IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

ABC CORPORATION I, 

ABC CORPORATION II, 

Plaintiffs,

v. 

THE PARTNERSHIPS AND 

UNINCORPORATED ASSOCIATIONS 

IDENTIFIED ON SCHEDULE A,

Defendants.

Case No. 1:20-cv-4806

Judge Thomas M. Durkin

Magistrate Judge Jeffrey Cole

MEMORANDUM IN OPPOSITION TO DEFENDANTS’ MOTION FOR

SUMMARY JUDGMENT OF NON-INFRINGEMENT

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TABLE OF CONTENTS

PRELIMINARY STATEMENT .................................................................................................... 1

RELEVANT FACTS AND PROCEDURAL HISTORY .............................................................. 2

ACCUSED PRODUCTS................................................................................................................ 4

LEGAL STANDARD..................................................................................................................... 7

ARGUMENT.................................................................................................................................. 8

I. When Viewed Together Among the Prior Art Designs, A Reasonable Juror

Could Find that the Ordinary Observer Would View the Patents-in-Suit and 

the Accused Products as Substantially Similar......................................................................... 8

A. Accused Products, Gyroor A, B, C, D, and E, Are Closer in 

Overall Impression to the Claimed Designs of the D’723 and D’256 Patents 

Than to the Closest Prior Art..................................................................................... 11

B. Accused Products, Gyroor A, B, C, D, and E, Are Closer in 

Overall Impression to the Claimed Design of the D’195 Patent 

Than to the Closest Prior Art..................................................................................... 12

C. Accused Products, Gyroor B and D, Are Closer in 

Overall Impression to the Claimed Design of the D’112 Patent

Than to the Closest Prior Art..................................................................................... 13

II. Small Visual Details Would Not Affect the Ordinary Observer’s Overall Impression

of the Designs. ....................................................................................................................... 14

III. The Non-Infringement Analyses of Defendants’ and Their Experts Are Flawed. ................. 17

IV. Conflicting Expert Opinions Preclude Summary Judgment................................................... 21

V. Defendants’ Motion Fails to Comply with Local Rule 56.1................................................... 23

CONCLUSION............................................................................................................................. 24

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ii

TABLE OF AUTHORITIES

Page(s)

Cases

ABC Corp. I v. P’ship & Unincorporated Associations Identified on Schedule “A”,

51 F.4th 1365 (Fed. Cir. 2022) ..............................................................................................1, 4

ABC Corp. I v. P’ship & Unincorporated Associations Identified on Schedule “A”,

52 F.4th 934 (Fed. Cir. 2022) ................................................................................................4, 9

Amini Innovation Corp. v. Anthony California, Inc.,

439 F.3d 1365 (Fed. Cir. 2006)................................................................................................18

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 (1986)...............................................................................................................7, 8

Apple, Inc. v. Samsung Elecs. Co.,

No. 11-CV011846-LHK, 2012 WL 3071477 (N.D. Cal. July 27, 2012) ................................15

Bio-Tech. Gen. Corp. v. Genentech, Inc.,

80 F.3d 1553 (Fed. Cir. 1996)..................................................................................................20

Braun Inc. v. Dynamics Corporation of America,

975 F.2d 815 (Fed. Cir. 1992)....................................................................................................7

Celotex Corp. v. Catrett,

477 U.S. 317 (1986)...................................................................................................................7

Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc.,

942 F.3d 1119 (Fed. Cir. 2019)............................................................................................8, 14

Contessa Food Prods., Inc. v. Conagra, Inc.,

282 F.3d 1370 (Fed. Cir. 2002)................................................................................................15

Crocs, Inc. v. Int’l Trade Comm’n,

598 F.3d 1294 (Fed. Cir. 2010)......................................................................................9, 18, 20

Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp.,

635 F.3d 1373 (Fed. Cir. 2011)................................................................................................23

Dioptics Med. Prod., Inc. v. IdeaVillage Prod. Corp.,

No. CV 08-03538 PVT, 2010 WL 4393876 (N.D. Cal. Oct. 29, 2010) ..................................14

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008).......................................................................................... passim

Ethicon Endo-Surgery v. Covidien, Inc.,

796 F.3d 1312 (Fed. Cir. 2015)................................................................................................19

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iii

Gorham Mfg. Co. v. White,

81 U.S. 511 (1871).........................................................................................................7, 14, 15

Int’l Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233 (Fed. Cir. 2009)................................................................................................18

Kreg Therapeutics, Inc. v. VitalGo, Inc.,

No. 11-CV-6771, 2014 WL 1227311 (N.D. Ill. Mar. 25, 2014)..............................................23

Majors v. Gen. Elec. Co.,

714 F.3d 527 (7th Cir. 2013) .....................................................................................................7

Metro. Life Ins. Co. v. Bancorp Servs.,

L.L.C., 527 F.3d 1330 (Fed. Cir. 2008)...................................................................................21

Rothy’s, Inc. v. Birdies, Inc.,

No. 21-CV-02438-VC, 2022 WL 1448160 (N.D. Cal. May 9, 2022).....................................17

Sitrick v. Dreamworks, LLC,

516 F.3d 993 (Fed. Cir. 2008)..................................................................................................22

Talbert v. City of Chicago,

236 F.R.D. 415 (N.D. Ill. 2006).................................................................................................9

Weber-Stephen Prod. LLC v. Sears Holding Corp.,

No. 13 C 01686, 2015 WL 9304343 (N.D. Ill. Dec. 22, 2015) ...................................14, 16, 17

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Plaintiffs Hangzhou Chic Intelligent Technology Co., Ltd. (“Chic”) and Unicorn Global, 

Inc. (“Unicorn”, and collectively with Chic, “Plaintiffs”) hereby submit this opposition to 

Defendants’ Gyroor-US, Gyroor, Urbanmax, Fengchi-US, HGSM, Gaodeshang-US, and 

Gyroshoes (collectively, “Defendants”)1 Motion for Summary Judgment of Non-Infringement

(Dkt. 628, “Motion”). 

PRELIMINARY STATEMENT

Defendants’ meandering Motion—which spans more than one hundred pages of briefing 

and supporting materials—ignores that the issues of infringement and non-infringement in this 

case are indisputably questions for a jury, and are not resolvable at the summary judgment stage. 

