DCT
1:19-cv-02926
Advanced Aerodynamics LLC v. Top Race Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Advanced Aerodynamics, LLC (Florida)
- Defendant: Top Race, Inc. (New York)
- Plaintiff’s Counsel: HENINGER GARRISON DAVIS, LLC
- Case Identification: 1:19-cv-02926, E.D.N.Y., 05/16/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of New York because Defendant Top Race, Inc. resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Robotic UFO 3-Channel RC Drone" infringes four U.S. patents related to self-righting frame assemblies for aeronautical vehicles.
- Technical Context: The technology concerns protective cages for small, remote-controlled aircraft that enable the aircraft to automatically return to an upright position after an inverted or off-kilter landing, enhancing durability and usability for hobbyists.
- Key Procedural History: The complaint notes that Plaintiff has previously enforced its intellectual property against other entities, including the "Flying Sphere" by the Japanese Department of Defense and the "Atlas Flying Ball" by Unmanned Cowboys in the US. No prior litigation or licensing history involving the current Defendant is mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2010-07-23 | Earliest Priority Date for Patents-in-Suit |
| 2013-09-10 | U.S. Patent No. 8,528,854 Issues |
| 2015-06-30 | U.S. Patent No. 9,067,667 Issues |
| 2015-12-22 | U.S. Patent No. 9,216,808 Issues |
| 2016-09-06 | U.S. Patent No. 9,434,462 Issues |
| 2019-05-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,528,854 - "SELF-RIGHTING FRAME AND AERONAUTICAL VEHICLE," issued September 10, 2013
The Invention Explained
- Problem Addressed: The patent describes the complexity and risk associated with flying remote-controlled (RC) aircraft, particularly helicopter-like models that are prone to tipping over upon landing. This requires the operator to manually walk to the vehicle and set it upright before resuming flight (ʼ854 Patent, col. 2:3-23).
- The Patented Solution: The invention is a structural frame for an aeronautical vehicle designed to automatically reorient itself. The solution relies on two key physical principles: a weighted mass positioned near the bottom of the frame to create a low center of gravity, and a protrusion or "apex" at the top. When the vehicle lands upside down, the apex creates a single, unstable point of contact, causing the vehicle to tip, at which point the low center of gravity generates a righting moment that rolls the vehicle back to its stable, upright position (ʼ854 Patent, Abstract; col. 2:40-61).
- Technical Importance: The design simplifies the operation of vertical take-off and landing (VTOL) aircraft for hobbyists by making the vehicles more resilient to imperfect landings and removing the need for manual recovery (ʼ854 Patent, col. 2:18-23).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶25).
- The essential elements of Claim 1 include:
- A self-righting frame assembly for an aeronautical vehicle.
- At least two vertically oriented frames with an "uninterrupted, continuous peripheral edge" between a top and base portion, defining a central void.
- A weighted mass positioned proximate to the bottom of the frame assembly along a central vertical axis to position the center of gravity low.
- An apex formed at the top of the vertical axis for providing initial instability when the frame is inverted.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,067,667 - "SELF-RIGHTING FRAME AND AERONAUTICAL VEHICLE," issued June 30, 2015
The Invention Explained
- Problem Addressed: As with its parent patent, the '667 Patent addresses the tendency of VTOL RC aircraft to tip over when landing, which interrupts operation and requires manual intervention ('667 Patent, col. 2:12-24).
- The Patented Solution: The patent claims a self-righting frame structure comprising a combination of "at least one generally vertically oriented frame member" and "at least one generally horizontally oriented frame." These members are mechanically coupled to form a protective cage. The self-righting function is achieved through the same principles as the '854 Patent: a weighted mass at a lower section and an apex at the top to create instability and a restorative righting moment when inverted ('667 Patent, Abstract; col. 3:5-20).
- Technical Importance: This patent family provides a structural solution that increases the robustness and ease of use for consumer and hobbyist drones, lowering the barrier to entry for novice operators ('667 Patent, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶32).
- The essential elements of Claim 1 include:
- A self-righting frame assembly.
- A frame structure with at least one "generally vertically oriented frame member" and at least one "generally horizontally oriented frame," which are mechanically coupled and define a central void.
- A weighted mass carried by a lower section of the frame assembly to position the center of gravity low.
