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

AND REBUTTAL DECLARATION TO JIM GANDY AND LANCE RAKE

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 1 of 113 PageID #:16217
TABLE OF CONTENTS

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

EXECUTIVE SUMMARY.................................................................................................. 1

SCOPE OF OPINIONS........................................................................................................ 3

A. Background and Qualifications.................................................................................... 3

B. Compensation and Prior Testimony.............................................................................. 4

C. Materials and Information Considered ......................................................................... 4

LEGAL STANDARDS........................................................................................................ 4

A. The Limiting Purpose of a Design Patent..................................................................... 4

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

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

D. The Ordinary Observer Test ......................................................................................... 8

E. The Significance of Prior Art........................................................................................ 9

F. Definition of the Ordinary Observer............................................................................. 9

G. Functionality in Design Patents.................................................................................. 10

ANALYSIS OF THE PATENTS-IN-SUIT AND THE PRIOR ART............................... 11

A. The Patents-In-Suit ..................................................................................................... 11

B. Examination of the D’723 Patent................................................................................ 12

C. Examination of the D’256 Patent................................................................................ 14

D. Examination of the D’195 Patent................................................................................ 17

E. Examination of the D’112 Patent................................................................................ 19

F. The Cited Prior Art Show The Patents-In-Suit Have A Broad Scope ........................ 21

ANALYSIS OF FUNCTIONALITY................................................................................. 25

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 2 of 113 PageID #:16218
OVERVIEW OF THE ACCUSED PRODUCTS .............................................................. 28

THE ACCUSED PRODUCTS INFRINGES THE PATENTS-IN-SUIT.......................... 36

A. Accused Product Gyroor A......................................................................................... 37

1. The Accused Product Gyroor A Infringes on the D‘723 Patent.......................... 37

2. The Accused Product Gyroor A Infringes on the D‘256 Patent.......................... 39

3. The Accused Product Gyroor A Infringes on the D‘195 Patent.......................... 42

B. Accused Product Gyroor B......................................................................................... 44

1. The Accused Product Gyroor B Infringes on the D‘723 Patent.......................... 44

2. The Accused Product Gyroor B Infringes on the D‘256 Patent.......................... 47

3. The Accused Product Gyroor B Infringes on the D‘195 Patent.......................... 49

4. The Accused Product Gyroor B Infringes on the D‘112 Patent.......................... 52

C. Accused Product Gyroor C......................................................................................... 54

1. The Accused Product Gyroor C Infringes on the D‘723 Patent.......................... 54

2. The Accused Product Gyroor C Infringes on the D‘256 Patent.......................... 57

3. The Accused Product Gyroor C Infringes on the D‘195 Patent.......................... 59

D. Accused Product Gyroor D......................................................................................... 61

1. The Accused Product Gyroor D Infringes on the D‘723 Patent.......................... 61

2. The Accused Product Gyroor D Infringes on the D‘256 Patent.......................... 64

3. The Accused Product Gyroor D Infringes on the D‘195 Patent.......................... 66

4. The Accused Product Gyroor D Infringes on the D‘112 Patent.......................... 68

E. Accused Product Gyroor E ......................................................................................... 71

1. The Accused Product Gyroor E Infringes on the D‘723 Patent .......................... 71

2. The Accused Product Gyroor E Infringes on the D‘256 Patent .......................... 73

3. The Accused Product Gyroor E Infringes on the D‘195 Patent .......................... 76

ANALYSIS OF THE RAKE DECLARATION................................................................ 78

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 3 of 113 PageID #:16219
A. The Rake Declaration Relies Upon An Unrelated Patent........................................... 78

B. The Rake Declaration Relies Upon an Incorrect Understanding of 

The Ordinary Observer Test ....................................................................................... 79

C. The Rake Declaration is Missing Critical Steps of Infringement Analysis................ 79

D. Mr. Rake’s Evidence Improperly Relies Upon Dimensions....................................... 80

E. Mr. Rake Considers Ornamental Elements of The Claimed Designs as 

Functional Without Analysis or Evidence .................................................................. 81

F. The Rake Declaration Improperly Relies Upon Comparing Unclaimed Areas.......... 82

G. The Rake Declaration Fails To Use The Correct Viewpoint Through 

Which To Base Opinions............................................................................................ 82

H. Mr. Rake Improperly Relies Upon Whether Individual Differences Are

‘Obvious’ Instead of Comparing The Overall Impression ......................................... 83

I. Mr. Rake Improperly Relies Upon Small, Isolated Differences in 

Specific Views And Not The Overall Impression ...................................................... 84

J. The Rake Declaration Omits Critical Views and Evidence........................................ 86

K. The Reliability And Credibility of the Rake Declaration Is 

Undermined By His Errors ......................................................................................... 86

ANALYSIS OF THE GANDY DECLARATION ............................................................ 88

A. The Gandy Declaration fails to construe the scope of the Patents-In-Suit ................. 88

B. The Gandy Declaration Omits Critical Steps of The Ordinary Observer Test........... 88

C. The Gandy Declaration Fails to Define The Level Of Attention Of The 

Ordinary Observer ...................................................................................................... 89

D. The Gandy Declaration Applies A Trained Eye Instead Of The 

Ordinary Level Of Attention Of The Ordinary Observer........................................... 90

E. The Gandy Declaration Conducts the Analysis Only Through Skewed Photos and Not 

From Samples Of The Accused Products................................................................... 91

F. The Gandy Declaration Relies on Improper Analysis Of The Markings ................... 93

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 4 of 113 PageID #:16220
G. The Gandy Declaration Relies on “Some Differences” as the 

Evidence for Infringement .......................................................................................... 93

H. Mr. Gandy Improperly Relies Upon Small, Isolated Differences in 

Specific Views and Not the Overall Impression......................................................... 93

I. The Gandy Declaration Fails to Provide Evidence to Support Its Opinions .............. 94

J. Analysis of Mr. Gandy’s Rebuttal of Hatch Infringement Report.............................. 96

CONCLUSION .................................................................................................................. 97

RESERVATION OF RIGHTS........................................................................................... 99

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 5 of 113 PageID #:16221
1

INTRODUCTION

1. 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, 

D738,256, D784,195, and D785,112 (“the Patents-In-Suit”). This Declaration is in support of 

Plaintiffs Hangzhou Chic Intelligent Technology Co. and Unicorn Global Inc.’s (collectively

“Hangzhou”) claims of patent infringement against Defendants The Partnerships And 

Unincorporated Associations Identified On Schedule A (“Gyroor”). 

2. Hangzhou requested that I opine on the similarities between the design claimed in 

each of the Patents-In-Suit and Defendants’ accused hoverboard products “Gyroor A”, “Gyroor 

B”, “Gyroor C”, “Gyroor D”, and “Gyroor E” (“the Accused Products”). 

3. 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 Defendants.

EXECUTIVE SUMMARY

4. I have considered the appearance of the Accused Products and the claimed designs

of each of the Patents-In-Suit (“the Claimed Designs”) and 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-Suit, as I understand that term to be 

understood in Patent Law. 

• An ordinary observer familiar with the prior art, giving such attention as a purchaser 

usually gives, would find the overall appearance of the Accused Products 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 the each of the Accused Products 

supposing it to be one or more of the Claimed Designs.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 6 of 113 PageID #:16222
2

5. I have also examined the Expert Declaration of Lance Rake, signed August 21, 

2021 (“the Rake Declaration”) and it is my opinion that:

• The reliability and credibility of the Rake Report is undermined by many errors.

• The opinions in the Rake Report include contradictory positions that may further 

significantly undermine his credibility.

• The analysis in the Rake Report relies upon an incorrect understanding of the ordinary 

observer test and also omits defining the level of attention of the ordinary observer.

• The Rake Report is missing critical steps of infringement analysis including failing to 

expressly construe the scope of the Patents-In-Suit.

• The opinions in the Rake Report rely upon unrelated patents without providing analysis or 

evidence. 

• Mr. Rake’s evidence improperly relies upon dimensions and considers ornamental 

elements of the claimed designs as functional without analysis or evidence.

• Mr. Rake improperly relies upon comparing unclaimed areas and also relies upon 

individual differences being ‘obvious’ instead of comparing the overall impression.

6. I have also examined the Expert Declaration of Jim Gandy, signed September 12, 

2022 (“the Gandy Declaration”) and it is my opinion that:

• The reliability and credibility of the Gandy Report is undermined by his failure to apply 

the correct legal procedure or analysis for infringement analysis.

• The Gandy Report is missing critical steps of infringement analysis including failing to 

expressly construe the scope of the Patents-In-Suit.

• The analysis in the Gandy Report relies upon an incorrect understanding of the ordinary 

observer test and also fails to define the level of attention of the ordinary observer.

