DCT
3:23-cv-00847
Jackrabbit Mobility Inc v. Himiway Electric Power LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: JackRabbit Mobility, Inc. (Delaware)
- Defendant: Himiway Electric Power LLC (Nevada); Himiway Intelligent Technology USA (California); Himiway San Diego Electric Bike (Unknown)
- Plaintiff’s Counsel: Seltzer Caplan McMahon Vitek; Law Offices of John Giust
- Case Identification: 3:23-cv-00847, S.D. Cal., 05/08/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of California because Defendants have an established business in the district, including a "flagship store" in San Diego, and a substantial part of the events giving rise to the action occurred there.
- Core Dispute: Plaintiff alleges that Defendants’ "Pony" micro electric bike infringes a design patent and trade dress covering the ornamental appearance of Plaintiff's "JackRabbit" micro ebike.
- Technical Context: The lawsuit concerns the emerging market for ultra-portable, lightweight micro electric bicycles, a category focused on portability and "last-mile" transportation.
- Key Procedural History: The complaint alleges that Plaintiff notified Defendants of the asserted patent and trade dress on April 4, 2023, and received a response acknowledging receipt, establishing alleged pre-suit knowledge of the patent. It also alleges Defendants observed Plaintiff's product at industry trade shows in early 2022.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-01 | Plaintiff's first commercial version of JackRabbit launched |
| 2020-03-14 | '218 Design Patent Priority Date (Filing Date) |
| 2022-09-20 | U.S. Patent D964,218 S Issued |
| 2023-04-04 | Plaintiff provides notice of infringement to Defendants |
| 2023-05-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D964,218 S - "Electric-Assist Adult Strider," Issued Sep. 20, 2022
The Invention Explained
- Problem Addressed: The complaint describes a market for a "lightweight and short-wheelbase two-wheeled electric vehicle" that offers a unique alternative to scooters (Compl. ¶13). The stated goal was to create a product that is "extremely lightweight, low maintenance, able to be stored and transported in small spaces... and yet still being fun to ride" (Compl. ¶14).
- The Patented Solution: As a design patent, the '218 patent does not claim a functional solution but rather the specific "ornamental design for an electric-assist adult strider" as depicted in its figures ('218 Patent, Claim). The design's overall visual impression is defined by a combination of features, including a prominent, rectangular central frame, a short wheelbase with two relatively large-diameter wheels, an elevated seat, and the absence of traditional pedals, which the complaint alleges results in a vehicle that is "visually unlike any other product previously seen" (Compl. ¶14; '218 Patent, FIG. 8).
- Technical Importance: The complaint asserts that the visual design is unique in the market, particularly its combination of two 20-inch wheels on a short wheelbase, an electrically powered rear wheel, and fold-down foot pegs instead of pedals (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts the single claim of the '218 Patent, which is for "The ornamental design for an electric-assist adult strider, as shown and described" ('218 Patent, Claim; Compl. ¶¶77-78).
- The protected ornamental design as a whole is composed of several key visual features shown in the patent's drawings, including:
- The overall profile and configuration of the vehicle frame.
- The specific geometry of the large, rectangular central frame member.
- The relative proportions and close-coupled placement of the two large wheels.
- The shape and mounting of the forward-angled handlebars.
- The visual appearance of the pedal-less lower frame and associated foot pegs.
III. The Accused Instrumentality
Product Identification
- The accused product is the "Pony Portable Mini Bike," referred to as the "Pony" (Compl. ¶¶2, 13).
Functionality and Market Context
- The complaint characterizes the Pony as a "copycat micro ebike" and a "less expensive knock-off" of the JackRabbit, sold through Defendants' website, a San Diego "flagship store," and online retailers like Amazon (Compl. ¶¶12, 18, 27). The complaint provides extensive side-by-side visual comparisons of the products and their marketing materials to support its allegations of copying (Compl. p. 9-28). For example, a screenshot from a Google search for "JackRabbit micro ebike" shows paid advertisements for Defendants' Pony ebike appearing alongside Plaintiff's product, suggesting direct market competition (Compl. p. 26).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design. The complaint alleges this standard is met (Compl. ¶¶16, 80).
