I need some help from the FIRST community w/Patents

First off, let me me say that if this is an inappropriate post, I apologize and I’ll remove this post if asked.

I’ve been an FRC, FLL, and FTC mentor for a number of years. What I’ve learned is that the FIRST community is phenomenal at responding to calls for help. So this is my call for help, but it is not for my team it is for my business.

I run a small company whose business is designing and manufacturing custom drive systems and automation equipment that moves our customer’s products from one place to another. Our products closely mimics robots found in FIRST. The students I teach and then hire are immediately able to be a productive part of my company. That’s why we are such strong supporters of FIRST in our community.

Unfortunately, recently we were approached by an individual who has obtained a number of US patents that are so broad, they would cover almost all electrical drive systems. I need help showing that the patent claims this individual has gotten is completely invalid because there is plenty of prior art that exist in the real world and specifically in the FIRST community.

The patents in question are US8983740, US9656700 and US10179617. The earliest patent was filed in March 2012. These patents essentially claim that the owner invented the following:

  1. A load-carrying robotic device that has at least 2 motor-driven wheels, and a handheld remote controller capable of steering by controlling the drive wheels. (US8983740)

  2. A handheld remote controller that communicates to a DC motor card in a robotic device. The DC motor card is coupled to a motor and to a drive wheel. The drive wheel is connected via a transmission under the robotic device. (US9656700)

  3. A handheld remote controller for a robotic device as in #2, where the robotic device carries a load and has a “lift mechanism” that can raise the load above the ground. (US10179617)

  4. A handheld remote controller for a robotic device as in #2, where the robotic device carries a load and has a “sensor” that can determine at least one characteristic of the load (e.g., load weight). (US10179617)

  5. A handheld remote controller for a robotic device as in #2, where the robotic device carries a load and has a “brake”; configured to selectively inhibit movement of the device. (US10179617)

I was completely astonished that someone in 2012 was issued these patents. I’m sure the FIRST community could provide dozens of examples of their designs that would contain most if not all of these features. I didn’t want to ask during the build season, but now that bag day has come and gone, could I ask those who have examples in the form of pictures, video, PDF’s, CAD drawings, etc. post or message me with links to them. The ideal information would have some sort of date.

Appreciate all the help I can get. Thanks.

If anyone is interested in reading those patents they can be found here

US8983740B2

US9656700B2

US10179617B2

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I started with FRC in 2013, so I can’t provide any of my own timely evidence, but let me state for the record that I believe asking the FRC/CD community for evidence to protect public rights to prior art is entirely appropriate.

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What jurisdiction? How deeply have you researched the patent-holder, and the prior suits filed?

These are patents Dean Kamen ought to be able to blow up in 30 seconds. Forget “first to file”, they fail the non-obvious test.

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I agree that this is entirely appropriate the forum. Reading the patent summaries, it seems like they all describe a drivebase with a pallet on top. The patents are so broad that almost any FIRST robot is pretty close to those “inventions”. Maybe you can use some of the pre-2012 CAD of top teams like 148 and 118, which they have posted on their websites? (I’m not affiliated with either of those teams; I was just listing two teams which have pre-2012 CAD publicly available).

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Jurisdiction is in the US. These are the only patents the holder has so we don’t know anything about prior suits.

None of the 5 claims can even be remotely (sorry) considered “new” in the past several decades, particularly since they reference a “handheld remote controller”. I remember seeing video in the early 80’s of warehouse gear doing that. This century it would be working autonomously without a pesky human controlling it manually.

Shoot, #2 sounds like a perfect description of an RC Car. Add that to #3 and it sounds like a powered Tonka Dump Truck to me, which I KNOW has been around longer than most of you reading this

Is the patent office getting this lazy in not even looking at prior art anymore?

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In researching the examiner, we saw this was his first cases as an examiner. I think the first patent he was an apprentice.

But I would agree, you would have to have been stuck on an island for the past 40 years not to see prior art in your daily lives.

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As a side note, Amazon filed a couple of patents (one for Blue Origin) some time back that were both in the category of “somebody thought of this long ago/people do this all the time”. SpaceX challenged one of them on that basis, and won the challenge.

And more to the point, I’ve seen units that fit the patents for sale, likely by other companies. See if you can find an automation conference, show up, take pictures, and take legal action appropriately.