• The Gandy Report applies a designer’s eye instead of the ordinary level of attention of the 

ordinary observer.

• Mr. Gandy improperly relies upon small, isolated differences in specific views and not the 

overall impression and relies on “some differences” as evidence of infringement.

• Mr. Gandy relies on improper analysis of the brand markings.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 7 of 113 PageID #:16223
3

• Mr. Gandy conducts the analysis only through skewed photos and not from samples of the 

Infringing Products and fails to provide evidence to support its opinions.

SCOPE OF OPINIONS

A. Background and Qualifications

7. 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.

8. 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. 

9. 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 purchaser or ordinary observer would answer questions raised in the examination of 

design patents, utility patents, trademarks, and trade dress claims.

10. 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 am currently teaching a graduate course on this subject matter at the University of Illinois 

at Chicago. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 8 of 113 PageID #:16224
4

11. 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, and the IDEA “Juror’s Award” in 2020. In 2016 I was elected to 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.

B. Compensation and Prior Testimony

12. 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.

C. Materials and Information Considered

13. 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.

LEGAL STANDARDS

14. 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 

15. 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 & Rubber Co. v. Hercules Tire & Rubber Co. Inc., 162 F.3d 1113, 1116 (Fed. 

Cir. 1998).

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 9 of 113 PageID #:16225
5

B. Legal Principles in Analysis of Design Patent Infringement

16. 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)).

17. 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, Inc. v. Swisa, Inc., 543 F.3d 665, 679 

(Fed. Cir. 2008) (en banc). “[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. 

18. 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)).

19. 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.

20. 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 Endo-Surgery, Inc. v. Covidien, Inc., 796 

F.3d 1312, 1335 (Fed. Cir. 2015) (citing Egyptian Goddess, 543 F. 3d at 678). If the Claimed 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 10 of 113 PageID #:16226
6

Design and the Accused Products are found to be plainly dissimilar, there is no patent 

infringement. Id.

21. 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. 

22. 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).

23. I understand that the fact that an infringing product is marked with a trademark or 

logo designating the product’s source does not, as a matter of law, negate design patent 

infringement. Design patent infringement relates solely to the patented design and does not allow 

of avoidance of infringement by labelling. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 

1126 (Fed. Cir. 1993). 

C. Claim Construction in Design Patents

24. 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) 

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

To construe the scope of a design patent, I understand that one must consider whether the figures 

identify unclaimed subject matter (e.g., features depicted in broken lines); and whether the 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 11 of 113 PageID #:16227
7

prosecution history of the application shows if the applicant disclaimed subject matter or 

distinguished the Claimed Design from other ornamental designs. See Goodyear Tire, 162 F.3d at

1116.

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

Goodyear Tire, 162 F.3d at 1116. That said, I understand that the Federal Circuit has cautioned 

against a detailed, verbal construction of the features in the patent drawings. Egyptian Goddess, 

543 F.3d at 679. 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. 

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). 

26. 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 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.

27. I also understand that 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). 

28. 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 unclaimed subject matter 

represented by broken lines forms no part of the claimed design. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 12 of 113 PageID #:16228
8

29. 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) Sarah Burstein, The 

“Article of Manufacture” in 1887, 32:1 Berkeley Tech. L.J. 11 (2017) (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. Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008)).

D. The Ordinary Observer Test

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

first step, after a design patent’s claim is construed is to consider whether the claimed design and 

infringing 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 infringing 

products are found to be plainly dissimilar, there is no patent infringement. Id.

31. I also understand that 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). 

32. As I understand, “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, 1296 (Fed. Cir. 2010)), and 

“not minor or trivial differences that necessarily exist between any two designs that are not exact 

copies of one another.” Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243 (Fed. 

Cir. 2009) (emphasis added).

33. 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. “If 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. . 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 13 of 113 PageID #:16229
9

E. The Significance of Prior Art 

34. 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.

35. 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.

36. I am informed that the Egyptian Goddess case makes clear, the ultimate burden of 

proving infringement is on the patent owner. Accordingly, the failure of the accused infringer to 

bring forward prior art is not an admission of infringement, but rather only a concession that 

knowledge of the prior art would not make infringement less likely. See Egyptian Goddess, 543 

F.3d at 678-79.

F. Definition of the Ordinary Observer

37. As I 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. Accordingly, 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.” Id. 

38. 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. 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 #: 637 Filed: 01/25/23 Page 14 of 113 PageID #:16230
10

39. 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.

40. Further, I understand that the viewpoint of the hypothetical 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). I am also informed 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 (emphasis 

added) (internal quotations and citation omitted).

41. I am also informed that the “[l]ikelihood of confusion as to the source of the goods 

is not a necessary or appropriate factor for determining infringement of a design patent.” Unette 

Corp. v. Unit Pack Co.., 785 F.2d 1026, 1029 (Fed. Cir. 1986) (emphasis added).

42. 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 principal 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.

G. Functionality in Design Patents

43. As was explained to me, to be afforded patent protection, “a design must present 

an aesthetically pleasing appearance that is not dictated by function alone.” Bonito Boats, Inc. v. 

Thunder Craft Boats, Inc., 489 U.S. 141, 148 (1989) (emphasis added). “[W]hether a design is 

primarily functional or primarily ornamental requires viewing the claimed design ‘in its entirety.’” 

Ethicon, 796 F.3d at 1329 (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 977 F.2d 988, 1123 

(Fed. Cr. 1993)). I further understand that to “entirely eliminate a structural element from the 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 15 of 113 PageID #:16231
11

claimed ornamental design, even though that element also served a functional purpose” is not 

permitted. Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1321 (Fed. Cir. 2016). 

44. To determine the scope of the claim, I understand that the court considers the 

distinction between features of the claimed design that are “ornamental” and those that are “purely 

functional.” Ethicon Endo-Surgery, 796 F.3d at 1333. I understand that a design element is “purely 

functional” where its basic design is “dictated” by its functional purpose or is otherwise serves a 

utilitarian purpose. Sport Dimension, 820 F.3d at 1320. I also understand that several factors 

suggest that a feature is functional, including whether (1) the protected design represents the best 

design, (2) alternative designs would adversely affect the utility of the specified article, (3) there 

are any concomitant utility patents, (4) the advertising touts particular features of the design as 

having specific utility, and (5) whether the feature is clearly dictated by function. PHG Techs., 

LLC v. St. John Cos., 469 F.3d 1361, 1366 (Fed. Cir. 2002). 

45. It is well established that patent drawings do not define the precise proportions of 

the elements and may not be relied on to show particular sizes if the specification is completely 

silent on the issue. Hockerson-Halberstadt, Inc. v. Avia Grp. Int'l, Inc., 222 F.3d 951, 956 (Fed. 

Cir. 2000) See also MPEP § 2125 “When the reference does not disclose that the drawings are to 

scale and is silent as to dimensions, arguments based on measurement of the drawing features are 

of little value.”

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

A. The Patents-In-Suit

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

(“the D’256 Patent”), D784,195 (“the D’195 Patent”), and D785,112 (“the D’112 Patent”) for SelfBalancing Vehicles and Human-Machine Interaction Vehicles. Such self-balancing vehicles are 

commonly referred to as “hoverboards”.

47. 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 hypothetical 

ordinary observer.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 16 of 113 PageID #:16232
12

B. Examination of the D’723 Patent 

48. The D’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. 

49. 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 1: The Claimed Design of the D’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

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 17 of 113 PageID #:16233
13

Fig. 4 is a front elevational

view thereof

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

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 18 of 113 PageID #:16234
14

Fig. 7 is a front, top, left 

perspective view thereof

Fig 8 is a rear, bottom, left 

perspective view thereof

50. 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, the holes on the underside, the “O I” pattern, and the 

on/off graphics. 

51. I have reviewed the prosecution history of the D’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. 

C. Examination of the D’256 Patent 

52. The D’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”.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 19 of 113 PageID #:16235
15

Table 2: The Claimed Design of the D’256 Patent

Fig.1 is a top plan view of a selfbalancing 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 #: 637 Filed: 01/25/23 Page 20 of 113 PageID #:16236
16

Fig 5. Is a left side view thereof, 

the right side view being a 

mirror image thereof

Fig.6 is a frony, top, right 

perspective view thereof

Fig. 7 is a rear, top, left 

perspective view thereof

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 21 of 113 PageID #:16237
17

Fig 8 is a rear, bottom, left 

perspective view thereof

53. 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. 

54. I have reviewed the prosecution history of the D’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 D’195 Patent 

55. The D’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. 

56. 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

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 22 of 113 PageID #:16238
18

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 #: 637 Filed: 01/25/23 Page 23 of 113 PageID #:16239
19

Fig. 6 is a top, rear, right 

perspective view thereof

57. 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. 

