U.S. Government Weighs in Against iRobot Request for Injunction Against Rival Firm

9/20/07Follow @bbuderi

Declaring that “the lives of soldiers presently at war in Iraq and Afghanistan” could be placed in peril, the federal government has injected itself into the legal battle between iRobot and Robotic FX—asking a U.S. District Court judge in Massachusetts on the brink of this morning’s hearing not to let iRobot’s efforts to win a preliminary injunction against its rival’s operations delay the shipment of bomb-detecting robots to the Middle East.

If an injunction is issued against Robotic FX, which on Friday beat out iRobot to win a $279.9 million contract to deliver robots to the military, “soldiers will certainly be placed in life-threatening situations when a safer alternative exists,” the U.S. Attorney’s office declared in yesterday’s filing. A second filing, a declaration from U.S. Marine Corps Colonel Edward Ward of the military’s Robotic Systems Joint Project Office, echoed the U.S. attorney’s statement. Improvised explosive devices, or IEDs, are “the number one cause of Soldier and Marine casualties,” Ward said. “If these systems are not sent to the Theater in the most expedient manner, a far greater number of Soldiers and Marines will be placed in danger…”

On August 17, Burlington, MA-based iRobot (NASDAQ: IRBT) filed two lawsuits against Robotic FX, an Illinois company run by a former iRobot employee. The lawsuits, one in Massachusetts and one in Alabama, claim infringement on patents for iRobot’s PackBot military robot and misappropriation and misuse of confidential information related to the machine. We’ve been following the cases, which involve surveillance of Robotic FX employees and other actions, but a hearing on iRobot’s request for a preliminary injunction against Robotic FX’s operations is scheduled for this morning in U.S. District Court in Boston.

Robotic FX has denied any wrongdoing and has questioned the timing of the lawsuits, which were filed after the two firms began competing for the military contract earlier in August.

Yesterday’s filings shed more light on the sequence of events. On August 3, the statements said, the military solicited bids for IED-detection robots it calls X-Bots. Both iRobot and Robotic FX submitted systems that successfully performed a series of technical tasks—including traversing various terrain such as sand, gravel, and rock, and demonstrating their robots’ camera functions and “claw” capabilities for lifting or removing debris that might conceal a bomb. The successful completion of these tasks permitted both firms to submit a bid for the contract, which Robotic FX won. The first robot systems are to be delivered next week, with 1000 robots due before December 2008, according to the U.S. Attorney’s filing.

The U.S. Attorney’s office said iRobot’s lawsuits were filed “in a forum that circumvents the usual forum for resolution of disputes related to government procurements…” It noted that “IRobot did not file a protest either with the Army, the Government Accounting Office (GAO), or the Court of Federal Claims.”

Ward’s declaration noted that the X-Bot is envisioned to be a smaller, more lightweight alternative to previous bomb-detection robots. “Current robotic systems are too heavy and bulky to be issued to Soldiers and Marines performing patrolling or convoy duties,” he stated. “The X-Bot is designed to provide a small robotic system for eyes on investigation and identification from a stand off distance.”

Both Ward and the U.S. Attorney’s office argued that it was not in the public interest to grant iRobot’s injunction request. The U.S. Attorney’s filing concluded, “In this action, the national security concern implicated in halting shipment of the robots is far greater than the purely commercial dispute over whether or not Defendant violated business confidences. At stake are the lives of soldiers presently at war in Iraq and Afghanistan with enemies that specialize in explosive devices designed to kill. The protection that the detection robots provide for our troops easily dwarfs whatever interest the public has in a private dispute between the corporations.”

Bob is Xconomy's founder and editor in chief. You can e-mail him at bbuderi@xconomy.com, call him at 617.500.5926. Follow @bbuderi

By posting a comment, you agree to our terms and conditions.

  • Andy Simpson

    Are you going to analyze the Army’s claims or simply post them and only provide comments favorable to FX? For example, you don’t mention the Army’s statement that BOTH bots met all technical requirements. And then you accept the statement about the 50 pound wieght of the FX bot without criticism. Note that the the Packbot weighs in at 18 kg (40 pounds).

