles are designed to be “bent
backwards” and that one tuft of bristles bends toward and is supported by
another tuft as it “encounters a surface meant to be cleaned.” Id. at 67
(citing Ex. 1013, 3:29–30, 5:33–37, Fig. 7). Petitioner also relies on
Brundula’s bristles to meet the “floor cleaning bristles” as recited in claims 7
and 15. Pet. 78, 87.
Petitioner provides an annotated Figure 5 from Brundula, reproduced
below, to show the “end mounting features” of the challenged claims. Id. at
64.
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Annotated Figure 5 depicts, “a cross-sectional view of an end portion of the
brushroll.” Ex. 1013, 3:24–25. The Petition states:
Brundula’s dowel 10 includes end mounting features (purple).
Specifically, at each end of the dowel (red dashed line), is a
“suitable end assembly” that allows for the “rotation of the
dowel . . . .” Brundula [Ex. 1013], 3:50-4:7. This end
assembly includes pin 26 mounted on one side to dowel 10 via
hole 28 and on the other side to bearing 24. Id., 3:57-59. It
also includes annular rib 34 defined on the dowel end face with
a narrower outer diameter than that of the outer periphery 16.
Id., 3:53-55, 3:64-65. Together, pin 26, bearing 24, and annular
ribbed portion 34 (purple) disclose the claimed “end mounting
features.” Fester [Ex. 1003], ¶ 143.

Pet. 63.
Patent Owner argues that the elements of the brushroll of Brundula
cited by Petitioner for the “end mounting features” of the challenged claims
do not satisfy the “core” limitations, because the cited elements do not all
rotate. PO Resp. 21–24. Specifically, Patent Owner argues:
[A] POSITA would have understood bearing 24 to be stationary
relative to rotating dowel 10 because Brundula discloses
bearing 24 as having a ball bearing structure, which a POSITA
would have understood to have one stationary race. Ex-2016
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[Coates Decl.], ¶¶59-60. . . .
Brundula describes that end cap 22 is “mounted on”
bearing 24, and that bearing 24 is also “mounted on” pin 26.
Brundula [Ex. 1013], 3:55-59. Based on this disclosure and the
depictions of these components in Figure 5, a POSITA would
have understood that outer race of bearing 24 is stationary since
it is fixedly attached to end cap 22, which is also stationary.
Ex-2016 [Coates Decl.], ¶61. Thus, bearing 24 would not be
capable of rotating relative to a central longitudinal axis of
dowel 10, which the Petition maps to the recited “core.” Id.
This understanding is consistent with a POSITA’s knowledge
of ball bearing structures including a stationary part (e.g., one
stationary race of the ball bearing structure). Id.

Id. at 22–23. However, this alleged distinction is based on Patent Owner’s
claim construction argument that all parts of the “core” must rotate including
all elements of the “end mounting features.” Id. at 24 (“Petitioner’s
mappings to . . . Brundula for the ‘end mounting features’ are . . . deficient
because they include one or more components that would not be understood
to rotate as part of what Petitioner identifies as representing the ‘core.’”). As
we reject Patent Owner’s claim construction argument, we do not find Patent
Owner’s efforts to distinguish Brundula on the recited “core” or “end
mounting features” limitations effective. We find that Petitioner has met its
burden of showing the “core” limitations including the “end mounting
features” are taught by Brundula.
Petitioner contends, “[w]hile Brundula does not include a figure
showing the vacuum cleaner into which its brushroll is incorporated, a
skilled artisan would have understood from Brundula that it would have
been incorporated into a vacuum cleaner.” Pet. 56 (citing Ex. 1003 (Fester
Decl.) ¶ 126). “And the skilled artisan would have understood that the
vacuum cleaner would have included a chassis and a cleaning assembly—
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conventional elements in all vacuum cleaners.” Id. at 56–57. Petitioner
asserts, “it is indisputable that vacuum cleaners were ubiquitous before the
’303 patent” and “Lang discloses these conventional features, and it would
have been obvious to incorporate Brundula’s brushroll into the conventional
floor cleaner of Lang.” Id. at 57 (citing Ex. 1003 (Fester Decl.) ¶¶ 127,
129).
With regard to the motivation to combine the teachings or suggestions
of Brundula relating to the disclosed brushroll with the teachings or
suggestions of Lang relating to the disclosed vacuum cleaner, the Petition
provides:
Moreover a skilled artisan would have been motivated to
combine the teachings of Brundula with a known cleaner, such
as that disclosed in Lang, because Brundula expressly discloses
that its brushroll is “for a vacuum cleaner,” Brundula
[Ex. 1013], Abstract, and that it was known to use brushrolls in
a vacuum cleaners [sic], id., 1:14-15. Fester [Ex. 1003], ¶ 131.
Brundula explains its “brushroll is meant to cooperate with a
centrally located inlet of a nozzle base of a vacuum cleaner,”
Brundula [Ex. 1013], 1:36-38; see also id., 4:35-37, echoing the
nozzle structure disclosed in Lang. Fester [Ex. 1003], ¶ 131. In
particular, as shown below, Brundula’s V-shaped bristle pattern
(outlined in red) is arranged slightly to the left-hand side of the
center of the brushroll, which aligns with Lang’s suction port
(orange) that is also slightly offset to the left-hand side of the
center of the brushroll.

