DCT

2:19-cv-03028

Unicorn Global Inc v. Hillo America Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-03028, C.D. Cal., 04/18/2019
  • Venue Allegations: Venue is asserted on the basis that the Defendant is a California corporation that resides in the Central District of California and has a regular and established place of business in the District.
  • Core Dispute: Plaintiffs allege that Defendant’s "Hoverheart" brand of self-balancing electric scooters infringes two utility patents and two design patents related to the structure and appearance of such "hoverboard" devices.
  • Technical Context: The technology at issue involves personal mobility devices, commonly known as hoverboards, which utilize gyroscopic sensors, microprocessors, and independent wheel motors to maintain balance and respond to rider foot movements.
  • Key Procedural History: The complaint states that patent owner Hangzhou Chic Intelligent Technology Co., Ltd. granted an exclusive license to SHENZHEN UNI-SUN ELECTRONIC CO., LTD. under a Patent License Agreement dated October 16, 2018, and that both parties subsequently assigned enforcement rights to Unicorn Global, Inc., establishing the basis for the collective plaintiffs' standing to sue.

Case Timeline

Date Event
2014-06-13 Priority Date for ’155, ’802, and ’723 Patents
2015-09-01 Issue Date for U.S. Patent No. D737,723
2015-09-30 Priority Date for U.S. Patent No. D784,196
2016-06-28 Issue Date for U.S. Patent No. 9,376,155
2016-09-27 Issue Date for U.S. Patent No. 9,452,802
2017-04-18 Issue Date for U.S. Patent No. D784,196
2018-10-16 Date of Patent License Agreement
2019-04-18 Complaint Filing Date

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

U.S. Patent No. 9,376,155 (the “’155 Patent”) - "Electric Balance Vehicle," Issued June 28, 2016

The Invention Explained

  • Problem Addressed: The patent describes prior art electric balance vehicles as typically requiring a physical operating rod for control and having static foot platforms, which prevents a user from controlling the vehicle "merely through the feet" by rotating the platforms relative to each other (ʼ155 Patent, col. 1:18-28).
  • The Patented Solution: The invention proposes a vehicle with two independently rotatable halves connected by a central rotating mechanism. It features a three-layer construction, comprising a top cover, a bottom cover, and a structurally significant "inner cover" fixed between them. This inner cover acts as the "internal framework," providing rigidity and protecting internal electronic components from the stresses of user weight, thereby enabling a more compact and robust rod-less design ('155 Patent, col. 5:55-63; Fig. 2).
  • Technical Importance: This internal architecture provided a technical foundation for the compact, two-wheeled, self-balancing scooters that came to be known as hoverboards.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶ 27).
  • Essential elements of claim 1 include:
    • A "top cover" with two symmetric, rotatable parts.
    • A "bottom cover" fixed to the top cover, also with two symmetric, rotatable parts.
    • An "inner cover" fixed between the top and bottom covers, with two symmetric, rotatable parts.
    • A "rotating mechanism" fixed between the two parts of the inner cover.
    • Two "wheels" rotatably fixed to the sides of the inner cover.
    • Two "hub motors" fixed in the wheels.
    • A "plurality of sensors" between the bottom and inner covers.
    • A "power supply" and a "controller" housed in separate halves of the vehicle between the inner and bottom covers.

U.S. Patent No. 9,452,802 (the “’802 Patent”) - "Electric Balance Vehicle," Issued September 27, 2016

The Invention Explained

  • Problem Addressed: As a continuation of the application that led to the '155 Patent, the '802 Patent shares the same specification and addresses the same problem of enabling foot-only control for a self-balancing vehicle ('802 Patent, col. 1:20-36).
  • The Patented Solution: The solution is based on the same three-layer body structure with a central rotating mechanism, as described in the '155 Patent. The claims of this patent, however, add further specificity to certain components ('802 Patent, col. 3:9-14; Fig. 2).
  • Technical Importance: The patent protects a specific embodiment of the broader invention disclosed in the '155 Patent.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶ 33).
  • Claim 1 of the '802 Patent includes all the core elements of claim 1 of the '155 Patent, but further requires:
    • Two "pedals", which are "fixed to the top cover and the inner cover."
    • The "rotating mechanism" must comprise "two bearings, a shaft sleeve, and two snap springs."