  • Robert Buderi

    Hi Andy,

    The story definitely mentions that both firms met the technical requirements, see fifth paragraph. I am reporting what is in the filings, just as I have for iRobot filings. I do see that Ward was only talking about the Robotic FX robot when he said it was 50 pounds, so I removed the mention of the specific weight. Thanks.

  • Andy Simpson

    Bob: You are correct that your story mentioned that both bots met the tech requirements. I missed that and I apologize.

    I’m glad you removed the mention of the specific weight, but I think what the Army’s lawyers have done bears public scrutiny: They implied to the judge that the FX Negotiator was superior to anything presently available because it only weighed 50 pounds. In fact, the iRobot Packbot weighs in at 40 pounds and has been in the field for several years. Indeed, I understand that the name “Packbot” is designed to reflect the fact that it can be carried in a soldier’s backpack.

    Reading between the lines of the Army’s statement, BOTH bots meet all of their requirements. What the Army did not tell the judge is that this bid was decided betwen iRobot and FX solely based upon price. So it is not a question of soldiers going unprotected — if the judge rules against FX, the soldiers can get Packbots immediately. The only distinction is that the Army will have to pay more because it will be buying the units from a company that invested heavily in the R&D to develop the bot; instead of from a company whose R&D allegedly consists of illegally logging into the iRobot server and taking information from it.

    And if I were a soldier in the field, I’d have a lot more confidence in a bot developed by a company with integrity and with battle-tested robots.

  • Laurel

    First off, I own iRobot stock so I’m not claiming to be impartial. However, I do not think the procurer, in this case the government, should have any bearing on a patent dispute. To state that the court should not issue an injunction because the government really wants the product from FX now is ludicrious! The court’s job is to uphold the current law and the government should not ask the court to ignore the law.

    Patents are worthless if they can be ignored at the government’s discretion. The fact that the army even awarded FX the big contract is, in my opinion, a bad choice given the dispute and the fact that the FX founder is a former iRobot employee. If they really cared about soldiers’ lives, they would have bought from iRobot and waited to deal with FX if and when FX cleared their name.

  • snake

    I’m amazed that COL Ward gave a declaration. Did the SecDef sign off on his statements? …but he is a reservist. The point that frustrates me is – soldiers and marines are not dying because of a lack of robots, they are dying because of a lack of leadership, at tactical and operational levels. That statement is not meant to be disrespectful to those leaders out there who are tactically and technically competent, possessing both moral and physical courage. In my time in Iraq I did serve with some of the greatest men in America, but I saw many cut from a lesser cloth. Lives are not at stake because of robots. Robots are just another tool. I am sick and tired of self-serving REMFs wrapping themselves in the flag and crying out “what about the soldiers?!” to get consideration for a decision that they can’t get on its own merit. Does Col Ward have a chip on his shoulder or some grievance with iRobot? Regardless, I don’t think whatever personal grievances he may have, nor his grandstanding warrants dismissal of a company’s property rights. Our Declaration of Independence bears the signatures of merchants, tradesmen, farmers and businessmen. It is worthwhile to protect, as the law allows, both free enterprise, and intellectual property rights, just as we do other property rights. I hope COL Ward would not recommend kicking in the doors of our houses to seize property that he, as one O-6, deems as essential for the war. Perhaps he would like to confer with his chain of command before such actions?

  • anonymous

    Can someone please clarify things?

    From the post: “On August 3, the statements said, the military solicited bids for IED-detection robots it calls X-Bots. Both iRobot and Robotic FX submitted systems that successfully performed a series of technical tasks….”

    It has never been once officially confirmed which robot iRobot used in the trial for the contract!!! NOT ONCE! It’s all been speculation. Their website shows the Packbot chassis is 42 lbs but with the EOD package, THE ARM, it is 68 lbs! 18 lbs too heavy to be a X-Bot! SO… they could not have used any of their Packbot platforms because any of them with the ARM, which was a very important requirement to be in the trial, would be too darn heavy!!!

    So I know everything with the legal stuff is still relevant but this current trial is not over the resulting damages of the loss of a contract that pitted the supposed Clone Vs. The Cloned! I strongly believe that learning which robot was used by iRobot would shed some light on the situation.

