DCT
3:24-cv-00011
Leisure Products Inc v. Trike Shop Of Minnesota Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Leisure Products, Inc., d/b/a California Sidecar (Virginia)
- Defendant: Trike Shop of Minnesota, Inc., d/b/a Roadsmith Trikes (Minnesota)
- Plaintiff’s Counsel: Woods Rogers Vandeventer Black PLC
- Case Identification: 3:24-cv-00011, W.D. Va., 02/28/2024
- Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claim, specifically Defendant's accusations of patent infringement and licensing demands directed at Plaintiff, occurred in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's patents related to motorcycle front fork design and trike conversion methods are invalid, following Defendant's accusations of infringement and demands for a license.
- Technical Context: The technology concerns specialized front fork assemblies used to convert standard two-wheel motorcycles into three-wheel "trikes," focusing on modifications to steering geometry to improve handling.
- Key Procedural History: The complaint states that this declaratory judgment action was precipitated by a December 7, 2023 letter from Defendant accusing Plaintiff of infringing the patents-in-suit, followed by a January 18, 2024 demand for a licensing agreement. Plaintiff alleges that the design patents-in-suit are invalid over the 2018 Honda Goldwing front fork design, which was publicly disclosed before the patents’ filing dates and allegedly not submitted to the USPTO during prosecution, raising the possibility of an unenforceability challenge based on inequitable conduct.
Case Timeline
| Date | Event |
|---|---|
| 2017-10-24 | Alleged first public disclosure of Honda Goldwing front fork (prior art) |
| 2017-10-31 | ’726 Patent Priority Date |
| 2018-10-30 | ’582 and ’916 Patents Priority Date |
| 2021-03-09 | ’582 Patent Issue Date |
| 2023-03-28 | ’916 Patent Issue Date |
| 2023-08-22 | ’726 Patent Issue Date |
| 2023-12-07 | Defendant sends infringement allegation letter to Plaintiff |
| 2024-01-18 | Defendant submits demanded licensing agreement to Plaintiff |
| 2024-02-23 | Plaintiff responds to Defendant, asserting patents are invalid |
| 2024-02-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,731,726 - "Method of Converting a Two-Wheel Motorcycle to a Three-Wheel Motorcycle with Reduced Trail Distance"
- Patent Identification: U.S. Patent No. 11,731,726, "Method of Converting a Two-Wheel Motorcycle to a Three-Wheel Motorcycle with Reduced Trail Distance," issued August 22, 2023.
The Invention Explained
- Problem Addressed: When a two-wheel motorcycle is converted into a three-wheel "trike," it loses the ability to lean into turns. The original steering geometry, designed for a combination of turning and leaning, can feel unresponsive or require excessive effort on a trike. ('726 Patent, col. 1:20-30).
- The Patented Solution: The patent discloses a method for improving steering on a trike by replacing the standard front fork. The new fork features an angled geometry that displaces the front wheel's axle forward relative to the motorcycle's steering axis. As illustrated in the patent's figures, this modification reduces the "trail distance" (the distance between the tire's ground contact point and the point where the steering axis intersects the ground), which in turn "increase[s] the responsiveness of the steering." ('726 Patent, col. 2:27-30; Fig. 4). A key aspect of the solution is achieving this reduction in trail while keeping the fork's steering axis substantially parallel to the original, preserving the motorcycle's "rake" and avoiding other negative handling characteristics. ('726 Patent, col. 3:45-50).
- Technical Importance: This method provides a way to adapt a motorcycle's handling for a trike configuration, compensating for the loss of lean-steering to make the vehicle more responsive. ('726 Patent, col. 2:62-65).
Key Claims at a Glance
- The complaint challenges "one or more claims" of the patent ('726 Patent, Compl. ¶11). Independent claims 1, 7, and 12 describe the core method.
- Independent Claim 1: A method comprising the steps of:
- providing a two-wheel motorcycle;
- replacing a single rear wheel with two spaced-apart drive wheels;
- removing the original front fork; and
- installing a new fork with a specific geometry (bottom portion and angled top portion) where the new fork's axis is "spaced from and substantially parallel to the steering axis" to create a "second trail distance that is less than the first trail distance."
