HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

1

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION

Hangzhou Chic Intelligent Technology Co. 

and Unicorn Global Inc.,

Plaintiffs

v.

THE PARTNERSHIPS AND 

UNINCORPORATED ASSOCIATIONS 

IDENTIFIED ON SCHEDULE A,

Defendants.

Case No. :20-cv-04806

Judge Thomas M. Durkin

Magistrate Judge Jeffery Cole

EXPERT DECLARATION OF PAUL HATCH REGARDING

INFRINGEMENT OF U.S. PATENTS D737,723, D738,256, D784,195, and D785,112

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 1 of 27 PageID #:9563
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

2

CONTENTS

INTRODUCTION ....................................................................................................................... 2

A. Summary .............................................................................................................................. 3

B. Background and Qualifications............................................................................................ 3

C. Compensation and Prior Testimony .................................................................................... 4

D. Materials and Information Considered................................................................................ 4

E. Methodology Used in Preparing this Declaration ............................................................... 4

LEGAL STANDARDS .................................................................................................................. 5

A. The Limiting Purpose of a Design Patent............................................................................. 5

B. Legal Principles in Analysis of Design Patent Infringement................................................. 5

C. Claim Construction in Design Patents.................................................................................. 6

D. The Significance of Prior Art ................................................................................................ 7

E. Definition of the Ordinary Observer.................................................................................... 7

ANALYSIS OF THE PATENTS-IN-SUIT AND THE PRIOR ART .................................................. 8

A. The Patents-In-Suit............................................................................................................... 8

B. Examination of the ‘723 Patent........................................................................................... 8

C. Examination of the ‘256 Patent......................................................................................... 11

D. Examination of the ‘195 Patent......................................................................................... 13

E. Examination of the ‘112 Patent......................................................................................... 14

F. The Cited Prior Art Show The Patents-In-Suit Have A Broad Scope.................................. 16

OVERVIEW OF THE ACCUSED PRODUCTS.......................................................................... 19

THE ACCUSED PRODUCTS INFRINGE THE PATENTS-IN-SUIT................................................. 20

A. The Accused Products Infringe on the ‘723 Patent ........................................................... 20

B. The Accused Products Infringe on the ‘256 Patent ........................................................... 22

C. The Accused Products Infringe on the ‘195 Patent ........................................................... 23

D. Two of The Accused Products Infringe on the ‘112 Patent............................................... 25

CONCLUSION...................................................................................................................... 26

RESERVATION OF RIGHTS .................................................................................................. 27

INTRODUCTION

I have been retained by counsel as an independent expert witness to provide my opinion 

regarding the above litigation matter, and matters related to the U.S. Patents D737,723, 

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 2 of 27 PageID #:9564
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

3

D738,256, D784,195, and D785,112 (“the Patents-In-Suit”). (Dkt. 37-11). This declaration is in 

support of Plaintiffs Hangzhou Chic Intelligent Technology Co. and Unicorn Global Inc.’s 

(collectively “Hangzhou”) motion for a preliminary injunction.

Hangzhou requested that I opine on the similarities between the design claimed in the PatentsIn-Suit and the defendant’s four hoverboard products (collectively, the “Accused Products”).

I understand my task is to review materials and offer my opinion, perspective and insights 

regarding this subject. I hold the opinions expressed in this declaration, but as my study of the 

case continues, I may acquire additional information that leads to new insights relevant to 

these opinions. With that in mind, I reserve the right to supplement this declaration if and 

when such additional information becomes known to me. I may also provide supplemental and 

rebuttal declarations in response to arguments which may be proposed by the Defendant.

A. Summary

I have considered the appearance of the Claimed Designs and the Accused Products from the 

viewpoint of the ordinary observer who is familiar with the relevant prior art.

Having performed this analysis and evaluation, it is my opinion that the overall appearance of 

each of the Accused Products is not “plainly dissimilar” to one or more of the Claimed Designs

of the Patents-In-Issue, as I understand that term to be understood in Patent Law. 

I also conclude that an ordinary observer familiar with the prior art, giving such attention as a 

purchaser usually gives, would find the overall appearance of each Accused Product to be 

substantially the same as the overall appearance of one or more of the Claimed Designs in light 

of the prior art, inducing him or her to purchase each Accused Product supposing it to be the 

Claimed Design.

B. Background and Qualifications

I am the recently retired CEO of TEAMS Design USA, a global product design consultancy. I have 

over 25 years of product design and industrial design experience and have designed many 

mass-produced products, including consumer electronics, personal mobility equipment such as 

Segways, and electric bicycles. In my company, I was actively involved in all phases of the 

development process, including the user research, idea conceptualization, styling, visual brand 

language, development, engineering and overseeing the final production stages.