'218 Patent Infringement Allegations
| Claim Element (Visual Feature from '218 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design as a whole, depicted in the patent figures | The complaint alleges that the ornamental appearance of the Pony is "substantially the same" as the patented design, such that an "ordinary observer would be deceived." A side-by-side visual comparison shows the accused Pony, the Plaintiff's JackRabbit, and the patent's FIG. 8. | ¶¶79-80, p. 36 | FIG. 8 |
| Distinctive, non-functional wide frame in the center | The accused Pony is alleged to copy the "distinctive non-functional wide frame in the center of the JackRabbit." A side-by-side photo comparison highlights this feature. | ¶36, p. 28 | FIG. 8 |
| Distinctive large wheels and close-coupled wheel placement ratio | The Pony is alleged to mimic the "distinctive large wheels for the size of the overall bike and the close configuration of the wheels to each other." | ¶36 | FIG. 8 |
| Forward angled handlebars and removable handlebar approach | The complaint alleges the Pony incorporates the "same forward angled handlebars and removable handlebar approach" as the patented design. | ¶36 | FIG. 8 |
| Folding foot peg approach in a pedal-less design | The Pony is alleged to utilize the "same ... folding foot peg approach." | ¶36 | FIG. 8 |
- Identified Points of Contention:
- Scope Questions: The central infringement question will be whether the overall visual impression of the Himiway Pony is "substantially the same" as the claimed design in the '218 Patent. The analysis will focus on whether any differences between the two designs are significant enough to be apparent to an ordinary observer and prevent confusion, or if they are merely minor variations.
- Technical Questions: A key factual dispute will be the application of the ordinary observer test itself. The complaint provides a direct visual comparison of the products and the patent drawing from a side perspective (Compl. p. 36) and alleges that other perspectives show "even more resemblance" (Compl. ¶81). The court's analysis will likely involve a holistic comparison of the two designs from multiple viewpoints.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the design itself as depicted in the drawings, rather than a set of text-based limitations. Consequently, claim construction, as it is practiced in utility patent cases, is not typically a central issue. The dispute will likely focus on comparing the accused product's overall appearance to the claimed design under the "ordinary observer" test, rather than construing specific terms.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants provide instructions and support for the assembly of the Pony, which allegedly results in a directly infringing product, and do so with knowledge of the patent (Compl. ¶¶19, 82). Contributory infringement is based on the allegation that the Pony is a material part of the invention, is not a staple article of commerce suitable for substantial non-infringing use, and is especially adapted for infringement (Compl. ¶83).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It alleges Defendants were aware of the JackRabbit product and its design from attending trade shows in "early 2022" (Compl. ¶26). It further alleges that Defendants received express notice of the '218 Patent on April 4, 2023, and their continued sales after that date constitute willful and deliberate infringement (Compl. ¶¶6-7, 84).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual identity: From the perspective of an ordinary consumer, is the overall ornamental design of the Himiway Pony "substantially the same" as the design protected by the '218 Patent, or are there sufficient visual differences to distinguish the two products and avoid deception?
- A key evidentiary question will be the role of alleged copying: The complaint presents extensive visual evidence of Defendants allegedly mimicking Plaintiff’s specific marketing themes, slogans, and imagery (e.g., portability, being "pedal-free," and fitting in a car trunk). The court will have to determine the weight of this evidence in assessing both the likelihood of confusion for the patent and trade dress claims and the separate allegation of willful infringement.
- The case also presents a question of protectability and functionality: The infringement analysis for the design patent and the related trade dress claims will require distinguishing between the purely ornamental, non-functional aspects of the design, which are protectable, and any underlying functional elements, which are not. Defendants may argue that the similarities between the products are driven by function rather than by copying a protected ornamental design.