Instead, the Motion is yet another example of Defendants’ improper attempt to prematurely 

address factual matters in the context of summary judgment. This Court previously rejected 

Defendants’ assertion that they did not infringe the Patents-in-Suit2⸻on the ground that they were

practicing a, later-filed, third-party patent (U.S. Patent No. D808,857, the “D’857 Patent) (Dkt. 

334)⸻in October 2021. (See Dkt. 443 at 1–2.) This argument, and Defendants’ other non1 The Motion was made on behalf of Defendant Gyroor-US and alleged “Third Party Respondents” 

Gyroor, Urbanmax, Fengchi-US, HGSM, Gaodeshang-US, and Gyroshoes. Despite Defendants’ 

arguments to the contrary (see Dkt. 611 at 1, 6, 13), these interrelated parties remain defendants in 

this case. The Federal Circuit’s decision vacating the order that granted Plaintiff’s motion to amend 

Schedule A (Dkt. 227) extended only to the application of prior preliminary injunctions entered 

by this Court to the parties. See ABC Corp. I v. P’ship & Unincorporated Associations Identified 

on Schedule “A”, 51 F.4th 1365, 1377 (Fed. Cir. 2022) (Dkt. 590) (“For the foregoing reasons, we 

vacate for lack of Rule 65(a) notice the preliminary injunction entered by the district court on 

November 24, 2020, and the order entered by the district court on May 24, 2021, that granted 

ABC’s motion to amend Schedule A insofar as that order extended the 2020 Preliminary 

Injunction to new defendants.”).

2 The “Patents-in-Suit” are U.S. Design Patent No. D737,723 (“the D’723 Patent”); U.S. Design 

Patent No. D738,256 (“the D’256 Patent”); U.S. Design Patent No. D784,195 (“the D’195 

Patent”); and U.S. Design Patent No. D785,112 (“the D’112 Patent”). (Plaintiffs’ Response to 

Statement of Material Fact (“RSMF”), ¶¶ 16–21.)

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infringement arguments, remain inappropriate for summary disposition. (See Dkt. 629, “Mem.” at 

1–2, 15–19, 25–26.)

Defendants simply cannot obscure through their bloated briefing that numerous genuine 

issues of material fact exist, including:

• what effect the features disclosed (and not disclosed) in the relevant prior art have 

on the overall visual impression of the ordinary observer;

• whether each patent is infringed by each product; and

• whether the “slight” differences identified by Defendants, visible from only certain 

viewpoints, would affect the overall impression of the ordinary observer.

The existence of these disputed facts—further evidenced by the existence of conflicting 

expert reports, including conflicting opinions by Defendants’ own experts—preclude summary 

consideration of these matters. The small visual details and trivial differences that Defendants rely 

on for their non-infringement positions simply do not preclude a reasonable juror from finding that 

the claimed designs and the Accused Products are substantially similar such that an ordinary 

observer would be deceived into believing that the accused products are the same as the patented 

designs. Indeed, following Defendants’ logic, design patents would be rendered valueless and 

could be infringed with impunity through insignificant product changes (as in this case).

Accordingly, the factual nature of the infringement inquiry demonstrates that the Motion 

should be denied. 

RELEVANT FACTS AND PROCEDURAL HISTORY

Plaintiff Chic is the assignee and owner of the Patents-in-Suit. (RSMF ¶ 47; Dkt. 101 at ¶ 

6.) Plaintiff Unicorn is the exclusive distributor of Chic hoverboard products in the United States. 

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(RSMF ¶ 48; Dkt. 101, ¶ 8.) There are four asserted patents, the Patents-in-Suit. (RSMF ¶¶ 16–

21.)

Defendants are inter-related Chinese companies and individuals that operate online ecommerce stores in the business of selling hoverboards. (See Dkt. 309 at ¶ 9; Dkt. 368, 

Counterclaims, ¶¶ 4–5; Dkt. 463, Counterclaims, ¶¶ 4–5; Dkt. 464, Counterclaims, ¶¶ 4–55; Dkt. 

465, Counterclaims, ¶¶ 4–5.) The Accused Products are hoverboards sold, at least, on Amazon.

3

(See RSMF ¶¶ 22–26.)

Plaintiffs originally filed their complaint in August 2020 alleging infringement of the 

Patents-in-Suit against several online sellers of hoverboards. (RSMF ¶ 50; Dkt. 1, 4.) On 

November 20, 2020, the day after filing their Third Amended Complaint (RSMF ¶ 51; Dkt. 101),

Plaintiffs filed a motion for a preliminary injunction to enjoin the defendants from further sale of 

infringing hoverboards. (RSMF ¶¶ 52; Dkt. 105.) The preliminary injunction order was entered by 

this Court on November 24, 2020. (RSMF ¶¶ 53; Dkt. 113.) 

After identifying other storefronts that were associated with the defendants named in the

original Schedule A and to “ensure that any entity against whom relief has been or foreseeably 

will be sought is listed as a defendant in the schedules of defendants,” Plaintiffs moved to amend 

the list of defendants identified in Schedule A to add, inter alia, Gyroor, Urbanmax. Fengchi-US, 

HGSM, Gaodeshang-US and Gyroshoes as defendants. (RSMF ¶¶ 54–56; Dkt. 227, 253.) In an 

effort to enjoin the additional defendants, Plaintiffs filed, and this Court subsequently entered, a 

second motion for a new preliminary injunction, which the Court entered on October 13, 2021

3 As discussed in Section III, infra, Plaintiffs’ assertions of infringement pertain to specific accused 

product designs, not product listing pages or specific Amazon Standard Identification Numbers 

(“ASINs”).

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(collectively with the November 24, 2020 preliminary injunction order, the “Prior PIs”). (RSMF ¶

59, Dkt. 384, 456.) 

Select defendants appealed the Prior PIs to the Federal Circuit. (RSMF ¶¶ 57–58.) On 

October 28, 2022, the Federal Circuit, in two separate opinions, vacated the Prior PIs and remanded 

to this Court for further proceedings. (RSMF ¶¶ 60; ABC Corp. I v. P’ship & Unincorporated 

Associations Identified on Schedule “A”, 51 F.4th 1365 (Fed. Cir. 2022); ABC Corp. I v. P’ship 

& Unincorporated Associations Identified on Schedule “A”, 52 F.4th 934 (Fed. Cir. 2022).) 

