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”,

Defendant.

CASE NO. 1:20-cv-04806

Judge: Honorable Thomas M. Durkin

DEFENDANT FENGCHI-US’ OPPOSITION TO

PLAINTIFFS’ MOTION FOR ENTRY OF A PRELIMINARY INJUNCTION

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Table of Contents

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

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

PROCEDURAL BACKGROUND................................................................................................ 2

LEGAL STANDARDS................................................................................................................... 3

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

I. AN “ORDINARY OBSERVER” IN THIS CASE SHOULD BE A PURCHASER WHO IS FAMILIAR 

WITH HOVERBOARDS AND THE PRIOR ART DESIGNS, AND PLAINTIFFS’ DEFINITION OF AN

“ORDINARY OBSERVER” MUST BE REJECTED ...................................................................... 3

II. IN LIGHT OF THE PRIOR ART D’906 PATENT, AN ORDINARY OBSERVER WILL NOT FIND

THE ACCUSED PRODUCT AND THE PATENTS-IN-SUIT HAVE SUBSTANTIALLY SIMILAR

OVERALL “HOURGLASS” SHAPE........................................................................................... 4

A. The D’906 Patent constitutes Prior Art to all Patents-in-Suit......................................... 5

B. Plaintiffs failed to compare Accused Product, Patents-in-Suit and the prior art D‘906 

patent............................................................................................................................... 5

III. AN ORDINARY OBSERVER, FAMILIAR WITH THE PRIOR ART, WILL NOT BE DECEIVED INTO

THINKING THAT THE ACCUSED PRODUCT IS THE SAME AS THE PATENTS-IN-SUIT ............ 8

A. Plaintiffs failed to compare the ornamental features and failed to analyze how they 

impact the overall design ................................................................................................ 8

B. None of the Patent-in-Suit claims any ornamental features of the Accused Product ..... 8

C. Under the Gestalt Principles, the ornamental features of the Accused Product listed 

above would be perceived as more dramatic and obvious, which would significantly 

impact the overall visual impression of the ordinary observer..................................... 12

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

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Defendant Fengchi-US (“Fengchi-US” or “Defendant”), without waiving any Rule 12(b) defenses, 

respectfully submits this Opposition to Plaintiffs’ motion for entry of a preliminary injunction. [Dkt. 384]. 

Introduction

The hoverboard market is a rapidly growing industry. Both Plaintiffs Hangzhou Chic Intelligent 

Technology Co. Ltd. (“Chic”) and Unicorn Global, Inc (“Unicorn,” together “Plaintiffs”) and Defendant

are in the business of selling hoverboards.

Plaintiffs are notoriously known for bringing baseless infringement claims against competitors to 

gain market monopoly.1 This is Plaintiffs’ another attempt to enforce meritless patent infringement claims. 

This Preliminary Injunction against Fenchi-US must be denied because Plaintiffs failed to show a

likelihood of prevailing on the merit of the design patent infringement claim on the following grounds:

I. An “Ordinary Observer” in this case should be — a purchaser who is familiar with hoverboards and

the prior arts designs. Therefore, Plaintiffs’ wrong “ordinary observer standards” based on Mr. 

Hatch’s erroneous statements must be rejected.

II. Plaintiffs failed to make comparison of the patents-in-suit and the accused product in light of the prior 

art — namely, the U.S. Design Patent D739,906 Patent (“D’906 Patent,” attached hereto as Exhibit 1). 

The D’906 Patent first claimed the “hourglass” peripheral shape of hoverboards. Considering the 

patents-in-suit all have the same hourglass shape as the D’906 Patent, and the accused product has a 

distinct overall shape from the Patents-in-Suit, the noninfringement obvious to an ordinary observer. 

III. An ordinary observer, familiar with the prior art, will not be deceived into thinking that the accused 

product is the same as the patents-in-suit. It is undeniable that the ornamental features of the accused 

product are plainly different from the patents-in-suit. None of the Patents-in-Suit claimed any 

ornamental features of the Accused Product. The ornamental differences, based on the claimed design 

of the U.S. D891,297 Patent (“D’297 Patent,” attached hereto as Exhibit 2), greatly impact the 

ordinary observer's visual perception of the overall design, thus renders the design of accused product

substantially dissimilar from the claimed designs of the patents-in-suit. 

