UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

HANGZHOU CHIC INTELLIGENT 

TECHNOLOGY CO.; and UNICORN 

GLOBAL, INC.,

Plaintiffs,

v.

GYROOR; GYROOR-US; URBANMAX;

FENGCHI-US; HGSM; GAODESHANG-US;

and GYROSHOES,

Defendants.

No. 20 C 4806

Judge Thomas M. Durkin

MEMORANDUM OPINION AND ORDER

Plaintiffs allege that Defendants’ “hoverboard” products infringe Plaintiffs’ 

design patents. The Court issued a preliminary injunction prohibiting sale of the 

products. See R. 456; R. 147; R. 113. The Federal Circuit vacated that injunction. See

R. 587; R. 590. Plaintiffs filed a renewed motion for a preliminary injunction. R. 592. 

After a one-day hearing, the Court denied the motion. R. 619. This opinion and order 

explains the reasons for that decision. 

Background

Plaintiffs own design patents D737,723 and D738,256:

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See R. 609 at 3-4; see also R. 593 at 7-11. Plaintiffs seek a preliminary injunction of 

Defendants’ sales of three products: (1) Gyroor T581 series and variants, referred to 

as “Gyroor A”; (2) Gyroor T580 series and variants, referred to as “Gyroor C”; and (3)

Gyroor G11 series and variants, referred to as “Gyroor E.”

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See R. 609 at 7-9. The most relevant prior art in this case is the patent D739,906:

See R. 609 at 4-5.

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Legal Standards

“A plaintiff seeking a preliminary injunction must establish that he is likely to 

succeed on the merits, that he is likely to suffer irreparable harm in the absence of 

preliminary relief, that the balance of equities tips in his favor, and that an injunction 

is in the public interest.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). 

The “estimated likelihood of success in establishing infringement is governed by 

Federal Circuit law.” Revision Mil., Inc. v. Balboa Mfg. Co., 700 F.3d 524, 526 (Fed. 

Cir. 2012). Seventh Circuit law governs the other factors. See Koninklijke Philips N.V. 

v. Thales DIS AIS USA LLC, 39 F.4th 1377, 1379 (Fed. Cir. 2022).

“To show a likelihood of success on the merits, a patentee must show that it 

will likely prove infringement of the asserted claims.” ABC Corp. I v. P’ships &

Unincorporated Assocs. Id’d on Schedule “A”, 52 F.4th 934, 942 (Fed. Cir. 2022). This 

means that the plaintiff must demonstrate that any defense raised “lacks substantial 

merit.” Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. 

Cir. 2001).

“To show infringement under the proper test,” a plaintiff must demonstrate 

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.” Crocs v. Int’l

Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010); see also Egyptian Goddess, Inc.

v. Swisa, Inc., 543 F.3d 665, 676, 678. (Fed. Cir. 2008). “Where a patented design and 

an accused product are not ‘plainly dissimilar,’ the court must conduct a three-way

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analysis comparing the accused product, the patented design, and the prior art.” ABC

Corp, 52 F.4th at 942 (citing Egyptian Goddess, 543 F.3d at 677-78.

Analysis

In its opinion reversing this Court’s prior issuance of a preliminary injunction, 

the Federal Circuit noted that an “hourglass shape” was the “dominant feature of the 

patented design and the accused products,” and also “appears in the prior art.” ABC

Corp., 52 F.4th at 942. The court explained that where there is a “dominant feature” 

across the prior art, the patents in suit, and the accused products, “the focus of the 

infringement substantial similarity analysis in most cases will be on other features 

of the design.” Id. In other words, the “shared dominant feature from the prior art 

will be no more than a background feature of the design, necessary for a finding of

substantial similarity but insufficient by itself to support a finding of substantial 

similarity.” Id.

A. Plaintiffs’ Expert Paul Hatch

The Federal Circuit criticized Plaintiffs’ expert, Paul Hatch, because his 

analysis violated this legal standard.1 In the Federal Circuit’s view, instead of 

treating the dominant hourglass shape as background, Hatch improperly “relied on” 

the hourglass shape “of the accused products to show substantial similarity [to the 

patents in suit].” Id. at 938-39. The Federal Circuit understood Hatch’s opinion to be 

1 Hatch is a professional product designer and inventor. See R. 594 at 2-3. Defendants 

did not challenge his qualifications. The Court finds no reason to question them and 

finds Hatch to be qualified to offer testimony pursuant to Federal Rule of Civil 

Procedure 702.