On November 9, 2022, Plaintiffs filed a renewed motion for a preliminary injunction 

against the Defendants. (RSMF ¶¶ 61; Dkt. 592.) On December 2, 2022, the Court denied 

Plaintiffs’ motion on the ground that Defendants’ defense had “substantial merit.” (RSMF ¶¶ 61; 

Dkt. 619, 626.) 

On July 19, 2021, Defendant Gyroor-US filed its first motion for summary judgment 

(RSMF ¶¶ 62; Dkt. 334) based on only three facts (RSMF ¶¶ 62; Dkt. 346) and asserting that it 

did not infringe the Patents-in-Suit based on its authorization to use a third-party design patent—

Design Patent No. D808,857 (“the D’857 Patent”). (RSMF ¶ 62; Dkt. 334.) The Court 

subsequently denied the motion for summary judgment, finding that the “existence of one’s own 

patent does not constitute a defense to infringement of someone else’s patent.” (Dkt. 443 (quoting 

Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996)); see also RSMF ¶ 

63.)

ACCUSED PRODUCTS

Defendants distribute multiple products accused of infringing the Patents-in-Suit, including 

“Gyroor A” (i.e., Gyroor T581 series and variants), “Gyroor B” (i.e., Gyroor G2 series and 

variants), “Gyroor C” (i.e., Gyroor T580 series and variants), “Gyroor D” (i.e., Gyroor G5 series 

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and variants), and “Gyroor E” (i.e., Gyroor G11 series and variants)4(collectively, the “Accused 

Products”). (See Mem. at 10–15.) 

Accused Products

“Gyroor A”

T581 series and 

variants

“Gyroor B”

G2 series and 

variants

4 Defendants continue to question whether Gyroor E (i.e., G11 model and variants) remains an 

accused product in this case. (See Mem. at 14–15; see also RSMF ¶ 27.) As addressed in Plaintiff’s 

response to Defendants’ motion for clarification (see Dkt. 627), the G11 Model was identified as 

an accused product throughout this proceeding, including in Plaintiffs’ papers in support of the 

Prior PI entered by this Court in 2021 (see Dkt. 383 ¶ 5; see also e.g., Dkt. 383-3 at 44). The

inclusion of the G11 Model in the 2021 PI, or any other preliminary injunction papers, has no 

bearing on whether the G11 Model is an accused product in this case. Defendants’ motion (Dkt. 

625) remains pending as of the date of filing of this Opposition. 

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Accused Products

“Gyroor C”

T580 series and 

variants

“Gyroor D”

G5 series and 

variants

“Gyroor E”

G11 series and 

variants

Since the accused products are primarily sold on Amazon, the Parties have sometimes 

referenced them by their Amazon catalog number, called an “ASIN.” The accused products at 

issue in the present Motion are identified by Defendants with respect to the ASIN of the listing 

under which it is sold: ASIN B07PHFP8GB (“Gyroor A” or “Accused Product A”); ASIN

B08R23QQT8 (“Gyroor B” or “Accused Product B”); ASIN B08NT551P4 (“Gyroor D” or 

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“Accused Product D”); and ASIN B08RYMXRWM (“Gyroor E” or “Accused Product E”).

(Mem. at 10–15; see also RSMF ¶¶ 22–26.) To be clear, Plaintiffs’ assertions of infringement 

pertain to specific accused product designs—not product listing pages, which can be changed and 

manipulated by Defendants and their affiliates. 

LEGAL STANDARD

Summary judgment is proper where “the movant shows that there is no genuine dispute as

to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.

56(a). The party seeking summary judgment bears the burden to demonstrate that there is “no 

genuine issue as to any material fact” and that it is entitled to judgment as a matter of law. Celotex 

Corp. v. Catrett, 477 U.S. 317, 322 (1986). 

Genuine issues of material fact exist where “the evidence is such that a reasonable jury 

could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 

248 (1986). The Court must draw all reasonable inferences from the facts in the light most 

favorable to the non-moving party. Id. at 247-49, 255; see also Majors v. Gen. Elec. Co., 714 F.3d 

527, 532-33 (7th Cir. 2013).

A design need not be found “identical” to infringe. Braun Inc. v. Dynamics Corporation of 

America, 975 F.2d 815, 820 (Fed. Cir. 1992). In comparing the claimed design and the accused 

product, infringement is found “[i]f, in the eye of an ordinary observer, giving such attention as 

a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to 

deceive such an observer, inducing him to purchase one supposing it to be the other.” Egyptian 

Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) 5; see also Gorham Mfg. Co. v. 

5 All internal quotations, modifications, and citations are omitted, and emphasis is added herein 

unless otherwise indicated.

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White, 81 U.S. 511, 528 (1871). Whether an element of the accused design would give an ordinary 

observer a different visual impression than the patented design is a question of fact to be resolved 

by a jury. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 

1131 (Fed. Cir. 2019).

ARGUMENT

Defendants cannot dispute that design patent infringement is a question of fact. Columbia 

Sportswear, 942 F.3d at 1129. If “the evidence is such that a reasonable jury could return a verdict 

for the nonmoving party” and find the Accused Products are substantially similar to the claimed 

designs of the Patents-in-Suit, then real fact issues remain and summary judgment should be 

denied. Anderson, 477 U.S. at 248.

I. When Viewed Together Among the Prior Art Designs, A Reasonable Juror Could 

Find that the Ordinary Observer Would View the Patents-in-Suit and the Accused 

Products as Substantially Similar.

Infringement is a question for the jury and cannot be resolved solely based on expert 

testimony as Defendants seek to do in this case. “When the differences between the claimed and 

accused design are viewed in light of the prior art, the attention of the hypothetical ordinary 

observer will be drawn to those aspects of the claimed design that differ from the prior art.” 

Egyptian Goddess, 543 F.3d at 676. While a hypothetical ordinary observer would attach more 

importance to small differences between the accused products and claimed designs in a field 

crowded with similar prior art designs, that is not the case here. See id. at 676. Instead, where the 

accused design “has copied a particular feature of the claimed design that departs conspicuously 

from the prior art, the accused design is naturally more likely to be regarded as deceptively similar 

to the claimed design, and thus infringing.” Id. at 677. 

Here, while some of the individual components of the Patents-in-Suit are represented in 

some of the prior art, none of the relevant prior art—including the “closest” (and only) piece of 

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prior art identified and considered by Defendants in the field of hoverboards, U.S. Patent No. 

D739,906 (“the D’906 Patent”)—creates the visual impression of an “hourglass” body in 

combination with “a relatively flat surface across the top of the main body, pronounced ‘footing’ 

areas, and open-arched fenders over the top of the wheel area” or styling “lines across the body”.