I reside at 718 S. Oakley Blvd, Chicago, Illinois. I hold a Bachelor of Arts degree with honors (BA 

(Hons)) in Design for Industry (Industrial Design) from the University of Northumbria at 

Newcastle, United Kingdom. While studying to obtain my honors degree in Industrial Design, I 

took courses covering subjects including technical drawing, computer aided drawing, product 

styling and brand language, ergonomics, product evaluation, usability testing, production 

techniques, prototyping, mechanical engineering, and production techniques. 

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 3 of 27 PageID #:9565
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

4

In the course of my work as a designer and managing teams of designers, I have gained an 

understanding of the training, knowledge, skills, and abilities of a person skilled in the art of 

product design and industrial design. Through this work, I have also gained an understanding of 

how a person who purchases a particular product perceives and appreciates the visual 

appearance and or functional merits of a product’s design, and I use this understanding to 

opine on how the particular purchaser or ordinary observer would answer questions raised in 

the examination of design patents, utility patents, trademarks, and trade dress claims.

I am the named inventor in over 45 design and utility patents. I have written papers and spoken 

at many universities across the U.S. on the subject of visual perception, where I share 

information from psychological and neurological studies into how humans perceive things such 

as physical products, what physical attributes we notice (if any), and how meaning is attached 

to what we see.

I was recently nominated into the prestigious IDSA Academy of Fellows. I have also been 

awarded many design awards, including the “Design of the Decade Award” from Business 

Week. In 2016 I was elected onto the board of IDSA as Director-at-Large. Further information 

on my professional experience is detailed in my curriculum vitae, which is set forth in Appendix 

A. I have previously provided expert testimony in many other patent-related matters, a 

detailed list of cases for which I have provided expert testimony is attached as Appendix B.

C. Compensation and Prior Testimony

I am being compensated at a rate of $450 per hour to provide analysis and testimony in this 

proceeding. My compensation is not contingent on the outcome of any matter or the specifics 

of my testimony. I have no financial interest in the outcome of this matter.

D. Materials and Information Considered

In forming my opinions, I have reviewed the claimed design of the Patents-In-Suit; their file 

history; the prior art cited on the face of the patent; and the Accused Products. The list of 

materials I reviewed in my analysis is included in Appendix C.

E. Methodology Used in Preparing this Declaration 

I examined the above-mentioned products, patents and supporting documents. I also examined 

samples of the Commercial Embodiments. I applied my extensive research and expertise in 

industrial design and visual perception in preparing this Declaration. 

My methodology used to prepare this declaration is presented as follows:

a. I will introduce the Patents-In-Suit, identify the scope of the Patents-In-Suit, and 

identify distinct ornamental features regarding the same. 

b. I will introduce the prior art cited on the face of the Patents-In-Suit.

c. I will introduce the Accused Products.

d. I will compare the similarities and differences between each of the claimed 

designs of the Patents-In-Suit and the Accused Products, and explain how an 

ordinary observer would perceive the Claimed Designs and Accused Products in 

light of the prior art.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 4 of 27 PageID #:9566
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

5

LEGAL STANDARDS

I am not a lawyer. Rather, I am an industrial designer and base my analysis on the legal 

guidelines provided to me as outlined below.

A. The Limiting Purpose of a Design Patent 

I understand that a U.S. patent does not grant the owner the right to use the invention, rather, 

the owner is granted the right, for a limited period of time, to prevent others from making, 

using, offering for sale, or selling the patented invention in the United States or importing the 

patented invention into the United States. In other words, the government grants the patent 

owner the right to limit other people’s use of the invention. To construe the scope of a design 

patent, I understand that one must also consider the prosecution history of the patent 

application. See Goodyear Tire, 162 F.3d at 1116 and Hatch §§ II.B. 

B. Legal Principles in Analysis of Design Patent Infringement

It is my understanding that “[w]hether a design patent is infringed is determined by first 

construing the claim to the design, when appropriate, and then comparing it to the design of 

the accused device.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed. Cir. 1997) 

(citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)).

