Chen v. GoLabs Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Razor USA LLC (Delaware) and Shane Chen (Washington)
  • Defendant: GoLabs Inc. d/b/a Gotrax (Texas)
  • Plaintiff’s Counsel: Patterson + Sheridan LLP
• Case Identification: 3:23-cv-02342, N.D. Tex., 10/23/2023
• Venue Allegations: Venue is alleged to be proper in the Northern District of Texas 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: Plaintiffs allege that Defendant’s "hoverboard" product line infringes three utility patents and one design patent related to two-wheel, self-balancing vehicles that lack a vertical steering column.
• Technical Context: The technology concerns personal electric mobility devices, commonly known as "hoverboards," a significant category in the consumer electronics market.
• Key Procedural History: The complaint alleges that Defendant had actual notice of the original underlying patent (U.S. Patent No. 8,738,278) at least as early as June 27, 2019, as a result of prior litigation. Two of the asserted utility patents are reissues of this original patent, a fact that may be relevant to the allegations of willfulness.

Case Timeline

Date	Event
2012-02-12	Earliest Priority Date ('278, RE964, RE608 Patents)
2013-03-12	Priority Date (D906 Patent)
2014-05-27	'278 Patent Issued
2015-09-29	D906 Patent Issued
2018-07-24	RE964 Patent Issued
2019-06-27	Alleged Notice of '278 Patent from "Chic Litigation"
2023-08-15	RE608 Patent Issued
2023-10-23	Complaint Filed

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 as being large, heavy, expensive, and difficult to carry. It specifically notes that earlier vehicles with upright steering structures, such as the Segway, pose a trip hazard, while other platform-based vehicles have linked foot sections that limit maneuverability and result in a large turning radius (’278 Patent, col. 1:24-54).
• The Patented Solution: The invention is a compact, two-wheeled personal vehicle without an ascending steering column. It features two separate foot placement sections that are movably coupled, allowing them to be tilted independently. Each section is associated with its own wheel, motor, and gyroscopic sensor, enabling independent control of each wheel's movement based on the tilt of the user's corresponding foot. This design allows for advanced maneuvers, such as spinning in place (’278 Patent, Abstract; col. 3:46-57).
• Technical Importance: This independent wheel control architecture eliminated the need for a bulky central steering column and enabled a new class of lightweight, portable, and highly maneuverable personal mobility devices (’278 Patent, col. 1:55-60).

Key Claims at a Glance

• The complaint asserts independent claims 10 and 12 (Compl. ¶26).
• Independent Claim 10 requires, in summary:
  • A two-wheel, self-balancing vehicle with first and second foot placement sections that are "rotatably coupled to one another."
  • Each section has an associated wheel, position sensor, and drive motor.
  • The device "excludes a steering structure that ascends upward."
  • The coupling allows the first section to "rotate forward while the second foot placement section can rotate backward."
• Independent Claim 12 is similar to Claim 10 but recites the vehicle is configured for forward and rearward movement, and that the first foot section is configured to rotate forward and the second is configured to rotate rearward.

U.S. Reissue Patent No. RE46,964 - "TWO-WHEEL SELF-BALANCING VEHICLE WITH INDEPENDENTLY MOVABLE FOOT PLACEMENT SECTIONS"

The Invention Explained

• Problem Addressed: As with the RE608 patent, this patent (a reissue of the same '278 patent) addresses the cumbersomeness and limited maneuverability of prior art self-balancing vehicles (’278 Patent, col. 1:24-54).
• The Patented Solution: This patent focuses on the control system for such a device. It claims a vehicle with two foot sections that are "independently rotatable along an axis passing through a first wheel and a second wheel." The key is the claimed "control logic" that independently drives each wheel toward a self-balancing state based on data from each foot section's respective position sensor (RE964 Patent, col. 5:15 - col. 6:35).
• Technical Importance: The patented solution's emphasis on independent sensing and control logic for each foot platform provides the technical foundation for the device's intuitive, ergonomic operation and enhanced maneuverability (’278 Patent, col. 3:58-62).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 10 (Compl. ¶62).
• Independent Claim 1 requires, in summary:
  • A two-wheel, self-balancing vehicle with first and second foot placement sections "coupled to one another" and "independently rotatable along an axis passing through a first wheel and a second wheel."
  • Each section has an associated wheel, sensor, and drive motor.
  • "control logic" that drives each wheel toward self-balancing "in response to position data from the first sensor" and "the second sensor," respectively.
• Independent Claim 10 is substantively identical to Claim 1.