(Hatch Decl. ¶¶ 66, 68, 70.)6 Thus, while the attention of the ordinary observer may be drawn to 

the presence of these features that were not present in the prior art, little weight should be given to 

differences in the trivial styling details of each. In line with the purposes of design patent 

protection, the ordinary observer test was implemented to avoid the “risk of assigning exaggerated 

importance” to insignificant differences between the accused products and patented designs. See 

Egyptian Goddess, 543 F.3d at 677. Instead, the focus is on the overall appearance of the design. 

Contrary to Defendants’ argument, the fact that the D’906 Patent may also have an “hour 

glass peripheral shape” (Mem. at 26, 36, 45, 54, 64) and “wheel covers” (Mem. at 26, 36, 45, 54, 

64) does not show that there is no genuine issue as to whether the Accused Products are dissimilar 

to the Patents-in-Suit. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010)

(“Even if the claimed design simply combines old features in the prior art, it may still create an 

6 Plaintiffs submit, herewith, the Expert Declaration of Paul Hatch in support of their opposition 

to Defendants’ Motion (“Hatch Decl.”) and in direct response to the alleged technical 

insufficiencies identified by the Federal Circuit after the close of expert discovery. See ABC Corp. 

I v. P’ship & Unincorporated Associations Identified on Schedule “A”, 52 F.4th 934, 938 (Fed. 

Cir. 2022); see also Talbert v. City of Chicago, 236 F.R.D. 415, 422-425 (N.D. Ill. 2006) (holding 

the plaintiff’s untimely supplemental expert report may be filed where submission was made when 

“the plaintiff was made aware that ... the initial report was incomplete” and such submission did 

not surprise or prejudice defendant). In all events, the Hatch Declaration is substantially justified 

and harmless—it is not materially different and the conclusions do not depart from earlier reports. 

It is indisputable that the Hatch Declaration is narrowly tailored to elaborate and elucidate the prior 

opinions by including a patent-by-patent and product-by-product analysis demonstrating 

Plaintiffs’ Patents-in-Suit are clearly infringed by the three Accused Products. The conclusions 

remain the same—in the eyes of the hypothetical ordinary observer familiar with the prior art, the 

overall visual appearance of the Accused Products is substantially similar to that of the claimed 

designs of the Patents-in-Suit.

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overall appearance deceptively similar to the accused design. In that case, this court will uphold a 

finding of infringement.”). Unlike the Patents-in-Suit, the design of the D’906 Patent “gives a 

distinctly different impression, as it creates an impression of a very uncluttered, rounded, smooth 

body with no pronounced footing area and closed fender skirts.” (Hatch Decl. ¶¶ 89, 93, 101, 105, 

117, 121, 129, 133, 145, 149; see also Hatch Decl. ¶¶ 97, 109, 113, 125, 137, 141, 153.) Even 

Defendants’ expert, Jim Gandy, recognizes that the D’906 Patent does not include the prominent 

distinguishing features of the Patents-in-Suit and Accused Products, yet both Defendants and Mr. 

Gandy conveniently fail to take into account that the D’906 Patent is completely devoid of such

features in their non-infringement analyses. (See Deposition Transcript of Jim Gandy, “Gandy Tr.” 

at 109:22-24 (“Q: We do not see a foot pad on the 906 patent. A: That’s correct. That’s correct.”), 

118:24-119:6 (“Q: And as far as the wheel covers of the 906 patent, beyond being able to say that 

they cover a significant portion of the wheel and that they are round, is there any other features we 

can identify? A: No.”), 117:17-19 (“Q: And the 906 patent does not show any light bars; is that 

fair? A: That’s correct.”) (Ex. A

7

); cf. Transcript of Proceedings – Preliminary Injunction Hearing, 

December 2, 2022, “Hearing Tr.” at 62:25-63:7 (“I think it’s important to see that, you know, with 

our understanding of what existed at the time, the ‘723 and ‘256 patents provided something that 

was really quite different, quite radically different, and hadn’t existed before it. So in doing so, we 

see that the prior art is really quite far away from the patents at issue, and therefore, you would 

understand that it has a very broad scope.”), 75:15-24 (“Because of how far away the ‘906 is, the 

impacts of [the differences between the fenders and lighting elements] is relatively insignificant 

on the overall impression. They do --- they are part of the overall impression, and if we were 

comparing only A, B [sic], and E together, we would then be seeing a narrowing down on those 

7 The referenced exhibits are attached to the Declaration of Chandler E. Sturm submitted herewith.

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slight differences as being very important. However, of course, when comparing directly to the 

‘906, we see how insignificant small differences are in particular between the accused products 

and the patent.”) (Ex. B; Dkt. 620).)

Significantly, where the claimed designs of the Patents-in-Suit depart from the prior art, 

the Accused Products follow and stand out from the prior art in substantially the same way. This 

is not surprising because the Accused Products are mere knockoffs of Chic’s designs. Thus, a 

reasonable juror could find the designs of the Patents-in-Suit and the Accused Products, viewed 

together with the prior art, are substantially similar and therefore the Accused Products are

infringing. See Egyptian Goddess, 543 F.3d at 677.

A. Accused Products, Gyroor A, B, C, D, and E, Are Closer in Overall Impression 

to the Claimed Designs of the D’723 and D’256 Patents Than to the Closest 

Prior Art.

Both the D’723 and D’256 Patents and the Accused Products, Gyroor A, B, C, D, and E,

share the overall impression of “an integrated hourglass body with a relatively flat surface across 

the top of the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the 

wheel area.” (Hatch Decl. ¶¶ 89, 93, 101, 105, 117, 121, 129, 133, 145, 149.) More specifically, 

the relatively flat surface across the top of the main body such that the footpads and center section 

are largely on the same plane, the pronounced footing areas substantially covered by raised 

footpads with a pattern of grooves, and the fenders arching over a portion of the tire and leaving 

the outside surface of the wheel largely exposed, significantly contribute to the overall impression 

of the designs. (Hatch Decl. ¶¶ 89, 93, 101, 105, 117, 121, 129, 133, 145, 149.) The trivial 

differences of Gyroor A, B, C, D, and E in the pattern of grooves across the footpad (Mem. at 28, 

37–38, 47, 56, 65), the “slightly recessed” center section (Mem. at 26, 36, 45, 55, 64, 66), and the 

minor change in shape and coverage of the fenders (Mem. at 32, 41–42, 51, 60, 70) are insignificant

to the overall impression of the designs, particularly when considered in view of the D’906 Patent. 