I understand that, under precedent from the U.S. Court of Appeals for the Federal Circuit (“the 

Federal Circuit”), “trial courts have a duty to conduct claim construction in design patent cases, 

as in utility patent cases[.]” Egyptian Goddess, 543 F.3d at 679. “[T]he court has recognized that 

design patents ‘typically are claimed as shown in drawings,’ and that claim construction ‘is 

adapted accordingly.’” Id. (quoting Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 

F.3d 1314, 1319 (Fed. Cir. 2007)). Given the “difficulties entailed in trying to describe a design in 

words, the preferable course . . . [is] not to attempt to ‘construe’ a design patent claim by 

providing a detailed verbal description of the claimed design.” Egyptian Goddess, 543 F.3d at 

679. 

As I understand, after a design patent’s claim is construed, the claim “must be compared to the 

accused design to determine whether there has been infringement.” Elmer, 67 F.3d at 1577. I 

understand that infringement occurs when an ordinary observer “giving such attention as a 

purchaser usually gives, [deems] two designs are substantially the same” meaning “the 

resemblance is such as to deceive such an observer, inducing him to purchase one supposing it 

to be the other.[]” Egyptian Goddess, 543 F.3d at 670 (quoting Gorham Co. v. White, 81 U.S. 

511, 528 (1872)).

I am also aware that infringement is determined “in light of the prior art” by “applying the 

ordinary observer test through the eyes of an observer familiar with the prior art.” Egyptian 

Goddess, 543 F.3d at 677. Thus, the hypothetical ordinary observer is presumed to have a 

complete knowledge of all relevant prior art.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 5 of 27 PageID #:9567
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

6

I understand that a design patent infringement analysis is a two-step process. The first step is to 

consider whether the Claimed Design and Accused Products are “sufficiently distinct” also 

known as “plainly dissimilar.” Ethicon, 796 F.3d at 1335 (citing Egyptian Goddess, 543 F. 3d at 

678). If the Claimed Design and the Accused Products are found to be plainly dissimilar, there is 

no patent infringement. Id.

But, “if the claimed and accused designs are not plainly dissimilar,” I understand that the 

second step in an infringement analysis involves a three-way comparison to compare “the 

patented and accused designs in the context of similar designs found in the prior art.” Egyptian 

Goddess, 543 F.3d at 674. “[I]f 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. 

As I understand, these “[d]ifferences, however, must be evaluated in the context of the Claimed 

Design as a whole, and not in the context of separate elements in isolation. Where, as here, the 

Claimed Design includes several elements, the fact finder must apply the ordinary observer test 

by comparing similarities in overall designs, not similarities of ornamental features in isolation.” 

Ethicon, 796 F.3d at 1335 (citing Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. 

Cir. 2010). See also Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303-1304 (Fed. Cir. 2010). 

“[T]he 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.” Int'l Seaway Trading Co. v. Walgreens 

Corp., 589 F.3d 1233, 1243 (Fed. Cir. 2009).

C. Claim Construction in Design Patents

As I understand, courts construe claims for a design patent just as for a utility patent. Goodyear 

Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113, 1116 (Fed. Cir. 1998). That 

said, I understand that the Federal Circuit has cautioned against a detailed, verbal construction 

of the features in the patent drawings. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 

(Fed. Cir. 2008) (en banc). This is because a written claim construction focused on individual 

features may lead the factfinder away from “consideration of the design as a whole.” Crocs, 598 

F.3d at 1303.

I also understand that the Federal Circuit has cautioned against a detailed, verbal construction 

of the features in the patent drawings. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 

(Fed. Cir. 2008) (en banc). This is because a written claim construction focused on isolated 

features may lead the factfinder away from “consideration of the design as a whole.” Crocs, 

598 F.3d at 1303. However, while the claimed design of a design patent is better represented 

by an illustration, it is helpful to the finder of fact to be provided with guidance on the overall 

impression of the claimed design on the ordinary observer. Contessa Food Prods., Inc. v. 

Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002). 

To construe the scope of a design patent, I understand that one must consider (1) the language 

of the specification to determine whether the written description disclaims, characterizes, or 

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 6 of 27 PageID #:9568
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

7

limits any features; (2) whether the figures identify unclaimed subject matter (e.g., features 

depicted in broken lines); and (3) whether the prosecution history of the application shows if 

the applicant disclaimed subject matter or distinguished the Claimed Design from the prior art 

based on certain features present or absent in the graphics. See Goodyear Tire, 162 F.3d at 

1116.

I am also informed that the Manual of Patent Examining Procedure (“MPEP”) provides guidance 

on how broken lines are to be used in design patent drawings. U.S. Pat. & Trademark Office, 

Manual of Patent Examining Procedure § 1503.02 (9th ed. 2018). Section 1503.02.III notes that 

broken lines include “[s]tructure that is not part of the claimed design, but is considered 

necessary to show the environment in which the design is associated” and that structure “may 

be represented in the drawing by broken lines.” Id. Such “[u]nclaimed subject matter must be 

described as forming no part of the claimed design or of a specified embodiment thereof.” 

