DCT
3:23-cv-01742
Future Motion Inc v. Lai
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Future Motion, Inc. (Delaware)
- Defendant: Tony Lai, an individual doing business as Floatwheel (China)
- Plaintiff’s Counsel: Kolitch Romano Dascenzo Gates LLC
- Case Identification: 3:23-cv-01742, D. Or., 11/27/2023
- Venue Allegations: Venue is alleged to be proper in the District of Oregon because Defendant advertises, sells, and ships the Accused Products and replacement parts to customers within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Floatwheel-branded self-balancing electric skateboards infringe four U.S. patents related to electric skateboard hub motors, carrying handles, status indicators, and rider detection sensors.
- Technical Context: The technology pertains to the field of personal electric mobility devices, specifically single-wheeled, self-balancing skateboards that are controlled by rider weight shifts.
- Key Procedural History: The complaint notes a prior litigation between the parties (N.D. Cal. Case No. 21-cv-03022) that resulted in a default judgment and permanent injunction against Defendant for selling "do-it-yourself" parts kits for building similar self-balancing electric skateboards.
Case Timeline
| Date | Event |
|---|---|
| 2015-03-10 | U.S. Patent No. 9,598,141 Priority Date |
| 2017-03-21 | U.S. Patent No. 9,598,141 Issues |
| 2019-02-11 | U.S. Patent No. 10,456,658 Priority Date |
| 2019-10-29 | U.S. Patent No. 10,456,658 Issues |
| 2021-06-30 | U.S. Patent Nos. 11,273,364 & 11,590,409 Priority Date |
| 2022-01-27 | Permanent Injunction Issued in Prior N.D. Cal. Litigation |
| 2022-03-15 | U.S. Patent No. 11,273,364 Issues |
| 2023-02-28 | U.S. Patent No. 11,590,409 Issues |
| 2023-11-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,598,141 - "Thermally Enhanced Hub Motor", issued March 21, 2017
The Invention Explained
- Problem Addressed: The patent addresses the problem of heat build-up in the stator of an electric hub motor, which can limit the motor's performance and power output (Compl. ¶10; ’141 Patent, col. 1:21-32).
- The Patented Solution: The invention proposes a hub motor axle constructed as a single unit from a material with high thermal conductivity, such as aluminum. This unit includes a larger-diameter mandrel in direct contact with the stator and a central shaft. This design is intended to draw heat away from the stator and conduct it through the axle to the vehicle's frame, which acts as a heat sink, thereby improving thermal management (Compl. ¶10; ’141 Patent, col. 4:3-10). The complaint reproduces patent Figures 3 and 4, which depict perspective and cross-sectional views of the motor assembly, showing the relationship between the axle (38), stator (56), and rotor (60) (Compl. pp. 5-6).
- Technical Importance: This approach to thermal management sought to allow for higher sustained power output from a compact hub motor, a key component for personal electric vehicles.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶19).
- Claim 1 of the ’141 Patent recites, in pertinent part:
- An electric vehicle comprising a board, a wheel assembly, and a hub motor.
- The hub motor includes a rotor, a stator disposed within the rotor, a motor casing, and an axle.
- The axle is "formed as a single piece" and includes a shaft portion and a mandrel portion having a larger diameter.
- The mandrel portion is in "direct contact with the stator."
- The complaint reserves the right to assert dependent claims (Compl. ¶19).
U.S. Patent No. 10,456,658 - "Self-Stabilizing Skateboard", issued October 29, 2019
The Invention Explained
- Problem Addressed: The patent discloses features intended to improve the user experience of self-balancing electric skateboards, focusing on portability and user feedback (Compl. ¶12; ’658 Patent, col. 1:12-19).