U.S. Patent No. D737,723 (the “’723 Patent”) - "Self-Balancing Vehicle," Issued September 1, 2015

  • Technology Synopsis: The patent claims the ornamental design for a self-balancing vehicle. The design is characterized by an hourglass-shaped body, two wheels positioned at opposite ends within semicircular fenders, and textured footpads on the top surface (Compl. ¶ 20).
  • Asserted Claims: The single claim for the ornamental design as shown and described in the patent's figures (Compl. ¶ 39).
  • Accused Features: The complaint alleges that the overall visual appearance of the accused "Hoverheart" products is substantially the same as the claimed design in the '723 Patent (Compl. ¶ 40).

U.S. Patent No. D784,196 (the “’196 Patent”) - "Human Machine Interaction Vehicle," Issued April 18, 2017

  • Technology Synopsis: The patent claims a distinct ornamental design for a human-machine interaction vehicle. The design features an hourglass-shaped body with specific surface contours, wheel housings, and footpad areas that differ from the '723 Patent (Compl. ¶ 22).
  • Asserted Claims: The single claim for the ornamental design as shown and described in the patent's figures (Compl. ¶ 50).
  • Accused Features: The complaint alleges that the overall visual appearance of the accused "Hoverheart" products is substantially the same as the claimed design in the ’196 Patent (Compl. ¶ 51).

III. The Accused Instrumentality

  • Product Identification: The accused products are "electric balance vehicles called hoverboards" sold by Defendant under the "Hoverheart" brand, including models such as the "Hoverheart 6.5" Hoverboard Flash Wheel Self Balancing Electric Scooter" and "Hoverboard Kids' 4.5" Two-Wheel Self Balancing Electric Scooter" (Compl. ¶¶ 4, 17).
  • Functionality and Market Context: The accused products are two-wheeled, self-balancing personal mobility devices that are controlled by the rider's foot movements on two independent platforms (Compl. ¶ 16). The complaint provides screenshots of the products for sale on e-commerce platforms like Amazon.com and Walmart.com, highlighting features such as "LED Light Up Flash Wheels," a "Bluetooth Speaker for Music," and "UL Certificated" safety status (Compl. ¶ 18, p. 5). One such screenshot from a Walmart product listing shows a blue "Hoverboard Two-Wheel Self Balancing Electric Scooter" with its characteristic hourglass shape (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint does not provide element-by-element infringement charts. The infringement theory is presented through conclusory allegations in the main body of the complaint.

For the '155 Patent and '802 Patent, the complaint alleges that the Accused Products "meet each and every one of the elements of at least claim 1" of each patent, either literally or under the doctrine of equivalents (Compl. ¶¶ 28, 34). However, the complaint does not map specific features of the Accused Products to the claim limitations, particularly for the internal components like the "inner cover", "rotating mechanism", "sensors", "power supply", and "controller", which are not visible externally. The infringement claim for these internal structural elements is not substantiated with specific factual allegations in the pleading.

For the '723 Patent and '196 Patent, the infringement theory is based on the "ordinary observer" test for design patents. The complaint alleges that the "overall appearance" of the Accused Products is "substantially the same" as the patented designs, such that an ordinary observer would be deceived (Compl. ¶¶ 40, 51). To support this, the complaint juxtaposes the patent drawings (Compl. ¶¶ 20, 22) with photographs of the accused "Hoverheart" products (Compl. pp. 5, 7-8).