I am also informed that “in analyzing infringement, the fact finder must compare the claimed 

portion of the design—i.e., whatever is shown in solid lines in the patent drawings—to the 

corresponding portion of the accused design.” (emphasis added) Burstein, The “Article of 

Manufacture” in 1887, supra note 12, at 11 (first citing Hutzler Mfg. Co. v. Bradshaw Int’l, Inc., 

No. 1:11-cv-07211, 2012 WL 3031150, at *9–10 (S.D.N.Y. July 24, 2012); and then citing 

Egyptian Goddess, 543 F.3d at 672).

D. The Significance of Prior Art 

As I understand, the role of prior art is to help the finder of fact consider seemingly small or 

minor details that differentiate the patented design from the prior art. “Where there are many 

examples of similar prior art designs . . ., differences between the claimed and accused designs 

that might not be noticeable in the abstract can become significant to the hypothetical ordinary 

observer who is conversant with the prior art.” Egyptian Goddess, 543 F.3d at 678.

For the purposes of my opinion, I considered prior art to define the scope of the hoverboard 

market at the time the Claimed Designs were filed. In so doing, I was able to better discern the 

similarities and differences (or lack thereof) between the Claimed Designs and the Accused 

Products in the eyes of the ordinary observer.

E. Definition of the Ordinary Observer

I understand that the hypothetical ordinary observer must be identified before applying the 

ordinary observer test by focusing on the actual product that is presented for purchase, and the 

ordinary purchaser of that product. The hypothetical ordinary observer is different for each 

case, based on the type of product at issue. As explained above, the determination of the 

substantial similarity is based on the viewpoint of the ordinary observer who is “not an expert 

in the claimed designs” but rather one of ordinary acuteness who is a principal purchaser of the 

product. The hypothetical ordinary observer is also one who is aware of the number of closely 

similar prior art designs and conversant with the prior art.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 7 of 27 PageID #:9569
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

8

I also understand, “[t]he measure of infringement of a design patent is deception of the 

ordinary observer, when such person gives the design the attention usually given by a 

purchaser of the item bearing the design[.]” Goodyear Tire, 162 F.3d at 1117. Further, I 

understand that some courts have held that the ordinary observer is one who is “not an expert 

in the claimed designs”, but rather “one of ordinary acuteness who is a principal purchaser[]” of 

the product. Ethicon, 796 F.3d at 1337 (internal quotations and citation omitted). That said, the 

ordinary observer is one who is “aware of the great number of closely similar prior art designs” 

and “conversant with the prior art”. Egyptian Goddess, 543 F.3d at 676, 678.

Under Gorham, the ordinary observer is through the “eyes of men generally” and not 

individuals “versed in designs in the particular trade in question” or “engaged in the 

manufacture or sale of articles containing such designs”. Gorham Co. v. White, 81 U.S. 511, 527-

528 (1871).

Based on my experience as an Industrial Designer of commercial products, including electronic 

mobility products and consumer electronics, it is my opinion that an ordinary observer in this 

case is the typical purchaser of hoverboards, i.e., a consumer user or the parent of a user, each 

having little or no experience purchasing hoverboards. The ordinary observer encounters 

products like the Claimed Designs via online stores, television and entertainment media, and 

social media, and purchases them using online stores or from ‘brick and mortar’ stores like Best 

Buy or Walmart.

ANALYSIS OF THE PATENTS-IN-SUIT AND THE PRIOR ART 

A. The Patents-In-Suit

The four Patents-In-Suit are the U.S. Patents D737,723 (“the ‘723 Patent”), D738,256 (“the ‘256 

Patent”), D784,195 (“the ‘195 Patent”), and D785,112 (“the ‘112 Patent”) for Self-Balancing 

Vehicles, and Human-Machine Interaction Vehicles. Such self-balancing vehicles are commonly 

referred to as “hoverboards”.

As mentioned above, the scope of the claim of a patented design encompasses its visual 

appearance as a whole, and in particular the visual impression it creates to the ordinary 

observer.

B. Examination of the ‘723 Patent 

The ‘723 Patent is titled “Self-Balancing Vehicle” and has a filing date of Dec 15, 2014. It claims 

priority to a foreign application CN 201430180556.4 dated 6/13/2014. 