    Ward’s declaration noted that the X-Bot is envisioned to be a smaller, more lightweight alternative to previous bomb-detection robots. “Current robotic systems are too heavy and bulky to be issued to Soldiers and Marines performing patrolling or convoy duties,”

    Yes!! that means the “battle proven” Packbot the military currently has. They obviously don’t like it!! Their Packbot is is 68 lbs with the ARM… The Negotiator is 45.9 lbs. That Packbot isn’t what they competed with because it’s too heavy and bulky but wow, RFX did something they could not. They got their “clone” under 46 lbs!!! I think that is more appealing than 68 to a soldier overseas. So what did iRobot compete with? How could that mystery robot be so “battle proven” and trustworthy if it’s a BLIPIN’ mystery?!

    he stated: “The X-Bot is designed to provide a small robotic system for eyes on investigation and identification from a stand off distance.” The successful completion of these tasks permitted both firms to submit a bid for the contract, which Robotic FX won.

    Is it that crazy to think that maybe the mystery robot iRobot competed with was not all that good? Maybe the military and the high up General really do want the Negotiator because it is actually better? I think everyone else is crying over spilled milk. Take a look at this:

    http://www.isd.mel.nist.gov/US&R_Robot_Standards/disaster_city/participants4.htm

    Both the Negotiator and the Packbot were at this event back in June. I am almost positive they were both at the one that was in 2006 but I do not have Powerpoint to open the saved file.
    http://www.isd.mel.nist.gov/US&R_Robot_Standards/montgomery_county/eventintro.htm#schedule

    Does anybody realize that the the two robots have been around each other at events and I am sure other public places? Doesn’t it seem far fetched that iRobot did nothing all that time? I think they are taking advantage of the fact that everyone thinks the Negotiator beat the Packbot and STOLE the contract. I really hope it is not that vague in court. That seems very dishonest to me.

    The Attorney’s office noted that “IRobot did not file a protest either with the Army, the Government Accounting Office (GAO), or the Court of Federal Claims.”
    Don’t you think they would have objected to competing with a knock-off of the exact product they were using in the same very important trial?!? They are the ones experienced with this process not the small guys. I would love to find out for how long they had one of the Negotiators… Seems silly to me that they would have let it get this far if they strongly valued the product they made for it’s OWN merits.

  • Ricardo

    Although I agree with anonymous 9:15 am, if claims of hard drive erasing and document shredding are true then, in court, it will probably look like FX stole valuable information.

  • anonymous reponse

    I think there is a lot more to this story than what is being reported. It doesn’t help that documents are being sealed from public record either for reasons of trade secret or national security – I’ve seen both reported.

    The fact is that deciding whether to pursue patent litigation is a cost benefit analysis. You don’t waste legal resources on possible infringers who are not causing any harm to your business. My guess is that iRobot didn’t think FX was a threat that warranted resources until they won the Army contract. Obviously, that was a big mistake. Their beef isn’t with the Army or the contract so why use the GAO, their beef is with a previous employee who allegedly used trade secrets and violated patents in order to build a product that subsequently robbed them of nearly 300M (assuming iRobot would have won the contract without FX in the picture).

    Whether or not the Navigator is a better and lighter weight robot is irrelevant if it was built using stolen IP. I don’t doubt the Navigator is a good product if it was selected by the Army and especially if it was a cheaper product. But hey, it’s always easier to take someone else’s R&D and improve on it than build it from scratch yourself. In fact, iRobot sells a Create robot now that developers can use as a command control platform for building robotic applications. I suppose I could buy it, add a couple robotic arms for picking stuff up and mount a camera on top, and re-sell it as “MyRobot,” but I’d probably be violating about a dozen or more patents.

    Whatever the truth may be, I hope that the courts are able to determine it and either grant a permanent injunction against FX or allow FX to continue to operate because they did not in fact use any iRobot IP in their designs.

  • snake

    Recently saw something touting the – small business, American dream, support the underdog – theme as a point for Robotic FX… but really, isn’t that how iRobot got started. A couple-few people taking cash advances on their credit cards to make payroll while trying to win government R&D contracts… etc, etc… I think if the Negotiator is the better robot, that is what DoD should buy, but I also think that iRobot has rights too – intellectual property. After looking at it awhile, maybe the two issues are really separate but once they are mentioned in the same paragraph, in the media (including blogs) they become inseparably intertwined. I wonder how judges deal with this, for themselves… to ensure they are not influenced by all the extraneous discussions?