58. I have reviewed the prosecution history of the D’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 D’112 Patent 

59. The D’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.

60. 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 #: 637 Filed: 01/25/23 Page 24 of 113 PageID #:16240
20

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

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 25 of 113 PageID #:16241
21

Fig. 5 is a right side view 

thereof, the left side view 

being a mirror image thereof

Fig. 6 is a top, front, left 

perspective view thereof

61. 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. 

62. I have reviewed the prosecution history of the D’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

63. Prior art is used to compare to the claimed design of a patent to find the scope of 

the design in the ordinary observer test. It is also used to compare the Accused Products to the 

claimed designs to evaluate if the Accused Products is closer to the claimed design than the prior 

art.

64. 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 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 26 of 113 PageID #:16242
22

time of the filing of each patent. As can be seen in the table below, the D’723 and the D’256 cited 

the same prior art.

Table 5: The Cited Prior Art Cited on the Face of the D’723 and D’256 Patents

US 8,118,319 US 8,469,376 US 8,414,000

Appl. 

2007-0273118 US 8,500,145 US D647,991

US D739,9061

65. While some of the individual components of the D’723 and D’256 Patents are 

represented in some of the prior art, the overall impression of the claimed design of the D’723 and

D’256 Patents is entirely unique. The prior art is vastly different in many ways and therefore the

D’723 and D’256 Patents enjoy a very broad scope. 

66. Some of the prior art feature a generally hourglass outer form. However, none of 

the relevant prior art create the visual impression of an integrated hourglass body with a relatively 

1 The US Patent D739,906 was not cited on the face of either the ‘723 or ‘256 Patents but I understand that its filing 

date slightly preceded that of these patents and is therefore part of my analysis. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 27 of 113 PageID #:16243
23

flat surface across the top of the main body, pronounced ‘footing’ areas, and open-arched fenders 

over the top of the wheel area. 

Table 6: The Cited Prior Art On 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

67. While some of the individual components of the D’195 Patents are represented in 

some of the prior art, the overall impression of the claimed design of the D’195 Patent is entirely 

unique. The prior art is vastly different in many ways and therefore the D’195 Patent enjoys a very 

broad scope. 

68. Some of the prior art feature a generally hourglass outer form. However, none of 

the relevant prior art create the visual impression of an integrated hourglass body with many 

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

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 28 of 113 PageID #:16244
24

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

prior art the footplates narrow as they extend toward the center. 

Table 7: A Selection of the Cited Prior Art from the D’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 #: 637 Filed: 01/25/23 Page 29 of 113 PageID #:16245
25

69. While some of the individual components of the D’112 Patent is represented in 

some of the prior art, the overall impression of the claimed design of the D’112 Patent is entirely 

unique. The prior art is vastly different in many ways and therefore the D’112 Patent enjoys a very 

broad scope. 

70. Some of the prior art feature a generally hourglass outer form. However, none of 

the relevant prior art create the visual 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 plate stretch

across almost the full width of the main body.

ANALYSIS OF FUNCTIONALITY

71. The opinions in the Rake Declaration rely upon the opinion that the “overall shape” 

of the Claimed Designs is “largely based on functionality” (Rake ¶¶ 58, 64, 70, 76). I disagree and 

outline my own analysis on whether these or other main elements of the Claimed Designs are 

primarily functional, below.

72. I understand that several factors may suggest that a feature is primarily functional, 

including whether the protected design represents the best design, 

and whether alternative designs would adversely affect the utility of the specified article.2 

73. The Claimed Designs feature many ornamental elements that contribute to the 

overall impression. Here I will briefly describe the analysis of three visually dominant elements of 

the overall visual impression to analyze whether they could have been designed with substantially 

different ornamentation and still provide the same functionality. 

74. The Rake Declaration argues that the “overall shape” of the Claimed Designs is 

based on a) the length and width being driven by human measurements and b) the narrow center 

2 The Federal Circuit listed a number of considerations for assessing whether a patented design as a whole was 

dictated by functional considerations such as: “Whether the protected design represents the best design; whether 

alternative designs would adversely affect the utility of the specified article; whether there are any concomitant 

utility patents; whether the advertising touts particular features of the design as having specific utility and whether 

there are any elements in the design or an overall appearance clearly not dictated by function.” Berry Sterling Corp. 

v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997). 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 30 of 113 PageID #:16246
26

avoids interference with the ground when twisting the two halves.3 Based on just the prior art 

cited on the face of the Patents-In-Suit alone, we see that there are alternative ways to provide 

similar or the same functionality of providing adequate space for footing and allow for a central 

pivoting motion, but with distinctly different ornamental designs.

Table 8: The prior art provides alternative ornamental examples for the same utility.

 

US 8,469,376

These prior art provide the 

same spacing for feet but 

create distinctly different 

visual impressions from that 

of the Patents-in-Suit. 

They also provide a similarly 

pivoting center that creates 

distinctly different visual 

impressions from that of the 

Patents-in-Suit.

 

US 6,834,867

3 Mr. Rake’s arguments are presented in more detail and analyzed more closely in Section IX. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 31 of 113 PageID #:16247
27

 

Appl. 2007-0273118

75. Second, the fenders of the Claimed Designs may prevent accidental access to the 

top of the wheel, for which alternative ornamental designs are also found within the prior art (see 

table below). 

76. Third, the pronounced footing areas may communicate where to position feet, and 

possibly provide grip, and alternative ornamental designs for these same functions are also found 

within the prior art. 

Table 9: The prior art provides alternative ornamental examples for the same fender and footing 

area utility.

US D739,906 US D647,991

These prior art provide the 

same utility of the fenders of 

the Patents-In-Suit but create 

distinctly different visual 

impressions. 

US 8,118,319 Appl. 2007-0273118

These prior art provide the 

same utility of the pronounced 

footing areas of the Patents-InSuit but create distinctly 

different visual impressions. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 32 of 113 PageID #:16248
28

77. Based on my analysis of the overall outer shape and other main elements of the 

Claimed Designs, it is clear that the same functionality can be achieved with distinctly different 

ornamental designs. Although the above outlined analysis demonstrates only part of the Berry 

Sterling considerations, this finding is sufficient for me to opine that none of the ornamental 

designs claimed in the Patents-In-Suit are dictated by function, or otherwise purely functional.

OVERVIEW OF THE ACCUSED PRODUCTS 

78. As noted above, there are five products accused of infringement in this case, the 

‘Gyroor A’, ‘B’, ‘C’, ‘D’, and ‘E’. 

79. Each of the Accused Products creates the visual impression to the hypothetical 

ordinary observer of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. 

80. While they are not exact duplicates, each of the Accused Products and each of the 

Claimed Designs share very similar visual traits in their format, proportions and main visual 

features, and share the same overall impression to the ordinary observer in light of the prior art. 

Table 10: Accused Product Gyroor A

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 33 of 113 PageID #:16249
29

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 34 of 113 PageID #:16250
30

 

Table 11: Accused Product Gyroor B

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 35 of 113 PageID #:16251
31

 

Table 12: Accused Product Gyroor C

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 36 of 113 PageID #:16252
32

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 37 of 113 PageID #:16253
33

 

Table 13: Accused Product Gyroor D

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 38 of 113 PageID #:16254
34

 

Table 14: Accused Product Gyroor E

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 39 of 113 PageID #:16255
35

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 40 of 113 PageID #:16256
36

 

THE ACCUSED PRODUCTS INFRINGES THE PATENTS-IN-SUIT

81. 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.

82. 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. 

83. 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. 

84. In my analysis detailed below I conclude that each of the Accused Products is not 

plainly dissimilar to the Claimed Designs.

85. 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 closest prior art. As it is the burden of the defendant to identify the closest prior 

art, I conducted a three-way comparison using the D‘906 Patent as both of Defendants’ experts in 

this case have cited this to be the closest prior art. 

86. My analysis was conducted by comparing the visual impression of each Accused 

Product and each of the Claimed Designs to the D’906 Patent, through the eyes of an ordinary 

observer. Specifically, the ordinary observer test inquires whether the visual impression of an 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 41 of 113 PageID #:16257
37

Accused Product is closer to the claimed design of a patent than to the prior art. In my analysis I 

find the visual impression created by each of the Accused Products is closer to each of the Claimed 

Designs than it is to the prior art. The Accused Products are therefore substantially the same as 

each of the Claimed Designs in the eyes of the ordinary observer as I will outline below. 

A. Accused Product Gyroor A

1. The Accused Product Gyroor A Infringes on the D‘723 Patent

87. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘723 are shown in Exhibit 1.