U.S. Patent No. 8,738,278 - "Two-Wheel, Self-Balancing Vehicle with Independently Movable Foot Placement Sections"

• Technology Synopsis: This is the original utility patent from which the RE608 and RE964 patents were reissued. It discloses the core invention of a two-wheeled, self-balancing vehicle without a vertical steering column, which is operated through two independently movable foot platforms, each having its own wheel, motor, and sensor to allow for intuitive control via foot tilt.
• Asserted Claims: Independent Claim 1 (Compl. ¶96).
• Accused Features: The complaint alleges the accused products embody the claimed combination of two independently movable foot sections, each with an associated wheel, sensor, and motor, controlled by logic that self-balances each section based on sensor data (Compl. ¶¶98-106).

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

• Technology Synopsis: This patent claims the ornamental design for a two-wheeled vehicle. The design is characterized by its overall visual appearance, featuring a narrowed central "hourglass" shape connecting two wider foot platforms, above which are wheel housings.
• Asserted Claims: The single claim of the patent for the ornamental design as shown and described (Compl. ¶119).
• Accused Features: The complaint alleges that the accused hoverboards possess an "hourglass shape" and a design that an ordinary observer would find substantially similar to the claimed design (Compl. ¶¶21, 119-120).

III. The Accused Instrumentality

Product Identification

• The complaint identifies a range of two-wheel self-balancing vehicles sold by Defendant under the "Gotrax" brand, including models such as Fluxx FX3, Edge, Lil Cub, Elf, Glide Pro, Trinity, Nova LED, and others (Compl. ¶19). The allegations also extend to "all of Defendant's other hoverboards" (Compl. ¶20).

Functionality and Market Context

• The complaint describes the Accused Products as "two-wheel, self-balancing vehicle devices" that operate without a steering column that ascends upward from the foot platforms (Compl. ¶¶18, 36). According to the allegations, they consist of two foot placement sections, each with an associated wheel, sensor, and motor, that are rotatably coupled to one another, allowing a user to control motion by tilting their feet (Compl. ¶¶28-35). The complaint does not provide specific details regarding the market position or commercial success of the Accused Products.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

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 and second foot placement section "that are rotatably coupled to one another."	¶29	col. 3:36-38
a first wheel associated with the first foot placement section and a second wheel associated with the second foot placement section...	The Accused Products have a first and second wheel, each associated with a respective foot placement section, that are spaced apart and parallel.	¶¶30, 31	col. 4:65-col. 5:1
a first position sensor configured to sense the position of the first foot placement section... [and] a second position sensor...	The Accused Products have a first position sensor to sense the position of the first foot section and a second position sensor for the second foot section.	¶¶32, 34	col. 3:3-5
a first drive motor configured to drive the first wheel... [and] a second drive motor...	The Accused Products have a first drive motor for the first wheel and a second drive motor for the second wheel.	¶¶33, 35	col. 2:65-67
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. 1:31-33
wherein the first foot placement section is coupled to the second... such that the first... can rotate forward while the second... can rotate backward	The Accused Products are coupled such that the first foot section "can rotate forward while the second foot placement section can rotate backward."	¶37	col. 3:49-52

• Identified Points of Contention:
  • Technical Question: The claim requires the capability for the two platforms to rotate in opposite directions simultaneously. A factual question will be whether the Accused Products' internal mechanisms and control software permit this specific "pirouette" functionality as described.
  • Scope Question: The negative limitation "excludes a steering structure that ascends upward" is defined by what it is not. The court may need to determine what constitutes a "steering structure" and whether any component of the Accused Products could be characterized as such, even if it is not a traditional handlebar.