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that the accused products are substantially similar to the patents in suit because they 

create the visual impression of an “integrated hourglass body,” thereby implying that 

he believed the prior art did not create such an impression. See id. at 938 (“Hatch did 

not explain why having an ‘hourglass body’ was ‘unlike’ the prior art.”). One of the 

primary reasons the Federal Circuit vacated the preliminary injunction was because 

this Court relied on Hatch’s report, which, “far from recognizing that the hourglass 

figure of the asserted patents could not be relied on the establish substantial 

similarity, improperly relied on that feature to show substantial similarity.” Id. at 

943.

On this renewed motion for preliminary injunction, Hatch has clarified that he 

understands that the D’906 prior art also obviously shows an hourglass shape. But 

he believes that against the common backdrop of an hourglass body, the D’906’s 

“uncluttered, rounded, smooth body” when compared with the patents in suit and 

accused products and their “pronounced footing areas and [open] fender skirts,” 

demonstrates that the accused products are substantially similar to the patents in 

suit. See R. 594 at 29-30 (Hatch’s report stating that “the design [of the D’906 prior 

art] as a whole gives a distinctly different impression [from the patents in suit and 

the accused products], as it creates an impression of a very uncluttered, rounded, 

smooth body with no pronounced footing area and closed fender skirts.”). Hatch 

testified that this difference in overall impression shows that the D’906 prior art “is 

clearly in a different ballpark” when compared with the patents in suit and the 

accused products. See R. 620 at 71:22. He acknowledged in his testimony that the 

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accused products differ from the patents in suit in (1) the shape and size of their 

fenders; (2) the designs of the grooves on the footing areas; (3) and the shapes of the 

lights. See id. at 70-72. But Hatch testified that these differences are “very minor” 

when viewed in light of the substantially different overall impression of the prior art 

compared with the overall impression given by both the patents in suit and the 

accused products. See id. at 71:20. And because the differences are minor, Hatch 

concludes that the ordinary observer “would find the overall appearance of each of 

the Accused Products to be substantially the same as the overall appearance of one 

or more of the claimed designs of the Patents-In-Suit in light of the prior art, inducing 

him or her to purchase the Accused Products supposing it to be the Claimed Design.” 

R. 594 at 41.

The problem with Hatch’s analysis is that he does not explain why simply 

featuring pronounced footings and open fenders means the accused products are 

substantially similar to the patents in suit while the prior art is in another “ballpark.” 

This categorical distinction is curious because he concedes that all the designs at 

issue—the prior art, the patents in suit, and the accused products—create the visual 

impression of an integrated hourglass shape. In the Federal Circuit’s terms, the 

hourglass shape is the “dominant feature” across all the relevant designs. This

finding from the Federal Circuit means that Hatch’s categorical distinction is 

erroneous. To the contrary, all the designs are in the same “ballpark,” so to speak, 

because they all feature an “integrated hourglass shape.”

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Because all the designs possess the same dominant feature, the ordinary 

observer’s attention “will be drawn to those aspects of the claimed design that differ 

from the [dominant feature exhibited by the] prior art.” Egyptian Goddess, 543 F.3d 

at 676. Here, Hatch identified those other aspects as the pronounced footings and 

open fenders featured by the patents in suit and the accused products. But Hatch’s 

analysis stops at the fact that both the patents in suit and the accused products 

merely possess these features. In his opinion, this similarity would be sufficient to 

deceive the ordinary observer. However, Hatch failed to conduct an analysis of 

whether these features themselves are substantially similar in the manner of their 

design, which is where “the focus” of the analysis must be. See ABC Corp, 52 F.4th at 

942 (“where a dominant feature of the patented design and the accused products . . . 

appears in the prior art, the focus of the infringement substantial similarity analysis 

in most cases will be on other features of the design.”) (emphasis added). For these 

reasons, the Court rejects Hatch’s method of analysis.

B. Defendants’ Expert Jim Gandy

Defendants’ expert, Jim Gandy, conducted the proper analysis.2 In his rebuttal 

report, Gandy identifies the following features that “contribute to the overall shape 

and appearance” of the accused products and the patents in suit, which Hatch does 

not adequately analyze:

2 Gandy served as a design patent examiner and supervisor at the USPTO for 32 

years. See R. 609-2 at 2-4. Plaintiffs did not challenge his qualifications. The Court 

finds no reason to question them and finds Gandy to be qualified to offer testimony 

pursuant to Federal Rule of Civil Procedure 702.