Table 15: Three-way comparison of Gyroor A to the D‘906 Patent and the claimed design of the 

D’723. 

FIG. 6 of the ’D723 patent

Perspective view of Gyroor 

A

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 42 of 113 PageID #:16258
38

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’723 Patent

Top view of Gyroor A

Figure 3 of the prior art 

D‘906 Patent.

88. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘723 Patent and Gyroor A are not plainly 

dissimilar. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 43 of 113 PageID #:16259
39

89. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor A is closer in overall impression to the claimed design of the D‘723 Patent 

than to the closest prior art. Gyroor A and the claimed design of the D‘723 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts4.

90. Therefore, in light of the closest prior art, the claimed design of the D‘723 is 

substantially the same as the visual impression presented by Gyroor A. 

2. The Accused Product Gyroor A Infringes on the D‘256 Patent 

91. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘256 are shown in Exhibit 1.

4 Fender skirt’ is a term used by the automobile industry when the wheel is almost entirely hidden, as seen in 1969 

Buick Electra and the 1986 Citroen CX.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 44 of 113 PageID #:16260
40

Table 16: Three-way comparison of the Gyroor A to the D’906 Patent and the claimed design of 

the D’256. 

FIG. 6 of the D’256 patent

Perspective view of Gyroor 

A

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’256 Patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 45 of 113 PageID #:16261
41

Top view of Gyroor A

Figure 3 of the prior art 

D‘906 Patent.

92. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘256 Patent and Gyroor A are not plainly 

dissimilar. 

93. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor A is closer in overall impression to the claimed design of the D‘256 Patent 

than to the closest prior art. Gyroor A and the claimed design of the D‘256 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 46 of 113 PageID #:16262
42

94. Therefore, in light of the closest prior art, the claimed design of the D‘256 is 

substantially the same as the visual impression presented by Gyroor A. 

3. The Accused Product Gyroor A Infringes on the D‘195 Patent

95. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘195 are shown in Exhibit 1.

Table 17: Three-way comparison of Gyroor A to the D‘906 Patent and the claimed design of the 

D’195. 

FIG. 6 of the D’195 patent

Perspective view of Gyroor 

A

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 47 of 113 PageID #:16263
43

FIG. 4 of the prior art ’D906 

Patent

Figure 6 of the D’195 Patent

Top view of Gyroor A

Figure 3 of the prior art 

D‘906 Patent.

96. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘195 Patent and Gyroor A are not plainly 

dissimilar. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 48 of 113 PageID #:16264
44

97. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor A is closer in overall impression to the claimed design of the D‘195 Patent 

than to the closest prior art. Gyroor A and the claimed design of the D‘195 Patent both create a 

visual impression of an integrated hourglass body with many horizontal styling lines across the 

body and a relatively flat surface across the top of the main body, and open-arched fenders over 

the top of the wheel area. More specifically, the relatively flat surface across the top of the main 

body such that the footpads and center section are largely on the same plane, the horizontal styling 

lines across the body forming various surface details, and the fenders arching over a portion of the 

tire and leaving the outside surface of the wheel largely exposed, significantly contribute to the 

overall impression of the designs. In contrast, the D’906 Patent has a center section that 

significantly curves and extends above the plane of the footing areas, has a rounded, smooth body 

that is completely devoid of any type of styling lines, and has fenders that cover the majority of 

the tire and wheel assembly, extending below the midpoint of the wheel. While the D’906 also 

includes an hourglass body, the design as a whole gives a distinctly different impression, as it 

creates an impression of a very uncluttered, rounded, smooth body and closed fender skirts.

98. Therefore, in light of the closest prior art, the claimed design of the D‘195 is 

substantially the same as the visual impression presented by Gyroor A. 

B. Accused Product Gyroor B

1. The Accused Product Gyroor B Infringes on the D‘723 Patent

99. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘723 are shown in Exhibit 1.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 49 of 113 PageID #:16265
45

Table 18: Three-way comparison of Gyroor B to the D‘906 Patent and the claimed design of the 

D’723. 

FIG. 6 of the ’D723 patent

Perspective view of Gyroor 

B

FIG. 4 of the prior art ’D906 

Patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 50 of 113 PageID #:16266
46

Figure 1 of the D’723 Patent

Top view of Gyroor B

Figure 3 of the prior art 

D‘906 Patent.

100. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘723 Patent and Gyroor B are not plainly 

dissimilar. 

101. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor B is closer in overall impression to the claimed design of the D‘723 Patent 

than to the closest prior art. Gyroor B and the claimed design of the D‘723 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 51 of 113 PageID #:16267
47

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

102. Therefore, in light of the closest prior art, the claimed design of the D‘723 is 

substantially the same as the visual impression presented by Gyroor B.

2. The Accused Product Gyroor B Infringes on the D‘256 Patent 

103. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘256 are shown in Exhibit 1.

Table 19: Three-way comparison of the Gyroor B to the D’906 Patent and the claimed design of 

the D’256. 

FIG. 6 of the D’256 patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 52 of 113 PageID #:16268
48

Perspective view of Gyroor 

B

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’256 Patent

Top view of Gyroor B

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 53 of 113 PageID #:16269
49

Figure 3 of the prior art 

D‘906 Patent.

104. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘256 Patent and Gyroor B are not plainly 

dissimilar. 

105. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor B is closer in overall impression to the claimed design of the D‘256 Patent 

than to the closest prior art. Gyroor B and the claimed design of the D‘256 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

106. Therefore, in light of the closest prior art, the claimed design of the D‘256 is 

substantially the same as the visual impression presented by Gyroor B. 

3. The Accused Product Gyroor B Infringes on the D‘195 Patent 

107. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘195 are shown in Exhibit 1.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 54 of 113 PageID #:16270
50

Table 20: Three-way comparison of the Gyroor B to the D’906 Patent and the claimed design of 

the D’195. 

FIG. 6 of the D’195 patent

Perspective view of Gyroor 

B

FIG. 4 of the prior art ’D906 

Patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 55 of 113 PageID #:16271
51

Figure 1 of the D’195 Patent

Top view of Gyroor B

Figure 3 of the prior art 

D‘906 Patent.

108. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘195 Patent and Gyroor B are not plainly 

dissimilar. 

109. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor B is closer in overall impression to the claimed design of the D‘195 Patent 

than to the closest prior art. Gyroor B and the claimed design of the D‘195 Patent both create a 

visual impression of an integrated hourglass body with many horizontal styling lines across the 

body and a relatively flat surface across the top of the main body, and open-arched fenders over 

the top of the wheel area. More specifically, the relatively flat surface across the top of the main 

body such that the footpads and center section are largely on the same plane, the horizontal styling 

lines across the body forming various surface details, and the fenders arching over a portion of the 

tire and leaving the outside surface of the wheel largely exposed, significantly contribute to the 

overall impression of the designs. In contrast, the D’906 Patent has a center section that 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 56 of 113 PageID #:16272
52

significantly curves and extends above the plane of the footing areas, has a rounded, smooth body 

that is completely devoid of any type of styling lines, and has fenders that cover the majority of

the tire and wheel assembly, extending below the midpoint of the wheel. While the D’906 also 

includes an hourglass body, the design as a whole gives a distinctly different impression, as it 

creates an impression of a very uncluttered, rounded, smooth body and closed fender skirts.

110. Therefore, in light of the closest prior art, the claimed design of the D‘195 is 

substantially the same as the visual impression presented by Gyroor B. 

4. The Accused Product Gyroor B Infringes on the D‘112 Patent 

111. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘112 are shown in Exhibit 1.

Table 21: Three-way comparison of the Gyroor B to the D’906 Patent and the claimed design of 

the D’112. 

FIG. 6 of the D’112 patent

Perspective view of Gyroor 

B

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 57 of 113 PageID #:16273
53

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’112 Patent

Top view of Gyroor B

Figure 3 of the prior art 

D‘906 Patent.

112. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘112 Patent and Gyroor B are not plainly 

dissimilar. 

113. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor B is closer in overall impression to the claimed design of the D‘112 Patent 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 58 of 113 PageID #:16274
54

than to the closest prior art. Gyroor B and the claimed design of the D‘112 Patent both create a 

visual impression of an integrated hourglass body with many angled styling lines across the body 

and a relatively flat surface across the top of the main body, and open-arched fenders over the top 

of the wheel area. More specifically, the relatively flat surface across the top of the main body 

such that the footpads and center section are largely on the same plane, the angled styling lines 

across the body forming various surface details, and the fenders arching over a portion of the tire 

and leaving the outside surface of the wheel largely exposed, significantly contribute to the overall 

impression of the designs. In contrast, the D’906 Patent has a center section that significantly 

curves and extends above the plane of the footing areas, has a rounded, smooth body that is 

completely devoid of any type of styling lines, and has fenders that cover the majority of the tire 

and wheel assembly, extending below the midpoint of the wheel. While the D’906 also includes 

an hourglass body, the design as a whole gives a distinctly different impression, as it creates an 

impression of a very uncluttered, rounded, smooth body and closed fender skirts.

