DCT
8:24-cv-02183
Flying Heliball LLC v. Shopify USA Incet Al
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Flying Heliball, LLC (California)
- Defendant: Shopify (USA), Inc. (Delaware); TikTok, Inc. (Delaware)
- Plaintiff’s Counsel: McKown Bailey
- Case Identification: 8:24-cv-02183, C.D. Cal., 10/08/2024
- Venue Allegations: Venue is asserted based on Defendants deriving substantial revenue from sales of the accused products in California and maintaining systematic and continuous business contacts with the state.
- Core Dispute: Plaintiff alleges that drones manufactured by a third party and sold through Defendants' online platforms infringe a patent related to automatic altitude control for flying vehicles.
- Technical Context: The technology concerns sensor-based systems that enable unmanned aerial vehicles, or drones, to automatically maintain a set distance from a surface, a foundational feature for hovering and obstacle avoidance.
- Key Procedural History: Plaintiff acquired the patent-in-suit in 2022. The complaint alleges that Plaintiff provided pre-suit notice of infringement to manufacturer Zero Zero Robotics, Inc. (ZZRI) as well as to Defendants TikTok and Shopify. It further alleges that Shopify was asked to remove the infringing listings and declined to do so.
Case Timeline
| Date | Event |
|---|---|
| 2005-01-14 | ’866 Patent Priority Date |
| 2006-09-05 | ’866 Patent Issue Date |
| 2022-XX-XX | ’866 Patent assigned to Flying Heliball |
| 2024-10-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,100,866 - "Control System for a Flying Vehicle"
The Invention Explained
- Problem Addressed: The patent's background section notes that for toy and hobby vehicles, the "ability to maintain a stable flight or hover is difficult to implement without the user constantly adjusting the speed of the propellers." (’866 Patent, col. 2:31-33). The patent seeks to create a "self-hovering vehicle" that can automatically adjust its height relative to a surface. (’866 Patent, col. 2:33-39).
- The Patented Solution: The invention proposes a control system for a flying vehicle that uses a downward-pointing transmitter and receiver pair. The transmitter emits a signal (e.g., infrared), and if the receiver detects the signal bouncing off a surface below, a control system sets the propellers to a "climb speed" to gain altitude. (’866 Patent, col. 4:50-55). If the bounced signal is not received, the control system sets the propellers to a "fall speed" to lose altitude. (’866 Patent, col. 4:60-63). By toggling between these two states, the vehicle can automatically hover at a predetermined distance from the surface. (’866 Patent, Abstract; Fig. 7).
- Technical Importance: This approach provides a simple, automated mechanism for altitude control in small flying vehicles, reducing the need for constant manual input and enabling stable hovering. (’866 Patent, col. 2:33-39).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 10. (Compl. ¶¶25-26).
- Independent Claim 1 recites a vehicle with:
- a means for propelling in a vertical direction;
- a transmitter on the bottom of the vehicle for transmitting a signal downwardly;
- a receiver on the bottom of the vehicle for receiving the bounced signal;
- a control system that automatically sets the speed of the propelling means, with a first means to set a "first speed" (to gain altitude) when the bounced signal is received, and a second means to set a "second speed" (to lose altitude) when the bounced signal is not received.
- Independent Claim 10 recites a system to control a direction of movement of a flying vehicle, with:
- a transmitter/receiver pair positioned on the vehicle;
- a means to fly the vehicle in a direction opposite to the signal's transmission direction when a bounced signal is received;
- a means to fly the vehicle in a direction similar to the signal's transmission direction when a bounced signal is not received.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The HoverAir X1 and V-Coptr Falcon drones, manufactured by non-party Zero Zero Robotics, Inc. (ZZRI). (Compl. ¶28).
Functionality and Market Context
- The complaint alleges the accused drones are equipped with a processor, propellers, cameras, and a Light Detection and Ranging (LiDAR) sensor. (Compl. ¶¶42, 49).
- The LiDAR sensor is alleged to function as a transmitter/receiver, emitting a signal (infrared) and measuring the time it takes for the signal to return after bouncing off a surface to determine proximity. (Compl. ¶¶45, 49).
- This system is used for an "avoidance mode" where, upon detecting an object in close proximity, the drone's processor engages the propellers to "fly away from the surface" or "jump" away to increase altitude. (Compl. ¶¶45, 50). The complaint points to advertisements and user videos as evidence of this functionality. (Compl. ¶¶47-48, 50). An advertisement for the HoverAir X1 on Facebook highlights features such as "one-click palm off" and "Multiple Intelligent Flight Paths." (Compl. p. 8).