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(a) The shape and appearance of the foot pads on the top 

surface;

(b) The contour of the narrow central portion of the top 

surface, which is not flat . . . ;

(c) The specific shape and appearance of the [fenders];

(d) The specific shape and appearance of the ‘elongated 

light panels on the front surface’ as well as other 

features of the front and rear surfaces . . . ; and

(e) Features on the bottom surface . . . .

R. 609-5 at 6. According to Gandy, these features “contribute significantly to the 

overall shape and appearance” of the accused products and the patents in suit “as a 

whole” and “distinguish them over each other such that an ‘ordinary observer’ 

familiar with the prior art, would not be confused so as to purchase one thinking it to 

be the other.” Id.

C. Product-by-Product Infringement Analysis

Having rejected Hatch’s method of analysis, and finding Gandy’s method 

proper, the Court will apply it “product-by-product” to determine the likelihood that 

Plaintiffs will succeed in proving that any of Defendants’ products infringe Plaintiffs’ 

patents. See ABC Corp, 52 F.4th at 944 (“When a court states the reasons why a 

preliminary injunction issued, it must generally conduct a product-by-product 

infringement analysis.”). In his rebuttal report, Gandy thoroughly applied his method 

to each patent and product comparison. Like his testimony, Gandy’s report is 

persuasive and credible, and the Court relies on it as the basis for its findings. Due 

to the similarities of the two patents, and the similarities of the accused products, the 

analyses of each product are largely the same and unfortunately rather repetitive. 

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1. Patent in Suit ‘723 Compared to 

Accused Product Gyroor A

“As can be seen in the front and rear views . . . the concavely curved recessed 

center portion of the top surface of the claimed design of the ‘723 patent and the 

design of the prior art ‘906 patent both have a slightly raised convex contour, while 

the corresponding center portion of the top surface of the design of the Gyroor ‘A’

hoverboard is substantially flat and slightly recessed down below the opposing outer 

foot surfaces.” R. 609-5 at 11.

Furthermore, “the wheel covers at each end of the claimed design of the ‘723 

patent, the design of the prior art ‘906 patent and the design of the Gyroor ‘A’

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hoverboard differ from each other.” Id. at 12. “Specifically, the wheel covers shown on 

the claimed design of the ‘723 patent and the design of the prior art ‘906 patent are 

both semi-circular in shape and extend over and cover the entire wheel, while the 

wheel covers on the design of the Gyroor ‘A’ hoverboard are somewhat squared off 

and do not extend over the entire wheel, but rather partially over the wheel.” Id.

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As discussed, Patent ‘723 and Gyroor A both include pronounced footings. 

However, “the foot pads of the claimed design of the ‘723 patent and the design of the 

Gyroor ‘A’ hoverboard differ not only in their peripheral shape but also the decorative 

pattern of ribs on each.” Id. at 13.

The front and rear surfaces of Gyroor A also differ from those of Patent ‘723. 

“Specifically, directly below the vertically flat upper portion of the front and rear 

surfaces are recessed horizontally elongated LED lights and below the LED lights is 

an outwardly protruding horizontal band that extends inwardly and merges with the 

recessed central portion.” Id. at 14. This is as opposed to the “rounded parallelogram 

shaped LED lights at the opposing outer ends of the rear surface of the claimed design 

of the ‘723 patent.” Id. “Also, on the right front vertically flat upper portion of the 

design of [Gyroor A] is the word ‘GYROOR.’” Id.

Lastly, in his testimony, Gandy pointed out, that “even though the bottom 

might not normally be visible, . . . you have to consider [it] for the purpose of . . . 

infringement,” because “the claimed design in the ‘723 patent [claims] the bottom as 

part of the ornamental design.” R. 620 at 121:24–122:6. Accordingly, the Court finds 

that “the bottom surface of the design of the [Gyroor A] hoverboard differs from both 

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the claimed design of the ‘723 patent and the design of prior art ‘906 patent in that 

the opposing flat outer portions have a pattern of vent holes and just to the inside of 

the vent holes is a slight diagonally downwardly protruding arcuate edge.” Id. “In 

addition, the recessed central portion of the design of the [Gyroor A] hoverboard is

defined by opposing slight diagonally downwardly protruding arcuate edges with the 

center portion having six narrow longitudinal ribs.” Id. at 14.