114. Therefore, in light of the closest prior art, the claimed design of the D‘112 is 

substantially the same as the visual impression presented by Gyroor B. 

C. Accused Product Gyroor C

1. The Accused Product Gyroor C Infringes on the D‘723 Patent

115. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘723 are shown in Exhibit 1.

Table 22: Three-way comparison of Gyroor C to the D‘906 Patent and the claimed design of the 

D’723. 

FIG. 6 of the ’D723 patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 59 of 113 PageID #:16275
55

Perspective view of Gyroor 

C

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’723 Patent

Top view of Gyroor C

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 60 of 113 PageID #:16276
56

Figure 3 of the prior art 

D‘906 Patent.

116. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘723 Patent and Gyroor C are not plainly 

dissimilar. 

117. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor C is closer in overall impression to the claimed design of the D‘723 Patent 

than to the closest prior art. Gyroor C and the claimed design of the D‘723 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

118. Therefore, in light of the closest prior art, the claimed design of the D‘723 is 

substantially the same as the visual impression presented by Gyroor C. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 61 of 113 PageID #:16277
57

2. The Accused Product Gyroor C Infringes on the D‘256 Patent 

119. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘256 are shown in Exhibit 1.

Table 23: Three-way comparison of the Gyroor C to the D’906 Patent and the claimed design of 

the D’256. 

FIG. 6 of the D’256 patent

Perspective view of Gyroor 

C

FIG. 4 of the prior art ’D906 

Patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 62 of 113 PageID #:16278
58

Figure 1 of the D’256 Patent

Top view of Gyroor C

Figure 3 of the prior art 

D‘906 Patent.

120. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘256 Patent and Gyroor C are not plainly 

dissimilar. 

121. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor C is closer in overall impression to the claimed design of the D‘256 Patent 

than to the closest prior art. Gyroor C and the claimed design of the D‘256 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 63 of 113 PageID #:16279
59

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

122. Therefore, in light of the closest prior art, the claimed design of the D‘256 is 

substantially the same as the visual impression presented by Gyroor C.

3. The Accused Product Gyroor C Infringes on the D‘195 Patent

123. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘195 are shown in Exhibit 1.

Table 24: Three-way comparison of Gyroor C to the D‘906 Patent and the claimed design of the 

D’195. 

FIG. 6 of the ’D195 patent

Perspective view of Gyroor 

C

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 64 of 113 PageID #:16280
60

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’195 Patent

Top view of Gyroor C

Figure 3 of the prior art 

D‘906 Patent.

124. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘195 Patent and Gyroor C are not plainly 

dissimilar. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 65 of 113 PageID #:16281
61

125. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor C is closer in overall impression to the claimed design of the D‘195 Patent 

than to the closest prior art. Gyroor C and the claimed design of the D‘195 Patent both create a 

visual impression of an integrated hourglass body with many horizontal styling lines across the 

body and a relatively flat surface across the top of the main body, and open-arched fenders over 

the top of the wheel area. More specifically, the relatively flat surface across the top of the main 

body such that the footpads and center section are largely on the same plane, the horizontal styling 

lines across the body forming various surface details, and the fenders arching over a portion of the 

tire and leaving the outside surface of the wheel largely exposed, significantly contribute to the 

overall impression of the designs. In contrast, the D’906 Patent has a center section that 

significantly curves and extends above the plane of the footing areas, has a rounded, smooth body 

that is completely devoid of any type of styling lines, and has fenders that cover the majority of 

the tire and wheel assembly, extending below the midpoint of the wheel. While the D’906 also 

includes an hourglass body, the design as a whole gives a distinctly different impression, as it 

creates an impression of a very uncluttered, rounded, smooth body and closed fender skirts.

126. Therefore, in light of the closest prior art, the claimed design of the D‘195 is 

substantially the same as the visual impression presented by Gyroor C. 

D. Accused Product Gyroor D

1. The Accused Product Gyroor D Infringes on the D‘723 Patent

127. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘723 are shown in Exhibit 1.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 66 of 113 PageID #:16282
62

Table 25: Three-way comparison of Gyroor D to the D‘906 Patent and the claimed design of the 

D’723. 

FIG. 6 of the ’D723 patent

Perspective view of Gyroor 

D

FIG. 4 of the prior art ’D906 

Patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 67 of 113 PageID #:16283
63

Figure 1 of the D’723 Patent

Top view of Gyroor D

Figure 3 of the prior art 

D‘906 Patent.

128. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘723 Patent and Gyroor D are not plainly 

dissimilar. 

129. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor D is closer in overall impression to the claimed design of the D‘723 Patent 

than to the closest prior art. Gyroor D and the claimed design of the D‘723 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 68 of 113 PageID #:16284
64

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

130. Therefore, in light of the closest prior art, the claimed design of the D‘723 is 

substantially the same as the visual impression presented by Gyroor D.

2. The Accused Product Gyroor D Infringes on the D‘256 Patent 

131. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘256 are shown in Exhibit 1.

Table 26: Three-way comparison of the Gyroor D to the D’906 Patent and the claimed design of 

the D’256. 

FIG. 6 of the D’256 patent

Perspective view of Gyroor 

D

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 69 of 113 PageID #:16285
65

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’256 Patent

Top view of Gyroor D

Figure 3 of the prior art 

D‘906 Patent.

132. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘256 Patent and Gyroor D are not plainly 

dissimilar. 

133. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor D is closer in overall impression to the claimed design of the D‘256 Patent 

than to the closest prior art. Gyroor D and the claimed design of the D‘256 Patent both create a 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 70 of 113 PageID #:16286
66

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

134. Therefore, in light of the closest prior art, the claimed design of the D‘256 is 

substantially the same as the visual impression presented by Gyroor D. 

3. The Accused Product Gyroor D Infringes on the D‘195 Patent 

135. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘195 are shown in Exhibit 1.

Table 27: Three-way comparison of the Gyroor D to the D’906 Patent and the claimed design of 

the D’195. 

FIG. 6 of the D’195 patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 71 of 113 PageID #:16287
67

Perspective view of Gyroor 

D

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’195 Patent

Top view of Gyroor D

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 72 of 113 PageID #:16288
68

Figure 3 of the prior art 

D‘906 Patent.

136. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘195 Patent and Gyroor D are not plainly 

dissimilar. 

137. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor D is closer in overall impression to the claimed design of the D‘195 Patent 

than to the closest prior art. Gyroor D and the claimed design of the D‘195 Patent both create a 

visual impression of an integrated hourglass body with many horizontal styling lines across the 

body and a relatively flat surface across the top of the main body, and open-arched fenders over 

the top of the wheel area. More specifically, the relatively flat surface across the top of the main 

body such that the footpads and center section are largely on the same plane, the horizontal styling 

lines across the body forming various surface details, and the fenders arching over a portion of the 

tire and leaving the outside surface of the wheel largely exposed, significantly contribute to the 

overall impression of the designs. In contrast, the D’906 Patent has a center section that 

significantly curves and extends above the plane of the footing areas, has a rounded, smooth body 

that is completely devoid of any type of styling lines, and has fenders that cover the majority of 

the tire and wheel assembly, extending below the midpoint of the wheel. While the D’906 also 

includes an hourglass body, the design as a whole gives a distinctly different impression, as it 

creates an impression of a very uncluttered, rounded, smooth body and closed fender skirts.

138. Therefore, in light of the closest prior art, the claimed design of the D‘195 is 

substantially the same as the visual impression presented by Gyroor D. 

4. The Accused Product Gyroor D Infringes on the D‘112 Patent 

139. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘112 are shown in Exhibit 1.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 73 of 113 PageID #:16289
69

Table 28: Three-way comparison of the Gyroor D to the D’906 Patent and the claimed design of 

the D’112. 

FIG. 6 of the D’112 patent

Perspective view of Gyroor 

D

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’112 Patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 74 of 113 PageID #:16290
70

Top view of Gyroor D

Figure 3 of the prior art 

D‘906 Patent.

140. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘112 Patent and Gyroor D are not plainly 

dissimilar. 

141. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor D is closer in overall impression to the claimed design of the D‘112 Patent 

than to the closest prior art. Gyroor D and the claimed design of the D‘112 Patent both create a 

visual impression of an integrated hourglass body with many angled styling lines across the body 

and a relatively flat surface across the top of the main body, and open-arched fenders over the top 

of the wheel area. More specifically, the relatively flat surface across the top of the main body 

such that the footpads and center section are largely on the same plane, the angled styling lines 

across the body forming various surface details, and the fenders arching over a portion of the tire 

and leaving the outside surface of the wheel largely exposed, significantly contribute to the overall 

impression of the designs. In contrast, the D’906 Patent has a center section that significantly 

curves and extends above the plane of the footing areas, has a rounded, smooth body that is 

completely devoid of any type of styling lines, and has fenders that cover the majority of the tire 

and wheel assembly, extending below the midpoint of the wheel. While the D’906 also includes 

an hourglass body, the design as a whole gives a distinctly different impression, as it creates an 

impression of a very uncluttered, rounded, smooth body and closed fender skirts.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 75 of 113 PageID #:16291
71

142. Therefore, in light of the closest prior art, the claimed design of the D‘112 is 

substantially the same as the visual impression presented by Gyroor D. 

E. Accused Product Gyroor E

1. The Accused Product Gyroor E Infringes on the D‘723 Patent

143. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘723 are shown in Exhibit 1.

Table 29: Three-way comparison of Gyroor E to the D‘906 Patent and the claimed design of the 

D’723. 

FIG. 6 of the ’D723 patent

Perspective view of Gyroor E

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 76 of 113 PageID #:16292
72

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’723 Patent

Top view of Gyroor E

Figure 3 of the prior art 

D‘906 Patent.

144. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘723 Patent and Gyroor E are not plainly 

dissimilar. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 77 of 113 PageID #:16293
73

145. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor E is closer in overall impression to the claimed design of the D‘723 Patent 

than to the closest prior art. Gyroor E and the claimed design of the D‘723 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

146. Therefore, in light of the closest prior art, the claimed design of the D‘723 is 

substantially the same as the visual impression presented by Gyroor E. 

2. The Accused Product Gyroor E Infringes on the D‘256 Patent 

147. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘256 are shown in Exhibit 1.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 78 of 113 PageID #:16294
74

Table 30: Three-way comparison of the Gyroor E to the D’906 Patent and the claimed design of 

the D’256. 

FIG. 6 of the D’256 patent

Perspective view of Gyroor E

FIG. 4 of the prior art ’D906 

Patent

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 79 of 113 PageID #:16295
75

Figure 1 of the D’256 Patent

Top view of Gyroor E

Figure 3 of the prior art 

D‘906 Patent.

148. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘256 Patent and Gyroor E are not plainly 

dissimilar. 

149. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor E is closer in overall impression to the claimed design of the D‘256 Patent 

than to the closest prior art. Gyroor E and the claimed design of the D‘256 Patent both create a 

visual impression of an integrated hourglass body with a relatively flat surface across the top of 

the main body, pronounced ‘footing’ areas, and open-arched fenders over the top of the wheel 

area. More specifically, the relatively flat surface across the top of the main body such that the 

footpads and center section are largely on the same plane, the pronounced footing areas 

substantially covered by raised footpads with a pattern of grooves, and the fenders arching over a 

portion of the tire and leaving the outside surface of the wheel largely exposed, significantly 

contribute to the overall impression of the designs. In contrast, the D’906 Patent is completely 

devoid of any type of footpad, has a center section that significantly curves and extends above the 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 80 of 113 PageID #:16296
76

plane of the footing areas, and has fenders that cover the majority of the tire and wheel assembly, 

extending below the midpoint of the wheel. While the D’906 also includes an hourglass body, the 

design as a whole gives a distinctly different impression, as it creates an impression of a very 

uncluttered, rounded, smooth body with no pronounced footing area and closed fender skirts.

150. Therefore, in light of the closest prior art, the claimed design of the D‘256 is 

substantially the same as the visual impression presented by Gyroor E.

3. The Accused Product Gyroor E Infringes on the D‘195 Patent 

151. Although the below chart only presents selected views, my analysis was undertaken 

by comparing the actual product to each of the patented designs as a whole. The full comparison 

to all of the figures of the D‘195 are shown in Exhibit 1.

Table 31: Three-way comparison of the Gyroor E to the D’906 Patent and the claimed design of 

the D’195. 

FIG. 6 of the D’195 patent

Perspective view of Gyroor E

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 81 of 113 PageID #:16297
77

FIG. 4 of the prior art ’D906 

Patent

Figure 1 of the D’195 Patent

Top view of Gyroor E

Figure 3 of the prior art 

D‘906 Patent.

152. Giving due consideration to the legal standards as outlined in Section IV, 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 D‘195 Patent and Gyroor E are not plainly 

dissimilar. 

153. Further, when comparing to the closest prior art through the eyes of the ordinary 

observer, Gyroor E is closer in overall impression to the claimed design of the D‘195 Patent 

than to the closest prior art. Gyroor E and the claimed design of the D‘195 Patent both create a 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 82 of 113 PageID #:16298
78

visual impression of an integrated hourglass body with many horizontal styling lines across the 

body and a relatively flat surface across the top of the main body, and open-arched fenders over 

the top of the wheel area. More specifically, the relatively flat surface across the top of the main 

body such that the footpads and center section are largely on the same plane, the horizontal styling 

lines across the body forming various surface details, and the fenders arching over a portion of the 

tire and leaving the outside surface of the wheel largely exposed, significantly contribute to the 

overall impression of the designs. In contrast, the D’906 Patent has a center section that 

significantly curves and extends above the plane of the footing areas, has a rounded, smooth body 

that is completely devoid of any type of styling lines, and has fenders that cover the majority of 

the tire and wheel assembly, extending below the midpoint of the wheel. While the D’906 also 

includes an hourglass body, the design as a whole gives a distinctly different impression, as it 

creates an impression of a very uncluttered, rounded, smooth body and closed fender skirts.

154. Therefore, in light of the closest prior art, the claimed design of the D‘195 is 

substantially the same as the visual impression presented by Gyroor E.

ANALYSIS OF THE RAKE DECLARATION

A. The Rake Declaration Relies Upon An Unrelated Patent 

155. In previous declarations, Mr. Rake purported the D’906 as the closest prior art. It 

is notable that in this declaration Mr. Rake neither specifies the D’906 as being the closest prior 

art, nor does he use it as the closest prior art in his three-way comparison. Instead, Mr. Rake has 

chosen the later-filed patent D808,857 (“the D’857”) when comparing the Accused Product to the 

claimed designs of the Patents-in-Suit (See Rake ¶¶ 51-76). It is not clear why Mr. Rake no longer 

considers the D’906 suitable as the closest prior art. It also contradicts the opinion of Mr. Gandy. 

156. As mentioned in Section IV above, the ordinary observer test does not permit using 

later-filed patents in place of prior art and should not have formed part of Mr. Rake’s analysis. It 

is my understanding that prior art is used in the test to establish what the hypothetical ordinary

observer would be familiar with at the time of the Patent-In-Issue’s priority date. It is therefore 

nonsensical to use designs that were not existent at this time. In fact, the D’857 was a filed in 2018, 

years after the Patents-In-Suit were filed (in 2014, 2014, 2016, and 2017, respectively.).

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 83 of 113 PageID #:16299
79

157. Because Mr. Rake relies upon the D’857 as his closest prior art comparison for his 

entire non-infringement analysis, this alone may invalidate his analysis and therefore also his 

conclusions. 

B. The Rake Declaration Relies Upon an Incorrect Understanding of The 

Ordinary Observer Test

158. Mr. Rake improperly uses deception of the ordinary observer to induce purchase

as the measurement of whether the designs are substantially the same, “[i]f the resemblance 

deceives the observer, inducing him or her to purchase one supposing it to be the other, the designs 

are substantially the same.” (Rake ¶39) (emphasis added). As explained in Section IV above, the 

true measurement of infringement using the ordinary observer test is not based on whether the 

ordinary observer is deceived into purchase. 

159. The Rake Declaration also omits defining the level of attention of the ordinary 

observer. In infringement analysis we establish the level of attention the purchaser would apply 

to the accused product, a crucial step which Mr. Rake does not do. Mr. Rake does, however, asserts

that the purchaser will “do their homework” when buying articles such as hoverboards, and 

research different brands online and read reviews. (Rake ¶ 40). I agree. A consumer informing 

themself about the products for the first time would be focused primarily on user reviews, brands 

and costs, and would apply very little attention to the intricacies of the finer styling details. 

160. Based on the context of purchase, and the untrained eye of the purchaser, it is my 

opinion that the hypothetical ordinary observer would possess “ordinary acuteness” and would 

apply a relatively low level of attention to the aesthetics of the product. Thus, small visual details 

(e.g., such as the air vent pattern on the underside or the specific shape of the shallow grooves on 

the foot pads) would not affect their overall impression of the object as a whole. 