- The complaint reserves the right to assert invalidity of additional claims (Compl. ¶40).
U.S. Patent No. D912,582 - "Front Fork"
- Patent Identification: U.S. Design Patent No. D912,582, "Front Fork," issued March 9, 2021.
The Invention Explained
- Problem Addressed: Design patents address the aesthetic, rather than functional, aspects of an invention. The goal is to create a "new, original and ornamental design for an article of manufacture." (35 U.S.C. § 171).
- The Patented Solution: The patent protects the specific visual appearance of a motorcycle front fork, as depicted in its seven figures (D'582 Patent, Figs. 1-7). The ornamental design is defined by the specific combination of curves, lines, angles, and overall shape of the fork assembly, including the junction between the upper steering tube and the lower fork legs.
- Technical Importance: The aesthetic design of components is a key differentiator in the custom and production motorcycle markets, influencing consumer choice and brand identity.
Key Claims at a Glance
- Design patents contain a single claim.
- The claim is for: "The ornamental design for a front fork, as shown and described." (D'582 Patent, CLAIM section).
U.S. Patent No. D981,916 - "Front Fork"
- Patent Identification: U.S. Design Patent No. D981,916, "Front Fork," issued March 28, 2023.
- Technology Synopsis: This patent protects the ornamental design of a motorcycle front fork. As a continuation of the application for the '582 patent, it claims a substantially identical ornamental design characterized by its specific shape, lines, and configuration, as shown in its figures (Compl. ¶18).
- Asserted Claims: The single claim for "The ornamental design for a front fork, as shown and described." (D'916 Patent, CLAIM section).
- Accused Features: The complaint states Defendant accused Plaintiff's "front suspension forks" of infringement (Compl. ¶11). Plaintiff's invalidity argument is that the claimed design is "effectively identical" to the prior art 2018 Honda Goldwing front fork design (Compl. ¶25).
III. The Accused Instrumentality
Product Identification
- The complaint identifies Plaintiff's products as "motorcycle trike conversion kit[s]" that incorporate a "front suspension mechanism" or "front suspension forks" (Compl. ¶8, ¶9, ¶11).
Functionality and Market Context
- The complaint alleges that the front suspension mechanism utilized by the Plaintiff is "typical in the industry" and "industry-standard," having been used "for decades before the effective filing dates of the asserted patents" (Compl. ¶9, ¶10). The product's function is to convert two-wheel motorcycles to three-wheel trikes (Compl. ¶8). Plaintiff asserts that it is "one of the largest motorcycle trike conversion manufacturers in the world" (Compl. ¶7). No further technical details of the Plaintiff's specific products are provided.
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of invalidity, it does not contain affirmative infringement allegations or claim charts. Instead, it makes invalidity allegations by mapping prior art to the patent claims. The following tables summarize these invalidity contentions.
No probative visual evidence provided in complaint.
'726 Patent Invalidity Allegations
| Claim Element (from Independent Claim 1) | Alleged Anticipatory/Obvious Prior Art Feature (per Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| installing a second fork...such that the front wheel has a second trail distance that is less than the first trail distance such that the steering...is more responsive. | Around 1958, Harley-Davidson allegedly offered an adjustable "rake" triple clamp for its Servicar trike that "allowed the operator to...alter the trail of the front suspension to change the handling and steering effort." | ¶33, ¶34 | col. 6:36-40 |
| the fork axis is spaced from and substantially parallel to the steering axis. | An individual of ordinary skill in the art of motorcycle mechanics would "plainly know" that a trike conversion requires keeping the steering axis the same while having the fork axis "spaced from and parallel to the steering axis." | ¶37 | col. 6:34-36 |
| replacing a single rear drive wheel...with two spaced apart drive wheels. | Harley-Davidson was allegedly manufacturing trikes based on two-wheel motorcycle frames as early as 1932, and Lehman Trikes manufactured similar conversion components starting around 2008. | ¶32, ¶36 | col. 6:20-24 |
'582 Patent Invalidity Allegations
| Claim Element (Single Design Claim) | Alleged Anticipatory/Obvious Prior Art Design (per Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a front fork, as shown and described. | The design of the "Honda Goldwing front fork," which was allegedly revealed to the public as early as October 2017 and is "effectively identical to the fork design claimed in the '582...patent." | ¶25 | Figs. 1-7 |
- Identified Points of Contention:
- Scope Questions (Design Patents): The primary question is whether the claimed ornamental design is patentably distinct from the prior art design of the 2018 Honda Goldwing front fork under the "ordinary observer" test.
