Razor USA LLC v. Jetson Electric Bikes LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Razor USA LLC (Delaware) and Shane Chen (Washington)
  • Defendant: Jetson Electric Bikes LLC (New York)
  • Plaintiff’s Counsel: Tannenbaum Helpern Syracuse & Hirschtritt LLP
• Case Identification: 1:23-cv-07900, E.D.N.Y., 10/23/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district, has a regular and established place of business in the district, and has committed acts of infringement within the district.
• Core Dispute: Plaintiffs allege that Defendant’s "hoverboard" self-balancing scooters infringe three utility patents and one design patent related to two-wheeled vehicles with independently controlled foot platforms.
• Technical Context: The technology concerns compact, personal mobility devices that are controlled by a user shifting their weight on two independently movable foot sections, enabling steering without a traditional handlebar.
• Key Procedural History: The complaint alleges a history of prior notice, citing a 2016 International Trade Commission (ITC) investigation involving the parent patent (’278) and a 2018 attempt to add a reissue patent (’964) to that investigation. Plaintiffs also allege providing Defendant with explicit written notice of infringement in August 2021.

Case Timeline

Date	Event
2012-02-12	Priority Date for ’278, RE608, and RE964 Patents
2013-03-12	Filing Date for D906 Patent
2014-05-27	Issue Date for U.S. Patent No. 8,738,278
2015-09-29	Issue Date for U.S. Design Patent No. D739,906
2016-05-XX	Alleged notice of ’278 Patent infringement via ITC Investigation filing
2018-XX-XX	Alleged notice of RE964 Patent infringement via ITC Investigation motion
2018-07-24	Issue Date for U.S. Reissue Patent No. RE46,964
2021-08-16	Plaintiffs allegedly sent actual notice letter to Defendant
2023-08-15	Issue Date for U.S. Reissue Patent No. RE49,608
2023-10-23	Complaint Filing Date

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

U.S. Reissue Patent No. RE49,608 - “Two-Wheel Self-Balancing Vehicle with Independently Movable Foot Placement Sections”

The Invention Explained

• Problem Addressed: The patent describes prior art self-balancing vehicles like the Segway as being "large, heavy and expensive," with a tall steering structure that poses a trip hazard. Other two-wheeled devices are described as having platform sections that move in a linked or dependent manner, limiting maneuverability and requiring complex mechanics (RE608 Patent, col. 1:25-54).
• The Patented Solution: The invention is a compact, two-wheeled, self-balancing vehicle without an ascending steering column. It features two foot placement sections that are independently movable, each associated with its own wheel, motor, and position sensor. This configuration allows a user to control each wheel independently by tilting the corresponding foot section, enabling advanced maneuvers like turning in place (a "pirouette") by driving the wheels in opposite directions (RE608 Patent, Abstract; col. 3:46-56).
• Technical Importance: This design sought to provide a more compact, ergonomic, and cost-effective personal mobility device by removing the central steering shaft and enabling more intuitive, bio-mechanically natural control through independent leg movements (RE608 Patent, col. 1:55-64).

Key Claims at a Glance

• The complaint asserts independent claims 10 and 12.
• Essential elements of independent claim 10 include:
  • A two-wheel, self-balancing vehicle device.
  • A first foot placement section and a second foot placement section that are rotatably coupled to one another.
  • A first wheel associated with the first foot section and a second wheel associated with the second foot section, with the wheels spaced apart and parallel.
  • A first position sensor for the first foot section and a second position sensor for the second foot section.
  • A first drive motor for the first wheel and a second drive motor for the second wheel.
  • The device excludes a steering structure that ascends upward.
  • The coupling allows the first foot section to rotate forward while the second foot section rotates backward.