- The Patented Solution: The invention describes a self-balancing electric vehicle with two primary features: a pivotable handle for carrying the board and a lighted status indicator. The handle is designed to move between a "stowed position adjacent the hub motor" for riding and a "deployed position" extending away from the motor for carrying (’658 Patent, col. 10:1-10). The status indicator includes illuminators visible through a slot in the board’s upper surface to provide information like battery charge to the rider (’658 Patent, col. 12:30-54). The complaint includes Figures 8 and 9 from the patent, which show top-plan views of the skateboard with the handle in its stowed and deployed positions, respectively (Compl. p. 7).
- Technical Importance: These features addressed practical aspects of ownership, making the device easier to transport when not in use and providing riders with direct visual feedback on the vehicle's status.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶19).
- Claim 1 of the ’658 Patent recites, in pertinent part:
- A self-balancing electric vehicle comprising a board, a wheel, a hub motor, and a motor controller.
- A "handle pivotably coupled" to the board.
- The handle is "transitionable between a stowed configuration," where a grip portion is "stowed in a position proximate the hub motor," and a "deployed configuration," where the grip portion "extends away from the hub motor."
- The complaint reserves the right to assert dependent claims (Compl. ¶19).
U.S. Patent No. 11,273,364 - "Self-Stabilizing Skateboard", issued March 15, 2022
- Technology Synopsis: This patent claims a self-balancing electric vehicle that includes a footpad with a concave profile. A rider detection sensor, in the form of a membrane switch, is disposed on the footpad and includes "a pair of open-ended slots" that allow the sensor to bend and conform to the footpad's concave shape (Compl. ¶14; ’364 Patent, Abstract).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶19).
- Accused Features: The footpads and associated rider detection sensors of the Accused Products are alleged to infringe (Compl. ¶18).
U.S. Patent No. 11,590,409 - "Self-Stabilizing Skateboard", issued February 28, 2023
- Technology Synopsis: The technology is described as similar to the ’364 Patent, but the claims are directed to the vehicle footpad as a standalone component rather than the entire vehicle. It claims a footpad with a rider detection sensor that includes a membrane switch with open-ended slots, allowing it to conform to the concave shape of the footpad (Compl. ¶16; ’409 Patent, Abstract).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶19).
- Accused Features: The footpads of the Accused Products are alleged to infringe (Compl. ¶18).
III. The Accused Instrumentality
Product Identification
The "Floatwheel Adv series," which includes at least the "Floatwheel Adv" and "Floatwheel Adv Pro" models of self-balancing electric skateboards (Compl. ¶18).
Functionality and Market Context
The Accused Products are self-balancing electric skateboards sold to customers in the United States via an e-commerce website (Compl. ¶4, 6). The complaint alleges that these products incorporate technologies covered by all four asserted patents, including a specific hub motor and axle structure, a pivotable carrying handle, and a rider detection sensor on a concave footpad (Compl. ¶18, 20). A representative image shows one of the accused skateboards, highlighting its single-wheel design and footpads (Compl. p. 10). The complaint alleges the two models differ only in minor features like battery capacity and axle block structure, which do not affect infringement (Compl. ¶20).
IV. Analysis of Infringement Allegations
The complaint references claim charts in Exhibit G, which was not filed with the public complaint. The infringement theories are constructed below based on the narrative allegations in the complaint.
U.S. Patent No. 9,598,141 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an electric vehicle comprising...a hub motor | The Accused Products are self-balancing electric skateboards that include a hub motor. | ¶18 | col. 4:63-65 |
| said axle formed as a single piece and including a shaft portion and a mandrel portion... | The motor of the Accused Products allegedly includes a one-piece axle with a shaft and a larger-diameter mandrel. | ¶10 | col. 4:67-5:5 |
| said mandrel portion being in direct contact with said stator... | The mandrel of the Accused Products' motor is allegedly in direct contact with the stator. | ¶10 | col. 5:4-5 |
Identified Points of Contention
- Scope Questions: A central question may be the construction of "axle formed as a single piece." The complaint notes the Accused Products have an "axle block structure" (Compl. ¶20), which raises the question of whether this configuration meets the "single piece" limitation or is a multi-component assembly that falls outside the claim's scope.
