UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

ABC Corporation I et al, 

 Plaintiff,

v. 

THE PARTNERSHIPS and 

UNINCORPORATED ASSOCIATIONS 

IDENTIFIED ON SCHEDULE “A”, 

 Defendants.

CASE NO. 1:20-cv-04806 

Judge: Honorable Thomas M. Durkin

DEFENDANT GYROOR-US’S MOTION FOR SUMMARY JUDGEMENT 

FOR DECLARATORY RELIEF OF NONINFRINGEMENT

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Table of Contents 

INTRODUCTION ........................................................................................................................... 1

PROCEDURAL HISTORY ........................................................................................................... 2

FACTUAL BACKGROUND ......................................................................................................... 2

LEGAL STANDARD ..................................................................................................................... 3

ARGUMENTS ................................................................................................................................. 3

I. D’857 PATENT IS PRESUMED VALID, ESPECIALLY AGAINST THE PATENTS-IN-SUIT ........... 3

II. NONINFRINGEMENT ANALYSIS ............................................................................................ 4

A. The Court should construe the claim of the D’857 and Patents-in-Suit based on 

the drawings ................................................................................................................... 4

B. Ordinary Observer Test ................................................................................................ 5

C. Side-by-Side Comparison ............................................................................................. 6

Top View Comparison ............................................................................................... 7

Bottom View Comparison .......................................................................................... 8

Side View Comparison ............................................................................................... 9

Front/Back View Comparison .................................................................................. 10

Perspective View Comparison ................................................................................. 11

CONCLUSION ............................................................................................................................. 12

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Defendant Gyroor-US (“Defendant”) brings this motion for summary judgment on its affirmative 

defense and counterclaim for declaratory relief of noninfringement. After a lengthy discussion, the Parties 

were unable to reach an agreement regarding the briefing schedule. See Email Commc’n, attached hereto 

as Exhibit 1. Defendants propose the briefing schedule as follows, 

Response to Motion August 2 

Reply August 9 

Introduction 

Summary judgment is appropriate in this case because there is no genuine dispute as to any 

material fact and Defendant is entitled to judgment as a matter of law. 

Both Plaintiffs and Defendant are in the business of selling hoverboards. Plaintiffs allege that four 

of Plaintiffs’ U.S. Design Patents – D737,723 (“D’723 patent”), D738,256 (“D’256 patent”), D785,112 

(“D’112 patent”), D784,195 (“D’195 patent”) (“Patents-in-Suit”) [Am. Compl., Dkt. No. 101, ¶7; Dkt. 

No. 101-13] have been infringed by Defendant’s product ASIN No. B08HW9TTBG (“Accused Product”) 

[Dkt. No. 101-14, p.2]. 

Defendant does not dispute the fact that Defendant sold the Accused Product. Defendant also does 

not dispute that Plaintiffs are the owner of the Patents-in-suit. The only remaining dispute is whether an 

ordinary observer, taking into account of the prior arts, would consider that the Accused Product and the 

Patents-in-Suit are substantially the same. 

First, no ordinary observer would find that the Accused Product and the Patents-in-Suit are 

substantially the same because the design of the Accused Product is plainly dissimilar from the claimed 

design of the Patents-in-Suit. 

Second, a motion for summary judgment is particularly appropriate in this case because not only is 

the Accused Product plainly dissimilar from the Patents-in-Suit, but also the Accused Product is based on a 

valid U.S. Design Patent – D808,857 (“D’857 patent,” attached here to as Exhibit 2), which Defendant is 

authorized to use. Aff. of Xie, ¶5, attached hereto as Exhibit 3. An ordinary observer would consider that the 

designs of the Accused Product and the D’857 patent are substantially the same. 

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Third, the ordinary observer will be drawn to those aspects of the claimed designs of the Patents-inSuit that differ from the D’857 patent. The different aspects would make the distinctions between the Patentsin-Suit and accused designs readily apparent to an ordinary observer. 