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In contrast, the D’906 Patent is completely devoid of any type of footpad, has a center section that 

significantly curves and extends above the plane of the footing areas, and has fenders that cover 

the majority of the tire and wheel assembly, extending below the midpoint of the wheel. (Hatch 

Decl. ¶¶ 89, 93, 101, 105, 117, 121, 129, 133, 145, 149.) Thus, while the D’906 Patent also includes 

an hourglass body, the design as a whole gives a distinctly different impression. (Hatch Decl. ¶¶ 

89, 93, 101, 105, 117, 121, 129, 133, 145, 149.) Accordingly, Gyroor A, B, C, D, and E are closer 

in overall impression to the claimed designs of the D’723 and D’256 Patents than to the closest 

prior art and are substantially the same. (Hatch Decl. ¶¶ 90, 94, 102, 106, 118, 122, 130, 134, 146, 

150.)

B. Accused Products, Gyroor A, B, C, D, and E, Are Closer in Overall Impression 

to the Claimed Design of the D’195 Patent Than to the Closest Prior Art.

In a similar manner, the D’195 Patent and the Accused Products, Gyroor A, B, C, D, and 

E, share “an integrated hourglass body with many horizontal styling lines across the body and a 

relatively flat surface across the top of the main body, and open-arched fenders over the top of the 

wheel area.” (Hatch Decl. ¶¶ 97, 109, 125, 137, 153.) More specifically, the relatively flat surface 

across the top of the main body such that the footpads and center section are largely on the same 

plane, the horizontal styling lines across the body forming various surface details, and the fenders 

arching over a portion of the tire and leaving the outside surface of the wheel largely exposed, 

significantly contribute to the overall impression of the designs. (Hatch Decl. ¶¶ 97, 109, 125, 137, 

153.) The trivial differences of Gyroor A, B, C, D, and E in the “slightly recessed” center section 

(Mem. at 26, 36, 45, 55, 64, 66), various surface styling details (Mem. at 30, 40, 49, 58, 67), and 

the minor change in shape and coverage of the fenders (Mem. at 32, 41–42, 51, 60, 70) are 

insignificant in the overall impression of the designs, particularly when considered in view of the 

D’906 Patent. In contrast, the D’906 Patent has a center section that significantly curves and 

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extends above the plane of the footing areas, has a rounded, smooth body that is completely devoid 

of any type of lines, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. (Hatch Decl. ¶¶ 97, 109, 125, 137, 153.) Thus, while 

the D’906 Patent also includes an hourglass body, the design as a whole gives a distinctly different 

impression. (Hatch Decl. ¶¶ 97, 109, 125, 137, 153.) Accordingly, Gyroor A, B, C, D, and E are 

closer in overall impression to the claimed design of the D’195 Patent than to the closest prior art

and are substantially the same. (Hatch Decl. ¶¶ 98, 110, 126, 138, 154.)

C. Accused Products, Gyroor B and D, Are Closer in Overall Impression to the 

Claimed Design of the D’112 Patent Than to the Closest Prior Art.

Comparably, the D’112 Patent and the Accused Products, Gyroor B and D,8share “an 

integrated hourglass body with many angled styling lines across the body and a relatively flat 

surface across the top of the main body, and open-arched fenders over the top of the wheel area.” 

(Hatch Decl. ¶¶ 113, 141.) More specifically, the relatively flat surface across the top of the main 

body such that the footpads and center section are largely on the same plane, the horizontal styling 

lines across the body forming various surface details, and the fenders arching over a portion of the 

tire and leaving the outside surface of the wheel largely exposed, significantly contribute to the 

overall impression of the designs. (Hatch Decl. ¶¶ 113, 141.) The trivial differences of Gyroor B 

and D in the “slightly recessed” center section (Mem. at 36, 55), various surface styling details

(Mem. at 40, 58), and the minor change in shape and coverage of the fenders (Mem. at 41–42, 60)

are insignificant in the overall impression of the designs, particularly when considered in view of 

the D’906 Patent. In contrast, the D’906 Patent has a center section that significantly curves and 

extends above the plane of the footing areas, has a rounded, smooth body that is completely devoid 

8 Plaintiffs have not made an assertion of infringement of the D’112 Patent by Gyroor A, Gyroor 

C, or Gyroor E.

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of any type of styling lines, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. (Hatch Decl. ¶¶ 113, 141.) Thus, while the D’906 

Patent also includes an hourglass body, the design as a whole gives a distinctly different 

impression. (Hatch Decl. ¶¶ 113, 141.) Accordingly, Gyroor B and D are closer in overall 

impression to the claimed design of the D’112 Patent than to the closest prior art and are 

substantially the same. (Hatch Decl. ¶¶ 114, 142.)

Viewed together among the prior art designs, a reasonable juror could find that an ordinary 

observer would view the designs of the Accused Products to be substantially similar to the designs 

claimed in the Patents-in-Suit. See Weber-Stephen Prod. LLC v. Sears Holding Corp., No. 13 C 

01686, 2015 WL 9304343, at *16 (N.D. Ill. Dec. 22, 2015). Accordingly, this is a factual matter 

that cannot be resolved at the summary judgment stage.

II. Small Visual Details Would Not Affect the Ordinary Observer’s Overall Impression 

of the Designs.

In determining whether designs are substantially similar in overall design, the fact-finder

puts itself into the place of an “ordinary observer.” See Egyptian Goddess, 543 F.3d at 667. The 

“ordinary observer” is not an expert, but is an observer “of ordinary acuteness, bringing to the 

examination of the article upon which the design has been placed that degree of observation which 

men of ordinary intelligence give.” Gorham, 81 U.S. at 528. Determining “[w]hich features would 

be significant to the ordinary observer is a question of fact.” Dioptics Med. Prod., Inc. v. 

IdeaVillage Prod. Corp., No. CV 08-03538 PVT, 2010 WL 4393876, at *2 (N.D. Cal. Oct. 29, 

2010) (citing Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241-42 (Fed. Cir. 

2009)); Columbia Sportswear, 942 F.3d at 1131 (whether an element of the accused design would 

give an ordinary observer a different visual impression than the patented design is a question of 

fact to be resolved by a jury).