Brundula, Fig. 1 (annotated); Lang, Fig. 1 (annotated). Thus,
Brundula provides an express teaching, suggestion, and
motivation for combining its brushroll with the floor cleaner
described in Lang. Fester [Ex. 1003], ¶ 132.
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Id. at 58–59. We agree with Petitioner that Brundula provides an express
teaching that its brushroll would be suitable for use in a vacuum cleaner and
that this express teaching supports finding a motivation to combine the
relevant teachings of these references. See Ortho-McNeil Pharm., Inc. v.
Mylan Labs., Inc., 520 F.3d 1358, 1364–65 (Fed. Cir. 2008) (noting that the
teaching-suggestion-motivation test, flexibly applied, remains an important
tool in an obviousness analysis).
Patent Owner argues that Petitioner has failed to establish a
motivation to combine the relevant teachings of Brundula and Lang such
that the brushroll taught by Brundula would be incorporated into the vacuum
cleaner taught by Lang. PO Resp. 25–32. Patent Owner contends,
“Petitioner advances conclusory assertions since they fail to explain with
particularity how Brundula’s brushroll would have been incorporated into
Lang’s specific vacuum cleaner.” Id. at 28. “Because Petitioner did not
identify a particular purported combination of Brundula’s brushroll with
Lang’s vacuum, Petitioner cannot identify a particular motivation to make
that unidentified combination.” Id. Specifically, Patent Owner argues:
For example, Petitioner does not address how a POSITA
could have modified the end assembly of Brundula’s brushroll
to incorporate structures that Lang discloses as securing thread
guard 41 to its cleaning assembly housing, as shown below.
Ex-2016 [Coates Decl.], ¶73.

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Brundula’s end cap 22 (highlighted orange in the left figure) is
fixed to a housing and secured to dowel 10 using bearing 24.
Brundula [Ex. 1013], 3:49-63. In contrast, Lang’s thread guard
41 (highlighted in orange in the right figure) is secured to
wooden dowel or core 18 using bearing housing 20 in
combination with a supporting nut 8 and fixed stud 35. The
supporting nut 8 and fixed stud 35 are highlighted below in the
annotated version of Lang’s Figure 4. Ex-2016 [Coates Decl.],
¶74.

Because Brundula’s brushroll does not include any component
analogous to Lang’s fixed stud 8 and nut 35, it is entirely
unclear what structural assembly the Petitioner envisions as
performing the coupling function of these components in its
proposed combination. Ex-2016 [Coates Decl.], ¶75.