Therefore, the Court should find that the Accused Product does not infringe the Patents-in-Suit. 

Procedural History 

On October 24, 2020, Plaintiffs filed a motion for preliminary injunction [Dkt. No. 80], and 

subsequently withdrew on November 02, 2020. [Dkt. No. 94]. 

On November 20, 2020, Plaintiffs filed a second motion for preliminary injunction. [Dkt. No. 105]. 

On November 24, 2020, a hearing for preliminary injunction motion was held [Dkt. No. 112], 

and a preliminary injunction order was entered. [Dkt. No. 113]. 

Service of process was not effectuated until December 29, 2020. [Dkt. No. 218-4]. 

Plaintiff never received any notice of the preliminary injunction motion. [Dkt. No. 281-2, ¶4]. 

Factual Background 

The alleged infringing evidence provided by Plaintiffs identifies an Amazon listing titled 

“Gyroor T581 Hoverboard 6.5” off Road All Terrain Hoverboards with Bluetooth Speaker & LED 

Lights Two-Whell Self Balancing Hoverboard with Kart Seat Attachment UL 2272 Certified for Kids 

& Adults (Blue).” [Dkt. No. 101-7, p.11]. 

Amazon Listing 

Dkt. No. 101-7, pp. 11-24 

Accused Product 

ASIN No. B08HW9TTBG 

Kart Seat 

The Accused Product is identified as ASIN No. B08HW9TTBG. [Dkt. No. 101-7, p. 16]. 

The “Kart Seat” is not part of the Accused Product. 

The noninfringement analysis will focus solely on the Accused Product ASIN No. B08HW9TTBG. 

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Legal Standard 

A district court “shall grant summary judgment if 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). 

Arguments 

There is no genuine dispute as to any material fact in this case. Defendant accepts the alleged 

infringing evidence Plaintiffs provided on November 19, 2020, and admits that Defendant sold the 

Accused Products as shown in the alleged infringing evidence [Dkt. No. 101-7, pp. 11-24]. 

The noninfringement in this case is obvious. I. The Accused Product is based on a valid U.S. Design 

Patent – the D’857 patent, which does not infringe the Patents-in-Suit. II. The claims construction is clear, 

the Court should construe the claim of the D’857 and Patents-in-Suit based on the drawings. III. Applying 

the ordinary observer test, an ordinary observer will either find the Accused Product substantially similar to 

the D’857 patent, or will be drawn to those aspects of the claimed designs of the Patents-in-Suit that differ 

from the D’857 patent, and those different aspects would make the distinctions between the Patents-in-Suit 

and accused designs readily apparent to an ordinary observer. 

I. D’857 Patent is presumed valid, especially against the Patents-in-Suit 

A patent gives its owner the right to exclude others from making, using, offering to sell, selling, or 

importing the patented invention. 

“A patent shall be presumed valid.” 35 U.S.C. § 282. This presumption applies to design patents. 

Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d 1379, 1383 (Fed. Cir. 2020) (“Design patents are presumed 

valid.”). A valid patent cannot infringe another patent. 

It is especially true in this case because the D’857 patent was examined against the Patents-in-Suit. 

As shown below, all four Patents-in-Suit were cited as references by the patent examiner in the D’857 patent. 

Logically, the D’857 was only issued after the patent examiner made a finding that the D’857 patent 

embodies a “new, original and ornamental design.” See 35 U.S. Code § 171(a). 

Therefore, the D’857 patent and the Patents-in-Suit are not substantially similar. 

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Consequently, the Accused Product designed and manufactured based on the D’857 Patent does not 

infringe the Patents-in-Suit. 

II. Noninfringement Analysis 

A. The Court should construe the claim of the D’857 and Patents-in-Suit based on the drawings 

“The Supreme Court has recognized, a design is better represented by an illustration ‘than it could 

be by any description and a description would probably not be intelligible without the illustration.’” 