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Here, Defendants argue that the “ordinary observer” is a potential purchaser who is familiar 

with hoverboards and the prior art designs (Mem. at 22), yet turn to the subtleties of various 

features identified by Mr. Gandy—only visible from isolated viewpoints—to distinguish the 

Accused Products from the designs of the Patents-in-Suit. Defendants first point to the top view of 

the designs to distinguish the “slightly raised convex contour” of the center portion of the Patentsin-Suit from the “substantially flat and slightly recessed” center portion of the Accused Products. 

(Mem. at 26, 36, 45, 55, 64, 66.) Defendants further attempt to distinguish the “decorative pattern 

of ribs” on the footpads.9(Mem. at 28, 38, 47, 56, 65.) Defendants next look to the bottom view to 

argue that the “smooth continuous concavely curved center portion” of the Patents-in-Suit is 

readily distinguishable from the “slight diagonally downwardly protruding arcuate edges” of the 

center portion of the Accused Products. (Mem. at 29, 38, 48, 69.) Similarly, Defendants rely on 

the front view to highlight the “horizontally elongated LED lights” and “outwardly protruding 

horizontal band that extends inwardly and merges with the concavely curved recessed central 

portion” of the Accused Products to further differentiate them from the claimed designs of the 

Patents-in-Suit. (Mem. at 30, 40, 49, 67.)

What matters, however, is not the view of an expert’s trained eye—“[s]uch a test would 

destroy all the protection which the act of Congress intended to give.” Gorham, 81 U.S. at 527 

(“There never could be piracy of a patented design, for human ingenuity has never yet produced a 

9 Further highlighting the weakness of Defendants’ Motion, the so-called “ribs” are unclaimed 

features in, at least, the D’195 Patent and the D’112 Patent. (See Hatch Decl. ¶¶ 57 (D’195 Patent),

61 (D’112 Patent)); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed. Cir. 

2002) (“[I]f features appearing in the figures are not desired to be claimed, the patentee is permitted 

to show the features in broken lines to exclude those features from the claimed design...”); Apple, 

Inc. v. Samsung Elecs. Co., No. 11-CV011846-LHK, 2012 WL 3071477, at *4 (N.D. Cal. July 27, 

2012) (“The patentee may indicate the claimed part of the design with the use of solid lines and 

may indicate the unclaimed, remaining article of manufacture with the use of broken lines.”).

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design, in all its details, exactly like another, so like, that an expert could not distinguish them.”).

Instead, the ordinary observer only “giv[es] such attention as a purchaser usually gives.” Egyptian 

Goddess, 543 F.3d at 670. (Hatch Decl. ¶¶ 38–40, 160, 199.) The “slight” differences Defendants 

rely upon to distinguish the designs of the Accused Products are beyond that level of attention and 

would not be significant in an ordinary observer’s comparison of the designs in view of the prior 

art. (See Hatch Decl. ¶ 200 (“In many areas Mr. Gandy describes subtleties in form that he, as an 

expert in the field of design was able to detect, but these small details seen only in isolated areas 

from certain angles are not salient to the eyes of an ordinary observer with ordinary acuteness.”).)

See Weber-Stephen Prod., 2015 WL 9304343, at *16 (small physical differences were not 

convincing, “largely because they require the observer to give more attention to detail than is 

appropriate”). 

“[B]ased on the context of purchase, and the untrained eye of the purchaser” the 

hypothetical ordinary observer, i.e., the principal purchaser of hoverboards (see Hatch Decl. ¶ 42), 

would, instead, “apply a relatively low level of attention to the aesthetics of the product. Thus, 

small visual details (e.g., such as the air vent pattern on the underside or the specific shape of the 

shallow grooves on the foot pads) would not affect their overall impression of the object as a 

whole.” (Hatch Decl. ¶¶ 160, 199 (emphasis in original).) See Weber-Stephen Prod., 2015 WL 

9304343, at *16 (denying motion for summary judgment for non-infringement where “a 

reasonable jury could find that the ordinary observer’s eye, giving the appropriate level of 

attention, might well miss those points” and instead focus on the “bigger ticket items”). Thus, 

while the designs of the Patents-in-Suit and the Accused Products are not exact duplicates, they 

“share very similar visual traits in their format, proportions and main visual features, and share the 

same overall impression to the ordinary observer in light of the prior art,” namely, “an integrated 

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hourglass body with a relatively flat surface across the top of the main body, pronounced ‘footing’ 

areas, and open-arched fenders over the top of the wheel area” (Hatch Decl. ¶¶ 79–80).

Accordingly, a reasonable juror could find that an ordinary observer, “giving such attention 

as a purchaser usually gives,” would pay little attention to the small differences identified by the 

Defendants, and instead conclude that the Accused Products share very similar visual traits—e.g., 

pronounced “footing” areas, and open-arched fenders over the top of the wheel area. Thus, there 

remains a triable issue as to whether the Accused Products’ overall impression is substantially 

similar to the Patents-in-Suit, such that an ordinary observer would be deceived into believing that 

the Accused Products are the same as the patented designs. See Rothy’s, Inc. v. Birdies, Inc., No. 

21-CV-02438-VC, 2022 WL 1448160 (N.D. Cal. May 9, 2022) (denying summary judgment of 

noninfringement noting that “[a]n ordinary observer carefully attuned to the vast prior art of loafers 

may well identify critical differences between the knitted Blackbird and Rothy’s patented designs,” 

“[b]ut this is summary judgment, and Birdies cannot win on infringement at this stage” as “a jury 

could conclude that the knitted Blackbird gives the same overall visual impression as the claimed 

design”); see also Weber-Stephen Prod., 2015 WL 9304343, at *16 (“Without downplaying these 

differences, and with due regard to the subjectivity of the analysis, the Court cannot say that these 

differences prevent a reasonable jury from finding substantial similarity.”).

III. The Non-Infringement Analyses of Defendants’ and Their Experts Are Flawed.

Defendants’ failure to consider the designs in their entirety is a consistent flaw throughout 

their Motion. Rather than evaluate the overall impression of the Accused Products, Defendants 

(and their two experts) deliberately choose trivial differences in specific views and narrowly focus 

on ornamental features considered in isolation to support the conclusion that the Accused Products

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Suit. (Mem. at 26–71; cf. Hatch Decl. ¶¶ 81–154.) If anything, Defendants’ Motion only 

emphasizes the weakness of its position.