PO Resp. 28–29.
Patent Owner also argues Petitioner fails to show that a skilled artisan
would have been motivated to combine the teachings of Brundula and Lang
to meet the limitations in claims 1 and 10 that “the end guard is removable
from a longitudinal end of the core.” PO Resp. 30–32. Specifically, Patent
Owner argues that Petitioner “fails to explain with particularity whether and
how the modified system would have enabled a user to access Brundula’s
end assemblies to thereby permit removal of components of those end
assemblies (i.e., the end caps 22 and/or the thread guard 20) in the manner
proposed in the Petition.” Id. at 31 (citing Ex. 2016 (Coates Decl.) ¶ 78).
After considering the arguments and weighing the evidence of the
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parties on this issue, we are persuaded by Petitioner’s contentions and
evidence on the issue of motivation to combine the relevant teachings of
Brundula and Lang. Patent Owner has not argued or presented any credible,
persuasive evidence17 that the proposed combination would have been
beyond the capabilities of the skilled artisan. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”). Patent Owner does not argue
that combining the relevant teachings of Brundula and Lang as in the device
recited in the challenged claims would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418–19). And, the proper consideration is what the references would
have taught or suggested to those of ordinary skill in the art not whether the
structure disclosed in a reference may be bodily incorporated into the
structure of another reference. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); In re

17 We have considered the cited portions of the Declaration of Donald A.
Coates, Ph.D. (Ex. 2016) and note that Dr. Coates does not address whether
the proposed combination would have been beyond the capabilities of the
skilled artisan. Rather, the cited paragraphs appear to be nearly verbatim
duplicates of passages in the Response that do not differ at all in substance.
Compare Ex. 2016 ¶¶ 70–78, with PO Resp. 26–32. See 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.”).
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Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Based on the totality of the evidence, we find that adapting a prior art
brushroll such as that taught by Brundula into a commonly available device
such as a vacuum cleaner as taught by Lang would have been obvious to one
of ordinary skill in the art with knowledge of the relevant teachings and
suggestions of the cited art.
Patent Owner also challenges Petitioner’s showing with regard to
dependent claim 2 of the ’303 patent.18 PO Resp. 35–37. Claim 2 recites:
The floor cleaner of claim 1, wherein at least a portion of
the axial end guard forms an interference fit with the end
mounting feature about which the axial end guard is mounted.

Ex. 1001, 17:46–48. Petitioner relies on Brundula for the additional
limitation recited in this dependent claim. Pet. 73–74. In support, Petitioner
provides annotated Figure 5, reproduced below.

18 The only claim other than claim 2 not previously specifically analyzed in
this Decision is dependent claim 12. Claim 12 recites:
The floor cleaner of claim 10, wherein at least a portion
of the axial end guard is mountable in an interference fit with
one of the end mounting features extending beyond respective
axial ends of the outer surface of the core.
Ex. 1001, 18:40–43. The Petition states, “[t]he additional limitations of
claim 12 are substantively identical to those of claim 2. Brundula and Lang
renders obvious this element for the [same] reasons” provided for claim 2.
Pet. 86. Despite the similarities between claims 2 and 12 and Petitioner’s
reliance on the showing for claim 2 for claim 12, Patent Owner does not
specifically discuss claim 12 in the Response. See generally PO Resp.

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Id. at 73. Annotated Figure 5 “shows a cross-sectional or cut-away view of
the cylindrical dowel and its cylindrical end units.” Id. at 74. With regard to
the limitation of claim 2, the Petition states:
Brundula’s thread guard 20 is “secured to” the outer periphery
of rib 34, and Brundula’s end cap 22 is “mounted on” bearing
24 as shown [above] in annotated Figure 5. Brundula [Ex.
1013], 3:53-57. A skilled artisan would have understood this to
disclose interference fits between thread guard 20 and rib 34
(“Section A-A”), and end cap 22 and the outer race of bearing
24 (“Section B-B”), respectively. Fester [Ex. 1003], ¶ 160. . . .
The above illustrations demonstrate the relationship between
Brundula’s components from an axial view, showing the
interference fits (red dashed lines) between (a) rib 34 (purple)
and thread guard 20 (orange) (Section A-A), and (b) bearing 24
(purple) and end cap 22 (orange) (Section B-B), as shown
above. Fester [Ex. 1003], ¶ 160. A skilled artisan would have
understood the above-described “secured” fit between the
thread guard and the rib to disclose the claimed “interference
fit,” because the ring-shaped thread guard is held in place by the
rib 34. Fester [Ex. 1003], ¶ 161. Likewise, a skilled artisan
would have understood the above-described “mounted” fit
between the end cap and the bearing to disclose the claimed
“interference fit,” especially because interference fits were
common and well-known for mounting structures to bearings
and other assemblies. Id.