The patent has 8 figures, and states “the broken line showing is for the purpose of illustrating 

portions of the self-balancing vehicle and environment structure which form no part of the 

claimed design”.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 8 of 27 PageID #:9570
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

9

Table 1: The Claimed Design of the ’723 Patent

Fig.1 is a top plan view of 

a self-balancing vehicle 

showing our new design 

Fig.2 is a bottom plan 

view thereof

Fig 3 is a rear elevational 

view thereof

Fig. 4 is a front elevation 

view thereof

Fig 5. Is a left side view 

thereof, the right side 

view being a mirror 

image thereof.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 9 of 27 PageID #:9571
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

10

Fig.6 is a rear, top, right 

perspective view thereof

Fig. 7 is a front, top, left 

perspective view thereof

Fig 8 is a rear, bottom, 

left perspective view 

thereof

What is claimed is the overall ornamental design of a Self-Balancing Vehicle as described in the 

patent and shown in the figures. The claimed design does not include the areas shown in 

broken lines, such as the wheels, holes on the underside, the “O I” pattern, and the on/off 

graphics. 

I have reviewed the prosecution history of the ‘723 Patent, and it consistent with my opinion of 

the claim scope. The claimed design was allowed over all the prior art that was cited in the file 

history. 

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 10 of 27 PageID #:9572
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

11

C. Examination of the ‘256 Patent 

The ‘256 Patent is also titled “Self Balancing Vehicle” and has a filing date of Dec 15, 2014. The 

patent has 8 figures, and states “the broken line showing is for the purpose of illustrating 

portions of the self-balancing vehicle and environment structure which form no part of the 

claimed design”.

Table 2: The Claimed Design of the ’256 Patent

Fig.1 is a top plan view of a 

self-balancing vehicle 

showing our new design 

Fig.2 is a bottom plan view 

thereof

Fig 3 is a rear elevational 

view thereof

Fig. 4 is a front elevation 

view thereof

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 11 of 27 PageID #:9573
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

12

Fig 5. Is a left side view 

thereof, the right side view 

being a mirror image thereof

Fig.6 is a rear, top, right 

perspective view thereof

Fig. 7 is a front, top, left 

perspective view thereof

Fig 8 is a rear, bottom, left 

perspective view thereof

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 12 of 27 PageID #:9574
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

13

What is claimed is the overall ornamental design of a Self-Balancing Vehicle as described in the 

patent and shown in the figures. The claimed design does not include the areas shown in 

broken lines, such as the wheels, holes on the underside, and the “O I” pattern. 

I have reviewed the prosecution history of the ‘256 Patent, and it consistent with my opinion of 

the claim scope. The claimed design was allowed over all the prior art that was cited in the file 

history. 

D. Examination of the ‘195 Patent

The ‘195 Patent is titled “Human-Machine Interaction Vehicle” and has a filing date of Feb 29, 

2016. It claims priority to a foreign application 201530389352.6 dated 10/9/2015

The patent has 6 figures, and states “the broken lines are for the purpose of illustrating 

portions of the human-machine interaction vehicle and environmental structure which form no 

part of the claimed design”.

Table 3: The Claimed Design of the ’195 Patent

Fig. 1 is a top plan view of a 

human-machine interaction 

vehicle showing my new design

Fig. 2 is a bottom plan view 

thereof

Fig. 3 is a front elevational view 

thereof

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 13 of 27 PageID #:9575
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

14

Fig. 4 is a rear elevational view 

thereof

Fig. 5 is a right side view 

thereof, the left side view 

being a mirror image thereof

Fig. 6 is a top, rear, right 

perspective view thereof

What is claimed is the overall ornamental design of a Human-Machine Interaction Vehicle as 

described in the patent and shown in the figures. The claimed design does not include the 

areas shown in broken lines, such as the wheels, and various patterns and lines on the top 

surfaces. 

I have reviewed the prosecution history of the ‘195 Patent, and it consistent with my opinion of 

the claim scope. The claimed design was allowed over all the prior art that was cited in the file 

history. 

E. Examination of the ‘112 Patent

The ‘112 Patent is also titled “Human-Machine Interaction Vehicle” and has a filing date of Feb 

29, 2016. It claims priority to a foreign application CN 201530481979.4 dated 11/26/2015.