  • Identified Points of Contention:
    • Structural Questions ('155 & '802 Patents): A primary issue will be factual: do the accused "Hoverheart" products contain the specific three-part "top cover", "inner cover", and "bottom cover" structure recited in the claims? The analysis will require dissection of the accused products to determine if their internal framework corresponds to the claimed architecture or utilizes a different, potentially non-infringing unibody or chassis design.
    • Scope Questions ('802 Patent): For the '802 Patent, a further question is whether the foot platforms on the accused products meet the definition of "pedals" that are "fixed to the top cover and the inner cover," and whether the product contains the specifically claimed "rotating mechanism" with bearings, a shaft sleeve, and snap springs.
    • Visual Questions (Design Patents): The design patent dispute will focus on whether an ordinary observer, considering the prior art, would find the accused "Hoverheart" designs to be substantially the same as the '723 and '196 patented designs. The comparison will likely focus on the overall shape, the contours of the wheel fenders, and the texture and placement of the footpads.

V. Key Claim Terms for Construction

  • The Term: "inner cover" (asserted claim 1 of the '155 and '802 Patents)

    • Context and Importance: This term is foundational to the claimed three-layer structure. Infringement of the utility patents hinges on whether the accused products contain a distinct component that meets this definition. Practitioners may focus on this term because Defendant could argue its product uses an integrated chassis that does not have a separate and distinct "inner cover."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the inner cover's function as being the "internal framework of the entire balance vehicle 100 to indirectly bear the weight of the user" ('155 Patent, col. 5:56-58). This functional language could support an interpretation that covers any internal structural frame.
      • Evidence for a Narrower Interpretation: The claim requires the inner cover to be "fixed between the top cover and the bottom cover" ('155 Patent, col. 10:1-2). The detailed description and figures, particularly the exploded view in Figure 2, depict the inner cover (2) as a discrete component, which could support a narrower construction requiring a physically separate part.

  • The Term: "pedals" (asserted claim 1 of the '802 Patent)

    • Context and Importance: This term is a key limitation differentiating claim 1 of the '802 Patent from claim 1 of the '155 Patent. The construction will determine whether the top surfaces of the accused product, on which a user stands, qualify as the claimed "pedals".
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself may be argued to have a plain and ordinary meaning of a surface for foot placement. The specification states that the vehicle "includes two pedals 5" on which the user stands ('802 Patent, col. 5:43-45).
      • Evidence for a Narrower Interpretation: The specification describes the pedals as being contained within "pedal cavities" formed by the combination of "hollow spaces" in the top cover and "recesses" in the inner cover ('802 Patent, col. 5:48-55). Furthermore, claim 1 requires the pedals to be "fixed to the top cover and the inner cover" ('802 Patent, col. 10:45-46), suggesting a specific structural connection that may not be present in all hoverboard designs.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead specific counts for induced or contributory infringement. While the prayer for relief requests an injunction against such acts, the body of the complaint does not allege the requisite elements of knowledge and intent for an indirect infringement claim (Compl. p. 12, ¶D).
  • Willful Infringement: Willfulness is alleged for infringement of the '723 and '196 design patents only. The complaint asserts that Defendant "intentionally copied the ornamental design" claimed in those patents (Compl. ¶¶ 43-44, 54-55). The complaint does not make a corresponding allegation of willful infringement for the '155 or '802 utility patents.

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

  • A central issue will be one of structural proof: can Plaintiffs, through discovery and expert analysis, demonstrate that the accused "Hoverheart" products contain the specific, non-visible, three-layer "top-inner-bottom" cover architecture that is a core requirement of the asserted utility patent claims?
  • The design patent claims will turn on a question of visual identity: would an ordinary observer, acquainted with the hoverboard market, be deceived into believing the accused "Hoverheart" product is the same as the designs claimed in the '723 and '196 patents, or are the differences in their respective ornamental features legally significant?
  • A key question for damages will be one of culpability: can Plaintiffs prove that Defendant "intentionally copied" the patented designs, as alleged, to support the willfulness claims for the design patents, potentially leading to enhanced damages or a disgorgement of Defendant's total profits?