DCT
1:18-cv-00573
Odyssey Marketing Corp v. Spin Master Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Odyssey Marketing Corporation (Florida)
- Defendant: Spin Master Corp. (Canada)
- Plaintiff’s Counsel: Wood, Smith, Henning & Berman LLP
- Case Identification: 1:18-cv-00573, D. Colo., 03/09/2018
- Venue Allegations: Venue is alleged to be proper based on Defendant’s transaction of business and sale of infringing products within the District of Colorado.
- Core Dispute: Plaintiff alleges that Defendant’s Air Hogs line of toy drones infringes patents related to hybrid vehicles capable of both aerial flight and ground-based rolling locomotion.
- Technical Context: The technology involves unmanned aerial vehicles (drones) equipped with a protective, unpowered cage, enabling them to roll along the ground using the same propulsion system as for flight, thereby increasing operational efficiency.
- Key Procedural History: The patents-in-suit originated from research developed by the Illinois Institute of Technology in cooperation with the United States Navy. Plaintiff Odyssey is the exclusive licensee of the patents. The complaint alleges that the accused products are "direct copies of the preferred embodiments" shown in the patents, which may be presented as evidence of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-11-14 | Earliest Priority Date for '069 and '558 Patents |
| 2015-06-23 | U.S. Patent No. 9,061,558 Issues |
| 2015-10-06 | U.S. Patent No. 9,150,069 Issues |
| 2018-03-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,061,558 - "Hybrid Aerial and Terrestrial Vehicle" (Issued: June 23, 2015)
The Invention Explained
- Problem Addressed: The patent addresses the high energy consumption and resulting limited operational time of small unmanned aerial vehicles (UAVs or MAVs), which must expend considerable energy simply to remain airborne ('558 Patent, col. 1:22-33). It also notes that existing hybrid systems often use separate actuators for aerial and terrestrial movement, increasing complexity and mass ('558 Patent, col. 2:15-22).
- The Patented Solution: The invention is a vehicle that combines a rotorcraft-style flying device with a "non-powered rolling cage" connected by a revolute joint ('558 Patent, Abstract; col. 1:36-40). The cage allows the vehicle to travel on the ground using the same rotors that provide lift for flight. By pitching the flying device, the rotor thrust is directed to roll the cage along the ground, which is described as being far more energy-efficient than flying ('558 Patent, col. 2:1-5). The cage also serves a protective function against impacts ('558 Patent, col. 2:45-51).
- Technical Importance: This dual-mode locomotion system aims to dramatically extend the vehicle's range and operational time by leveraging ground travel where possible, while retaining the ability to fly over obstacles ('558 Patent, col. 2:7-14).
Key Claims at a Glance
- The complaint asserts independent claims 1, 13, and 17 ('558 Patent, Prayer for Relief ¶A).
- Independent Claim 1:
- A terrestrial and aerial vehicle, comprising:
- a flying device;
- 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...;
- wherein the rolling cage rolls against a terrestrial surface and rolls about the flying device.
- The complaint reserves the right to assert dependent claims 2-3, 5-10, and 12-16 (Compl. ¶18).
U.S. Patent No. 9,150,069 - "Hybrid Aerial and Terrestrial Vehicle" (Issued: October 6, 2015)
The Invention Explained
- Problem Addressed: The '069 Patent addresses the same technical problem as the '558 Patent: the high energy consumption of MAVs and the complexity of existing hybrid ground/air vehicles ('069 Patent, col. 1:22-33).
- The Patented Solution: The solution is functionally identical to that of the '558 Patent, describing a vehicle with a "rotorcraft" connected to a "non-actuated rolling cage" via a revolute joint ('069 Patent, Abstract). The same propulsion system is used for both flight and ground rolling, allowing the vehicle to switch between locomotion modes to improve efficiency and navigate obstacles ('069 Patent, col. 2:7-14). The specification and figures are substantially similar to those of the '558 Patent.
- Technical Importance: The invention provides a low-complexity, high-efficiency method for extending the operational capabilities of small drones in varied environments ('069 Patent, col. 2:30-36).
Key Claims at a Glance
- The complaint asserts independent claims 1, 13, 14, and 18 ('069 Patent, Prayer for Relief ¶B; Compl. ¶¶ 13-14).
- Independent Claim 1:
- A terrestrial and aerial vehicle, comprising:
- 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.
- The complaint reserves the right to assert dependent claims 2-11 and 13-27 (Compl. ¶¶ 13-14).
III. The Accused Instrumentality
Product Identification
- The "Air Hogs Hyper Stunt Drone" and the "Air Hogs Rollercopter" (collectively, the "Infringing Spin Master Drones") (Compl. ¶12).
Functionality and Market Context
- The complaint describes the accused products as toy drones that are capable of both flying and traveling on the ground by virtue of a surrounding cage (Compl. ¶8). The complaint alleges that these products are "direct copies of the preferred embodiments" disclosed in the patents-in-suit (Compl. ¶16). Odyssey positions itself as a smaller company whose survival depends on innovation and patent enforcement against larger competitors like Spin Master (Compl. ¶11).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused drones infringe by incorporating the patented combination of a flying vehicle and a non-powered rolling cage that enables ground travel (Compl. ¶¶ 8, 13-14). A side-by-side visual comparison in the complaint shows the Air Hogs Rollercopter next to Figure 3 from the patents' specifications (Compl. p. 4). Another comparison shows the Air Hogs Hyper Stunt Drone next to Figure 7 from the patents' specifications (Compl. p. 4).