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Id. at 73–74. We find Petitioner’s showing with regard to claim 2 to be
well-supported and persuasive.
In disputing Petitioner’s showing as to claim 2, Patent Owner first
argues that Petitioner relies on inherency to show Brundula discloses an
“interference fit.” See PO Resp. 36 (“Petitioner effectively equates a
‘secured fit’ and the recited ‘interference fit,’ and in doing so, implicitly
argues that a ‘secured fit’ inherently discloses the ‘interference fit.’
Petitioner relies on inherency since it does not raise obviousness on this
point.”). Patent Owner then argues that Brundula does not inherently
disclose an “interference fit.” Id. (“Brundula’s ‘secured fit,’ however, does
not inherently disclose the recited ‘interference fit’ since the attachment
mechanism between thread guard 20 and rib 34 does not necessarily require
an interference fit.”).
Petitioner responds that its showing on claim 2 was not based on
inherency and, thus, Patent Owner’s argument is not responsive to the
Petition’s grounds. Reply 25. The Reply states, “the Petition’s position and
Mr. Fester’s supporting testimony were not based on inherency. Instead,
they were based on how a skilled artisan would have interpreted the
disclosures of Brundula as teaching an interference fit, even though
Brundula does not use that exact phrase.” Id. (citing Bradium Techs. LLC v.
Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (“[A] reference must be
considered not only for what it expressly teaches, but also for what it fairly
suggests.”) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)).
Patent Owner’s inherency argument is misdirected. Petitioner did not
contend that Brundula inherently disclosed an “interference fit” as recited in
claim 2. Petitioner argued how the teachings of Brundula would have been
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understood by a skilled artisan which may be fairly considered as an
argument as to what Brundula teaches or suggests. See Pet. 73–74 (quoted
above). Accordingly, we do not find this argument to be effective.
With regard to obviousness, Patent Owner argues that “Petitioner’s
contentions do not satisfy the legal requirements for establishing
obviousness in light of Brundula’s disclosure,” because Petitioner’s
assertions are conclusory and unsupported with evidence. PO Resp. 37. We
do not agree. As noted above, we find Petitioner’s showing with regard to
claim 2 to be well-supported and persuasive.
Summary
Although we have focused this analysis on the aspects of Petitioner’s
obviousness case disputed by Patent Owner, we have considered the entirety
of the record relating to claims 1, 2, 4–12, 14, and 15 in view of (1)
Brundula and Lang and (2) Brundula, Lang, and Fahlen. Based on our
consideration of all the arguments and evidence presented by the parties, we
conclude that Petitioner has met its burden in establishing, by a
preponderance of the evidence, that claims 1, 2, 4–12, 14, and 15 are
unpatentable as obvious in light of (1) Brundula and Lang and (2) Brundula,
Lang, and Fahlen.
III. CONCLUSION19
In light of all the arguments and evidence, we conclude that Petitioner
has established that claims 1, 2, 4–12, 14, and 15 of the ’303 patent are
unpatentable.

19 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 4–12, 14, and 15 of the ’303 patent are
unpatentable.
In summary:

Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 4–7,
9–11, 14,
15
102 Lang 1, 4–7, 9–11,
14, 15

1, 4–7,
9–11, 14,
15
103 Lang, Fahlen 1, 4–7, 9–11,
14, 15

8 103 Lang, Krier 8
8 103 Lang, Fahlen,
Krier
8
1, 2, 4–
12, 14,
15
103 Brundula, Lang 1, 2, 4–12, 14,
15

1, 2, 4–
12, 14,
15
103 Brundula, Fahlen,
Lang
1, 2, 4–12, 14,
15

Overall
Outcome
1, 2, 4–12, 14,
15

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PETITIONER:
Erika H. Arner
Daniel C. Tucker
Michael V. Young
Courtney A. Bolin
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
erika.arner@finnegan.com
daniel.tucker@finnegan.com
michael.young@finnegan.com
courtney.bolin@finnegan.com

PATENT OWNER:
W. Karl Renner
Jermy J. Monaldo
Roberto J. Devoto
FISH & RICHARDSON P.C.
axf-ptab@fr.com
jjm@fr.com
devoto@fr.com