In an effort to distract from the substantial similarities of the overall impression of the 

designs, Defendants highlight insignificant differences and compare the designs element-byelement. This is not the proper analysis. See Crocs, 598 F.3d at 1303–04 (explaining that the focus 

of the infringement analysis is the “overall impression of the claimed ornamental features” rather 

than “small differences in isolation.”); Amini Innovation Corp. v. Anthony California, Inc., 439 

F.3d 1365, 1372 (Fed. Cir. 2006) (reversing summary judgment for defendant where “the trial 

court mistakenly analyzed each element separately instead of analyzing the design as a whole from 

the perspective of an ordinary observer.”); Int’l Seaway Trading Corp. v. Walgreens Corp., 589 

F.3d 1233, 1243 (Fed. Cir. 2009) (“The mandated overall comparison is a comparison taking into 

account significant differences between the two designs, not minor or trivial differences that 

necessarily exist between any two designs that are not exact copies of one another.”). 

Nowhere do Defendants analyze how the trivial differences in each element would impact 

the ordinary observer’s perception of the overall visual impression other than their conclusory 

assertion that, in view of the “claimed designs of the Patents-in-Suit with the designs of the 

[Accused Products] and the design of the D’906 Patent, the overall shape and appearance and 

identified features of the claimed design of the Patents-in-Suit are closer to the design of the D’906 

Patent than the design of the [Accused Products].” (Mem. at 35, 45, 53–54, 63, 70; cf. Hatch Decl. 

¶¶ 89, 93, 101, 105, 117, 121, 129, 133, 145, 149 (explaining, for example, that the footpads and 

fenders of the Accused Products and Patents-in-Suit contribute to the “visual impression of an 

integrated hourglass body with a relatively flat surface across the top of the main body, pronounced 

‘footing’ areas, and open-arched fenders over the top of the wheel area,” whereas the lack of 

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footpads and closed fender skirts of the D’906 Patent contributes to the “impression of a very 

uncluttered, rounded, smooth body”); see also Hatch Decl. ¶¶ 97, 109, 113, 125, 137, 141, 153.) 

Ethicon Endo-Surgery v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015) (“An element-byelement comparison, untethered from application of the ordinary observer inquiry to the overall 

design, is procedural error.”). 

Although individual features may play a role in assessing the impact on the overall 

appearance, tellingly, neither Defendants nor their experts considered any prior art (other than the 

D’906 Patent) in determining whether these minor differences would be recognized as 

distinguishing the designs of the Accused Products. (See Hearing Tr. at 138:11-16 (“Q: Are you 

aware of any other prior art patents with raised foot pads? A: I haven’t looked at any. I mean, there 

may be, but I haven’t looked at any as far as pointing out whether this has been done maybe in 

patents or hoverboards that were patented prior to these two.”), 140:17-22 (“A: Other than what’s 

showed disclosed in the ‘906, I haven’t looked – I mean, as far as my – what I was retained for 

here, I have not done any searching to see whether there’s other prior art patents out there that may 

have [fenders]. I’m just looking at what was presented to me and the ‘906 prior art.”); see also 

Gandy Tr. at 107:14-23 (“Q: Was there any other prior art that you considered as potentially being 

close to these products? A: The only thing I referenced was the corresponding utility patent to the 

906 design patent.”).) Indeed, where the frame of reference consists of numerous similar prior art 

designs, those designs can highlight the distinctions between the claimed design and the accused 

design as viewed by the ordinary observer. Egyptian Goddess, 543 F.3d at 677. 

Defendants, however, do not (and cannot) point to “numerous similar prior art designs” to 

emphasize the significance of the differences they highlight throughout their Motion—because 

there are none. (See Hearing Tr. at 123:13–14 (“[T]he ‘906 prior art design patent was the first 

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hoverboard ever invented.”).) Defendants, instead, completely ignore such analysis and look solely 

to the D’906 Patent, which, as discussed above, is completely devoid of any features that 

Defendants rely on as distinguishing the Accused Products and Patents-in-Suit. Only upon a 

fulsome review of the prior art does it become apparent that the similarities between the Patentsin-Suit and the Accused Products stem from design features that were not well-established in the 

prior art. Unlike the Patents-in-Suit and the Accused Products, “none of the relevant prior art create 

the visual impression of an integrated hourglass body with a relatively flat surface across the top 

of the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area” or styling “lines across the body”. (Hatch Decl. ¶¶ 66, 68, 70.)

Moreover, Lance Rake, Defendants’ second expert, does little more than reference the 

D’906 Patent and, instead, draws irrelevant comparisons between the Accused Products and the 

corresponding later-filed D’857 Patent. (See, e.g., Dkt. 629-4, “Rake Decl.” ¶¶ 70, 76.) See BioTech. Gen. Corp., 80 F.3d at 1559 (“The existence of one’s own patent does not constitute a 

defense to infringement of someone else’s patent.”). In doing so, Mr. Rake entirely fails to explain 

how an ordinary observer would perceive the differences between the Accused Products and the 

Patents-in-Suit in view of the prior art, undermining his analysis as a whole.

10 Crocs, 598 F.3d at

1303 (the “ordinary observer” test requires that “an ordinary observer, familiar with the prior art 

designs, would be deceived into believing that the accused product is the same as the patented 

design.”). 

10 Moreover, Mr. Rake’s careless errors and mistakes in his declaration bear heavily on the 

reliability and credibility of his conclusions. For example, in his declaration (as with many 

previous ones), Mr. Rake proposes that he is “qualified to give an opinion about what would be 

understood by one skilled in the art of ceiling fans like those at issue here.” (Rake Decl. ¶ 23.)

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Accordingly, Defendants’ reliance on the methods of analysis of their experts in support of 

this Motion raises significant questions and should not be relied upon in summary consideration 

of non-infringement of the Patents-in-Suit. 

IV. Conflicting Expert Opinions Preclude Summary Judgment. 

Summary judgment is inappropriate where, as here, the parties have put forth conflicting 

expert testimony supporting their respective positions on infringement. See Metro. Life Ins. Co. v. 

Bancorp Servs., L.L.C., 527 F.3d 1330, 1338-39 (Fed. Cir. 2008) (holding the “conflict in [expert]

declarations created a genuine issue of material fact that made summary judgment inappropriate”). 