The patent has 6 figures, and states “the broken lines are for the purpose of illustrating 

portions of the human-machine interaction vehicle and environmental structure which form no 

part of the claimed design”.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 14 of 27 PageID #:9576
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

15

Table 4: The Claimed Design of the ’112 Patent

Fig. 1 is a top plan view of a 

human-machine 

interaction vehicle showing 

my new design

Fig. 2 is a bottom plan view 

thereof

Fig. 3 is a front elevational 

view thereof

Fig. 4 is a rear elevational 

view thereof

Fig. 5 is a right side view 

thereof, the left side view 

being a mirror image 

thereof

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 15 of 27 PageID #:9577
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

16

Fig. 6 is a top, rear, left 

perspective view thereof

What is claimed is the overall ornamental design of a Human-Machine Interaction Vehicle as 

described in the patent and shown in the figures. The claimed design does not include the 

areas shown in broken lines, such as the wheels, circular holes on the bottom surface, and 

various patterns and lines on the top surfaces. 

I have reviewed the prosecution history of the ‘112 Patent, and it consistent with my opinion of 

the claim scope. The claimed design was allowed over all the prior art that was cited in the file 

history. 

F. The Cited Prior Art Show The Patents-In-Suit Have A Broad Scope

The prior art is used to compare to the claimed design of the patent to find the scope of the 

design in the ordinary observer test. It is also used to compare the accused product to the 

claimed designs to evaluate if the accused product is closer to the claimed design than the prior 

art.

I have analyzed all the cited prior art of the Patents-In-Suit. Below I present one selected view 

from each of the cited prior art to provide an overview of the state-of-the-art at the time of the 

filing of each patent. As can be seen in the table below, each of the Patents-In-Suit differed 

highly from the prior art that preceded them.

Table 5: The Cited Prior Art From the Face of the ‘723 and ‘256 Patents

US 8,118,319

US 8,469,376 US 8,414,000

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 16 of 27 PageID #:9578
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

17

Appl. 

2007-0273118

US 8,500,145 US D647,991

While some of the individual components of the ‘723 and ‘256 Patents are represented in some 

of the prior art, the overall impression of the claimed design of the ‘723 and ‘256 Patents is 

entirely unique. The prior art is vastly different in many ways and therefore the ‘723 and ‘256 

Patents enjoy a very broad scope. 

None of the prior art create the impression of an integrated ‘hourglass’ body with a relatively 

flat surface across the top of the main body and arched covers over the wheel area.

Table 6: The Cited Prior Art From the Face of the ‘195 Patent

US 6,834,867

US 7,424,927

US 8,738,278

US 9,403,573

US D737,723 US D738,256

US 9,376,155 US D739,906

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 17 of 27 PageID #:9579
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

18

While some of the individual components of the ‘195 Patent are represented in some of the 

prior art, the overall impression of the claimed design of the ‘195 Patent is entirely unique. 

None of the prior art create the impression of an integrated ‘hourglass’ body with many 

horizontal styling lines across the body and a relatively flat surface across the top, arched 

covers over the wheel area, larger radii on the front and back of the underside. Unlike any of 

the prior art the foot plates narrow as they extend toward the center.

Table 7: A Selection of the Cited Prior Art from the ‘112 Patent

US 7,481,291

US 7,635,037

US 8,738,278

US 9,403,573

US 9,499,228

US 9,682,732

US D601,922

US D737,723 US D738,256

US 9,376,155 US D535,714 US D739,906

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 18 of 27 PageID #:9580
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

19

While some of the individual components of the ‘112 Patent are represented in some of the 

prior art, the overall impression of the claimed design of the ‘112 Patent is entirely unique. 

None of the prior art create the impression of an integrated ‘hourglass’ body with many angled

lines across the body and a relatively flat surface across the top, arched covers over the wheel 

area, larger radii on the front and back of the underside. Unlike any of the prior art the foot 

plates stretch across almost the full width of main body.

OVERVIEW OF THE ACCUSED PRODUCTS 

The Accused Products1 have an integrated ‘hourglass’ body with many horizontal styling lines 

across the body and a relatively flat surface across the top, arched covers over the wheel area, 

larger radii on the front and back of the underside, and elongated light panels on the front 

surface. The foot plates narrow as they extend toward the center 

Also, while they are not exact duplicates of each other but share very similar traits in their 

format, proportions and certain features, and share the same overall impression to an Ordinary 

Observer in light of the prior art.

Table 8: Infringing products by Defendants Gyroor

Name and Store names Infringing product

“Gyroor A”:

Gyroor; 

(Gyroor.com; gyroorboard.com);

Gaodeshang-US;

Gyroshoes;

HGSM;

Urbanmax;

Jiangyou-US

“Gyroor B”:

Gyroor 

(Gyroor.com; gyroorboard.com);

Gaodeshang-US

1 I have previously reviewed two of the three infringing products under Species II of my report on October 16, 

2020.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 19 of 27 PageID #:9581
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

20

“Gyroor C”:

Gyroor US;

Jiangyou-US;

(Gyroor.com; gyroorboard.com);

Gaodeshang-US

“Gyroor D”:

Fengchi-US

THE ACCUSED PRODUCTS INFRINGE THE PATENTS-IN-SUIT

I conducted a side-by-side comparison of the Accused Products and the Claimed Designs. My 

analysis was limited to the Claimed Designs as depicted by the solid lines in the figures of the 

Patents-In-Suit and did not include the unclaimed portions of the design depicted in broken 

lines.

