DCT
1:23-cv-02772
MVN Entertainment LP v. Sakar Intl Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MVN Entertainment, LP. (New York)
- Defendant: Sakar Intl, Inc. (New York)
- Plaintiff’s Counsel: Winslett Studnicky McCormick & Bomser LLP
- Case Identification: 1:23-cv-02772, S.D.N.Y., 04/03/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant is incorporated in New York, resides in the district, and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s powered ride-on toys, which combine a themed character with a self-balancing scooter, infringe two patents related to powered wheeled riding devices.
- Technical Context: The technology integrates a static, character-themed riding toy with a powered, self-balancing scooter (or "hoverboard"), allowing a child to sit on the toy and use their feet on the scooter's pads for propulsion and steering.
- Key Procedural History: The complaint states that Plaintiff sent a cease and desist letter to Defendant regarding the patents-in-suit on January 17, 2023. It further alleges that after this notice, and after online retailers took down listings for the accused products, Defendant repeatedly relisted the products, sometimes under different names.
Case Timeline
| Date | Event |
|---|---|
| 2019-04-20 | Earliest Priority Date for '966 and '583 Patents |
| 2022-09-06 | U.S. Patent No. 11,433,966 Issues |
| 2023-01-10 | U.S. Patent No. 11,548,583 Issues |
| 2023-01-17 | Plaintiff serves cease and desist letter on Defendant |
| 2023-01-23 | Accused product advertisement allegedly taken down from Walmart.com |
| 2023-01-27 | Accused product advertisement(s) allegedly taken down from Amazon.com |
| 2023-03-05 | Subsequent listing of accused product allegedly taken down from Walmart.com |
| 2023-04-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,433,966 - “Powered Wheeled Riding Device,” issued September 6, 2022 (’966 Patent)
The Invention Explained
- Problem Addressed: The patent’s background section notes that traditional, unpowered riding toys can quickly become uninteresting to children, while powered self-balancing scooters, though popular, have "limited versatility" ('966 Patent, col. 1:15-29).
- The Patented Solution: The invention combines a thematic riding toy (e.g., a horse) with a standard self-balancing scooter. A user sits on the toy's saddle and places their feet on the scooter's footpads to control movement ('966 Patent, col. 4:28-34). The toy portion attaches to the scooter and features rear caster wheels, which have a "rotating mount configured so that the rolling wheel can rotate into any rolling direction," allowing the entire assembly to follow the steering inputs given to the powered scooter ('966 Patent, Abstract; col. 2:20-22).
- Technical Importance: This combination creates a new category of ride-on toy that merges the imaginative play of a character-themed vehicle with the powered mobility and intuitive control of a self-balancing scooter ('966 Patent, col. 1:30-34).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶29).
- Essential Elements of Claim 1:
- A riding toy portion with a frame, a saddle, and multiple back legs.
- A wheel structure on each back leg featuring a rolling wheel on a rotating mount (a caster), allowing it to rotate into any direction.
- A powered, wheeled, self-balancing scooter with left and right footpads to receive rider inputs.
- The scooter is attached to the toy's frame structure, causing the toy portion to move with the scooter.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,548,583 - “Power Wheeled Riding Device,” issued January 10, 2023 (’583 Patent)
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the '966 Patent, this patent addresses the same general field ('583 Patent, col. 1:8-13). It focuses specifically on the mechanical challenge of connecting a superstructure to a self-balancing scooter, whose steering relies on the relative rotation of its two halves.
- The Patented Solution: The invention describes a self-balancing scooter constructed with first and second chassis parts (for the left and right sides) and a separate "insert" component. This "insert" is "sandwiched between" the inner ends of the two chassis parts ('583 Patent, col. 3:11-16). This configuration allows the two chassis parts to rotate relative to the insert and each other for steering, while the insert itself provides a stable, non-rotating point for attaching an external structure, such as the post of a riding toy ('583 Patent, col. 5:55-58; Fig. 8).
- Technical Importance: This design provides a specific mechanical solution for rigidly mounting an accessory onto a twisting-body scooter without interfering with its core steering function.
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶45).
- Essential Elements of Claim 1:
- A first chassis part (supporting a footpad, wheel, and motor) and a second chassis part (supporting a second footpad, wheel, and motor).
- An "insert".
- The first chassis part, second chassis part, and "insert" are coupled together with the "insert" "sandwiched between" the inner ends of the two chassis parts.
- The first chassis part, second chassis part, and "insert" are each rotatable relative to one another about a common axis.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused products are sold under names including "Voyager Creature Cruisers," "Voyager Kids Unicorn Creatures," and "HAIMAI Cruisers Kids Ride On Toys" (Compl. ¶14).
Functionality and Market Context
- The complaint alleges the accused products are "powered wheeled riding device[s]" that combine a themed riding toy superstructure with a self-balancing scooter base for propulsion (Compl. ¶¶30, 46). Exhibit 4 to the complaint provides an advertisement showing the accused product, which depicts a unicorn-themed ride-on toy superstructure mounted on a two-wheeled, self-balancing scooter base (Compl. ¶14, Ex. 4).
- The complaint alleges the products were modeled after Plaintiff's Power Pony® product and are of "lower quality" (Compl. ¶¶15, 17).
