Razor USA LLC v. DGL Group Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Razor USA LLC (Delaware) and Shane Chen (Washington)
  • Defendant: DGL Group, Ltd. (New York)
  • Plaintiff’s Counsel: McCarter & English, LLP; Knobbe, Martens, Olson & Bear, LLP
• Case Identification: 2:19-cv-12939, D.N.J., 05/24/2019
• Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendant resides in the district, has a regular and established place of business there, and has committed the alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s "Hover-1" line of two-wheel self-balancing vehicles infringes a utility patent covering the independent movement and control of the vehicle's foot platforms and a design patent for the vehicle's ornamental appearance.
• Technical Context: The lawsuit concerns the technology of personal mobility devices, commonly known as "hoverboards," which feature two co-axial wheels, separate foot platforms, and self-balancing capabilities.
• Key Procedural History: U.S. Reissue Patent No. RE46,964 is a reissue of U.S. Patent No. 8,738,278. The complaint alleges that Plaintiffs provided Defendant with actual notice of infringement of both asserted patents on September 4, 2018, nearly nine months prior to filing the suit.

Case Timeline

Date	Event
2012-02-12	U.S. Reissue Patent No. RE46,964 Priority Date
2013-03-12	U.S. Design Patent No. D739,906 Priority Date
2014-05-27	Issue Date of Original U.S. Patent No. 8,738,278
2015-09-29	U.S. Design Patent No. D739,906 Issue Date
2018-07-24	U.S. Reissue Patent No. RE46,964 Issue Date
2018-09-04	Alleged Date of Actual Notice to Defendant
2019-05-24	Complaint Filing Date

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

U.S. Reissue Patent No. RE46,964 - "Two-Wheel Self-Balancing Vehicle with Independently Movable Foot Placement Sections"

• Patent Identification: U.S. Reissue Patent No. RE46,964, titled "Two-Wheel Self-Balancing Vehicle with Independently Movable Foot Placement Sections," issued July 24, 2018.

The Invention Explained

• Problem Addressed: The patent identifies shortcomings in prior art self-balancing vehicles. One group, like the Segway, is described as large, heavy, and expensive, with a tall steering column that poses a trip hazard (RE46,964 Patent, col. 1:36-42). Another group is described as having two foot platforms that move in a linked or "dependent" manner, requiring complex mechanical structures and limiting maneuverability (RE46,964 Patent, col. 1:47-55).
• The Patented Solution: The invention is a compact, two-wheeled vehicle where the two foot platforms are "independently movable" relative to one another. Each platform is associated with its own motor and position sensor, allowing a user to control the speed and direction of each wheel separately by tilting the corresponding platform (RE46,964 Patent, col. 2:16-28). This independent control allows for advanced maneuvers, such as spinning in place or making a "pirouette" (RE46,964 Patent, col. 4:62-65).
• Technical Importance: This architecture aimed to provide a more compact, lightweight, and maneuverable personal transport device that was more ergonomic and intuitive to control than prior designs (RE46,964 Patent, col. 1:61-65).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 10 (Compl. ¶21).
• The essential elements of independent claim 1 include:
  • A first and second foot placement section coupled to one another and "independently rotatable" along an axis passing through the wheels.
  • A first wheel associated with the first section and a second wheel associated with the second section, spaced apart and parallel.
  • A first position sensor and first drive motor for the first wheel, and a second position sensor and second drive motor for the second wheel.
  • "Control logic" that drives each wheel toward self-balancing in response to position data from its respective sensor.
• The complaint implicitly reserves the right to assert other claims.

U.S. Design Patent No. D739,906 - "Two-Wheeled Vehicle"

• Patent Identification: U.S. Design Patent No. D739,906, titled "Two-Wheeled Vehicle," issued September 29, 2015.

The Invention Explained

• Problem Addressed: Not applicable for a design patent, which protects ornamental, non-functional appearance.
• The Patented Solution: The patent claims the specific ornamental design for the body of a two-wheeled vehicle as shown in its figures (D'906 Patent, Figs. 1-5). The design features two distinct foot platforms connected by a narrowed central portion with a contoured, twisting aesthetic. The wheels themselves are depicted in broken lines, indicating they are for illustrative context and not part of the claimed design (D'906 Patent, Description).
• Technical Importance: Not applicable; the value is in the unique aesthetic appearance of the product's housing.

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a two-wheeled vehicle, as shown and described" (D'906 Patent, Claim).

III. The Accused Instrumentality

Product Identification

• Defendant's "Hover-1" line of two-wheel self-balancing vehicles, including the Hover-1 Chrome, Eclipse, Horizon, Matrix, H1, Ultra, Freedom, Liberty, Helix, All-Star, Superstar, Nomad, Titan, Beast, and X10 models (Compl. ¶16).

Functionality and Market Context

• The complaint alleges the Accused Products are "two-wheel, self-balancing vehicle devices" (Compl. ¶23). It further alleges they possess the core functional components recited in the ’964 Patent's claims, including two foot placement sections, two wheels, separate position sensors and motors for each wheel, and control logic that drives the wheels toward a self-balancing state based on sensor data (Compl. ¶¶24-31). No probative visual evidence provided in complaint. The complaint positions plaintiff Razor as a "worldwide leader in scooters" (Compl. ¶8), suggesting the Accused Products compete directly in a market established by Razor.