The Accused Products and the claimed designs of the Patents-In-Suit are both conceptually and 

functionally identical in that they are all Hoverboards, for recreational use by consumers. 

As mentioned above, the scope of the claim of a patented design encompasses its visual 

appearance as a whole, and in particular the ‘visual impression’ it creates. Even if various 

ornamental elements which make up the whole of a design may be slightly different in 

isolation, infringement occurs if the overall visual impression is substantially similar. 

In my analysis detailed below I conclude that the Accused Products are not plainly dissimilar to 

the Patented Designs and are substantially the same as the claimed designs of the Patents-InSuit in the eyes of the ordinary observer. As an additional step, I also analyzed the patents’ 

cited prior art against the Accused Products and Patented Designs to find whether the Accused 

Designs are closer to the Patented Designs than the cited prior art, as shown below. 

A. The Accused Products Infringe on the ‘723 Patent

Although the below charts only present selected views, my analysis was undertaken on each of 

the accused products individually, based upon the entirety of the reference materials. 

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 20 of 27 PageID #:9582
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

21

Table 9: Comparison of the Claimed Design of the ‘723 Patent to the Accused Products

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 21 of 27 PageID #:9583
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

22

Giving due consideration to the legal standards as outlined in Section II, the examination 

illustrated in the table above allows for no other reasonable conclusion than that the overall 

visual impression of the Claimed Design of the ‘723 Patent and the Accused Products are not 

plainly dissimilar. 

In the eyes of the ordinary observer, the claimed design of the ‘723 is substantially the same as 

the overall visual impression presented by the Accused Products. Unlike the cited prior art 

shown in Section III Chapter F, the claimed design of the ‘723 Patent and the Accused Products 

share the same overall impression and have an integrated ‘hourglass’ body with a relatively flat 

surface across the top of the main body, arched covers over the wheel area, larger radii on the 

front and back of the underside, and elongated light panels on the front surface. 

In the eyes of the ordinary observer, the claimed design of the ‘723 is substantially the same as 

the visual impression presented by the Accused Products. Also, the Accused Products are closer 

to the claimed design of the ‘723 Patent than to the cited prior art of the ‘723 Patent. 

B. The Accused Products Infringe on the ‘256 Patent 

Although the below charts only present selected views, my analysis was undertaken on each of 

the accused products individually, based upon the entirety of the reference materials. 

Table 10: Comparison of the Claimed Design of the ‘256 Patent to the Accused Products

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 22 of 27 PageID #:9584
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

23

Giving due consideration to the legal standards as outlined in Section II, the examination 

illustrated in the table above allows for no other conclusion than that the overall visual 

impression of the Claimed Design of the ‘256 Patent and the Accused Products shown above 

are not plainly dissimilar. 

Unlike the cited prior art shown in Section III Chapter F, the claimed design of the ‘256 Patent 

and the Accused Products share the same overall impression and have an integrated ‘hourglass’ 

body with a relatively flat surface across the top of the main body, arched covers over the 

wheel area, larger radii on the front and back of the underside, and elongated light panels on 

the front surface. 

In the eyes of the ordinary observer, the claimed design of the ‘256 is substantially the same as 

the visual impression presented by the Accused Products. Also, the Accused Products are closer 

to the claimed design of the ‘256 Patent than to the cited prior art of the ‘256 Patent. 

C. The Accused Products Infringe on the ‘195 Patent

Although the below charts only present selected views, my analysis was undertaken on each of 

the accused products individually, based upon the entirety of the reference materials. 

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 23 of 27 PageID #:9585
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

24

Table 11: Comparison of the Claimed Design of the ‘195 Patent to the Accused Products

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 24 of 27 PageID #:9586
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

25

Giving due consideration to the legal standards as outlined in Section II, the examination 

illustrated in the table above allows for no other conclusion than that the visual impression of 

the claimed design of the ‘195 Patent and the Accused Products shown above are not plainly 

dissimilar. 