1 See Nicole D. Prysby, Antitrust, Lanham Act claims against Chinese hoverboard company avoid dismissal,

Wolters Kluwer (March 23, 2020), https://lrus.wolterskluwer.com/news/antitrust-law-daily/antitrust-lanham-actclaims-against-chinese-hoverboard-company-avoid-dismissal/108782.

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Factual Background

Evidence provided by Plaintiffs identifies the alleged infringing products (“Accused Product”) as 

“Gyroor Hoverboard Offroad All Terrain Flash Wheel Self Balancing G5 Hoverboards with Bluetooth 

Speaker, UL 2272 Certified Best Gift ...” [Dkt. No. 227-1, p. 42 of 92]. The Accused Product has a unique 

ASIN number B08NT551P4 [Dkt. No. 227-3, p. 4 of 4]. The Accused Product is also identified as Gryoor D 

(“Type D Product”) by Plaintiffs. [Dkt. No. 385, p. 20; Dkt. No. 388, p. 20]. 

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”) [Dkt.

No. 101, ¶14; Dkt No. 101-13] have been infringed by the Accused Product. However, Plaintiffs made no 

allegations against Defendant or the Accused Product in its Third Amended Complaint. [Dkt. No. 101]. 

Plaintiffs made no specific allegations aside from stating that “Fengchi-US store is related to or affiliated 

with Gyroor-US” [Dkt. No. 227-1, ¶17], which is unsupported by any evidence. 

Procedural Background

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

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

On November 24, 2020, a preliminary injunction order was entered. [Dkt. No. 113].

On December 24, 2020, a modified preliminary injunction order was entered. [Dkt. No. 147].

On February 12, 2021, Fengchi-US’ financial account was restrained.

Service of process was not effectuated on Defendant until June 25, 2021. [Dkt. No. 310].

Timeline

Date: Event:

07/10/2020 Initial Filing

11/20/2020 Motion for Preliminary Injunction Filed [Dkt. No. 105]

11/24/2020 Hearing for Preliminary Injunction held on November 24, 2020

11/24/2020 Preliminary Injunction Order entered [Dkt. No. 113]

12/23/2020 Modified Preliminary Injunction Order entered [Dkt. No. 147] (to eBay)

02/12/2021 Fengchi-US’ financial account was restrained

06/25/2021 Email Service of Process [Dkt. No. 310]

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Legal Standards

“To obtain a preliminary injunction, a plaintiff must show that: (1) without this relief, it will 

suffer ‘irreparable harm’; (2) ‘traditional legal remedies would be inadequate’; and (3) it has some 

likelihood of prevailing on the merits of its claims.” Speech First, Inc. v. Killeen, 968 F.3d 628, 637 

(7th Cir. 2020) (quoting Courthouse News Serv. v. Brown, 908 F.3d 1063, 1068 (7th Cir. 2018)).

Arguments

Plaintiffs first applied the wrong “ordinary observer standard” and claim that an ordinary observer 

“would be a consumer user or the parent of a user, each having little or no experience purchasing 

hoverboards.” [Dkt. No. 385, p. 19, Dkt. No. 388, p.8]. This “ordinary observer” must be rejected because 

all the leading cases require that the ordinary observer must be familiar with the prior art designs.

Then, based on the wrong standard, Plaintiffs failed to make any comparison of the Patents-inSuit and the Accused Product in light of the prior art — the “D’906” Patent.

Supported by former design patent examiner Mr. Gandy’s and Professor Rake’s declarations

(attached hereto as Exhibit 2 & 3), an ordinary observer, familiar with the D’906 Patent, will not 

consider the Accused Product to be “substantially similar” to the Patents-in-Suit. The distinct overall 

shape and the plainly different ornamental features make it obvious to an ordinary observer that the 

design of the Accused Product is substantially dissimilar from the claimed design of the Patents-in-Suit. 

I. An “Ordinary Observer” in this case should be a purchaser who is familiar with hoverboards

and the prior art designs, and Plaintiffs’ definition of an “ordinary observer” must be rejected

Plaintiffs’ expert witness Mr. Hatch provided the wrong ordinary observer standard. Based on 

Mr. Hatch’s declaration, Plaintiffs reply on Gorham Co. v. White, 81 U.S. 511, 527 (1872) and claim an 

ordinary observer here should be “a consumer user or the parent of a user, each having little or no 

experience purchasing hoverboards.” [Dkt. No. 385, pp. 18-19; Dkt. No. 388, p. 8]. 