IV. Analysis of Infringement Allegations

RE46,964 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a first foot placement section and a second foot placement section that are coupled to one another and are independently ... rotatable along an axis passing through a first wheel and a second wheel	The Accused Products have first and second foot placement sections that are coupled and independently rotatable along an axis passing through the wheels.	¶¶24-25	col. 4:49-52
said first wheel associated with the first foot placement section and said second wheel associated with the second foot placement section, the first and second wheels being spaced apart and substantially parallel to one another	The Accused Products have a first wheel for the first section and a second wheel for the second section, which are spaced apart and substantially parallel.	¶¶26-27	col. 3:8-9
a first position sensor and a first drive motor configured to drive the first wheel, a second position sensor and a second drive motor configured to drive the second wheel	The Accused Products have a first position sensor and motor for the first wheel, and a second position sensor and motor for the second wheel.	¶¶28-29	col. 3:15-20
control logic that drives the first wheel toward self-balancing the first foot placement section in response to position data from the first sensor and that drives the second wheel toward self-balancing the second foot placement section in response to position data from the second foot placement section	The Accused Products have control logic that drives the first wheel toward self-balancing in response to data from the first sensor, and drives the second wheel toward self-balancing in response to data from the second sensor.	¶¶30-31	col. 3:21-28

D739,906 Infringement Allegations

The complaint asserts that the Accused Products infringe the ’906 Patent because their design "would appear to an ordinary observer to be substantially similar to the claim of the D906 Patent" (Compl. ¶53). This allegation invokes the standard legal test for design patent infringement, which relies on a visual comparison of the overall ornamental appearance of the accused product and the claimed design.

Identified Points of Contention

• Scope Question: A likely point of contention for the ’964 Patent is the meaning of "independently rotatable." The dispute may focus on whether the Accused Products' two platforms can truly operate without any mechanical or electronic dependence, or if there is some degree of coordination that places them outside the claim scope as construed in light of the patent's specification.
• Technical Question: For the '964 Patent, a key factual question is how the accused "control logic" actually operates. The case may require evidence to determine if the logic for each wheel responds exclusively to its own sensor, as claimed, or if there is signal sharing or master/slave control architecture between the two sides that would contradict the "independent" operation described in the patent.
• Visual Question: The dispute over the ’906 Patent will be a visual one: when viewed by an ordinary observer, is the overall aesthetic impression of the Accused Products' housings substantially the same as the specific shapes and contours claimed in the patent, particularly given that the functional wheels are disclaimed from the patent's scope?

V. Key Claim Terms for Construction

• The Term: "independently rotatable" (from Claim 1 of the ’964 Patent)

  • Context and Importance: This term appears central to the patent's assertion of novelty over prior art with "linked" platforms. The definition of "independently" will be critical to the infringement analysis. Practitioners may focus on this term because it distinguishes the core operation of the claimed invention.
  • Intrinsic Evidence for a Broader Interpretation: The claim language itself requires only that the sections are "independently rotatable along an axis" (RE46,964 Patent, col. 5:19-21), which could be argued to cover any device where the two platforms can be angled differently from each other, regardless of any underlying electronic communication.
  • Intrinsic Evidence for a Narrower Interpretation: The specification provides an example where full independence allows one wheel to drive forward while the other drives backward, causing the user to "spin-in-place or 'pirouette'" (RE46,964 Patent, col. 4:62-65). A defendant could argue this embodiment limits the term to systems capable of such opposing rotation or to systems with no electronic cross-communication between the two sides.

• The Term: "coupled to one another" (from Claim 1 of the ’964 Patent)

  • Context and Importance: The nature of the connection between the two platforms could become a point of dispute. Practitioners may focus on this term to determine if the accused products' coupling mechanism falls within the scope of what the patent discloses and claims.
  • Intrinsic Evidence for a Broader Interpretation: The term itself is broad and could be interpreted to mean any method of joining the two halves into a single, operable vehicle.
  • Intrinsic Evidence for a Narrower Interpretation: The specification discloses specific embodiments, such as a "pivoting shaft" or a frame made of a "sturdy yet sufficiently flexible material" (RE46,964 Patent, col. 4:49-52). A party could argue that the term should be limited to these disclosed coupling structures or their equivalents.

VI. Other Allegations

• Indirect Infringement: The complaint focuses on allegations of direct infringement by "making, using, selling, offering for sale, and/or importing" the Accused Products (Compl. ¶21). While the prayer for relief includes a request to enjoin indirect infringement (Prayer ¶B.3), the body of the complaint does not plead specific facts to support the requisite elements of knowledge and intent for induced or contributory infringement.
• Willful Infringement: The complaint alleges that Defendant's infringement was willful and deliberate. This allegation is based on Plaintiffs having provided Defendant with "actual notice" of infringement for both patents on September 4, 2018, more than eight months before the complaint was filed (Compl. ¶¶44, 55).

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

• A core issue will be one of technical scope: Can the term "independently rotatable," which the patent uses to distinguish itself from prior art with "linked" platforms, be construed to read on the accused "Hover-1" products? This will likely depend on factual evidence regarding the degree of mechanical and electronic separation between the two halves of the accused devices.
• For the design patent, the case will turn on a question of visual identity: From the perspective of an ordinary observer in the marketplace, is the overall ornamental appearance of the accused "Hover-1" vehicle housings "substantially the same" as the specific aesthetic claimed in the '906 Patent, considering that functional elements like wheels are not part of the protected design?
• A key question for damages will be one of willfulness: Does the evidence show that the alleged pre-suit notice letter of September 4, 2018, put Defendant on notice of a high likelihood of infringement, making any subsequent infringement objectively reckless and thus justifying a potential award of enhanced damages?