2. Patent in Suit ‘723 Compared to 

Accused Product Gyroor C

“As can be seen in the front and rear views below, the concavely curved 

recessed center portion of the top surface of the claimed design of the ‘723 patent and 

the design of the prior art ‘906 patent both have a slightly raised convex contour, 

while the corresponding center portion of the top surface of the design of the Gyroor 

‘C’ hoverboard is substantially flat and slightly recessed down below the opposing 

outer foot surfaces.” R. 609-5 at 41-42.

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Furthermore, the wheel covers of the ‘723 patent, the design of the prior art 

‘906 patent extend over and cover the entire wheel, while the wheel covers on the 

design of Gyroor “C” hoverboard do not extend down over the wheel.” Id. at 42.

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As discussed, Patent ‘723 and Gyroor C both feature pronounced footings on 

their top surfaces. “However, it is clear from the enlarged isolated view below that 

the foot pads of the claimed design of the ‘723 patent and the design of the Gyroor ‘C’

hoverboard differ significantly in their peripheral shape as well as the decorative 

pattern of on each.” Id. at 43.

The front and rear surfaces of Gyroor C also differ from those of Patent ‘723. 

“Specifically, directly below the vertically flat upper portion of the front and rear 

surfaces are recessed horizontally elongated LED lights and below the LED lights is 

an outwardly protruding horizontal band that extends inwardly and merges with the 

recessed central portion.” Id. at 43. This is as opposed to the “rounded parallelogram 

shaped LED lights at the opposing outer ends of the rear surface of the claimed design 

of the ‘723 patent and the lines on the front and rear surface of the claimed design of 

the ‘723 patent.” Id.

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Lastly, “the bottom surface of the design of the Gyroor ‘C’ hoverboard differs 

from both the claimed design of the ‘723 patent and the design of prior art ‘906 patent 

in that the opposing flat outer portions have a pattern of vent holes and just to the 

inside of the vent holes is a slight diagonally downwardly protruding arcuate edge.” 

Id. at 44. “In addition, the recessed central portion of the design of the Gyroor ‘C’

hoverboard is defined by opposing slight diagonally downwardly protruding arcuate 

edges with the center portion having six narrow longitudinal ribs.” Id.

3. Patent in Suit ‘723 Compared to 

Accused Product Gyroor E

“As can be seen in the front and rear views below, the concavely curved 

recessed center portion of the top surface of the claimed design of the ‘723 patent and 

the design of the prior art ‘906 patent both have a slightly raised convex contour, 

while the corresponding center portion of the top surface of the design of the Gyroor 

‘E’ hoverboard is substantially flat and slightly recessed down below the opposing 

outer foot surfaces.” Id. at 71.

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Furthermore, “the wheel covers at each end of the claimed design of the ‘723 

patent, the design of the prior art ‘906 patent and the design of the Gyroor “E” 

hoverboard differ from each other.” Id. “Specifically, the wheel covers shown on the 

claimed design of the ‘723 patent and the design of the prior art ‘906 patent are both 

semi-circular in shape and extend over and cover the entire wheel, while the wheel 

covers on the design of the Gyroor ‘E’ hoverboard are somewhat squared off and do 

not extend over the entire wheel, but rather partially over the wheel.” Id. at 71-72.

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As discussed, Patent ‘723 and Gyroor E both feature pronounced footings on 

their top surfaces. “However, it is clear from the enlarged isolated view below that 

the foot pads of the claimed design of the ‘723 patent and the design of the Gyroor ‘E’

hoverboard differ not only in their peripheral shape but also the decorative pattern 

of ribs on each.” Id. at 72-73.

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The front and rear surfaces of Gyroor E also differ from those of Patent ‘723. 

“Specifically, directly below the vertically flat upper portion of the front and rear 

surfaces are recessed horizontally elongated LED lights with quarter rounded inner 

ends.” Id. at 73. This is as opposed to “the rounded parallelogram shaped LED lights 

at the opposing outer ends of the rear surface of the claimed design of the ‘723 patent 

and the lines on the front and rear surface of the claimed design of the ‘723 patent.” 

Id.

Lastly, “the bottom surface of the design of the Gyroor ‘E’ hoverboard differs 

from both the claimed design of the ‘723 patent and the design of prior art ‘906 patent 

in that the opposing flat outer portions have a pattern of vent holes and just to the 

inside of the vent holes is a slight diagonally downwardly protruding arcuate edge. 

In addition, the recessed central portion of the design of the Gyroor ‘E’ hoverboard is 

defined by opposing slight diagonally downwardly protruding arcuate edges with the 

center portion having six narrow longitudinal ribs.” Id. at 73-74.