  • amused

    to anonymous at 3:15

    Wasn’t this contract a really big deal? There was a lot of talk and anticipation of whether or not iRobot was going to win it. Didn’t their stock go up as a result of the assumed positive results? Why would they compete against their “rip-off” and not file a protest with anyone? I find that very strange and I am surprised it has not been addressed by iRobot.

    Also, the exact details of the patent infringements are unknown so I am unable to join the general sentiment that the entire robot had been copied. I doubt that.

  • amused response

    Yes – of course it was a big deal! And yes, their stock went up as a result.

    Why would they compete against a rip-off? I am honestly wondering the same thing. However – protecting IP in this space is a very costly equation. I suppose that the MIT folks that founded iRobot couldn’t fathom an upstart former employee with 8 employees that could convince the U.S. Army to spend close to 300M with them and actually dare use iRobot’s trade secrets to build a “similar” robot as a feasible thing. We’re talking about a stock that has been blasted in the past for insider trading because they don’t “get” wall street. If you look at the core team here, their heads are more interested in robotoics then stock prices. This may account for them not seeing this coming.

    Or, they are spending gobs of money over 300m in revenue for this 1 contract because they are evil and want to rule the robotic world and kill FX even thought FX is innocent? Where are the character witnesses here?

    P.S. I would really like to know what soured the relation between iRobot and the Army folks in charge of securing this deal. Obviosuly, like I said before… there is probably more to this story than we know. I suspect it is more than FX having a lower price. Obviosuly, someone is upset over at the Amry with iRobot.

  • snake

    Yeah. The MIT folks do seem…. (trying to think of a nice word for self-absorbed). Trying to stay away from the word arrogant, but there you have it. I think you’ve hit on an important point, they love robots, they are robot-smart, not the same thing as business savvy.

    On the DoD side, I don’t think it’s the “Army”. I think it is just one or two individuals. So many folks “speak” for the Army that it’s laughable…. I think Rumsfeld had a good response when some reporter stated, “the white house said…” and Rumsfeld’s response was along the lines of…. B*llsh*t, the White House is a building, it didn’t say anything, give me a name and then I will respond to comment…

    So I don’t know. I think there are a couple of folks in the acquisition chain that don’t like some of the leadership at iRobot. That does not make the Negotiator any less or any more of a good robot. Nor the PackBot.

    If the Robotic FX folks did nothing wrong, let’s hope that is what the court decision supports, and repeat that statement if they did do wrong.

    I do think it is a bit “wrong” for Col Ward, as a DoD acquisition geek to insert himself (and by default the USMC) into the lawsuit, in the way he did. Kind of embarrassing really. If you do your homework and have a good acquisition plan, you don’t have to blame others for your shortcomings in supporting the troops.

    I still think it’s amusing-sad how all the solutions for supporting our troops involve spending money (large money – don’t forget MRAP) with Defense Contractors but does not address – training, doctrine, leadership, tactics, etc…

    It’s easier to throw money at it, then to look for a solution, and it’s easier to blame someone else, rather than ask what we could do better.

  • mongoose

    A few points that have been missed:
    1. Both iRobot and Robotic FX entrants passed the technical eval conducted by DOD. Then a reverse auction was conducted to determine the lowest bidder. iRobot quit first. So DOD got what it wanted – a qualified solution at the lowest price. iRobot could have won this contract at the auction if they chose to – by sacrificing profit margins. But the Robotic FX 7 person overhead costs versus iRobot’s overhead costs made then choose a strategy to fight this out in the courts rather than in the auction. While one could argue that iRobot invested all that R&D that they had to recoup, the facts are that Packbot was developed with DOD funding. Read the patents, it acknowledges that and states “the government may have rights to this technology.”
    2. If iRobot continues to frustrate the deployment of these robots to the troops, whether justified or not, they may run the risk of the government exercising those rights and contracting with Robotic FX or others to build the robots with the patented technology for which it paid. In any event, this a a perfect storm for iRobot PR. Win or lose, this is going to be UGLY!

  • poindexter

    Well, either way, this is in the hand of the judicial system. May justice prevail.

  • snake

    “… contracting with Robotic FX or others to build the robots with the patented technology for which it paid…” ?