Here is a link to a publicly broadcasted ESPN telecast from 1996 of an early FRC competition that clearly demonstrates all of these things happening. I’m pretty far from being a patent lawyer, but to me it seems that it’s easy for him to argue a photo’s date was faked but would be pretty hard for him to argue with a public telecast on a national network.

Also 1995 with a nice Bill Clinton cameo:

Oh, also 1994

These should help, but that’s just getting started.

This is a link to part one of a PBS Documentary of that followed an FRC team around in 2008 featuring a robot that contains many of those things.

The CNN Documentary “Don’t Fail Me: Education in America” from 2011 follows 3 FRC teams around and shows metric tons of robots with all of those features.

“I, Wombot” is a feature film made by a crew that followed World Chairman’s Award Winner Thunder Down Under in 2011 that shows loads of robot footage with all of these things happening frequently.

Popular Mechanics loves writing about FIRST Robotics, and frequently goes into great detail about the mechanisms, especially lifts and drive systems, which seem to be your area of contention. This might help you quite a bit considering there’s a lot of articles from 2008-2011. Here’s an example: "Wright says the bot’s two interior wheels are just a tiny bit lower to the ground than the wheels closest to the edge, which shortens the turning radius and allowed the bot to drive the crazy course more nimbly. Wright works on the mechanical part of the team, but says that it takes everybody to field a winning robot. Each team member works on designing the robot in CAD, he says. “Mechanical turns that into reality. Electrical and programming make it work.”

Like I said, I’m far from being a lawyer, and I have no idea if any of this means anything, but I love FIRST and would hate to see a single party try to claim all innovations made within it and within your company, so I am more than happy to give helping out a shot.

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Thanks for everyone’s help and posts. Does anyone have examples of a drive train that can be retrofitted or changed out quickly in case of a failure or strategy change pre-2012?

Some time back, I remember a major car manufacturer, either Toyota or Ford I think. Showed off their universal and interchangeable drive base system. The idea was they would only have one drive train, and the different body styles would sit on top. Most cars produced today use a version of this concept. I would think that would suffice.

Also, as far as the handheld remote, look into early vex robots. They are exactly what you are talking about. We have some of the pieces if you need images, but I am almost certain They were pre- 2012.

I’m not a lawyer, so take what I say with a grain of salt. I’ve dealt a fair amount with patents and have a couple of my own. I agree with others that these patents are not inventive and obvious to a “person having ordinary skill in the art”. But…that doesn’t stop people from getting patents. If appropriate prior art was not presented and the examiner did not look hard enough, I can easily see these patents getting through.

Patents only mean something if the patent holder is willing to enforce them. Which is what this guy is trying to do. The question is what lengths he will go to enforce them. It may be as easy as you just ignoring him or sending him an email with evidence of prior art and showing non-inventiveness of his patents. He may be dead set on getting royalties, though, which means either you pay up or you go to court. You’d probably have a good chance in court, but it’ll take lots of time and money. There’s also the Inter Partes Review process through the USPTO which is a process for challenging the validity of patents. It will also take time and money, but potentially less than a court case.

If you are very concerned about this, I would suggest talking to a patent attorney. Given the weakness of these patents, I bet you could get someone to help you out. Regardless, if the enforcement of these patents is a threat to your bottom-line, seeking legal council will be in your best interest.

After a bit of Googling, I wouldn’t be too worried about this guy. But I also work for a larger company that would squash this in no time. I’m sure this guy knows his patents aren’t strong and targets smaller companies and individuals. Again, since you work for a small company and you seem worried about it, talk to an attorney.

Best of luck. And again, I am not a lawyer :slight_smile:

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Google patent trolls. It sounds like that is what you are dealing with.

If this is your company, and there is any risk of your company running afoul of any patent or a risk of legal action against your company… I would strongly recommend that you seek the guidance of qualified legal counsel sooner rather than later. It will cost you to engage an attorney, but if this is your business, your livelihood, or even your side project - it is better to get it right the first time… and there may be some small business legal resources available to you, that could help reduce the costs or even be free.

While the ChiefDelphi community is wonderful in providing support, guidance and advice - when it comes to legal matters, don’t mess around… get your own qualified attorney. Don’t risk it.

(just my 2 cents)

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We have. I told him I would reach out to the FIRST community first prior to letting him run a prior art search.

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