Unlike the cited prior art shown in Section III Chapter F, the claimed design of the ‘195 Patent 

and the Accused Products share an integrated ‘hourglass’ body with many horizontal styling 

lines across the body and a relatively flat surface across the top, arched covers over the wheel 

area, larger radii on the front and back of the underside. Unlike any of the prior art the foot 

plates narrow as they extend toward the center.

In the eyes of the ordinary observer, the claimed design of the ‘195 is also substantially the 

same as the visual impression presented by the Accused Products. Also, the Accused Products 

are closer to the claimed design of the ‘195 Patent than to the cited prior art of the ‘195 Patent. 

D. Two of The Accused Products Infringe on the ‘112 Patent

Although the below charts only present selected views, my analysis was undertaken on each of 

the accused products individually, based upon the entirety of the reference materials. 

Table 12: Comparison of the Claimed Design of the ‘112 Patent to the Accused Products

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 25 of 27 PageID #:9587
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

26

Giving due consideration to the legal standards as outlined in Section II, the examination 

illustrated in the table above allows for no other conclusion than that the visual impression of 

the claimed design of the ‘112 Patent and the Accused Products Gyroor B and Gyroor D shown 

above are not plainly dissimilar. 

Unlike the cited prior art shown in Section III Chapter F, the claimed design of the ‘112 Patent 

and the Accused Products share an integrated ‘hourglass’ body with many lines angling across 

the body and a relatively flat surface across the top, arched covers over the wheel area, larger 

radii on the front and back of the underside. Unlike any of the prior art the foot plates stretch 

across almost the full width of main body.

In the eyes of the ordinary observer, the claimed design of the ‘112 is also substantially the 

same as the visual impression presented by the Accused Products Gyroor B and Gyroor D, 

which are also closer to the claimed design of the ‘112 Patent than to the cited prior art of the 

‘112 Patent.

CONCLUSION

Based upon the application of the legal principles described in this declaration, and upon my 

examination, analysis and comparisons of the Patents-In-Suit, their file histories, the prior art, 

and the Accused Products, it is my opinion that an ordinary observer would find the Accused 

Products to be substantially similar to the Claimed Designs. 

a. The Accused Products’ overall design and visual impression is substantially the 

same as the Claimed Designs, with only minor and inconsequential differences 

observable upon even close inspection.

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 26 of 27 PageID #:9588
HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY

27

b. The Accused Products appear substantially the same as the Claimed Designs of 

the Patents-In-Suit in the eye of an ordinary observer who is familiar with the 

prior art.

c. The Accused Products are not plainly dissimilar to the claimed design of the ‘723 

Patent and are substantially the same as the claimed design of the ‘723 Patent in 

the eyes of the ordinary observer.

d. The Accused Products are not plainly dissimilar to the claimed design of the ‘256 

Patent and are substantially the same as the claimed design of the ‘256 Patent in 

the eyes of the ordinary observer.

e. The Accused Products are not plainly dissimilar to the claimed design of the ‘195 

Patent and are also substantially the same as the claimed design of the ‘195 

Patent in the eyes of the ordinary observer.

f. The Accused Products Gyroor B and Gyroor D are not plainly dissimilar to the 

claimed design of the ‘112 Patent and are also substantially the same as the 

claimed design of the ‘112 Patent in the eyes of the ordinary observer.

RESERVATION OF RIGHTS

My current opinions are set forth in this declaration. However, my analysis is continuing, and I 

thus reserve the right to supplement or amend my declaration and to rely on additional 

documents, prior art, or discovery or testimony that may come to my attention.

Moreover, I may make additions, deletions, or modifications to this declaration and my 

opinions in the future that would be reflected in my testimony at the trial and/or additional 

declarations that I may be asked to submit in this case. I also reserve the right to rely on all 

other expert declarations submitted in this case. For the forthcoming trial, I may prepare 

diagrams, charts, other demonstratives, and/or demonstrations that illustrate the issues 

presented. I reserve the right to respond to additional arguments or analyses proffered by 

expert witnesses and/or the Plaintiff, and I understand that I may be asked to give rebuttal 

testimony on matters not covered in this expert declaration.

I HEREBY DECLARE under penalty of perjury that all statements made herein of my own 

knowledge are true and that all statements made on information and belief are believed to be 

true; and further that these statements were made with the knowledge that willful false 

statements and the like so made are punishable by fine and imprisonment, or both, under 18 

U.S.C. §1001.

Dated: August 24, 2021 Respectfully Submitted,

____________________________

Paul Hatch 

Case: 1:20-cv-04806 Document #: 388 Filed: 08/24/21 Page 27 of 27 PageID #:9589