1 

IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

ABC CORPORATION I, 

ABC CORPORATION II, 

Plaintiffs, 

v. 

THE PARTNERSHIPS AND 

UNINCORPORATED ASSOCIATIONS 

IDENTIFIED ON SCHEDULE “A”, 

Defendants. 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

Case No. 1:20-cv-04806 

Honorable Thomas M. Durkin 

Magistrate Judge Jeffrey Cole 

ANSWER TO COUNTERCLAIM BY DEFENDANT FENGCHI-US 

Plaintiffs/Counterclaim Defendants Hangzhou Chic Intelligent Technology Co. and 

Unicorn Global, Inc. (“Plaintiffs”), by and through its attorneys, Loeb & Loeb LLP, answer 

Defendant Fengchi-US’s (“Defendant”) Counterclaim as follows: 

JURISDICTION AND VENUE 

1. These are Counterclaims brought by Defendant/Counterclaimant Defendant 

(“Defendant”), against Plaintiffs/Counter[claim] [D]efendants Hangzhou Chic Intelligent 

Technology Co., Ltd., and Unicorn Global, Inc. (collectively “Plaintiffs”) for declaratory judgment 

that U.S. Patent Nos. D737,723, D738,256, D785,112, and D784,195 (collectively “the Patentsin-Suit”) are not infringed, either directly or indirectly by inducement, by Defendant’s use, 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 1 of 15 PageID #:13261
2 

manufacture, sale, and offer for sale of products and technology as identified in the Third Amended 

Complaint. 

ANSWER: Admitted that Defendant has attempted to bring a counterclaim against 

Plaintiffs for declaratory judgment of non-infringement. Plaintiffs otherwise deny any allegation 

in which Defendant claims to have not infringed the Patents-in-Suit. 

2. This Court has jurisdiction over these Counterclaims under the federal question 

jurisdiction of this Court, 28 U.S.C. § 1331, 28 U.S.C. § 1338(a), 28 U.S.C. § 1367(a), the 

Declaratory Judgment Act, 28 U.S.C. § 2201-2202, the patent laws, 35 U.S.C. § 1, et seq., and 

under Rule 13 of the Federal Rules of Civil Procedure. 

ANSWER: Admitted that the Court has federal question jurisdiction over Defendant’s 

counterclaims under 28 U.S.C. § 1331, 28 U.S.C. § 1338(a), and 28 U.S.C. § 1367(a). Denied as 

to the remaining allegations. 

3. Venue in this district is proper pursuant to 28 U.S.C. § 1400(b), in that this case is 

an action for patent infringement arising under the patent laws of the United States and pursuant 

to 28 U.S.C. § 1391(b) and (c), as Plaintiffs/Counter[claim] [D]efendants have a principal place of 

business and thereby reside in this judicial district, a substantial portion of the events giving rise 

to these Counterclaims occurred in this judicial district, and Plaintiffs are subject to personal 

jurisdiction of this Court having commenced its action in this Court. 

ANSWER: Admitted that venue in this district is proper under 28 U.S.C. § 1400(b). 

Denied that Plaintiffs have a principal place of business in this district and thereby reside in this 

district. 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 2 of 15 PageID #:13262
3 

THE PARTIES 

4. Defendant/Counterclaimant is [a] Chinese company with its principal place of 

business in China. 

ANSWER: Plaintiffs are without sufficient knowledge or information so as to form a 

belief as to the truth of the allegations and therefore deny the same. 

5. Defendant has an internet storefront that it uses to sell hoverboards. 

ANSWER: Admitted. 

6. Upon information and belief, Plaintiff/Counter[claim] [D]efendant Hangzhou Chic 

Intelligent Technology Co., Ltd. (“Hangzhou”) is a Chinese company located in the Liangzhou 

University Science and Technology Park, Yuhang District, Hangzhou, China. 

ANSWER: Admitted. 

COUNT I 

Declaratory Judgment of Noninfringement1

7. Defendants’ Accused Product (ASIN No. B08NT551P4, “Gyroor D”, identified in 

Dkt. No. 227-3, p. 4 of 4) has not infringed, and is not infringing, directly or indirectly by 

inducement, any valid and enforceable claim contained in U.S. Patent Nos. D737,723, D738,256, 

D785,112, and D784,195 (collectively “the Patents-in-Suit”). 

ANSWER: Denied. 

8. Plaintiffs allege that the 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 Gyroor Product B in the Third Amended Complaint. [Dkt. No. 101]. Plaintiffs 

 

1

 The numbering of Defendant’s Counterclaims is incorrect, proceeding from 6 directly to 32, thereby omitting 

paragraphs 7 to 31. Plaintiffs will adopt the correct numerical order, referring to paragraphs 32-62 as paragraphs 7 

to 36. 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 3 of 15 PageID #:13263
4 

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. 