'558 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A terrestrial and aerial vehicle, comprising: a flying device | The accused products are identified as toy remotely-controlled flying machines ("drones") | ¶6, ¶12 | col. 4:3-4 |
| and a non-actuated rolling cage connected to the flying device by at least one revolute joint | The accused products feature a "non-powered rolling cage that surrounds the drone" which allows the drone to travel on the ground using its flight propulsion system | ¶8 | col. 1:37-40 |
| the rolling cage comprising two opposing hubs and a plurality of rails each connected at a first end... | The complaint's visual evidence presents the accused products as having cages with structural elements that are alleged to be direct copies of the hub-and-rail structures in the patents' figures | ¶16 | col. 11:45-50 |
| wherein the rolling cage rolls against a terrestrial surface and rolls about the flying device | The complaint alleges the cage enables the drone to "travel on the ground" by rolling, a mode of operation which "greatly increases the drone's operating efficiency" | ¶8 | col. 11:50-51 |
'069 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A terrestrial and aerial vehicle, comprising: a rotorcraft including a rotor powered by an actuator motor | The accused products are identified as drones with propulsion systems used for flight | ¶8, ¶12 | col. 12:38-40 |
| and a non-actuated rolling cage | The accused products are shown with surrounding cages that are alleged to be unpowered and protective | ¶8, ¶16 | col. 12:41-42 |
| connected to the rotorcraft by at least one revolute joint | The complaint alleges the accused products incorporate the patented invention, which connects the cage to the drone to enable rolling | ¶8, ¶10 | col. 12:41-43 |
Identified Points of Contention
- Technical Questions: A factual question will be whether the connection mechanism between the flying body and the cage in the accused products meets the technical requirements of a "revolute joint" as described and claimed in the patents.
- Scope Questions: The complaint's theory relies on a visual and functional similarity between the accused products and the patent embodiments. A potential dispute may arise over whether the specific structures of the accused cages (e.g., the number and arrangement of "rails" and "hubs") fall within the scope of the claims, particularly for claims that recite these elements with specificity (e.g., '558 Patent, Claim 1).
V. Key Claim Terms for Construction
The Term: "non-actuated rolling cage"
- Context and Importance: This term is fundamental to the invention's core concept of energy efficiency. The "non-actuated" nature distinguishes the invention from more complex hybrid systems with separate drive mechanisms for ground travel. Practitioners may focus on this term because infringement depends on the cage being unpowered and rolling freely due to the thrust from the flying device's rotors.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Summary of the Invention states the cage is "desirably not powered directly, and freely rolls due to the rotor thrust of the flying device alone," which may suggest that the "non-actuated" quality is the key feature, regardless of the cage's specific shape or material ('558 Patent, col. 2:56-59).
- Evidence for a Narrower Interpretation: The detailed description discusses specific embodiments, such as cages made of "polycarbonate and carbon fiber materials" or having "hollow or foam filled rails" for floatation, which could be used to argue that the term implies certain structural or material properties beyond simply being unpowered ('558 Patent, col. 4:45-48).
The Term: "revolute joint"
- Context and Importance: The "revolute joint" is the critical component enabling the cage to roll "about the flying device." The nature and functionality of this connection will be central to determining infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Summary of the Invention broadly describes "Connecting this rotorcraft with a rolling cage through one or more revolute joints makes terrestrial locomotion possible" ('558 Patent, col. 2:51-54). This suggests any joint allowing for the claimed rotational movement could suffice.
- Evidence for a Narrower Interpretation: The specification provides specific examples, stating the "revolute joint can include any suitable bearing 58" and a "shaft 56" ('558 Patent, col. 4:26-35). An argument could be made that the term requires a distinct shaft-and-bearing assembly as depicted in figures like FIG. 1, rather than a more integrated or simplistic rotational connection.
VI. Other Allegations
Indirect Infringement
- The complaint does not contain specific allegations of indirect infringement (inducement or contributory infringement).
Willful Infringement
- Willfulness is alleged based on Defendant having "actual notice" of the patents "since before its first sale" of the accused products (Compl. ¶¶ 19, 25, 31). The allegation is further supported by the assertion that the "Infringing Spin Master Drones appear to be direct copies of the preferred embodiments," which the plaintiff argues indicates "Spin Master's prior knowledge of the Odyssey Patents" (Compl. ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Proof of Copying: A primary issue will be factual: can the plaintiff substantiate its claim that the accused products are "direct copies" of the patented embodiments? The resolution of this question will heavily influence the willfulness analysis and may simplify the infringement case.
- Claim Scope and Structural Equivalence: The case may turn on a question of definitional scope: does the connection mechanism in the accused products constitute a "revolute joint" as that term is construed in light of the patent's specification? Furthermore, for claims reciting specific cage structures (e.g., "opposing hubs," "plurality of rails"), a key question will be whether the accused products' cages meet these structural limitations literally.
- Notice and Willfulness: A critical question for damages will be one of timing and knowledge: what evidence exists to support the allegation that Spin Master had "actual notice" of the specific patents-in-suit prior to its first sale of each accused product? The complaint's assertion of pre-suit knowledge, if proven, would be a significant factor in any determination of willfulness.