    So the government could pay other companies to build the Packbot? Is that presuming that the Negotiator is built on iRobot patents?

    If the government has the rights to the technology – what’s the problem – game over – just do it.

    I suppose we have to wait for the end of the show before we will know how the story ends.

  • Truth

    mongoose: The government does not have the right to develop a system using a companies patents or allow another company to use those patents without compensation to the patent holder. The government does not hold Packbot related patents, Irobot does. Your interpretation of the patent laws in this case is incorrect.

    The majority of Irobot Packbot development cost were financed by venture capital money and then by proceeds from Irobot’s IPO over two years ago.

    Irobot claims from their investigation and from evidence recovered from US Marshals raid on Robotic FX headquarters and officers apartment that after the lawsuit was issued the CEO or COO bought two shredding machines, destroyed over 100 computer CDs, over wrote over several hard drives with a non-recoverable data pattern, and was caught driving to a dumpster to discard several items belonging to Irobot. So, I really don’t fault Irobot from not bidding below point where margins would be razor thin on an fixed price contract against an ex-employee that they strongly believed kept a large amount of company proprietary information, which was used to produce a very similar looking robot platform. Also, Robotic FX CEO pleaded the 5′th and remained silent to avoid self incrimination at the hearing.

  • Truth

    Irobot has many patents on Packbot. Robotic FX has none. If the government could just allow another company to have another companies patents to produce the same item, defense companies would never patent their inventions.

  • mongoose

    Truth: I am afraid you are not correct about the government’s right to the technology. It is well known by those (like myself) who do government funded development work that any patents that emerge from that work will be subject to “government purpose rights”. It allows for example if the patent holder does not or cannot exploit the technology, the government can authorize another company to further develop the technology for government purposes. If you research the specific patents that iRobot claims were infringed, you will find that each state clearly that the technology was developed partly with government funding (DARPA to be specific in the MTRS program) and “the government may have rights to the technology.” Not my opinion….it is right there for those who take the time to do the research.

  • Truth

    mongose: I reviewed Irobot patents 6,263,989 and 6,431,296. I do not see any reference to “government purpose rights”. Please provide the exact quote in these patents that refer to a “government purpose right” so I can verify that your statement is correct.

    Also, if it’s well known that ANY patent emerging from a government funded contract is subject to “government purpose rights” why can’t I find any internet sites that describe that being the case? The reason is it is NOT true that ANY patent emerging from a government funded contract is subject to “government purpose rights”. The closest thing that I can find is for some software government contracts the government may have rights to the software and data. But, even this depends on the contract negotiated. Even, so Irobot patents 6,263,989 and 6,431,296 are not software patents but are mechanical patents covering the Packbot platform.

    The Army, US Attorney and Robotic FX are aggressively arguing to block Irobots request for an injunction of Robotic FX from selling their NEGOTIATOR robot until the two lawsuits cases are decided. If it was true that the government can do with Irobot Packbot patents as the government wishes, then the government would be bring that up in their arguments, which they are not.

  • mongoose

    Truth:
    Check the Defense Federal Acquisition Regulations Clause 252, which can be found here – http://farsite.hill.af.mil/reghtml/regs/far2afmcfars/fardfars/dfars/dfars252_227.htm

    GOVERNMENT PURPOSE RIGHTS LICENSE
    is a nonexclusive, irrevocable, paid-up royalty-free worldwide license to use, modify, reproduce, release, perform, display or disclose the work by or on behalf of the Government. Under a Government Purpose Rights License, the Government may use the work within the Government without restriction, and may release or disclose the work outside the Government and authorize persons to whom release or disclosure has been made to use, modify, reproduce, release, perform, display, or disclose the work for Government purposes.

    And if you look in either patent, scroll down past the diagrams,drawings and schematics to the first column of text and look at the last sentence in the paragraph titled “STATEMENT AS TO FEDERALLY SPONSORED RESEARCH” and you will find iRobots acknowledgement that the government may have certain rights in the invention.
    It would be an extreme action to take by the government, but not out of the question.
    But it would appear that iRobots strategy is death by a thousand pinpricks and they will just bleed this little startup company to death with legal wranglings. In the meantime, the troops go without the robots. I think in the end this wil be a PR disaster for iRobot with respect to winning government contracts. They may win this battle, but loose the war.

    mongoose