IV. Analysis of Infringement Allegations
'866 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A vehicle having a means for propelling in a vertical direction | The accused drones have a processor electrically connected to a battery and four propellers. | ¶42 | col. 3:9-14 |
| a transmitter positioned on the bottom of said vehicle for transmitting a signal from the vehicle downwardly away from said vehicle | The drones use a LiDAR sensor, which operates as a transmitter to emit an infrared signal. | ¶¶44-45 | col. 4:21-22 |
| a receiver positioned on the bottom of said vehicle for receiving said signal as it is bounced off of a surface | The LiDAR sensor also functions as a receiver for the bounced signal. | ¶¶45-46 | col. 4:22-30 |
| a control system that automatically sets a speed... a first means to set... a first speed when the receiver receives the bounced signal... that causes the vehicle to gain altitude | When the LiDAR sensor detects a surface, a microcontroller engages the propellers to fly upward to increase clearance. | ¶47 | col. 4:53-55 |
| a second means to set... a second speed when the receiver does not receive the bounced signal... that causes the vehicle to lose altitude | When the surface is no longer detected, a microcontroller engages the propellers to fly downward. | ¶47 | col. 4:60-63 |
Identified Points of Contention
- Technical Questions: A central question may be whether the accused drones' sophisticated flight control, which the complaint notes involves "computer vision technology" and evading obstacles by "chang[ing] course," operates in a manner equivalent to the binary "climb speed" / "fall speed" logic described in the patent. (Compl. ¶43, ¶48). The complaint alleges the drones "automatically override instructions to fly according to the flight path" and use "automatically-generated flight instructions," raising the question of how this behavior maps to the specific two-speed system claimed. (Compl. ¶¶45-46).
- Scope Questions: The dispute may turn on whether the functionality of a modern LiDAR and computer vision-based system falls within the scope of the patent's claims. For example, does the accused system's ability to "back away from the sign, change course, and evade" (Compl. ¶48) correspond to the "means to fly said vehicle in a direction opposite" as required by Claim 10, or does it represent a more complex, non-equivalent form of navigation?
V. Key Claim Terms for Construction
The Term: "control system" (Claim 1)
- Context and Importance: This term's construction is critical because the patent discloses a relatively simple system based on timers and predefined speed adjustments (e.g., Fig. 7), while the accused products allegedly use a "processor... programmed with... computer vision technology." (Compl. ¶42). Practitioners may focus on this term because its scope will determine whether complex, software-driven drone flight controllers are covered by claims rooted in simpler 2005-era toy technology.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the control system "may either be a closed loop system or an open loop system," and that it "monitors the receiver's output." (’866 Patent, col. 4:36-39). This could support an interpretation that covers any system performing that monitoring and response function, regardless of its internal complexity.
- Evidence for a Narrower Interpretation: The detailed description and Figure 7 provide a specific flowchart for the control system's logic, involving checking a timer against predetermined values (T1, T2) to switch between "climb speed" and "fall speed." (’866 Patent, col. 4:50-55; col. 5:11-21; Fig. 7). This could support a narrower construction limited to systems operating on this specific timed, binary logic.
The Term: "means to fly said vehicle in a direction opposite of said predetermined direction" (Claim 10)
- Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope is limited to the corresponding structure described in the specification and its equivalents. The complaint alleges that drones which "back away... change course, and evade" an object meet this limitation. (Compl. ¶48). The core issue is whether the accused drone's multi-axis evasion maneuver is structurally equivalent to the patent's disclosed mechanism.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Equivalency): The patent broadly describes the control system's function: "when the signal is bounced off of a surface... the control system flies the vehicle in a direction opposite to the specified direction." (’866 Patent, col. 6:50-54). This high-level description could be argued to encompass any structure that achieves this result.
- Evidence for a Narrower Interpretation (Structure): The corresponding structure appears to be the same control logic from Claim 1, which adjusts the speed of a vertically-oriented propelling means. The patent explains that for a downward-pointing signal, receiving a bounce causes the vehicle to climb (fly opposite the downward direction). (’866 Patent, col. 4:3-7; col. 6:55-58). This may limit the claim to simple vertical movement, raising the question of whether it covers the lateral or multi-axis "evasion" described in the complaint.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Shopify and TikTok induce infringement by providing platforms and advertising tools that encourage merchants to sell, and customers to purchase and use, the accused drones. (Compl. ¶¶34-37, 65). The complaint includes a screenshot of a Facebook advertisement for the HoverAir X1, allegedly "designed for ZZRI" by Shopify, as evidence of inducement. (Compl. p. 8).
Willful Infringement
- Willfulness is alleged based on pre-suit knowledge. The complaint states that Plaintiff provided Defendants TikTok and Shopify, as well as the manufacturer ZZRI, with copies of the '866 patent and infringement allegations via notice letters (Exhibits C, D, E). (Compl. ¶¶54-56). It is further alleged that Shopify "declined to remove its infringing listings" after receiving notice. (Compl. ¶57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological scope: Can the claims of the '866 patent, which describe a binary control system for maintaining altitude in a simple flying toy, be construed to cover the sophisticated, multi-functional, software-driven flight control and obstacle evasion systems found in modern consumer drones that utilize LiDAR and computer vision?
- A key evidentiary question will be one of structural and functional equivalence: For the means-plus-function claims, does the accused drones' complex, multi-axis method of evading an obstacle by backing away and changing course constitute an equivalent structure and function to the patent's disclosed system, which appears to primarily achieve avoidance through simple vertical ascent?
- A central question of secondary liability will be whether the operation of an e-commerce platform like Shopify or TikTok, including providing advertising tools to third-party merchants, rises to the level of actively inducing customers to infringe the patent-in-suit, particularly after being put on notice.