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4. Patent in Suit ‘256 Compared to 

Accused Product Gyroor A

“As can be seen in the front and rear views below, the concavely curved 

recessed center portion of the top surface of the claimed design of the ‘256 patent and 

the design of the prior art ‘906 patent both have a slightly raised convex contour, 

while the corresponding center portion of the top surface of the design of the Gyroor 

“A” hoverboard is substantially flat and slightly recessed down below the opposing 

outer foot surfaces.” R. 609-5 at 16.

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Furthermore, “the wheel covers at each end of the claimed design of the ‘256 

patent, the design of the prior art ‘906 patent and the design of the Gyroor ‘A’

hoverboard differ from each other.” Id. at 16. Specifically, “the shape of the wheel 

covers in the claimed design of the ‘256 patent and the prior art ‘906 patent are semicircular, while the wheel covers on the design of the Gyroor ‘A’ hoverboard are 

somewhat squared off.” Id. Additionally, “the wheel covers on the claimed design of 

the ‘256 patent and the design of the Gyroor ‘A’ hoverboard do not extend over the 

entire wheel, but rather partially over the wheel.” Id. at 17.

As discussed, Patent ‘256 and Gyroor A both include protruding footings. But 

the “foot pads of the claimed design of the ‘256 patent and the design of the Gyroor 

‘A’ hoverboard differ not only in their peripheral shape but also the decorative pattern 

of ribs on each.” Id. at 17.

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The front and rear surfaces of Gyroor A also differ from those of Patent ‘256. 

“Specifically, directly below the vertically flat upper portion of the front and rear 

surfaces are recessed horizontally elongated LED lights and below the LED lights is 

an outwardly protruding horizontal band that extends inwardly and merges with the 

recessed central portion.” Id. at 18. This is as opposed to the “rounded somewhat 

trapezoidal shaped LED lights at the opposing outer ends of the rear surface of the 

claimed design of the ‘256 patent.” Id. “Also, on the right front vertically flat upper 

portion of the design of the Gyroor ‘A’ hoverboard is the word ‘GYROOR.’” Id.

Lastly, “the bottom surface of the design of the Gyroor “A” hoverboard differs

from both the claimed design of the ‘256 patent and the design of prior art ‘906 patent 

in that the opposing flat outer portions have a pattern of vent holes and just to the 

inside of the vent holes is a slight diagonally downwardly protruding arcuate edge. 

In addition, the recessed central portion of the design of the Gyroor ‘A’ hoverboard is 

defined by opposing slight diagonally downwardly protruding arcuate edges with the 

center portion having six narrow longitudinal ribs.” Id. at 19.

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5. Patent in Suit ‘256 Compared to 

Accused Product Gyroor C

As can be seen “in the front and rear views below, the concavely curved 

recessed center portion of the top surface of the claimed design of the ‘256 patent and 

the design of the prior art ‘906 patent both have a slightly raised convex contour, 

while the corresponding center portion of the top surface of the design of the Gyroor 

‘C’ hoverboard is substantially flat and slightly recessed down below the opposing 

outer foot surfaces. Id. at 45.

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The Court notes that “the wheel covers at each end of the claimed design of the 

‘256 patent, the design of the prior art ‘906 patent and the design of the Gyroor “C” 

hoverboard are all semi-circular in shape.” Id. at 46. “However, the wheel covers of 

the design of Gyroor ‘C’ hoverboard are wider than those of the design of the ‘256 

patent.” Id.

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As discussed, Patent ‘256 and Gyroor C both include protruding footings. But 

“the foot pads of the claimed design of the ‘256 patent and the design of the Gyroor 

‘C’ hoverboard differ significantly in their peripheral shape as well as the decorative 

pattern of on each.” Id. at 47.

The front and rear surfaces of Gyroor C also differ from those of Patent ‘256. 

“Specifically, directly below the vertically flat upper portion of the front and rear 

surfaces are recessed horizontally elongated LED lights and below the LED lights is 

an outwardly protruding horizontal band that extends inwardly and merges with the 

recessed central portion.” Id. This is as opposed to “the rounded somewhat trapezoidal 

shaped LED lights at the opposing outer ends of the rear surface of the claimed design 

of the ‘256 patent and the horizontal line on the front and rear surface of the claimed 

design of the ‘256 patent.” Id.

Lastly, “the bottom surface of the design of the Gyroor “C” hoverboard differs 

from both the claimed design of the ‘256 patent and the design of prior art ‘906 patent 

in that the opposing flat outer portions have a pattern of vent holes and just to the 

inside of the vent holes is a slight diagonally downwardly protruding arcuate edge.” 

