Hongji Intelligent Bike Co Ltd v. Yongfang Su

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Hongji Intelligent Bike Co., Ltd. (China)
  • Defendant: Igogomi LLC, Geek USA Inc., Yongfei Enterprises Group Co Ltd (California), and several named individuals.
  • Plaintiff’s Counsel: Whitewood Law PLLC
• Case Identification: 3:21-cv-08067, N.D. Cal., 10/14/2021
• Venue Allegations: Venue is asserted based on Defendants’ alleged business operations within the district, including targeting California consumers through online stores that ship to the state and operating physical stores.
• Core Dispute: Plaintiff alleges that Defendants’ IGOGOMI brand electric bicycles infringe a U.S. design patent covering the ornamental appearance of an electric bicycle.
• Technical Context: The dispute is in the consumer electric bicycle market, where aesthetic and ornamental design can be a significant product differentiator.
• Key Procedural History: Plaintiff alleges it won a "2020 GOOD DESIGN AWARD" for the patented design and had planned a U.S. product launch in July 2021, which was postponed due to Defendants' alleged infringement. The complaint also states that Plaintiff sent warnings to Defendants regarding the patent beginning in June 2021, which were allegedly ignored.

Case Timeline

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

U.S. Design Patent No. D917,349 - "ELECTRIC BICYCLE"

• Issued: April 27, 2021.

The Invention Explained

• Problem Addressed: Design patents protect new, original, and ornamental designs for an article of manufacture. The implicit problem addressed is the creation of a visually distinct and aesthetically unique appearance for an electric bicycle, setting it apart from conventional designs. (D'349 Patent, Claim).
• The Patented Solution: The patent claims the specific ornamental design for an electric bicycle as depicted in its eight figures. The design's overall visual impression is characterized by a minimalist aesthetic featuring a single, thick, central frame member, single-sided forks supporting both the front and rear wheels, and distinctively styled three-spoke wheels. (D'349 Patent, FIG. 1, 7, 8). The combination of these elements creates the claimed ornamental appearance. (D'349 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges the patented design received a "2020 GOOD DESIGN AWARD," suggesting its aesthetic qualities were recognized as innovative within the design community. (Compl. ¶15).

Key Claims at a Glance

• The patent contains a single claim: "The ornamental design for an electric bicycle, as shown and described." (D'349 Patent, Claim).
• The scope of this claim is defined by the visual appearance of the electric bicycle as illustrated in the solid lines of the patent's drawings.

III. The Accused Instrumentality

Product Identification

The accused products are the "IGOGOMI 36V Electric Folding Bike" and related models sold under the IGOGOMI brand. (Compl. ¶¶49-51).

Functionality and Market Context

The complaint describes the accused products as folding electric bicycles sold through Defendants' own website (igogomi.com), third-party online retailers including Walmart.com, eBay.com, and academy.com, and physical stores. (Compl. ¶¶49, 50, 51). The complaint includes a screenshot from an online retailer that advertises the accused product alongside a "GOOD DESIGN AWARD 2020" logo. This screenshot from tracfitness.com shows the accused bicycle, its price, and the award logo. (Compl. ¶50, p. 8). Plaintiff alleges that these sales activities created the false impression that Defendants owned the patented design. (Compl. ¶69).

IV. Analysis of Infringement Allegations

Narrative Infringement Theory

The complaint alleges that the accused IGOGOMI bicycles infringe the ’349 Patent because their design is "identical or substantially identical to Plaintiff's patent design under the ordinary observer's test." (Compl. ¶53). This legal standard asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. To support this allegation, the complaint provides a direct side-by-side visual comparison. This figure juxtaposes a line drawing from the D'349 Patent with a photograph of the accused IGOGOMI product to highlight their alleged visual similarity. (Compl. ¶53, p. 11).

Identified Points of Contention

• Scope Questions: The primary dispute will likely center on the overall visual similarity. A question for the court will be whether the accused IGOGOMI bicycle's design is "substantially the same" as the claimed design in the eyes of an ordinary observer.
• Technical Questions: A potential issue is whether certain visual similarities between the patented design and the accused product are dictated by function rather than ornament. A defendant could argue that elements such as the general frame geometry or the use of a folding mechanism are functional and should be given less weight in the infringement analysis, which would raise the question of which specific features are purely ornamental and protected by the patent.

V. Key Claim Terms for Construction

In a design patent case, the "claim" is the visual design itself, as shown in the drawings, rather than a set of text-based limitations. Formal claim construction is less common than in utility patent cases. The dispute typically centers on identifying the novel ornamental features of the design as a whole and comparing that to the accused product.

• The Term: "The ornamental design"
• Context and Importance: The core of the dispute will be defining the scope of the protected "ornamental design." Practitioners may focus on distinguishing the purely aesthetic, non-functional aspects of the design from any elements that are dictated by the article's function as a folding electric bicycle. The outcome of this analysis determines what features are considered in the "ordinary observer" test.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiff may argue that the claim covers the overall visual impression created by the unique combination of several features: the specific angle and thickness of the main frame tube, the single-sided front and rear forks, and the particular three-spoke wheel design. (D'349 Patent, FIG. 1, 7, 8). The argument would be that this combination as a whole is ornamental and not required by function.
  • Evidence for a Narrower Interpretation: A defendant may argue that the scope of the "ornamental design" is limited to only those specific features that are not driven by function. For example, they might contend that a single main-tube frame is a functional choice for a folding bike and that the protected design is limited to the more specific surface contours, proportions, or other minor details not dictated by function.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants induced infringement by "actively and knowingly inducing others, including but not limited to Walmart.com, Academy.com, tracfitness.com, and Wellbots.com to make, use, sell, offer for sale, or import infringing products." (Compl. ¶61). It also alleges contributory infringement by selling parts or materials especially adapted for practicing the invention. (Compl. ¶62).

Willful Infringement

Willfulness is alleged based on Defendants' continued infringement after receiving "numerous" communications and demands from the Plaintiff to cease their activities, beginning in June 2021. (Compl. ¶¶54, 63).

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

• A core issue will be one of visual comparison: From the perspective of an ordinary observer, is the overall ornamental appearance of the accused IGOGOMI bicycle substantially the same as the specific design claimed in the D'349 patent, or are there sufficient visual differences to avoid infringement?
• A second key question will involve distinguishing ornament from function: To what extent are the similarities between the two designs dictated by the functional requirements of a folding electric bicycle? The court's determination of which design elements are purely ornamental will define the scope of the patent protection and heavily influence the infringement analysis.
• A central question for willfulness and damages will be the effect of pre-suit notice: What evidence demonstrates that Defendants received notice of the specific patent and infringing products in June 2021, and does their alleged decision to continue selling the accused products rise to the level of objective recklessness required for enhanced damages?