- Technical Questions ('726 Patent): A factual question is whether the methods allegedly used by Harley-Davidson and Lehman Trikes decades prior to the patent's filing date actually perform all the steps of the claimed method, including reducing trail while maintaining a substantially parallel steering axis.
- Obviousness Questions ('726 Patent): The complaint raises the question of whether modifying steering geometry by reducing trail was an obvious solution to the well-known problem of poor handling on trike conversions for a person of ordinary skill in the art at the time of the invention (Compl. ¶31, ¶37).
V. Key Claim Terms for Construction
The Term: "substantially parallel" (from '726 Patent, Claim 1)
Context and Importance: This term defines the geometric relationship between the steering axis and the fork axis, which is central to the patent's claim of reducing trail without altering rake. The scope of "substantially" will be critical for determining both infringement and validity, as Plaintiff alleges this parallel relationship was known in the art (Compl. ¶37).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification repeatedly uses the term without providing a specific angular tolerance, suggesting it should be given its plain and ordinary meaning. For example, "the steering head attachment 106 and the axis 105 of the fork lower portion 102 are substantially parallel" ('726 Patent, col. 3:45-48).
- Evidence for a Narrower Interpretation: Defendant may argue that the term is implicitly defined by the specific embodiments shown in figures like Fig. 3 and Fig. 4, which depict a precise parallel alignment necessary to achieve the invention's stated benefits.
The Term: "trail distance" (from '726 Patent, Claim 1)
Context and Importance: The entire purpose of the claimed method is to reduce this value. The definition and method of measurement are foundational. Plaintiff alleges that the concept of altering trail distance to affect handling has been known and practiced for decades (Compl. ¶34, ¶39).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides a general definition: "a distance from where the front wheel touches the ground to where the steering axis intersects the ground" ('726 Patent, col. 1:26-29). This broad, conventional definition could make the claim more susceptible to prior art.
- Evidence for a Narrower Interpretation: A party could argue the term should be understood in the full context of the invention, where the reduction is achieved via a specific mechanism (the angled fork) that maintains the motorcycle's rake, distinguishing it from prior art methods that might have altered trail by changing rake. ('726 Patent, col. 4:8-19).
VI. Other Allegations
- Inequitable Conduct: The complaint makes a notable allegation regarding the two design patents ('582 and '916). It alleges that the prior art Honda Goldwing design was "plainly material to patentability" and that Defendant's "failure to disclose that design" to the USPTO during prosecution "would be considered inequitable conduct if Roadsmith intentionally withheld" the information. This suggests the patents may be "unenforceable due to inequitable conduct" (Compl. ¶28, ¶29).
- Indirect Infringement: Not applicable in this declaratory judgment complaint.
- Willful Infringement: Not applicable in this declaratory judgment complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the design patents will be one of validity and enforceability: Is the claimed ornamental design of the '582 and '916 patents patentably distinct from the prior art 2018 Honda Goldwing front fork? Further, did the patentee fail to disclose this allegedly material prior art to the USPTO with deceptive intent, rendering the patents unenforceable for inequitable conduct?
- A key question for the utility patent will be one of obviousness: Does the claimed method of reducing a motorcycle's trail distance by installing a specially angled fork represent a non-obvious invention, or was it a well-known and conventional solution for improving trike handling that would have been obvious to a skilled mechanic in light of prior practices?
- A threshold procedural question will be one of justiciable controversy: Do Defendant's pre-suit infringement accusations and licensing demands directed at Plaintiff in Virginia create a sufficient "immediate and real controversy" to give the court jurisdiction to hear this declaratory judgment action?