Id. at 48. “In addition, the recessed central portion of the design of the Gyroor ‘C’

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hoverboard is defined by opposing slight diagonally downwardly protruding arcuate 

edges with the center portion having six narrow longitudinal ribs.” Id.

6. Patent in Suit ‘256 Compared to 

Accused Product Gyroor E

As can be seen “in the front and rear views below, the concavely curved 

recessed center portion of the top surface of the claimed design of the ‘256 patent and 

the design of the prior art ‘906 patent both have a slightly raised convex contour, 

while the corresponding center portion of the top surface of the design of the Gyroor 

‘E’ hoverboard is substantially flat and slightly recessed down below the opposing 

outer foot surfaces.” Id. at 75.

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Furthermore, the Court notes “that the wheel covers at each end of the claimed 

design of the ‘256 patent, the design of the prior art ‘906 patent and the design of the 

Gyroor ‘E’ hoverboard differ from each other as shown in the top plan view and front 

and rear views above as well as the side view and perspective view below.” Id. at 76. 

“Specifically, the wheel covers shown on the claimed design of the ‘256 patent and the 

design of the prior art ‘906 patent are both semi-circular in shape and extend over 

and cover the entire wheel, while the wheel covers on the design of the Gyroor ‘E’

hoverboard are somewhat squared off and do not extend over the entire wheel, but 

rather partially over the wheel.” Id.

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As discussed, Patent ‘256 and Gyroor E both include protruding footings. But 

“the foot pads of the claimed design of the ‘256 patent and the design of the Gyroor 

‘E’ hoverboard differ not only in their peripheral shape but also the decorative pattern 

of ribs on each.” Id. at 77.

The front and rear surfaces of Gyroor E also differ from those of Patent ‘256. 

“Specifically, directly below the vertically flat upper portion of the front and rear 

surfaces are recessed horizontally elongated LED lights with quarter rounded inner 

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ends.” Id. at 78. This is as opposed to “the rounded parallelogram shaped LED lights 

at the opposing outer ends of the rear surface of the claimed design of the ‘256 patent 

and the lines on the front and rear surface of the claimed design of the ‘256 patent.” 

Id.

Lastly, “the bottom surface of the design of the Gyroor ‘E’ hoverboard differs 

from both the claimed design of the ‘256 patent and the design of prior art ‘906 patent 

in that the opposing flat outer portions have a pattern of vent holes and just to the 

inside of the vent holes is a slight diagonally downwardly protruding arcuate edge.” 

Id. at 78. “In addition, the recessed central portion of the design of the Gyroor ‘E’

hoverboard is defined by opposing slight diagonally downwardly protruding arcuate 

edges with the center portion having six narrow longitudinal ribs.” Id.

* * * *

Plaintiffs argue that this analysis, supported by Gandy’s report and testimony,

is too focused on the details of the designs and fails to compare the “overall 

impressions” of the patents in suit and the accused products, as is required by Federal 

Circuit law. But as Gandy credibly explained in his testimony, it is impossible to 

consider a design’s overall impression without examining its details. See R. 620 at 

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144:18–145:2 (when asked whether he looks at individual “features in isolation,” 

Gandy responded that when he addresses “individual features, that’s part of the 

whole analysis from an overall appearance standpoint. You have to look at all of the 

features as a whole. That’s what determines what the overall appearance looks like.”).

In other words, the overall impression is embodied in the details. Any analysis that—

like Hatch’s—ignores the details will fail to gain a proper perspective on the overall 

impression of a design. The Court’s analysis, guided by Gandy’s highly credible 

method, examined the details of each design to understand the overall impression of 

each and compare them. This analysis demonstrates that a reasonable jury could find 

that the accused products are not substantially similar to the patents in suit, such 

that an ordinary observer would not be deceived into believing that the accused 

products are the same as the patented design. This is a defense that has “substantial 

merit,” such that Plaintiffs have failed to demonstrate a sufficient likelihood of 

success on the merits. Having failed to make this showing, it is unnecessary to 

address the other factors required to justify an injunction.

Conclusion

For these reasons, the Court denied Plaintiffs’ motion for a preliminary 

injunction.

ENTERED:

______________________________

Honorable Thomas M. Durkin

United States District Judge

Dated: December 12, 2022

Case: 1:20-cv-04806 Document #: 626 Filed: 12/12/22 Page 34 of 34 PageID #:15780