But the Gorham standard is limited to when “the claimed design and the accused design will be 

sufficiently distinct,” which is not the appropriate standard in this case. See Egyptian Goddess, Inc. v.

Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008).

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“Where there are many examples of similar prior art designs, as in a case such as Whitman Saddle, 

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.” See 

Egyptian Goddess, 543 F.3d at 678 (citing Smith v. Whitman Saddle Co., 148 U.S. 674, (1893)); see also 

Wallace v. Ideavillage Prods. Corp., 640 Fed. Appx. 970, 978 (Fed. Cir, 2016).

Here, cited by both Plaintiffs and Defendant, its undisputed that there many examples of similar 

prior art designs that are relevant to the. [Decl. of Gandy, Ex. 1, ¶¶1-2; see also Dkt. No. 388, pp. 16-18].

The “hypothetical ordinary observer who is conversant with the prior art” standard obviously applies here. 

A person with “little or no experience” with hoverboards clearly does not satisfy the ordinary observer test. 

Therefore, in light of the many similar prior art designs, the hypothetical ordinary observer in this 

case should be a purchaser who is familiar with hoverboards and the prior art designs.

II. In light of the prior art D’906 Patent, an ordinary observer will NOT find the Accused Product

and the Patents-in-Suit have substantially similar overall “hourglass” shape

In the most recent landmark case Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir 

2020), The Feder Circuit prescribe that:

[T]he ordinary observer is deemed to view the differences between the patented 

design and the accused product in the context of the prior art. When the differences 

between the claimed and accused design are viewed in light of the prior art, the attention 

of the hypothetical ordinary observer will be drawn to those aspects of the claimed 

design that differ from the prior art. And when the claimed design is close to the prior 

art designs, small differences between the accused design and the claimed design are 

likely to be important to the eye of the hypothetical ordinary observer.” Id. (quoting 

Egyptian Goddess, 543 F.3d at 676).

Here, because the Patents-in-Suit and the D’906 Patent have similar overall hourglass peripheral shape, 

the clear differences between the Accused Product and the Patents-in-Suit are important to the ordinary 

observer. In light of the prior art D’906 Patent, an ordinary observer will not find the Accused Product and 

the Patents-in-Suit have substantially similar overall “hourglass” shape.

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A. The D’906 Patent constitutes Prior Art to all Patents-in-Suit

Under 35 U.S.C. §102(a)(2), prior art includes “a patent issued under section 151, or in an 

application for patent published or deemed published under section 122(b), in which the patent or 

application, as the case may be, names another inventor and was effectively filed before the effective 

filing date of the claimed invention.”

Patents Application Filing Date Effective Filing Date

Prior Aart - D’906 Patent 03/12/2013 03/12/2013

Patents-in-Suit (D’723 Patent) 12/15/2014 12/15/2014

Patents-in-Suit (D’256 Patent) 12/15/2014 12/15/2014

Patents-in-Suit (D’195 Patent) 02/29/2016 02/29/2016

Patents-in-Suit (D’112 Patent) 02/29/2016 02/29/2016

Here, the application of the D’906 Patent was effectively filed before the effective filing date 

of the Patents-in-Suit. Therefore, D’906 Patent is prior art to all Patents-in-Suit.

B. Plaintiffs failed to compare Accused Product, Patents-in-Suit and the prior art D‘906 patent

Plaintiffs claim that “Plaintiffs’ commercial success is due in part to its revolutionary patented

designs that feature an hourglass shape with a central support platform.” [Dkt. No. 385, p. 20].

Without properly comparing the D’906 Patent with the Patents-in-Suit, Mr. Hatch further claims

“none of the prior art create the impression of any integrated “hourglass” body with a relatively flat surface

across the top of the main body.” [Dkt. No. 388, pp.16-18]. This statement is plainly incorrect.

This “hourglass” peripheral shape was first disclosed and claimed in the D’906 Patent. As shown

below in Table 1, page 6, the prior art D‘906 Patent claimed and the Patents-in-Suit all have a hourglass

shape with smooth curves. [Decl. of Rake, Ex 4, ¶¶53-56, 146; Decl. of Gandy, Ex 3, ¶¶23, 91, 97, 107].