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (quoting Dobson v. Dornan, 118 

U.S. 10, 14 (1886)); accord Manual of Patent Examining Procedure (“MPEP”) §1503.01 (9th ed. 2019). 

“Given the recognized difficulties entailed in trying to describe a design in words, the preferable course 

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ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a 

detailed verbal description of the claimed design.” Id. 

Broken lines in the patent figures form no part of the claimed design. See MPEP §1503.02. 

(broken lines are used to illustrate “structure that is not part of the claimed design.”). 

B. Ordinary Observer Test 

Since Egyptian Goddess, Inc. v. Swisa, Inc., the sole test for determining whether a design patent 

has been infringed is the “ordinary observer” test. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 

678 (Fed. Cir. 2008). Under the “ordinary observer” test, “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, the first one 

patented is infringed by the other.” See Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 

F.3d 694, 701 (Fed. Cir. 2014) (quoting Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)). 

First, the “ordinary observer” test focus on whether “the accused design could not reasonably 

be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be 

deceived by the similarity between the claimed and accused designs”, “‘inducing him to purchase one 

supposing it to be the other.’” Id. at 701 (quoting Egyptian Goddess, Inc. 543 F.3d at 683). 

Second, “the ordinary observer is considered to be familiar with prior art designs, and ‘[w]hen 

the differences between the claimed and accused designs are viewed in light of the prior art, the 

attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design 

that differ from the prior art.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Access., Inc., 942 

F.3d 1119, 1129, (Fed. Cir. 2019) (citing Egyptian Goddess, 543 F.3d at 681). “If the claimed design is 

close to the prior art designs, small differences between the accused design and the claimed design 

assume more importance to the eye of the hypothetical ordinary observer.” Id.; see also Lanard Toys, 

Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1344, (Fed. Cir. 2020). 

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Lastly, the “ordinary observer” test requires the fact finder to “compare similarities in overall 

designs, not similarities of ornamental features in isolation.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 

796 F.3d 1312, 1335 (Fed. Cir. 2015). While the test is not an “element-by-element” comparison, the fact 

finder must “consider the ornamental features and analyze how they impact the overall design.” Lanard 

Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1343, (Fed. Cir. 2020), see also Richardson v. Stanley 

Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010). 

C. Side-by-Side Comparison 

Defendant has provided noninfringement evidence, including side-by-side comparisons of the 

Accused Product, the D’857 patent, and the Patents-in-Suit. [Aff. of Xie, pp 2-6, Ex. 3]. The comparison 

and analysis from multiple angles are fully incorporated in this motion. 

Here, the ordinary observer is an individual who is familiar with hoverboards and their different 

designs. The most important considerations impacting the overall visual impression to the ordinary 

observer are the design of the two standing pads, the design of the wheels, and the size, shape, and the 

curve of the fenders that cover the wheels. 

Here, an ordinary observer will either a) find the Accused Product substantially similar to the 

D’857 patent, which does not infringe the Patents-in-Suit; or b) will be drawn to those aspects of the 

claimed designs of the Patents-in-Suit that differ from the D’857 patent; and those different aspects 

would make the distinctions between the Patents-in-Suit and Accused Products readily apparent to an 

ordinary observer. 

In light of the D’857 patent, the Accused Product and the Patents-in-Suit are plainly dissimilar. 

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Top View Comparison 

Plaintiffs’ Patents-in-Suit 

 D’723 Patent D’256 Patent

 D’195 Patent D’112 Patent

 

The Licensed 

D’857 Patent 

The Accused 

Product 

The most prominent ornamental features from the Top View are the curved lines on the two 

standing pads. Both D’723 and D’256 Patents feature straight divergent lines. Neither D’195 nor D’112 

Patents features any design on standing pads (broken lines). 

The Accused Product has unique curved lines that match exactly the ornamental design of 

D’857 Patent, which is plainly dissimilar from the design the Patents-in-Suit. 