IV. Analysis of Infringement Allegations
’966 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a riding toy portion comprising a frame structure supporting a saddle configured to support a rider thereupon and defining a plurality of back legs; | The accused products include a riding toy portion with a frame, saddle, and back legs. | ¶30 | col. 2:20-24 |
| a wheel structure attached to each of the back legs, each wheel structure having a rolling wheel and a rotating mount configured so that the rolling wheel can rotate into any rolling direction; | The accused products have a wheel structure on each back leg with a rolling wheel and a rotating mount that allows rotation in any direction. | ¶31 | col. 4:17-22 |
| a powered, wheeled, self-balancing scooter comprising left and right footpads, the scooter configured to receive rider inputs via the footpads; | The accused products have a powered, self-balancing scooter with left and right footpads for receiving user inputs. | ¶32 | col. 3:60-65 |
| wherein the scooter is attached to the frame structure so that the riding toy portion moves together with the scooter. | In the accused products, the scooter is attached to the toy's frame structure, causing the toy portion to move with the scooter. | ¶33 | col. 2:45-48 |
’583 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first chassis part supporting a first footpad, a first wheel and a first drive motor... | The accused products comprise a first chassis part with a footpad, wheel, and motor. | ¶46, ¶47 | col. 5:12-15 |
| a second chassis part supporting a second footpad, a second wheel and a second drive motor... | The accused products comprise a second chassis part with a footpad, wheel, and motor. | ¶46, ¶48 | col. 5:15-18 |
| an insert; | The accused products comprise an insert. | ¶49 | col. 5:19-21 |
| wherein the first chassis part, second chassis part and insert are coupled together with the insert sandwiched between the first chassis part inner end and the second chassis part inner end; | In the accused products, the components are coupled with the insert sandwiched between the two chassis part inner ends. | ¶49 | col. 5:19-21 |
| and wherein the first chassis part, second chassis part and insert are each rotatable relative to one another about a common axis. | In the accused products, the three components are each rotatable relative to one another about a common axis. | ¶50 | col. 5:21-23 |
Identified Points of Contention
- Technical Questions: The infringement allegations for the ’583 Patent are highly dependent on the internal mechanics of the accused products. A primary evidentiary question for the court will be whether discovery and product teardowns confirm that the accused products contain a discrete component meeting the definition of an "insert" that is physically "sandwiched between" the two chassis halves as claimed.
- Scope Questions: The complaint's infringement theory for the '966 patent appears to map directly onto the claim language. A potential point of contention may arise over the scope of "rotating mount configured so that the rolling wheel can rotate into any rolling direction," and whether the specific wheel mechanism on the accused products meets this functional definition of a caster.
V. Key Claim Terms for Construction
Term: "insert" (’583 Patent, Claim 1)
- Context and Importance: This term is the central novel element of Claim 1 of the ’583 Patent. The entire infringement analysis for this patent hinges on whether the accused product contains a structure that meets the definition of an "insert" as it is functionally and structurally defined by the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "insert" is not explicitly defined with limiting structural characteristics. Parties arguing for a broader scope may assert that any component, regardless of its specific shape, that is located between the two chassis parts and facilitates their relative rotation meets the claim language.
- Evidence for a Narrower Interpretation: The claim requires the "insert" to be "sandwiched between" the inner ends of the chassis parts, which suggests it must be a distinct physical element. Embodiments in the specification show the "insert" (70) as a discrete component with an axle receiver (88) and a post receiver (90) ('583 Patent, Fig. 8). Parties arguing for a narrower scope may contend that the term should be construed to require a separate component possessing these functional features, rather than an integral part of the chassis.
Term: "attached" (’966 Patent, Claim 1)
- Context and Importance: The nature of the connection between the scooter and the toy's frame is critical to defining the scope of the '966 patent. Practitioners may focus on this term because its construction will determine whether temporary connections (like straps) or only more rigid, semi-permanent connections fall within the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses multiple ways of connecting the toy and scooter. It explicitly states that "In some embodiments, a strap can extend from the front legs to and around the scooter" ('966 Patent, col. 4:41-43). This could support a construction that does not require a rigid or bolted connection.
- Evidence for a Narrower Interpretation: The claim requires the attachment to be such that "the riding toy portion moves together with the scooter." This functional result may imply a connection that is more rigid than a simple strap. Further, the preferred embodiments depict a rigid "post" (80) that connects the scooter "insert" (70) to the toy's frame structure (60), suggesting a more integrated and rigid assembly ('966 Patent, Fig. 7).
VI. Other Allegations
Indirect Infringement
The complaint alleges active inducement of infringement against both patents. The stated basis is that Defendant markets and sells the accused products to national distributors with the "intent and knowledge" that those distributors will resell them to the public, and that Defendant "specifically encouraged" such sales (Compl. ¶¶34, 51).
Willful Infringement
The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents, at least as of the January 17, 2023 cease and desist letter (Compl. ¶18). The allegations of willfulness are further supported by claims that Defendant continued to sell the products and took active measures to relist them on retail websites after they had been taken down, suggesting knowledge and disregard of Plaintiff's patent rights (Compl. ¶¶19-25, 35, 52).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the '583 patent will be one of factual proof: does the internal architecture of the accused scooter actually contain a discrete component that functions as an "insert" physically "sandwiched between" the two rotating chassis halves, as required by the claim, or does it employ a different mechanical design?
- A key question for the '966 patent will be one of claim scope: will the term "attached" be construed broadly to include any means of connection that causes the toy to move with the scooter, or will it be interpreted more narrowly to require a rigid, post-and-frame connection similar to the patent's preferred embodiments?
- A significant question for damages will be one of intent: given the detailed allegations of continued sales and relisting of products after receiving a cease and desist letter, can Plaintiff prove that Defendant's post-notice conduct was sufficiently egregious to meet the standard for willful infringement and justify enhanced damages?