Odyssey Marketing Corp v. Spin Master Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Odyssey Marketing Corporation (Florida)
  • Defendant: Spin Master Corp. (foreign corp.); Spin Master, Inc. (Delaware)
  • Plaintiff’s Counsel: Wood, Smith, Henning & Berman LLP
• Case Identification: 2:19-cv-02692, C.D. Cal., 04/09/2019
• Venue Allegations: Venue is alleged to be proper because Defendant Spin Master, Inc. resides in the district, Defendant Spin Master Corp. maintains a regular and established place of business in the district, and both Defendants have allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s "Air Hogs" brand toy drones infringe two patents related to hybrid aerial and terrestrial vehicles that use a rolling cage for ground locomotion.
• Technical Context: The technology concerns unmanned aerial vehicles (drones) designed to improve energy efficiency and operational range by incorporating a non-powered, external cage that allows the vehicle to roll on the ground using the same propellers that enable flight.
• Key Procedural History: The complaint alleges that Plaintiff is the exclusive licensee of the patents-in-suit from the Illinois Institute of Technology (IIT). It further alleges that Defendant had pre-suit knowledge of the patents based on a direct inquiry from a Spin Master employee to the Plaintiff’s principal at the 2015 New York Toy Fair, where the patented technology was displayed.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,150,069 - “Hybrid Aerial and Terrestrial Vehicle” (Issued Oct. 6, 2015)

The Invention Explained

• Problem Addressed: The patent identifies the high energy consumption of Micro Air Vehicles (MAVs) as a key limitation that makes it "difficult for MAVs to remain airborne for an extended period of time" ('069 Patent, col. 1:29-32), thereby limiting their operational range and duration.
• The Patented Solution: The invention proposes a hybrid vehicle that combines aerial and terrestrial locomotion using a single propulsion system ('069 Patent, col. 1:19-23). A flying rotorcraft is enclosed within a "non-actuated rolling cage" connected by a revolute joint ('069 Patent, Abstract). For ground travel, the vehicle pitches forward, and the thrust from its rotors propels the cage, causing it to roll along the ground—a mode of transport described as "much more efficient than flying" (Compl. ¶9; ’069 Patent, col. 2:4-6). This design allows the vehicle to fly over obstacles when necessary.
• Technical Importance: By enabling a drone to use its existing rotors for more energy-efficient ground travel, the invention aims to "extend operation time and range" significantly compared to an aerial-only system (Compl. ¶9; ’069 Patent, col. 2:11-12).

Key Claims at a Glance

• The complaint asserts infringement of independent claims 1, 13, 18, and 25.
• Independent Claim 1, the broadest claim, requires:
  • A rotorcraft including a rotor powered by an actuator motor; and
  • A non-actuated rolling cage connected to the rotorcraft by at least one revolute joint.

U.S. Patent No. 9,061,558 - “Hybrid Aerial and Terrestrial Vehicle” (Issued Jun. 23, 2015)

The Invention Explained

• Problem Addressed: Like its family member, the '558 Patent addresses the problem of high energy consumption and consequent short operational duration in small aerial vehicles ('558 Patent, col. 1:29-33).
• The Patented Solution: The patent describes a vehicle with a "flying device" and a "non-actuated rolling cage" that is "not separately powered" but instead rolls due to the thrust from the flying device's rotors ('558 Patent, Abstract; col. 2:53-56). This dual-mode capability is achieved through a "revolute joint" that allows the cage to roll freely relative to the internal flying device, enabling efficient ground movement while retaining flight capability to "easily [fly] over" obstacles ('558 Patent, col. 2:14-15).
• Technical Importance: This design provides a "simple" and "low cost" method for creating a hybrid vehicle that leverages the efficiency of ground-based rolling to overcome the range and endurance limitations of conventional small drones ('558 Patent, col. 2:41-43).

Key Claims at a Glance

• The complaint asserts infringement of independent claim 1.
• Independent Claim 1 requires:
  • A flying device and
  • A non-actuated rolling cage connected to the flying device by at least one revolute joint,
  • The rolling cage comprising two opposing hubs and a plurality of rails connecting the hubs,
  • Wherein the rolling cage rolls against a terrestrial surface and rolls about the flying device.

III. The Accused Instrumentality

Product Identification

• The complaint names the "Air Hogs Hyper Stunt Drone" and the "Air Hogs Rollercopter" as the infringing products (Compl. ¶10).