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Bottom View Comparison 

Plaintiffs’ Patents-in-Suit 

 D’723 Patent D’256 Patent

 D’195 Patent D’112 Patent

 

The Licensed 

D’857 Patent 

The Accused Product 

The most prominent ornamental features from the Bottom View are the size, numbers, shape, 

and arrangement of the vent holes. Only D’112 features a pair of 12 small closely arranged vent holes. 

The size, numbers, shape, and arrangement of the vent holes featured in the Accused Product 

match the ornamental design of D’857 Patent, which is plainly dissimilar from the D’112 Patent. 

Furthermore, the vertical ridges in the center of the Accused Product are ornamental features 

that are unique to the Accused Product and D’857 Patent. 

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Side View Comparison 

Plaintiffs’ Patents-in-Suit 

 D’723 Patent D’256 Patent

 D’195 Patent D’112 Patent

The Licensed D’857 Patent The Accused Product 

 None of the Patents-in-Suit features any design of the wheels (broken lines). See Aff. of Xie, 

p.4, Ex. 3. The wheels of the Accused product have a unique pentamerous design. Five irregular 

hexagons are evenly distributed on the wheel. This unique design match exactly the ornamental design 

of D’857 Patent, which is plainly dissimilar from the design the Patents-in-Suit. 

 The designs of the fenders are also distinctive. Each Patents-in-Suit has its own ornamental design. 

The fenders in D’723, D’195 and D’112 patents cover the top of the wheels fully. The fenders in D’256 

patent almost cover the top of the wheels fully. 

The Accused Product has a very different design of the fenders. The fenders in the Accused Product 

only covers the tip of the top wheels. Most of the wheels are not covered by the fender. 

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Front/Back View Comparison 

Plaintiffs’ Patents-in-Suit 

 D’723 Patent D’256 Patent

 D’195 Patent D’112 Patent

The Licensed 

D’857 Patent 

The Accused Product 

The most prominent ornamental features from the Front/Back View are the size, curve and 

shape of the fenders that cover the wheels. Each Patents-in-Suit has its own ornamental design. 

The Accused Product has its own unique design of the fenders. The size of the fenders is 

substantially smaller, only covering less than one eighth of the wheels. The fenders also feature sharp 

edges which are distinctive from the smooth curved surfaces featured in the Patents-in-Suit. 

Furthermore, the center of the Accused Product caves in, which match exactly the ornamental 

design of D’857 Patent. All the Patents-in-Suit protrude in the center. 

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Perspective View Comparison 

Plaintiffs’ Patents-in-Suit 

 D’723 Patent D’256 Patent

 D’195 Patent D’112 Patent

 The Licensed D’857 Patent The Accused Product

The perspective view comparison shows the overall visual distinctions between the Patents-in-Suit 

and the Accused Product. 

Each element of the ornamental feature, viewed together, only enhances the dissimilarity between 

the Accused Product and the Patent-in-Suite. The combination of the substantially dissimilar standing 

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pads, the wheels, and the fenders creates an overall visual impression that no ordinary observer would 

consider that the Accused Product and the Patents-in-Suit are of the same design. 

Conclusion 

For the foregoing reasons, Defendant respectfully requests that the Court grant summary 

judgment that Accused Product does not infringe Plaintiffs’ Patents-in-Suit, and dismiss Plaintiffs’ 

design patent infringement claims Count I – IV. 

Date: 07/19/2021 /s/ Tianyu Ju 

Tianyu Ju, Esq. 

GLACIER LAW PLLC 

200 E. Randolph Dr., Ste. 5100 

Chicago, IL 60601 

Attorney for Defendant 

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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this July 19, 2021, I electronically filed the foregoing file with 

the Clerk of Court using the CM/ECF system, and service was perfected on all counsel of record and 

interested parties through this system, which will deliver a true and correct copy of the foregoing 

documents via CM/ECF. 

Date: 07/19/2021 /s/ Tianyu Ju 

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