ANSWER: Denied. 

9. 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 in the present case. 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 

ANSWER: Although the ordinary observer test applies, Plaintiffs reject Defendant’s 

interpretation regarding the application and meaning of the test. Therefore, Plaintiffs deny the 

allegations in this paragraph. 

10. In the most recent landmark case Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 

1337 (Fed. Cir 2020), the Feder[al] Circuit prescribe[d] 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). 

ANSWER: Admitted that this allegation discloses a partial quote with Defendant’s 

emphasis selected from Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir 2020). 

Plaintiffs deny the remaining allegations of the paragraph. 

11. The Patents-in-Suit and the U.S. Design Patent D739,906 Patent (hereinafter, 

“D’906”) are very close in their overall hourglass shape, the differences between the Gyroor 

Product B and the Patents-in-Suit are important to the ordinary observer. In light of the prior art 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 4 of 15 PageID #:13264
5 

D’906 Patent, an ordinary observer will not find the Gyroor Product B and the Patents-in-Suit have 

substantially similar overall “hourglass” shape. 

ANSWER: Denied. 

12. 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 Art - D’906 Patent 03/12/2013 03/12/2013 

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

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

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

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

ANSWER: Admitted that this allegation discloses selected language from 35 U.S.C. 

§102(a)(2). Admitted as to the Application Filing Dates for each patent. Plaintiffs deny the 

remaining allegations of the paragraph. 

13. 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. 

ANSWER: Denied. 

14. This “hourglass” peripheral shape was first disclosed and claimed in the prior art — 

the D’906 Patent. As shown below in Table 1, the Patents-in-Suit all have an hourglass shape with 

smooth curves similar to the D’906 patent. [Dkt. No. 376, Decl. of Rake, ¶¶53-56, 92, 98; Dkt. 

No. 377, Decl. of Gandy, ¶¶47, 53, 59, 64]. In contrast, the Gyroor Product B has a more “angular 

body shape with sharp edges.” Id. 

ANSWER: Denied. 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 5 of 15 PageID #:13265
6 

15. The “revolutionary design” was already claimed in the prior art D’906 Patent. 

Plaintiffs did not invent the hourglass shape of hoverboards. Therefore, in light of the D’906 Patent, 

an ordinary observer will find the Gyroor Product B has a substantially different overall shape from 

the Patents-in-Suit. 

Table 1 — Comparison of Overall Hourglass Shape 

Patents-inSuit D’723 

Patent 

Patents-inSuit D’256 

Patent 

Patents-inSuit D’195 

Patent 

Patents-inSuit D’112 

Patent 

Prior Art 

D’906 

Patent 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 6 of 15 PageID #:13266
7 

Gyroor Product D 

Substantially Similar 

Patent D’297 Patent 

Table. 2 — Comparison of Overall Shape – Front 

View

Patents-inSuit D’723 

Patent 

Patents-inSuit D’256 

Patent 

Patents-inSuit D’195 

Patent 

Patents-inSuit D’112 

Patent 

Prior Art 

D’906 

Patent 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 7 of 15 PageID #:13267
8 

Gyroor Product D 

Substantially Similar 

Patent D’297 Patent 

ANSWER: Denied. 

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

and the Gyroor Product B. 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 top surface of the design of 

Gyroor “B” hoverboard is substantially flat and slightly recessed down below the opposing outer 

foot surfaces.” [Dkt. No. 377, Decl. of Gandy, ¶¶ 91, 97, 107].

ANSWER: Denied. 

17. 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)). 

ANSWER: Admitted that this allegation discloses a quote selected from Lanard Toys, 

Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir 2020). Plaintiffs deny the remainder of this 

allegation. 

18. “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 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 8 of 15 PageID #:13268
9 

differences in each element would impact the ordinary observer's perception of the overall designs. 

Id. 

ANSWER: Admitted that the first sentence of this allegation discloses a quote selected 

from Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir 2020). Denied as to the 

remaining allegations. 

19. None of the Patents-in-Suit claims any ornamental features of the Gyroor Product 

D. 

ANSWER: Denied. 

20. First, the overall peripheral shape of the Gyroor Product D is substantially 

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

perception of the over designs of the Gyroor Product D. [Dkt. No. 377, Decl. of Gandy, ¶¶96, 102, 

106, 112; Dkt. No. 377, Decl. of Rake, ¶¶148-150, 156, 160, 166, 168]. 

ANSWER: Denied. 

21. Second, the ornamental features of each element in the Gyroor Product D are based 

on the claimed design of the D’297 Patent. An ordinary observer would consider the Gyroor 

Product D to be substantially similar to the D’297 Patent. [Dkt. No. 376, Decl. of Rake, ¶189]. 

