DCT
1:20-cv-05905
Hangzhou Chic Intelligent Technology Co., Ltd. v. The Partnerships and Unincorporated Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hangzhou Chic Intelligent Technology Co., Ltd (China) and Unicorn Global, Inc. (California)
- Defendant: The Partnerships and Unincorporated Associations Identified on Schedule A (jurisdiction(s) unknown)
- Plaintiff’s Counsel: Loeb & Loeb LLP
- Case Identification: 1:20-cv-05905, N.D. Ill., 12/16/2020
- Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce websites that target consumers in the United States, including Illinois, offer shipping to the state, accept payment in U.S. dollars, and have sold infringing products to Illinois residents.
- Core Dispute: Plaintiffs allege that Defendants’ e-commerce stores sell hoverboards that infringe the ornamental designs claimed in four U.S. design patents owned by Plaintiffs.
- Technical Context: The technology at issue is the ornamental design of self-balancing personal mobility devices, or "hoverboards," which are a popular category of consumer electronics.
- Key Procedural History: This action is a First Amended Complaint filed against a group of unidentified e-commerce operators. This "John Doe" defendant structure is a common litigation strategy employed to combat online sales of allegedly counterfeit or infringing goods by foreign entities that use aliases to conceal their identities.
Case Timeline
| Date | Event |
|---|---|
| 2014-06-13 | U.S. Design Patent No. D737,723 Priority Date |
| 2014-12-15 | U.S. Design Patent No. D738,256 Priority Date |
| 2015-09-01 | U.S. Design Patent No. D737,723 Issue Date |
| 2015-09-08 | U.S. Design Patent No. D738,256 Issue Date |
| 2015-10-09 | U.S. Design Patent No. D784,195 Priority Date |
| 2015-11-26 | U.S. Design Patent No. D785,112 Priority Date |
| 2017-04-18 | U.S. Design Patent No. D784,195 Issue Date |
| 2017-04-25 | U.S. Design Patent No. D785,112 Issue Date |
| 2020-12-16 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D737,723 - "Self-Balancing Vehicle", Issued September 1, 2015
The Invention Explained
- Problem Addressed: Design patents do not address technical problems; they protect the novel, non-obvious, and ornamental appearance of an article of manufacture. The patent claims "the ornamental design for a self-balancing vehicle, as shown and described" (D’737,723 Patent, Claim).
- The Patented Solution: The patent protects the specific visual appearance of the self-balancing vehicle depicted in its figures. The design is characterized by an overall hourglass-like shape, two distinct foot platforms with ribbed surfaces, a central articulating pivot point, and wheel wells with integrated fenders that curve over the wheels (D’737,723 Patent, FIGS. 1-8). The complaint alleges that this design, along with the 'D256 patent, "defined the fundamental ornamental configurations of the hoverboard product class" (Compl. ¶24).
- Technical Importance: The complaint asserts that the patented designs "revolutionized ornamental design for hoverboards" and feature "streamline shapes that are appealing to United States customers" (Compl. ¶23-24).
Key Claims at a Glance
- The patent asserts a single claim for the ornamental design as depicted in its figures (D’737,723 Patent, Claim).
- The essential ornamental features include:
- The overall configuration and proportions of the vehicle body.
- The appearance of the two separate foot platforms.
- The shape and contour of the wheel fenders.
- The surface ornamentation, including the ribbed texture on the foot platforms.
U.S. Design Patent No. D738,256 - "Self-Balancing Vehicle", Issued September 8, 2015
The Invention Explained
- Problem Addressed: This patent, like the 'D723 patent, protects a specific ornamental design for a self-balancing vehicle, not a technical solution (D’738,256 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design shown in its eight figures. While visually similar to the 'D723 design, it presents a distinct overall appearance with subtle variations in curvature, proportion, and surface details, thereby constituting a separate, protected design (D’738,256 Patent, FIGS. 1-8). The complaint groups this design with the 'D723 patent's design as being fundamental to the product class (Compl. ¶24).
- Technical Importance: The complaint alleges that the patented designs are "stylish and modern" and have become "enormously popular to consumers of all ages" (Compl. ¶25).
Key Claims at a Glance
- The patent asserts a single claim for the ornamental design as depicted in its figures (D’738,256 Patent, Claim).
- The key ornamental features are the specific visual characteristics shown in the drawings, which create an overall appearance that is distinct from, though related to, the 'D723 patent.
U.S. Design Patent No. D785,112 - "Human-Machine Interaction Vehicle", Issued April 25, 2017
- Patent Identification: U.S. Design Patent No. D785,112, "Human-Machine Interaction Vehicle", issued April 25, 2017 (Compl. ¶18).
- Technology Synopsis: This patent protects the ornamental design for a self-balancing vehicle. The complaint alleges that a distinguishing characteristic of this particular design is that it "features a soft edge between the central support platform and the fenders" (Compl. ¶24).
- Asserted Claims: The single design claim for the ornamental design as shown in the patent figures.
- Accused Features: The overall ornamental design of the accused hoverboards sold by Defendants (Compl. ¶2, ¶51).
U.S. Design Patent No. D784,195 - "Human-Machine Interaction Vehicle", Issued April 18, 2017
- Patent Identification: U.S. Design Patent No. D784,195, "Human-Machine Interaction Vehicle", issued April 18, 2017 (Compl. ¶18).