Functionality and Market Context

• The complaint alleges that the accused products are toy drones that incorporate the patented technology, specifically a flying vehicle enclosed within an external rolling cage (Compl. ¶10, ¶17).
• The complaint includes visual evidence comparing patent figures to photographs of the accused products. A side-by-side comparison shows Figure 3 from the patents’ specifications next to the accused Air Hogs Rollercopter, highlighting the visual similarity of the cylindrical cage and internal drone (Compl. p. 5). A second comparison pairs Figure 7 from the patents with the Air Hogs Hyper Stunt Drone, which features a more spherical cage structure (Compl. p. 5).
• Plaintiff alleges that it has lost customers, sales, and market share due to the sale of the accused products by Defendant, which is described as a "much larger company" able to "sell drones at lower margins" (Compl. ¶12, ¶16).

IV. Analysis of Infringement Allegations

’069 Patent Infringement Allegations

’558 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central issue may be whether the connection mechanism between the drone and the cage in the accused products constitutes a "revolute joint" as that term is understood in the patent. The complaint does not provide technical details of the accused products' internal construction.
• Technical Questions: The infringement case rests on the assertion that the accused cages are "non-actuated." A technical question for the court will be whether the cages are, in fact, unpowered and roll freely based only on the thrust from the drone’s rotors, as required by the claims. The complaint's primary evidence for this is the visual similarity to the patent embodiments (Compl. ¶17).

V. Key Claim Terms for Construction

The Term: "non-actuated rolling cage"

• Context and Importance: This term is fundamental to the patents' claimed solution of improving energy efficiency. Infringement requires that the accused cages are unpowered and roll passively. Practitioners may focus on this term because the distinction between a powered and an unpowered cage is the central point of novelty.
• Intrinsic Evidence for a Broader Interpretation: The specification states the cage is "not separately powered" ('558 Patent, Abstract) and that it "freely rolls due to the rotor thrust of the flying device alone" ('558 Patent, col. 2:54-56). This language may support a construction where any cage lacking its own dedicated motor is "non-actuated."
• Intrinsic Evidence for a Narrower Interpretation: A defendant could argue that "non-actuated" and "free-rolling" imply a high degree of mechanical independence and low friction, potentially arguing that a high-friction or poorly designed toy might not meet this limitation. The patent emphasizes that the joint should have "minimum possible friction" to reduce energy dissipation ('558 Patent, col. 2:50-53).

The Term: "revolute joint"

• Context and Importance: This term defines the critical connection between the flying device and the rolling cage. The existence and nature of this joint in the accused products will be a key factual determination for infringement.
• Intrinsic Evidence for a Broader Interpretation: The claim language itself is general. The specification provides examples, such as a "shaft" connected to a "bearing" ('558 Patent, col. 1:44-47), which could be read to encompass any common axle-based rotational connection typical in toys.
• Intrinsic Evidence for a Narrower Interpretation: The patent also discloses a specific "planar bearing" (158) in a prototype ('558 Patent, col. 5:42; Fig. 13). A party could argue that this specific embodiment informs a narrower construction of "revolute joint" that requires more than a simple pin-and-hole connection.

VI. Other Allegations

Willful Infringement

• The complaint alleges that Defendant’s infringement was willful and seeks enhanced damages (Compl. ¶23, ¶29, ¶35). The allegations are based on both alleged copying and actual notice. The complaint claims the accused products "appear to be direct copies of the preferred embodiments found within the specifications of the Odyssey Patents" (Compl. ¶17). It further alleges specific pre-suit knowledge, stating that at the 2015 New York Toy Fair, "one of Spin Master's employees approached [Plaintiff's principal] and inquired about the Odyssey Patents, Odyssey's products that practice them... and the patentee IIT" (Compl. ¶18).

VII. Analyst’s Conclusion: Key Questions for the Case

• A central issue will be one of pre-suit knowledge and intent: will the evidence presented by Plaintiff, particularly the alleged 2015 Toy Fair conversation and the visual similarities between the products, be sufficient to prove that Defendant knew of the patents and willfully infringed by copying the patented design?
• A key technical and legal question will be one of claim scope and structural equivalency: does the connection mechanism in the accused "Air Hogs" drones meet the legal construction of a "revolute joint," and is the external cage truly "non-actuated" as required by the claims? The outcome will likely depend on the court's claim construction and a detailed technical analysis of the accused products' design and operation.