ANSWER: Denied. 

22. In contrast, no ordinary observer would consider Gyroor Product D is substantially 

similar to the Patents-in-Suit because none of the Patent-in-Suit claimed any ornamental features 

of the Gyroor Product D. 

ANSWER: Denied. 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 9 of 15 PageID #:13269
10 

23. The shape and design of the foot pads of the Gyroor Product D are plainly different 

from the Patents- in-Suit. [Dkt. No. 377, Decl. of Gandy, ¶¶93, 99; Dkt. No. 376, Decl. of Rake, 

¶¶146, 152, 158, 164]. 

ANSWER: Denied. 

24. 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. 

ANSWER: Denied. 

25. 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 Gyroor 

Product D has identical foot pad design as D’297 Patent. 

Patent-in-Suit 

D’723 Patent 

Patent-in-Suit 

D’256 Patent

Patent-in-Suit 

D’195 Patent 

Patent-in-Suit 

D’112 Patent 

Substantially Similar

Patent D’297 Patent

Gyroor Product D 

ANSWER: Denied. 

26. The wheel covers of the Gyroor Product D are plainly different from the Patents-inSuit. 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 10 of 15 PageID #:13270
11 

ANSWER: Denied. 

27. 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 Gyroor Product 

D. 

ANSWER: Denied. 

28. 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. [Dkt. No. 377, Decl. of Gandy, ¶¶103, 108; Dkt. No. 376, Decl. of Rake, 

¶¶144, 150, 156, 162, 168]. 

ANSWER: Denied. 

29. The wheel covers of the Gyroor Product D have identical wheel covers design as 

D’297 Patent. 

 

Patent-in-Suit 

D’723 Patent 

Patent-in-Suit

D’256 Patent

Patent-in-Suit 

D’195 Patent 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 11 of 15 PageID #:13271
12 

Patents-inSuit D’112 

Patent 

Substantially Similar

Patent D’297 Patent 

Gyroor Product D 

ANSWER: Denied. 

30. The position, shape, and size of the lights of the Gyroor Product D are also plainly 

different from the Patents-in-Suit. None of the Patent-in-Suit claimed the light design of the Gyroor 

Product D. 

ANSWER: Denied. 

31. The position, shape, and size of the lights of the Gyroor Product D are also plainly 

different from the Patents-in-Suit. None of the Patent-in-Suit claimed the light design of the Gyroor 

Product D. 

ANSWER: Denied. 

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

differently on the front panel of the hoverboard. [Dkt. No. 376, Decl. of Rake, ¶¶147, 153, 159, 

165]. 

ANSWER: Denied. 

33. The light design of the Gyroor Product D is identical to the thin narrow strips as 

claimed in the D’297 Patent. 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 12 of 15 PageID #:13272
13 

Patentsin- Suit 

D’723 Patent 

 

Patentsin- Suit 

D’256 Patent 

Patentsin- Suit 

D’195 Patent 

Patentsin- Suit 

D’112 Patent 

Gyroor 

Product 

D 

Substantially 

Similar 

Patent D’297 

Patent 

ANSWER: Denied. 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 13 of 15 PageID #:13273
14 

34. “The Gestalt principles of visual perception teaches us that the eye is attracted to 

areas of high contrast.” [Dkt. No. 376, Decl. of Rake, ¶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. 

ANSWER: Denied. 

35. 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 significantly impact the ordinary observer's visual perception of the overall designs. 

[Dkt. No. 376, Decl. of Rake, ¶¶ ¶¶147, 153, 159, 165, 183-186]. As a result, the differences 

between the Patents-in- Suit and accused design take on greater significance. 

ANSWER: Denied. 

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

believe the accused design of Gyroor Product D to be the same as the patented design. 

ANSWER: Denied. 

Dated: November 12, 2021 Respectfully submitted, 

By: /s/ _Adam Kelly 

Adam Kelly 

Douglas Masters 

Arthur Yuan 

Neil Nandi 

321 North Clark Street, Suite 2300 

Chicago, Illinois 60654 

Tel.: 312-464-3100 

Fax: 312-464-3111 

Email: akelly@loeb.com

Email: dmasters@loeb.com

Email: ayuan@loeb.com

Email: nnandi@loeb.com

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 14 of 15 PageID #:13274
15 

Marwa Abdelaziz (admitted pro hac vice) 

LOEB & LOEB LLP 

345 Park Avenue 

New York, New York 10154 

Tel.: (212) 407-4388 

Fax: (212) 407-4990 

Email: mabdelaziz@loeb.com

Attorneys for Plaintiffs 

Case: 1:20-cv-04806 Document #: 478 Filed: 11/12/21 Page 15 of 15 PageID #:13275