- Technology Synopsis: This patent protects the ornamental design for a self-balancing vehicle. According to the complaint, this design is distinguished by the inclusion of "a sharper edge" as part of its aesthetic (Compl. ¶24).
- Asserted Claims: The single design claim for the ornamental design as shown in the patent figures.
- Accused Features: The overall ornamental design of the accused hoverboards sold by Defendants (Compl. ¶2, ¶56).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "unauthorized and unlicensed" hoverboards, referred to as the "Infringing Products" (Compl. ¶2). These products are allegedly sold by Defendants through various e-commerce stores identified in Schedules A and B of the complaint (Compl. ¶2, ¶9).
Functionality and Market Context
The accused products are self-balancing two-wheeled personal mobility devices. The complaint alleges that Defendants' e-commerce sales of these products have "resulted in a sharp increase in the shipment of unauthorized products into the United States" (Compl. ¶26). The complaint includes a table reproducing Figure 6 from the 'D723 patent, which shows a perspective view of the patented hoverboard design (Compl. ¶16). This figure, and others like it in the complaint, serve to illustrate the designs that the accused products are alleged to infringe. Another table shows figures from the 'D256 patent, including a top plan view in Figure 1 that highlights the design's characteristic hourglass shape and footpad texture (Compl. ¶17).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused hoverboards infringe the patented designs under the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design. The complaint does not contain a detailed textual or visual comparison between the patented designs and the accused products, instead relying on general allegations and a reference to images of the accused products in an exhibit not included with the complaint filing.
D737,723 Patent Infringement Allegations
| Claim Element (from the Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a self-balancing vehicle as shown in the patent figures. | The overall ornamental appearance of the accused hoverboards, which allegedly include a "reproduction, copy or colorable imitation of the design claimed." | ¶41, ¶60(a) | FIGS. 1-8 |
D738,256 Patent Infringement Allegations
| Claim Element (from the Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a self-balancing vehicle as shown in the patent figures. | The overall ornamental appearance of the accused hoverboards, which allegedly include a "reproduction, copy or colorable imitation of the design claimed." | ¶46, ¶60(a) | FIGS. 1-8 |
- Identified Points of Contention:
- Factual Question: The central dispute will be a factual one: does the ornamental design of the accused products appear "substantially the same" as the patented designs to an ordinary observer? This will require a side-by-side comparison of the products and the patent figures.
- Scope Question: A potential issue is the scope of the claimed designs in light of any prior art. If Defendants appear and contest the case, they may argue that the overall shape of a hoverboard is well-established, limiting the patent's scope to only the specific, novel ornamental details shown. Plaintiffs' allegation that their designs "defined the fundamental ornamental configurations of the hoverboard product class" suggests they will argue for a broader scope of protection (Compl. ¶24).
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is the visual design itself, and traditional claim construction of words is rare. The analysis instead focuses on identifying the scope of the protected ornamental design as a whole, distinguishing it from any functional elements.
- The Term: "The ornamental design"
- Context and Importance: The scope of protection is limited to the ornamental aspects of the design. The court must filter out features that are dictated by function (e.g., the presence of two wheels and two footpads is functional). The core of the case will depend on what specific visual features are deemed ornamental and therefore protected. Practitioners may focus on this distinction because if key elements of the design are found to be functional, the patent's scope narrows, making it easier for competitors to design non-infringing alternatives.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader (more ornamental) Interpretation: Plaintiffs may argue that the specific hourglass silhouette, the particular curvature of the wheel fenders, and the ribbed pattern on the footpads are purely aesthetic choices not required for the device to function. The existence of separate patents for designs with a "soft edge" ('D112 patent) versus a "sharper edge" ('D195 patent) may be used to argue that such details are ornamental, not functional (Compl. ¶24).
- Evidence for a Narrower (more functional) Interpretation: A defense could argue that the overall shape is dictated by the functional requirement to accommodate a rider's feet on two independently tilting platforms connected by a central pivot. Similarly, the shape of the fenders could be argued as being functionally necessary to cover the wheels for safety.
VI. Other Allegations
- Indirect Infringement: The complaint makes boilerplate allegations of indirect infringement and seeks to enjoin "aiding, abetting, [or] contributing to" infringement (Compl. ¶41, ¶60(b)). However, the factual allegations focus on direct infringement by the sellers and importers.
- Willful Infringement: Willfulness is alleged based on Defendants "knowingly and willfully" infringing (Compl. ¶39). This allegation appears to be supported by claims that Defendants operate as an "interrelated group" using tactics to conceal their identities, such as using fictitious names and anonymous registrations, which may suggest an intent to copy Plaintiffs' designs while evading enforcement (Compl. ¶33-35, ¶38). Plaintiffs seek treble damages, consistent with a willfulness claim (Compl. ¶65).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Visual Test: The primary question for the court will be a factual one of visual comparison. Will an ordinary observer, upon examining the accused products, find their overall ornamental appearance to be substantially the same as the designs claimed in the 'D723, 'D256, 'D112, and 'D195 patents?
- Scope and Functionality: A key legal issue will be determining the scope of the design patents. This involves separating the protected ornamental aesthetics from any features that are dictated by the function of a self-balancing scooter, which will define how similar an accused product must be to infringe.
- Enforcement and Identity: A critical procedural question is whether Plaintiffs can successfully identify, serve, and obtain jurisdiction over the anonymous foreign e-commerce operators. The structure of the complaint against unidentified "partnerships" suggests that locating the correct parties and enforcing any potential judgment will be a central challenge in the litigation.