DCT

1:23-cv-00442

Chongqing Qiulong Technology Corp Ltd v. Tanli Power Technology Chongqing Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00442, W.D. Tex., 12/02/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are foreign corporations, making them subject to suit in any judicial district under the alien-venue rule, and because they have targeted business activities toward consumers in the United States, including Texas.
  • Core Dispute: Plaintiff alleges that Defendants’ Talaria-branded electric off-road motorcycles infringe its U.S. design patent for a light electric off-road motorcycle.
  • Technical Context: The lawsuit concerns the ornamental design of vehicles in the high-performance electric motorcycle market, where distinctive product appearance can be a significant factor in consumer choice and brand identity.
  • Key Procedural History: The complaint alleges that Defendants were founded by former employees of the Plaintiff who had knowledge of the proprietary motorcycle design before its associated patent was issued. The patent-in-suit, U.S. Design Patent No. D854,456, was the subject of an Ex Parte Reexamination, which concluded with a certificate issued on April 18, 2024, confirming the patentability of the single claim. This confirmation may narrow the grounds on which Defendants can challenge the patent's validity.

Case Timeline

Date Event
2017-03-16 '456 Patent Priority Date
2017-06-16 '456 Patent Application Filed
2017-XX-XX Defendants' founders join Plaintiff Surron
2018-XX-XX Plaintiff launches its "Light Bee" motorcycle model
2019-XX-XX Plaintiff terminates employment of Defendants' founders
2019-07-23 '456 Patent Issued
2022-XX-XX Plaintiff becomes aware of Accused Products
2023-03-XX Plaintiff begins marking its products with the '456 Patent
2023-10-05 Reexamination of '456 Patent Requested
2024-04-18 Reexamination Certificate for '456 Patent Issued
2024-12-02 First Amended Complaint Filed

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

U.S. Design Patent No. D854,456 - "Light electric off-road motorcycle"

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The objective is to create a novel and non-obvious visual identity for a product to distinguish it in the marketplace.
  • The Patented Solution: The patent claims the specific ornamental design for a light electric off-road motorcycle as depicted in its figures (D854,456 Patent, FIG. 1-10). The design is characterized by a distinctive, angular main frame that integrates a large, rectangular battery and motor housing as a central structural and visual element. Other key features of the claimed design include a slim, upward-sloping seat that flows into a minimal rear fender, and the specific geometry of the rear swingarm and suspension linkage. The claim explicitly disclaims certain functional components like the wheels, handlebars, and front forks by rendering them in broken lines, focusing the protected design on the motorcycle's core body and frame (D854,456 Patent, Description).
  • Technical Importance: The complaint alleges that this "distinctive design has earned valuable and residual goodwill and reputation for Surron" (Compl. ¶15).

Key Claims at a Glance

  • The patent asserts a single claim: "The ornamental design for a light electric off-road motorcycle, as shown and described" (D854,456 Patent, Claim).
  • The core ornamental elements protected by this claim, as shown in the solid-line drawings, include:
    • The overall geometric configuration of the main frame.
    • The shape and integration of the central housing for the battery and motor.
    • The profile of the seat and its connection to the rear bodywork.
    • The visual appearance of the rear swingarm and shock absorber linkage.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as the "Talaria Sting Electric Bike – DNM," "Talaria Sting Electric Bike – Fastace Forks," "Talaria Sting Electric Bike – Factory Fork," and "Talaria Sting MX5 Pro," collectively referred to as the "Accused Products" (Compl. ¶23).

Functionality and Market Context

The Accused Products are electric dirt bikes that allegedly compete directly with Plaintiff’s Surron-branded motorcycles (Compl. ¶21). The complaint alleges that the Defendants were founded by former Surron sales managers who misappropriated Plaintiff's designs (Compl. ¶16-17, ¶30-31). The complaint provides a screenshot from a YouTube video review directly comparing the Plaintiff's "Sur Ron X" and the Defendants' "Talaria Sting" models, suggesting a perceived similarity in the market (Compl. p. 6). The infringement allegations center on the overall visual appearance of the Accused Products, which Plaintiff asserts is a "colorable imitation" of the patented design (Compl. ¶22).

IV. Analysis of Infringement Allegations

Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The complaint presents its infringement theory through side-by-side visual comparisons.

A prominent visual from the complaint shows a side-by-side comparison of a drawing from the '456 Patent and a photograph of an Accused Product, the "Talaria Sting Electric Bike" (Compl. p. 8).