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 "independently rotatable along an axis passing through a first wheel and a second wheel."	¶¶65, 66	col. 3:36-38
said first wheel associated with the first foot placement section and said second wheel... spaced apart and substantially parallel...	The Accused Products have first and second wheels associated with the foot placement sections that are spaced apart and parallel.	¶¶67, 68	col. 4:65-col. 5:1
a first position sensor and a first drive motor... a second position sensor and a second drive motor...	The Accused Products have a first position sensor and drive motor, and a second position sensor and drive motor.	¶¶69, 70	col. 3:3-12
control logic that drives the first wheel toward self-balancing... in response to position data from the first sensor... [and] drives the second wheel... from the second sensor	The Accused Products have "control logic" that drives each wheel toward self-balancing in response to position data from its respective sensor.	¶¶71, 72	col. 4:13-20

• Identified Points of Contention:
  • Scope Question: The phrase "independently rotatable along an axis passing through a first wheel and a second wheel" presents a significant claim construction question. Does this require a single, physical axis of rotation that literally passes through the center of both wheels, or can it be interpreted more functionally to describe rotation about a line co-linear with the wheel axles? The patent's own figures appear to show a pivot mechanism located between the wheels, not passing through them, which may create a focal point for dispute over the claim's scope and potential validity.
  • Technical Question: The complaint alleges the existence and function of "control logic" but provides no detail on the specific software or hardware implementation in the Accused Products. A central evidentiary question will be whether the defendant's control system operates in the manner required by the claim—specifically, driving each wheel toward self-balancing in direct response to its own independent sensor.

V. Key Claim Terms for Construction

The Term: "rotatably coupled" (from RE608 Patent, Claim 10)

• Context and Importance: The nature of the connection between the two foot platforms is fundamental to the vehicle's operation. The construction of this term will determine whether the specific pivot or flexing mechanisms used in the Accused Products fall within the scope of the claim.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification also uses the more general term "movably coupled" to describe the connection, which could suggest that various types of relative movement beyond pure rotation are contemplated (’278 Patent, col. 3:36).
  • Evidence for a Narrower Interpretation: The specification discloses a specific embodiment with a "shaft 170 about which they may rotate (or pivot with respect to one another)," and Figure 2 illustrates this mechanical pivot, which could support an interpretation limited to a direct rotational or pivotal joint (’278 Patent, col. 3:37-38).

The Term: "along an axis passing through a first wheel and a second wheel" (from RE964 Patent, Claim 1)

• Context and Importance: This phrase defines the geometry of the independent rotation and is a critical limitation distinguishing this claim. Its construction will likely be a dispositive issue for infringement of the RE964 patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party may argue for a functional interpretation, suggesting the phrase describes the general axis about which the vehicle's turning moments occur (i.e., a line connecting the wheel axles), rather than requiring a single, physical structure.
  • Evidence for a Narrower Interpretation: The plain geometric meaning suggests a physical axis of rotation must literally intersect both wheels. The patent's primary embodiment in Figure 2, which shows a pivot shaft (170) located centrally between the wheels, could be used to argue against a literal interpretation or, conversely, to argue that the claim does not read on the disclosed embodiment, raising questions of validity or enablement.

VI. Other Allegations

Indirect Infringement

• The complaint alleges that Defendant infringes "through its agents, employees, servants, distributors, and retailers" (Compl. ¶¶26, 62, 96). The prayer for relief also seeks to enjoin Defendant from "assisting or inducing, directly or indirectly, others to engage" in infringing activities, though no formal count for indirect infringement is pleaded (Compl. p. 16).

Willful Infringement

• The complaint alleges that Defendant's infringement was and continues to be willful and deliberate (Compl. ¶23). This allegation is primarily based on purported actual notice of the parent '278 patent stemming from Defendant's involvement in separate litigation, the "Chic Litigation," as early as June 27, 2019 (Compl. ¶¶53, 86, 109).

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

• A central issue will be one of claim scope and construction: Can the term "an axis passing through a first wheel and a second wheel," as claimed in the RE964 patent, be construed to cover a device that pivots on a central mechanism located between the wheels, as depicted in the patent’s own figures and as is common in the industry? The resolution of this question could be dispositive for a significant portion of the case.
• A key factual question will be the effect of prior litigation on willfulness: Did the defendant’s alleged involvement in the "Chic Litigation" provide legally sufficient notice of infringement to support a finding of willfulness as to the asserted patents, particularly for the RE608 patent, which was issued more than four years after the alleged notice date?
• For the design patent, the case will turn on a question of visual similarity: Would an ordinary observer, giving the degree of attention a purchaser usually gives, find the overall visual appearance of the accused Gotrax hoverboards to be substantially the same as the specific "hourglass" design claimed in the D906 patent?