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

The Invention Explained

• Problem Addressed: As a reissue of the same parent patent as the RE608 patent, this patent addresses the same problems of large, heavy, and less-maneuverable prior art personal transporters (RE964 Patent, col. 1:25-54).
• The Patented Solution: The solution is functionally identical to that described in the RE608 patent: a compact, self-balancing vehicle with independently sensing and driven foot platforms, enabling fine-grained user control over each wheel without a handlebar (RE964 Patent, Abstract; col. 2:50-55). The claims differ in their specific language.
• Technical Importance: The technical contribution is the same as described for the RE608 patent, focusing on a more compact and maneuverable device (RE964 Patent, col. 1:55-64).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 10.
• Essential elements of independent claim 1 include:
  • A two-wheel, self-balancing vehicle device.
  • A first and second foot placement section that are coupled and independently rotatable along an axis passing through the first and second wheels.
  • A first and second wheel, each associated with a respective foot placement section, spaced apart and parallel.
  • A first and second position sensor and a first and second drive motor for each respective foot placement section and wheel.
  • Control logic that drives each wheel toward self-balancing in response to position data from its associated sensor.

Multi-Patent Capsule: U.S. Patent No. 8,738,278

• Patent Identification: U.S. Patent No. 8,738,278, “Two-Wheel, Self-Balancing Vehicle with Independently Movable Foot Placement Sections,” issued May 27, 2014.
• Technology Synopsis: This is the original parent patent of the RE608 and RE964 patents. It discloses the core invention of a self-balancing vehicle with two independently movable foot platforms, each with its own wheel and sensor, to overcome the size and maneuverability limitations of prior art devices.
• Asserted Claims: The complaint asserts independent claim 1 (’278 Patent, col. 3:59-4:11).
• Accused Features: The complaint alleges that the Accused Products' two-wheel, self-balancing design with independently movable foot sections, sensors, and motors infringes the patent (Compl. ¶¶ 100-108).

Multi-Patent Capsule: U.S. Design Patent No. D739,906

• Patent Identification: U.S. Design Patent No. D739,906, “Two-Wheeled Vehicle,” issued September 29, 2015.
• Technology Synopsis: This patent claims the ornamental design for a two-wheeled vehicle. The design features two wheels at opposing ends of a central body that narrows in the middle, creating what the complaint describes as an "hourglass shape" (Compl. ¶21).
• Asserted Claims: The complaint asserts the single design claim (D906 Patent, Claim).
• Accused Features: The complaint alleges that the overall appearance of the Accused Products is "substantially the same" as the patented design in the eye of an ordinary observer (Compl. ¶¶ 122-123).

III. The Accused Instrumentality

Product Identification

• Defendant’s two-wheel self-balancing vehicles, sold under various names including Rave Hoverboard, Rogue Hoverboard, Rumble Hoverboard, Sync All-Terrain Stereo Hoverboard, and others, collectively referred to as the "Accused Products" (Compl. ¶19).

Functionality and Market Context

• The complaint describes the Accused Products as two-wheel, self-balancing vehicle devices (Compl. ¶28, ¶65, ¶100). The alleged functionality includes having two foot placement sections that are coupled to one another, with each section associated with a wheel, a position sensor, and a drive motor (Compl. ¶¶ 29-35). This allows the device to self-balance and be controlled by the user tilting the foot platforms. The complaint alleges these products are sold and imported into the United States (Compl. ¶18).
  No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

RE608 Patent Infringement Allegations

Claim Element (from Independent Claim 10)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a first foot placement section and a second foot placement section that are rotatably coupled to one another;	The Accused Products have a first foot placement section and a second foot placement section that are rotatably coupled to one another.	¶29	col. 3:36-39
a first wheel associated with the first foot placement section and a 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 associated with the first foot placement section and a second wheel associated with a second foot placement section, and the wheels are spaced apart and substantially parallel.	¶¶30-31	col. 2:49-53
a first position sensor configured to sense the position of the first foot placement section;...a second position sensor configured to sense the position of the second foot placement section;	The Accused Products have a first position sensor for the first foot section and a second position sensor for the second foot section.	¶¶32, 34	col. 3:3-8
wherein the device excludes a steering structure that ascends upward from the foot placement sections,	The Accused Products exclude a steering structure that ascends upward from the foot placement sections.	¶36	col. 1:30-34
and wherein the first foot placement section is coupled to the second foot placement section such that the first foot placement section can rotate forward while the second foot placement section can rotate backward.	The Accused Products have the first foot placement section coupled to the second foot placement section such that the first foot placement section can rotate forward while the second foot placement section can rotate backward.	¶37	col. 3:46-51