'456 Patent Infringement Allegations

Patented Design Aspect (D854,456 Patent) Alleged Infringing Aspect in Accused Products Complaint Citation Patent Citation
The overall ornamental design for a light electric off-road motorcycle, as shown in solid lines. The Accused Products are alleged to embody a design that is "substantially the same" as the patented design, such that an ordinary observer would be deceived. ¶27 FIG. 1-10
An angular main frame structure with a distinctive profile and integrated central component housing. The Talaria Sting models feature an angular main frame with a large, central battery and motor housing that allegedly mimics the patented design's overall shape and visual impact. ¶26 (Claim Chart) FIG. 1, 7
A slender, upward-sloping seat that transitions into a minimalistic rear fender. The accused Talaria motorcycles incorporate a similarly slender, sloped seat and minimal rear fender, allegedly creating the same visual impression as the patented design. ¶26 (Claim Chart) FIG. 2, 9
The specific ornamental appearance of the rear swingarm and its connection points to the frame and suspension. The complaint's visual comparisons suggest that the rear swingarm and suspension linkage of the Accused Products are visually similar in shape and configuration to those shown in the patent drawings. ¶26 (Claim Chart) FIG. 1, 9

Identified Points of Contention

  • Scope Questions: The central question for the court will be whether the overall visual appearance of the Accused Products is "substantially the same" as the design claimed in the '456 Patent. The infringement analysis will focus on the design as a whole and not on minor differences. A point of contention may be whether differences in branding, color schemes, or minor components are sufficient to differentiate the designs in the mind of an ordinary observer.
  • Technical Questions: The dispute does not raise traditional technical questions but rather questions of design perception. The court will need to determine what an "ordinary observer" in the electric motorcycle market would perceive as the key visual identifiers of the design. The question is whether the alleged similarities in the core frame and body are what create the overall impression, or if differences in other components are significant enough to avoid deception.

V. Key Claim Terms for Construction

In design patent cases, there are typically no claim terms to construe in the traditional sense. The "claim" is the visual design itself, as depicted in the drawings. The analysis focuses on the scope of the claimed design.

  • The "Term": The overall "ornamental design" for the motorcycle.
  • Context and Importance: The scope of the design patent is critical. The analysis must separate the claimed ornamental features (shown in solid lines) from the unclaimed functional elements and environmental structure (shown in broken lines). Practitioners may focus on this distinction because the infringement test compares the accused product only to the legally protected ornamental aspects of the design, not the entire article of manufacture.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Plaintiff may argue that the claim covers the overall visual impression created by the combination of the claimed elements. The patent's title ("Light electric off-road motorcycle") and the single, holistic claim for the "ornamental design... as shown and described" could support an interpretation where the overall gestalt of the design is paramount, and minor deviations do not escape infringement (D854,456 Patent, Title, Claim).
    • Evidence for a Narrower Interpretation: Defendants may argue that the design is limited to the exact shapes and proportions shown in the drawings. The patent's description explicitly states that "The broken lines in the drawings illustrate portions of the light electric off-road motorcycle that form no part of the claimed design" (D854,456 Patent, Description). This language narrows the protected design to the specific frame, body, and rear swingarm assembly shown in solid lines, potentially allowing Defendants to highlight any differences within that specific scope.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Defendants induce infringement by selling the Accused Products to importers, distributors, and dealers with the knowledge and intent that they will be resold to end-users in the U.S. (Compl. ¶39). This allegation is supported by screenshots of Defendants’ website and user manual, which allegedly "advertise and promote the infringing design" (Compl. ¶40, p. 12-13).
  • Willful Infringement: The willfulness claim is based on allegations of both pre- and post-suit knowledge. The complaint alleges that Defendants' founders were former Surron employees who "worked at Surron when the '456 Design Patent was filed," knew the patent covered Plaintiff's motorcycles, and "intentionally misappropriated the design" (Compl. ¶29-31). This alleges deliberate copying from the outset.

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

  1. A central issue will be one of visual deception: Applying the ordinary observer test, are the alleged similarities in the core frame, battery housing, and seat configuration between the patented design and the accused Talaria motorcycles so significant that they create a substantially similar overall visual impression, sufficient to deceive a consumer despite any minor differences or branding?
  2. A key factual question will be one of intent and copying: Can the Plaintiff prove its allegations that Defendants, founded by former employees with direct knowledge of Plaintiff's proprietary design, deliberately copied the patented design? An affirmative finding would strongly support the claim for willful infringement.
  3. The case may also turn on the scope of the patent's protection: Although the patent’s validity was confirmed in reexamination, the court must still determine the precise scope of the ornamental design in view of the prior art. The degree to which the design is deemed novel and non-obvious will influence how broadly its protections are applied against a similar, but not identical, accused product.