There is no doubt that the conclusions of Plaintiffs’ expert, Mr. Hatch, are in direct conflict 

with those of Defendants’ experts, Jim Gandy and Lance Rake. Perhaps most telling, however, is 

Defendants’ reliance on the conflicting reports of their own two experts and their respective 

methods of analysis. 

For example, Mr. Gandy centers his analysis on the comparison of the designs of the 

Accused Products and the Patents-in-Suit in view of the “closest prior art,” identified by 

Defendants as the D’906 Patent. (See Dkt. 629-3, “Gandy Decl.” ¶ 26.) Throughout his report, Mr. 

Gandy draws comparisons between the Patents-in-Suit and the D’906 Patent, and distinguishes the 

Accused Products from both. Mr. Rake, however, does not even appear to analyze the designs of 

the Accused Products and Patents-in-Suit in view of any prior art. Instead, Mr. Rake relies upon 

the similarities between the Accused Products and the D’857 Patent, a third-party, later-filed,

patent (that the design of the Accused Product Gyroor A is allegedly based upon). (Rake Decl. ¶¶ 

36–37.) In addition, Mr. Rake’s analysis applies the “Gestalt principles of visual perception,” 

specifically the so-called “Figure-Ground” principle (Rake Decl. ¶¶ 48–49), in concluding that “an 

ordinary observer familiar with the prior art would not find the Accused Products to be 

substantially similar to the claimed designs of the Patents-in-Suit” (Rake Decl. ¶ 77). Mr. Gandy, 

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however, with over thirty years of experience at the USPTO (Gandy Decl. ¶¶ 9–18), had never 

heard of this method of analysis until questioned by counsel for Plaintiff. (Gandy Tr. 71:11-21 

(“Q: And in performing the ordinary observer analysis, are there any scientific principles that you 

rely upon? A: No, no. Q: Are you familiar with the term “gestalt”? A: “Gestalt? Q: Yes, sir. I can 

spell that for you. A: No, that’s fine. I’m not familiar with that term.”).) In fact, Mr. Rake’s method 

finds no support in the law either, and is irreconcilable with the Federal Circuit’s “ordinary 

observer” test. Egyptian Goddess, 543 F.3d at 670 (the ordinary observer only “giv[es] such 

attention as a purchaser usually gives”).

Ignoring their own experts’ conflicting methods of analysis, and in an attempt to support 

their assertion that there is no genuine dispute as to any material fact, Defendants attack Hatch’s 

testimony. (Mem. at 35.) Contrary to Defendants’ assertions, Hatch puts forth far more than a 

“conclusory” opinion regarding the infringement of the Patents-in-Suit by each of the Accused 

Products. In forming his opinion, Hatch construes the claimed scope of the each of the Patents-inSuit (see Hatch Decl. ¶¶ 50–51, 53–54, 57–58, 61–62, 63–70), sets the level of acuity for the 

ordinary observer through which to view (see Hatch Decl. ¶¶ 37, 42, 160, 199), presents a fulsome 

analysis on the cited prior art of each of the Patents-in-Suit (see Hatch Decl. ¶¶ 63–70), and 

presents written descriptions of the overall impression of the design as a whole (see Hatch Decl.

¶¶ 89, 93, 97, 101, 105, 109, 113, 117, 121, 125, 129, 133, 137, 141, 145, 149, 153)—all of which 

Defendants’ experts fail to do (Hatch Decl. ¶¶ 159, 162, 217). Cf. Sitrick v. Dreamworks, LLC, 

516 F.3d 993, 1001 (Fed. Cir. 2008) (conflicting expert opinion did not raise triable issue of fact 

where it was “unsupported by any actual information” and presented by a person who admitted 

to not being skilled in the relevant art) (cited in Mem. at 35).

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Nevertheless, “[w]here there is a material dispute as to the credibility and weight that 

should be afforded to conflicting expert reports, summary judgment is usually inappropriate.” 

Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1384 

(Fed. Cir. 2011); see also Kreg Therapeutics, Inc. v. VitalGo, Inc., No. 11-CV-6771, 2014 WL 

1227311, at *7 (N.D. Ill. Mar. 25, 2014) (where parties relied almost exclusively on expert 

testimony, denying motion for summary judgment, as “district courts presiding over summary 

judgment proceedings may not weigh conflicting evidence or make credibility determinations”). 

Thus, the existence of three separate conflicting reports makes clear that genuine disputes 

of material fact exist regarding infringement of the Patents-in-Suit.

V. Defendants’ Motion Fails to Comply with Local Rule 56.1. 

As in Defendants’ initial summary judgment motion (Dkt. 110), Defendants’ memorandum 

again fails to “cite directly to specific paragraphs in the L.R. 56.1 statements or responses” required 

by L.R. 56.1(a)(1) and L.R. 56.1(g). Given Defendants’ repeated and continuing lack of adherence 

and clear disregard to L.R. 56.1, this Court should deny the motion under L.R. 56.1(a)(3).

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CONCLUSION

In viewing the entire design and its effect as a whole, and in light of the prior art, there 

remains triable issues as to whether an ordinary observer would find the Accused Product and the 

claimed designs of the Patents-in-Suit to be substantially similar. Accordingly, the Court should 

deny Defendants’ Motion. 

Dated: January 25, 2023 Respectfully submitted,

TARTER KRINSKY & DROGIN LLP

By: /s/ Richard J.L. Lomuscio

PALMERSHEIM & MATHEW LLP

Robert J. Palmersheim

Anand C. Mathew

Timothy G. Parilla

401 N. Franklin Street, Suite 4S 

Chicago, IL 60654

Tel.: (312) 319-1791

E-mail: acm@thepmlawfirm.com 

E-mail: rjp@thepmlawfirm.com

E-mail: tgp@thepmlawfirm.com

Richard J.L. Lomuscio

Mark Berkowitz

Chandler E. Sturm (admitted pro hac vice)

1350 Broadway

New York, NY 10018

Tel.: (212) 216-8000

Fax: (212) 216-8001

E-mail: rlomuscio@tarterkrinsky.com

E-mail: mberkowitz@tarterkrinsky.com

E-mail: csturm@tarterkrinsky.com

Attorneys for Plaintiffs

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CERTIFICATE OF SERVICE

I hereby certify that on January 25, 2022, I electronically filed the above document with 

the Clerk of Court using the CM/ECF system which will send electronic notification of such 

filing(s) to all registered counsel. 

By: /s/ Richard J.L. Lomuscio

Richard J.L. Lomuscio

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