In contrast, the Accused Product has a more “angular body shape with sharp edges.” Id.

Therefore, in light of the D’906 Patent, an ordinary observer will find the Accused Product has a 

substantially different overall shape from the Patents-in-Suit. the “revolutionary design” was already 

claimed in the prior art D’906 Patent. Plaintiffs did not invent the hourglass shape of hoverboards. 

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Table 1 — Comparison of Overall Hourglass Shape

Patents-in-Suit

D’723 Patent

Patents-in-Suit

D’256 Patent

Patents-in-Suit

D’195 Patent

Patents-in-Suit

D’112 Patent

Prior Aart 

D’906 Patent

Accused Product

Substantially Similar Patent 

D’297 Patent

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Table. 2 — Comparison of Overall Shape – Front View

Patents-in-Suit

D’723 Patent

Patents-in-Suit

D’256 Patent

Patents-in-Suit

D’195 Patent

Patents-in-Suit

D’112 Patent

Prior Aart 

D’906 Patent

Accused Product

Substantially Similar Patent 

D’297 Patent

Table 2 compares the front view of the prior art D‘906 Patent, the Patents-in-Suit and the

Accused Product. Both the prior art D‘906 Patent and the Patents-in-Suit have “a slightly raised convex 

contour while the corresponding center portion of the Accused Product is slightly recessed down 

below.” [Decl. of Gandy, Ex 3, ¶¶91, 97, 107].

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Therefore, in light of the D’906 Patent, an ordinary observer will find the Accused Product 

has a substantially different overall shape from the Patents-in-Suit.

III. An ordinary observer, familiar with the prior art, will not be deceived into thinking that the

Accused Product is the same as the Patents-in-Suit

A. Plaintiffs failed to compare the ornamental features and failed to analyze how they impact the 

overall design

Under the “ordinary observer” test, a court must consider the ornamental features [of each element] 

and analyze how they impact the overall design.” Lanard, 958 F.3d at 1343-44 (citing Richardson v. 

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

“While the ‘ordinary observer’ test is not an element-by-element comparison,” it also does not 

ignore the reality that designs can, and often do, have both functional and ornamental aspects. Id. (citing

Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006)). Analyzing the 

ornamental features is necessary to determine how the ornamental differences in each element would 

impact the ordinary observer's perception of the overall designs. Id. 

Mr. Hatch’s declaration failed to address the following features that contribute to the overall 

shape and appearance of the Accused Products and the Patents-in-Suit: 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, contrary to Mr. Hatch’s statement; c) The specific shape and appearance of the “arched covers;” 

d) The specific shape and appearance of lights and other ornamental features; and e) Features on the 

bottom surface which will be described below. [Gandy, Ex 3, ¶¶21, 22, Decl. of Rake, Ex 4, ¶¶57-61].

B. None of the Patent-in-Suit claims any ornamental features of the Accused Product

Supported by former design patent examiner Mr, Gandy’s and Professor Rake’s declarations, the 

noninfringement is clear and obvious in this case. 

Frist, as mentioned in Part II, the overall peripheral shape of the Accused Product is substantially 

dissimilar to the Patents-in-Suit, which significantly impacts an ordinary observer’s visual perception of 

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the over designs of the Accused Product. [Decl. of Gandy, Ex 3, ¶¶96, 102, 106, 112; Decl. of Rake,

Ex 4, ¶¶148-150, 156, 160, 166, 168].

Second, the ornamental features of each element in the Accused Product are based on the 

claimed design of the D’297 Patent. An ordinary observer would consider the Accused Product to be 

substantially similar to the D’297 Patent. [Decl. of Rake, Ex 4, ¶189].

In contrast, no ordinary observer would consider Accused Product is substantially similar to the 

Patents-in-Suit because none of the Patent-in-Suit claimed any ornamental features of the Accused Product.

1. None of the Patents-in-Suit claimed food pad design of the Accused Product

The shape and design of the foot pads of the Accused Product are plainly different from the 

Patents-in-Suit. [Decl. of Gandy, Ex 3, ¶¶93, 99; Decl. of Rake, Ex 4, ¶¶146, 152, 158, 164].