U.S. Patent No. 10,456,658 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a self-balancing electric vehicle comprising...a board...a wheel...a hub motor...and a motor controller | The Accused Products are self-balancing electric vehicles. | ¶18 | col. 8:41-47 |
| a handle pivotably coupled to the board...transitionable between a stowed configuration...and a deployed configuration | The Accused Products are alleged to include a pivotable handle that moves between stowed and deployed positions for riding and carrying. | ¶12, 18 | col. 9:60-10:10 |
| wherein...in the stowed configuration...a grip portion of the handle is stowed in a position proximate the hub motor | The handle of the Accused Products allegedly stows adjacent to the hub motor. | ¶12 | col. 10:1-4 |
| wherein...in the deployed configuration, the grip portion...extends away from the hub motor | The handle of the Accused Products allegedly extends away from the motor for carrying. | ¶12 | col. 10:8-10 |
Identified Points of Contention
- Technical Questions: The analysis may focus on whether the accused handle's mechanism and positions are functionally and structurally equivalent to those claimed. For instance, what is the scope of "proximate the hub motor," and does the accused handle's stowed position meet that limitation?
V. Key Claim Terms for Construction
The Term: "axle formed as a single piece" (’141 Patent, Claim 1)
- Context and Importance: This term is central to the alleged novelty of the '141 Patent's thermal management solution. The defendant may argue its "axle block structure" (Compl. ¶20) is not a "single piece," making the construction of this term dispositive for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the shaft and mandrel "together form a unit" (’141 Patent, col. 6:6-7), which could suggest a focus on functional unity rather than a strict manufacturing definition.
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes the unitary construction, stating the unit "consist[s] of a single material" (’141 Patent, col. 6:7-9) and may be formed by methods like extrusion (col. 7:59-62), which implies a monolithic structure.
The Term: "stowed configuration...in a position proximate the hub motor" (’658 Patent, Claim 1)
- Context and Importance: The definition of "proximate" will determine whether the accused handle's resting position for riding falls within the claim scope. Practitioners may focus on this term because the precise location and orientation of the handle when stowed is a key feature distinguishing it from a simple carrying strap.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "proximate" is not explicitly defined, which may support a broader construction covering any position generally near or adjacent to the motor that keeps the handle out of the way during operation.
- Evidence for a Narrower Interpretation: Figure 8 of the patent, explicitly referenced in the complaint (Compl. p. 7), shows the handle (60) closely following the curved contour of the hub motor housing. This embodiment could be used to argue for a narrower construction requiring the handle to be closely adjacent to the motor body.
VI. Other Allegations
Indirect Infringement
The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b) (Compl. ¶24). The allegations are based on Defendant’s publication of at least 43 videos on its YouTube channel, including tutorials titled "DIY onewheel indepth tutorial" and "floatwheel adv motor installation & delivery setup tutorial," which allegedly teach consumers how to make and/or use the infringing Accused Products (Compl. ¶21-22).
Willful Infringement
Willfulness is alleged for all four asserted patents (Compl. ¶27, 33, 39, 45). The complaint alleges pre-suit knowledge based on a prior patent infringement lawsuit filed by Future Motion against Defendant, which resulted in a default judgment and a permanent injunction intended to prevent Defendant from selling "DIY" kits for infringing electric skateboards (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of willfulness and intent: given the prior litigation and permanent injunction against Defendant for selling related "DIY" kits, a central question for the court will be whether the alleged infringement via fully assembled products constitutes willful infringement, potentially leading to enhanced damages.
- A key technical issue will be one of claim construction and structural equivalence: can the term "axle formed as a single piece" in the ’141 Patent be construed to read on the defendant’s accused "axle block structure," or is there a fundamental structural difference that places the accused product outside the claim scope?
- A core evidentiary question will be one of functional correspondence: does the rider detection sensor in the accused skateboards operate as a membrane switch with open-ended slots that conforms to a concave footpad, as required by the ’364 and ’409 patents, and what evidence will be presented to demonstrate this specific technical configuration?