C. The Rake Declaration is Missing Critical Steps of Infringement Analysis 

161. Mr. Rake does not construe the claims of the patent in light of the prior art, nor 

does he provide analysis on whether they are “plainly dissimilar,” as is required in infringement 

analysis (see Section IV). As outlined above in Section IV, infringement analysis requires the 

claimed design of the Patents-In-Suit to first be construed. 

162. Mr. Rake only provided textual information from the face of the Patents-In-Suit

(Rake ¶¶ 31-35) and did not provide any mention or analysis on their filing history, their prior 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 84 of 113 PageID #:16300
80

art or about the scope of each patent in light of the prior art, which is not identical. Without 

construing the claims of the patent in light of the prior art, the analysis and resulting conclusions 

that follow may become greatly undermined.

163. I am informed that after construing the claims, infringement analysis follows two 

steps: The first step is a comparison of an infringing product to the Patents-In-Suit to evaluate 

whether they are “plainly dissimilar.” If they are not plainly dissimilar the analysis moves on to 

the second step of analysis comparing the conflicting designs to the prior art through the eyes of 

an ordinary observer. Mr. Rake did not provide analysis on the first step of infringement analysis 

but conducted the second step and thereby infers that the two designs are not plainly dissimilar. 

164. Furthermore, his declaration also informs us that he did not analyze a physical 

sample of the Accused Product at all. While not a mandatory part of analysis, his observations 

may have been very different had he evaluated the Accused Product in person instead of relying 

upon photographs with distorted perspectives. 

D. Mr. Rake’s Evidence Improperly Relies Upon Dimensions

165. Mr. Rake incorrectly infers dimensions from the design patents, but figures in 

design patents do not represent fixed dimensions and can represent objects of any scale (See also

MPEP § 2125). In a paragraph on non-infringement analysis, Mr. Rake describes hoverboards in 

general, and provides dimensions of wheel diameters and the distance between them (Rake ¶ 47). 

He later improperly relies upon these dimensions as evidence that the overall shape of the 

Patents-In-Suit is based on functionality; “The dimensions correspond to the dimensions of a 

human foot, the distance between footpads corresponds to approximate ‘shoulder width’ 

dimensions of the user[.]” (Rake ¶¶ 58, 64, 70, 76). 

166. Further, his opinion that the length of hoverboards is dictated by shoulder width not 

only contradicts many prior art examples that are of varying lengths, but also ignores Mr. Rake’s 

own design work. (See Rake ¶ 13). Skateboards too vary greatly in length, and even have short 

versions (for example ‘penny boards’) and long versions (for example ‘longboards’) all of which 

support two adult feet spaced apart in a similar way to hoverboards. Surfboards also serve as a 

similar example and are considerably larger than skateboards. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 85 of 113 PageID #:16301
81

E. Mr. Rake Considers Ornamental Elements of The Claimed Designs as 

Functional Without Analysis or Evidence

167. Mr. Rake considers the overall hourglass shape of each of the claimed designs of 

the Patents-In-Suit "largely based on functionality." (Rake ¶¶ 58, 64, 70, 76), but he provides no 

analysis or evidence to explain his opinion. I disagree that any of the ornamental elements of the 

claimed designs should be considered to be driven by function, as outlined in Section VI above. 

In applying the correct standards, it is my opinion that none of the ornamental designs claimed in 

the Patents-In-Suit are dictated by function, or otherwise purely functional.

168. I understand that to “entirely eliminate a structural element from the claimed 

ornamental design, even though that element also served a functional purpose,” as Mr Rake has 

done with the “overall shape” of the Claimed Designs, is not permitted. 

169. I further understand that several factors may suggest that a feature is primarily 

functional, including whether (1) the protected design represents the best design, (2) alternative 

designs would adversely affect the utility of the specified article, (3) there are any concomitant 

utility patents, (4) the advertising touts particular features of the design as having specific utility, 

and (5) whether the feature is clearly dictated by function. Mr. Rake did not conduct this or any 

functionality analysis, nor provide evidence that might support it. 

170. Further, the Defendants’ second expert, Jim Gandy, does include consideration of 

the overall hourglass shape in his analysis and Mr. Gandy does not consider its shape driven by 

function. (See Gandy ¶¶ 21-22).

171. Furthermore, Mr. Rake also opines that the shape of the center portion is driven by 

function, reasoning that “the narrowing at the center facilitates the needed twisting motion without 

interference with the user or the ground" (Rake ¶¶ 58, 64, 70, 76) and provides as evidence the 

prior art U.S. Patent 8,469,376. First, the center portion would not physically interfere with the 

ground or with the feet even if they were as wide as the foot pads. Second, referring to prior art 

with a portion that is similarly proportioned does not evidence functionality, in fact other prior art 

cited on the patent also include center portions that are much wider, such as the U.S. Patent 

7,424,927. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 86 of 113 PageID #:16302
82

F. The Rake Declaration Improperly Relies Upon Comparing Unclaimed Areas

172. Mr. Rake improperly compares unclaimed areas to corresponding areas in the 

Accused Product and concludes an ordinary observer would “recognize that the [claimed design] 

has prominent design element in the middle and the Accused Product is clean, without any such 

design element.” (Rake ¶¶ 53, 59, 65, 71). I am informed that if an infringing product has a 

different ornamental pattern to that shown as unclaimed in the Patents-In-Suit, it does not serve to 

evidence non-infringement. 

G. The Rake Declaration Fails To Use The Correct Viewpoint Through Which To 

Base Opinions

173. The Rake Declaration includes many paragraphs that explain Gestalt Theory and 

‘figure-ground theory’ to explain how an ordinary observer would perceive the designs, but they 

completely disregard the effect of prior art to the ordinary observer’s perception of visual form. 

Mr. Rake states he “relied on [Gestalt principles] in this analysis” (Rake ¶ 48) and “using well 

established Gestalt principles, I then compared the differences/similarities between the D’723

Patent and Accused Product.” (Rake ¶ 51). In doing so, Mr. Rake did not apply the correct 

viewpoint from which to understand how the ordinary observer would see the designs. How 

certain features are represented in the prior art greatly affects the impression of a design to the 

hypothetical ordinary observer (see example below) Mr. Rake neither analyzed the prior art nor 

did he compare the designs to it in his analysis, which may seriously undermine his opinions. 

Table 32: The Prior Art Informs Us How The Ordinary Observer Views The Designs 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 87 of 113 PageID #:16303
83

When comparing the Claimed Design directly to the Accused Product (as in the Gorham Co. v. White, 

81 U.S. 511 (1871) example above), we notice differences. However only when we compare them to 

the prior art (example contemporary designs shown to the right), do we understand how insignificant 

those differences are. 

174. For example, Mr. Rake states the size and shape of the fenders is an “important 

design feature that has a significant effect on the overall visual impression of the ordinary 

observer.” (Rake ¶¶ 57, 63, 69, 75). However, simply the visual impression created by open 

fenders on an hour-glass shaped body is completely unique among the prior art of the D’723 and

D’256 Patents (See prior art in Table 5 above), and therefore an ordinary observer would not look 

to small details to differentiate between designs. 

175. In contrast, for the purposes of my analysis 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 how similarities and differences (or lack thereof) between the Patents-In-Suit and 

the Accused Product contribute to the overall impression in the eyes of the ordinary observer.

H. Mr. Rake Improperly Relies Upon Whether Individual Differences Are 

‘Obvious’ Instead of Comparing The Overall Impression 

176. Mr. Rake’s analysis concludes with his finding the Accused Product’s overall 

appearance to be substantially different from both the (unspecified) prior art and the Patents-InSuit (Rake ¶¶ 46, 78–81). First, differences between the prior art and patented designs do not 

evidence non-infringement, in fact differences are wholly expected5. The correct analysis is 

whether the Accused Product is closer to the Patents-In-Suit than they are to the closest prior art 

(see also Table 32 above). If they are, then we may conclude that the designs as a whole are 

substantially the same. 

177. As a further example, in Mr. Rake’s summary of opinions he explains “In my 

opinion, the visual differences between the claimed designs of the Patents-in-Suit and the design 

5

I am informed that “One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, 

may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication 

is a dull and very rare type of infringement.” Schnadig Corp. v. Gaines Mfg. Co., 494 F.2d 383, 391-92 (6th Cir. 

1974.)

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 88 of 113 PageID #:16304
84

of the Accused Product would be obvious to the ordinary observer.” (Rake ¶ 44 (emphasis added); 

see also id. ¶¶78-81). However, whether differences are obvious is not relevant to the ordinary 

observer test. 