Here, D’723 and D’256 Patents both claim the design of straight divergent lines on the food pads. 

D’195 nor D’112 made disclosure of certain design but did not claim any designs. 

The D’297 Patent claimed unique three parallel lines and other intricate patterns on the standing 

pads, which are plainly dissimilar from the designs of the Patents-in-Suit. The Accused Product has 

identical foot pad design as D’297 Patent.

Patents-in-Suit

D’723 Patent

Patents-in-Suit

D’256 Patent

Patents-in-Suit

D’195 Patent

Patents-in-Suit

D’112 Patent

Substantially Similar Patent 

D’297 Patent

Accused Product

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2. None of the Patents-in-Suit claimed the wheel covers design of the Accused Product

The wheel covers of the Accused Product are plainly different from the Patents-in-Suit. 

The Patents-in-Suit all have semi-circular wheel covers and extend over and cover the entire 

wheel. None of the Patent-in-Suit claimed the wheel covers design of the Accused Product.

The D’297 Patent claimed the wheel covers design with opposing diagonally straight side edges, 

and a substantially flat top edge which curves outwardly but does not extend over the entire wheel.

[Decl. of Gandy, Ex 3, ¶¶103, 108; Decl. of Rake, Ex 4, ¶¶144, 150, 156, 162, 168].

The wheel covers of the Accused Product have identical wheel covers design as D’297 Patent. 

Patents-in-Suit

D’723 Patent

Patents-in-Suit

D’256 Patent

Patents-in-Suit

D’195 Patent

Patents-in-Suit

D’112 Patent

Substantially Similar Patent 

D’297 Patent

Accused Product

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3. None of the Patents-in-Suit claimed the light design of the Accused Product

The position, shape, and size of the lights of the Accused Product are also plainly different from 

the Patents-in-Suit. None of the Patent-in-Suit claimed the wheel covers design of the Accused Product.

Highlighted, the Patents-in-Suit all have different size and shape and are positioned differently 

on the front panel of the hoverboard. [Decl. of Rake, Ex 4, ¶¶147, 153, 159, 165].

The light design of the Accused Product is identical to the thin narrow strips as claimed in the 

D’297 Patent. 

Patents-inSuit

D’723 Patent

Patents-inSuit

D’256 Patent

Patents-inSuit

D’195 Patent

Patents-inSuit

D’112 Patent

Accused 

Product

Substantially 

Similar Patent 

D’297 Patent

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C. Under the Gestalt Principles, the ornamental features of the Accused Product listed above 

would be perceived as more dramatic and obvious, which would significantly impact the 

overall visual impression of the ordinary observer

“The Gestalt principles of visual perception teaches us that the eye is attracted to areas of high 

contrast.” [Decl. of Rake, Ex. 4, ¶25]. Under the Figure-Ground principles, “some shapes or contours 

take a prominent role (figure) while others recede into the background (ground).” Id. at 26.

Because certain designs would be perceived as more dramatic and obvious, the size, shape, and 

character of the lights, size and shape of the wheel covers, and the patterns of the foot pads would the 

would significantly impact the ordinary observer's visual perception of the overall designs. [Decl. of 

Rake, Ex. 4, ¶¶ ¶¶147, 153, 159, 165, 183-186]. As a result, the differences between the Patents-in-Suit

and accused design take on greater significance. 

Consequently, an ordinary observer, taking into account the prior art, would not believe the 

accused design to be the same as the patented design.

Conclusion

For the foregoing reasons, Defendant respectfully requests that this Court deny Plaintiffs’ 

motion for entry of a preliminary injunction.

Date: 09/03/2021

Respectfully Submitted: 

/s/ Tianyu Ju

Tianyu Ju

Iris.Ju@glacier.law

He Cheng

Robin.Cheng@glacier.law

Tao Liu

Tao.Liu@glacier.law

Glacier Law PLLC

200 Park Avenue, Suite1703 

New York, NY 10166

www.glacier.law

Tel: +1 (332) 208-8882

Fax: +1 (312) 801-4587

Attorneys for Defendant

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CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on this September 03, 2021, I electronically filed the foregoing 

file with the Clerk of Court using the CM/ECF system, along with the attached Exhibits, 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: 09/03/2021 /s/ Tianyu Ju

Tianyu Ju

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