- An apex at the top of the vertical frame member to provide initial instability when the assembly is off-kilter.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,216,808 - "SELF-RIGHTING FRAME AND AERONAUTICAL VEHICLE," issued December 22, 2015
- Technology Synopsis: The '808 Patent describes a self-righting aeronautical vehicle where the frame assembly is formed from multiple members arranged to create a passageway for airflow. A portion of these members forms a "dome shaped section" with a centrally located apex or protrusion that provides the initial instability needed to begin the self-righting process when the vehicle lands on a horizontal surface ('808 Patent, Abstract).
- Asserted Claims: Independent Claim 1 is asserted (Compl. ¶39).
- Accused Features: The complaint alleges that the Accused Product’s caged frame has multiple members, forms a dome shape with an apex, contains a propulsion system, and provides a passageway for airflow, thereby infringing the '808 Patent (Compl. p. 14).
U.S. Patent No. 9,434,462 - "SELF-RIGHTING FRAME AND AERONAUTICAL VEHICLE," issued September 6, 2016
- Technology Synopsis: The '462 Patent claims a "self-righting substantially dome shaped vehicle body" rather than a frame assembly. The body has upper and lower airflow passageways, a convex exterior surface, and defines an interior void. As in the other patents, an apex or protrusion in the upper region provides instability to initiate the self-righting process ('462 Patent, Abstract).
- Asserted Claims: Independent Claim 1 is asserted (Compl. ¶46).
- Accused Features: The complaint alleges the Accused Product has a "substantially dome shaped vehicle body" with the claimed airflow passageways, convex surface, interior void, and an apex that provides the self-righting function (Compl. p. 17).
III. The Accused Instrumentality
Product Identification
- The Top Race RC drone, also marketed as the "Robotic UFO 3-Channel RC Drone" (Compl. ¶7).
Functionality and Market Context
- The Accused Product is a remote-controlled drone enclosed within a spherical, cage-like frame (Compl. p. 7). The complaint alleges this frame is a "self-righting frame assembly" that "causes the Robotic UFO 3-Channel RC drone to self-right when it falls to the ground in any inverted state (other than right-side up)" (Compl. ¶25). Visual evidence provided in the complaint shows a device with internal, counter-rotating rotors, a central body housing the electronics and battery, and a protective external lattice structure. An annotated diagram in the complaint identifies a "Top Portion" and "Base Portion" of this frame assembly (Compl. p. 7). The complaint alleges the product is sold through defendant's website and third-party vendors such as Walmart and Amazon (Compl. ¶23, ¶27).
IV. Analysis of Infringement Allegations
'854 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least two vertically oriented frames, said frames having an uninterrupted, continuous peripheral edge between a top portion and a base portion, said frames defining a central void... | The Accused Product's cage has multiple curved members that are alleged to be vertically oriented frames. A complaint diagram identifies the "Top Portion" and "Base Portion" of this structure. The complaint's visual evidence depicts the drone's cage as having at least two vertically oriented frames (Compl. p. 7). | ¶25 | col. 5:20-41 |
| a weighted mass within said frame assembly and positioned proximate to a bottom of said frame assembly... for the purpose of positioning a center of gravity of said frame assembly proximate to a bottom... | The central body of the drone, containing the motor and battery, is alleged to be a weighted mass positioned at the bottom of the frame assembly, creating a low center of gravity. | ¶25 | col. 5:48-64 |
| an apex formed at a top of said vertical axis... for providing an initial instability to begin a self-righting process when said frame assembly is inverted... | The top-most point of the spherical cage is alleged to be an apex that creates instability. A photographic sequence illustrates this self-righting process, which allegedly begins when the product rests on this apex (Compl. p. 8). | ¶25 | col. 6:11-20 |
'667 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame structure comprising at least one generally vertically oriented frame member, and at least one generally horizontally oriented frame... said frame members being mechanically coupled to one another... | The Accused Product's cage is alleged to comprise both vertical and horizontal frame members. An annotated diagram shows horizontal rings coupled to vertical arches (Compl. p. 11). | ¶32 | col. 2:39-44 |
| a weighted mass carried by a lower section of the frame assembly for the purpose of positioning a center of gravity of the frame assembly proximate to a bottom... | The complaint alleges "a weighted bass [sic] in the lower section of the frame assembly that positions the center of gravity near the bottom." This refers to the drone's central power and propulsion unit. | ¶32 | col. 3:11-16 |
| an apex formed at a top of the at least one generally vertically oriented frame member for providing an initial instability to begin a self-righting process when the frame assembly is off-kilter... | The top of the drone's cage is alleged to function as an apex. An annotated image highlights this apex and describes it as "providing an initial instability to start a self-righting process when placed in and off-kilter and inverted orientation" (Compl. p. 11). | ¶32 | col. 3:16-20 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over whether the intersecting wires of the Accused Product's spherical cage meet the claim limitation of "an uninterrupted, continuous peripheral edge" as recited in the '854 Patent. Similarly, the construction of "apex" will be critical, raising the question of whether the top of a continuous spherical cage can be considered an "apex" as described in the patents, which show a more distinct protrusion in their figures ('854 Patent, FIG. 1, element 158).