RE964 Patent 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 a first and second wheel.	¶¶66-67	col. 3:36-39
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...	The Accused Products have a first wheel associated with the first foot placement section and a second wheel associated with the second foot placement section, and the wheels are spaced apart and substantially parallel.	¶¶68-69	col. 2:49-53
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 drive motor for the first wheel, and a second position sensor and drive motor for the second wheel.	¶¶70-71	col. 3:3-16
and control logic that drives the first wheel toward self-balancing...in response to position data from the first sensor and that drives the second wheel toward self-balancing...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 control logic that drives the second wheel toward self-balancing in response to data from the second sensor.	¶¶72-73	col. 3:8-16

Identified Points of Contention

• Scope Questions: The core of the dispute may turn on the construction of terms like "rotatably coupled" (RE608 Patent) and "independently rotatable" (RE964 Patent). The question for the court will be whether the specific mechanical and electrical connection between the two halves of the Accused Products falls within the scope of these terms as defined by the patents.
• Technical Questions: The complaint's infringement allegations are largely conclusory, tracking the claim language. A central technical question will be what evidence Plaintiffs can produce to demonstrate that the two foot platforms of the Accused Products are truly "independent" in their rotation and control logic, as opposed to being linked or coordinated in a way that might fall outside the claim scope. The precise nature of the coupling mechanism and the operation of the control logic in the Accused Products will be a key factual issue.

V. Key Claim Terms for Construction

• The Term: "independently rotatable" (from RE964 Patent, Claim 1) / "rotatably coupled" such that one section can rotate forward while the other rotates backward (from RE608 Patent, Claim 10).
• Context and Importance: These related terms are central to the patents' claimed departure from the prior art. The definition will determine whether the accused devices, which may have some degree of mechanical or electrical linkage between the two sides, meet this core limitation. Practitioners may focus on this term because the patent discloses multiple embodiments, raising questions about the breadth of the concept.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discloses an embodiment where the housing itself is made of a "sturdy yet sufficiently flexible material," allowing the foot sections to move independently without a distinct pivot shaft (’278 Patent, col. 3:28-33). This may support a construction that is not limited to a purely mechanical pivot but covers any means of allowing differential movement.
  • Evidence for a Narrower Interpretation: The primary described embodiment features a physical "shaft 170 about which they may rotate (or pivot with respect to one another)" (’278 Patent, col. 3:36-39, FIG. 2). A defendant may argue that this specific mechanical arrangement defines the scope of "rotatably coupled" and that "independently rotatable" requires complete mechanical and logical separation not present in their products.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain a separate count for indirect infringement, but the prayer for relief seeks an injunction against "directly or indirectly infringing" (Prayer ¶B.3). The body of the complaint focuses on direct infringement by Defendant's making, using, and selling, and does not plead specific facts to support a claim of inducement, such as allegations related to user manuals or advertising that instructs infringement.
• Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is Defendant's alleged long-standing knowledge of Plaintiffs' patent rights, stemming from a 2016 ITC investigation and a direct notice letter sent in August 2021 (Compl. ¶¶ 52-55, 86-90, 110-114, 125-128). Plaintiffs allege that Defendant's infringement continued with "reckless disregard" of these rights.

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

• A core issue will be one of claim scope: can the terms "independently rotatable" and "rotatably coupled," which are central to the patents' novelty, be construed to read on the specific mechanical and software architecture of the accused hoverboards? The outcome of claim construction for these terms may be dispositive of infringement.
• A second central question will be one of willfulness and damages: given the extensive history alleged in the complaint, including a prior ITC action and explicit notice, a key focus will be on Defendant's state of mind. The court will need to determine if Defendant knew of the patents and, if so, whether it acted with recklessness, which could expose it to enhanced damages.
• For the design patent, the key question is the application of the "ordinary observer" test: will a fact-finder, giving the attention a typical purchaser would, find the overall visual appearance of the accused hoverboards to be substantially the same as the ornamental design claimed in the D906 patent, or are there sufficient visual differences to avoid infringement?