- Technical Questions: The infringement theory relies on the allegation that the drone's internal components (battery, motor) function as the claimed "weighted mass" to create a specific "righting moment." A key technical question will be what evidence demonstrates that the mass and positioning of these components in the Accused Product are sufficient to perform the claimed self-righting function in the manner described by the patent, as opposed to simply making the product bottom-heavy.
V. Key Claim Terms for Construction
The Term: "an apex" (asserted claims of '854, '667, '808, '462 patents)
- Context and Importance: This term is fundamental to the claimed self-righting mechanism. Its definition will determine whether the top of the Accused Product's rounded cage infringes. Practitioners may focus on this term because the defendant could argue that a continuous curve of a sphere lacks the distinct, point-like structure implied by an "apex," especially when compared to patent figures showing a discrete protrusion.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the purpose of the feature as "providing an initial instability to begin a self-righting process when said frame assembly is inverted" ('854 Patent, col. 2:47-49). This functional language could support construing "apex" to cover any shape at the top of the device that creates the necessary instability.
- Evidence for a Narrower Interpretation: The specification also refers to this feature as a "protrusion extending above the vertical frames" ('854 Patent, col. 2:45-47). The figures consistently depict a distinct, hub-like structure at the top (e.g., '854 Patent, FIG. 1, element 158), which could support a narrower construction requiring more than just the highest point of a dome or sphere.
The Term: "uninterrupted, continuous peripheral edge" ('854 Patent, Claim 1)
- Context and Importance: This term defines the structure of the "vertically oriented frames." Its construction is key to whether the latticed, multi-part cage of the Accused Product meets this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that "Each frame 142 defines an outer edge 144 having a continuous outer curve about a periphery of frame 142" ('854 Patent, col. 5:26-28). This suggests the "uninterrupted, continuous" language applies to the path of each individual frame member, not the external surface of the entire assembly, which could support the plaintiff's position.
- Evidence for a Narrower Interpretation: A defendant may argue that in the context of the full assembly, the intersecting points of the cage's wires constitute interruptions, meaning the overall periphery is not "uninterrupted" or "continuous."
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement for all four patents. The allegations are based on Defendant Top Race instructing its customers on the use of the Accused Product through its "support and sales," including via online retail listings on sites like Walmart and Amazon (Compl. ¶27, ¶34, ¶41, ¶48).
Willful Infringement
- The complaint alleges that Defendant has knowledge of the patents-in-suit "as early as the date of service of the Original Complaint" and continues to infringe despite this knowledge (Compl. ¶26, ¶33, ¶40, ¶47). This forms a basis for post-suit willful infringement and potential enhanced damages under 35 U.S.C. § 284. The prayer for relief also requests that the court declare the case "exceptional" to award attorneys' fees under 35 U.S.C. § 285 (Compl. ¶53.E).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can claim terms like "apex" and "uninterrupted, continuous peripheral edge," which are described in the patent specification with reference to specific embodiments, be construed broadly enough to read on the more generic, spherical, latticed cage structure of the Accused Product?
- A second central question will be one of functional operation: does the complaint provide sufficient factual basis to demonstrate that the Accused Product's design achieves its self-righting capability through the specific mechanism claimed in the patents—namely, an instability-inducing apex creating a righting moment from a low-positioned weighted mass—or does it self-right due to a more general physical property of being bottom-heavy, potentially creating a mismatch in the principles of operation?