I. Mr. Rake Improperly Relies Upon Small, Isolated Differences in Specific Views 

And Not The Overall Impression

178. The Rake Declaration improperly relies upon insignificant isolated features in 

specific views to analyze differences between the Accused Product and the Patents-In-Suit, and 

not the overall impression of the design as a whole6. Specifically, Mr. Rake completely ignores 

the overall shape of the hoverboard (improperly removing it asserting it to be functional) and 

discusses only differences between specific features such as the air vents and grooves when viewed 

from the underside, the lights when viewed from the front, and the grooves in the foot pads when 

viewed from the top. 

179. Mr. Rake’s analysis improperly prioritizes selected views over others because 

“the user most commonly sees a hoverboard from a position standing over the board.” (Rake ¶ 41). 

This may skew the analysis improperly toward specific features. In infringement analysis the 

hypothetical ordinary observer would be familiar with all sides of the product based on the 

combination of all viewpoints. 

180. For example, in discussing hoverboards in general, Mr. Rake identifies specific 

areas as "[t]he most prominent features” and provides a list of four isolated features. (Rake ¶ 41). 

First, he ignores the overall shape of the hoverboard, or how the main body-parts form together, 

aspects that create the overall impression of the product as a whole. Second, Mr. Rake bases this 

narrow focus on his current view of current hoverboards as a category and not based on the PatentsIn-Suit or how the ordinary observer would view it in light of the prior art of the time. Viewing 

the prior art shown in Table 5–7 above, it would be quite improper to only compare their visual 

6

I am informed that in evaluating infringement, courts determine whether "the deception that arises is a result of 

similarities in the overall design, not of similarities in ornamental features considered in isolation." Amini Innovation 

Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006) (citing Keystone Retaining Wall Sys. V. western, 

Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)).

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 89 of 113 PageID #:16305
85

impression based on only “the design of the two foot pads, the design of the wheels, visual details 

on the neck between the footpads, and the shape of the fenders that cover the wheels” (Rake ¶ 41).

Table 33: Mr. Rake improperly factors out the body from his analysis

Mr. Rake describes these four selected areas as the “most prominent features impacting the overall 

visual impression to the ordinary observer” (Rake ¶ 41), factoring out the shape of the body itself and 

the impression of the object as a whole. Also note that three of these four areas are unclaimed in one 

or more of the Patents-In-Suit and therefore should not be part of a comparative analysis.

181. Other than simply listing the above four small differentiators, Mr. Rake does not 

provide evidence as to why these would be the most prominent areas of the overall impression as 

viewed by an ordinary observer and does not present evidence on how the prior art may 

support this opinion. For example, in analyzing differences between the Accused Product and 

the Patents-In-Suit Mr. Rake focuses on a single line and vent hole pattern in one specific view of 

the drawing as representing a “prominent” deviation (Rake ¶ 56, 62, 68, 74). While these are 

details that contribute to the overall impression in certain views, their omission would not have a 

great effect on the impression of the design as a whole.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 90 of 113 PageID #:16306
86

J. The Rake Declaration Omits Critical Views and Evidence 

182. In several places in the Rake Declaration, Mr. Rake refers to appearances from 

specific views but illustrates this using a different view, completely omitting the view which he 

refers to. For example, at Rake ¶¶ 53, 59, 65, and 71, Mr. Rake opines that, "From the Top and 

Front views, the differences in shape and design of the footpads is clear" and, in Rake ¶¶ 54, 60, 

65, and 71 that "The front view we can see dramatic and obvious difference in the size, shape, and 

character of the lights". Mr. Rake’s statements only add confusion, rather than point to relevant 

evidence.

183. Additionally, Mr. Rake states, "I consider the Top and Front views to be the most 

important in my analysis" (Rake ¶¶ 55, 61, 67, and 73) but omits to provide these specific views 

in any of his provided tables. While it is not evidence of malintent to omit selected views from 

the declaration, it is nevertheless unhelpful to omit the specific views he explicitly refers to as 

being the most important, and instead only show other figures.

K. The Reliability And Credibility of the Rake Declaration Is Undermined By His 

Errors

184. Despite Mr. Rake’s long history in providing expert testimony in intellectual 

property matters, the Rake Declaration includes many improper and inaccurate analyses as

discussed above. There are also careless, critical errors and mistakes in his Declaration, which 

together bear heavily on his conclusions. 

185. This is especially surprising as Mr. Rake has submitted at least five other 

declarations in this case and another related case with many of the same grave issues. These issues 

and mistakes were identified in my respective rebuttals, and yet Mr. Rake did not make any 

attempt to correct the issues. This further highlights the light-handedness of his analysis.

186. For example, in his declaration (as with many previous ones) he proposes that he is 

“qualified to give an opinion about what would be understood by one skilled in the art of ceiling 

fans like those at issue here" (Rake ¶ 23) (emphasis added), and that his relevant experience 

includes “products that contain metal components" (id. ¶ 8) (emphasis added). 

187. When addressing functionality for the very first time in the declaration, Mr. Rake 

refers back to an explanation of functionality that is not preceding in the Declaration at all, i.e., 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 91 of 113 PageID #:16307
87

"[t]he overall shape of the D’723 Patent claim is, as I explained earlier, largely based on 

functionality" (Rake ¶ 58) (emphasis added).

188. In introducing the D’857 Patents in the Rake Declaration, Mr. Rake states, in his 

own words, “Broken lines set forth the bounds of the claimed design and form no part thereof”, 

giving the impression that some of the figures include broken lines. However, there are no broken 

lines in the D’857 Patents whatsoever, which Mr. Rake either failed to notice or he mistakenly 

wrote the wrong statement. (Rake ¶36).

189. To support his argument on how the fender design of the Accused Product have 

“significant and glaring” differences to the claimed design of the D’723, Mr. Rake shows an image 

of each alongside a figure from the US 8,469,376 (“the ‘376”). The ‘376 has a relatively flat are 

above the wheels, thus showing a distinctly different approach to covering the wheel from either 

of the other two and completely contradicting the argument Mr. Rake attempts to make.

Table 34: Mr. Rake seems to ignore the prior art when stating that the Accused Product and 

D’723 have “significant and glaring” differences in fender design. 

Figure from Rake ¶63.

190. The above list of errors highlights the lack of attention Mr. Rake paid to the 

reporting of his analysis. Moreover, his copy-and-paste of sections from other cases show his lack 

of attention paid to this case, and therefore his Declarations may be given little or no weight in 

supporting Defendants’ noninfringement position.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 92 of 113 PageID #:16308
88

ANALYSIS OF THE GANDY DECLARATION

191. The credibility of the Gandy Declaration is undermined by his failure to apply the 

correct legal procedure or analysis for infringement analysis, which I will detail in this section.

A. The Gandy Declaration fails to construe the scope of the Patents-In-Suit 

192. As outlined in Section IV above, an infringement analysis requires the claimed 

design of the Patents-In-Suit to first be construed. Mr. Gandy failed to provide any information 

from the face of the patents or make any mention or analysis on their filing history, their prior art 

or provide opinions on the scope of each patent in light of the prior art. Without construing the 

claims of the patent in light of the prior art, the analysis and resulting conclusions that follow may 

be greatly undermined.

193. Mr. Gandy’s failure to construe the Patents-In-Suit is even more so confounding 

considering he explicitly stated this as a necessity for infringement analysis, “it is my 

understanding that design patent infringement is determined by first construing the claim to the 

design and then comparing it to the design of the accused device." (Gandy ¶ 20).

B. The Gandy Declaration Omits Critical Steps of The Ordinary Observer Test 

194. I am informed that after construing the claims, the infringement analysis follows 

two steps: The first step is a comparison of the Accused Products to the Patents-In-Suit to evaluate 

whether they are ‘plainly dissimilar’. Mr. Gandy went immediately to conduct the second step of 

the test, thereby skipping the critical first step of the ordinary observer test. As the second 

step of the ordinary observer test is only necessary if the designs are not plainly dissimilar, Mr. 

Gandy’s actions suggest he considered them to be not plainly dissimilar. 

195. However, after conducting the three-way comparison which aims to conclude

whether in the light of the prior art the conflicting designs are ‘substantially the same’, Mr. Gandy 

concludes only that the designs are “dissimilar”. (Gandy ¶¶ 44, 61, 66, 83, 100, 105, 122). Not 

only is this the wrong level of acuteness for the three-way comparison, but also it contradicts his 

previous actions in skipping the test for being plainly dissimilar. While it may be inferred that he 

misstated his conclusions or used the wrong terms, it is clearly misleading that he refers 

specifically to ‘dissimilarity’ and may undermine the credibility of his testimony. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 93 of 113 PageID #:16309
89

196. The table below illustrates the main steps of infringement analysis typically 

conducted by a plaintiff’s expert. This is a simplified diagram, only to illustrate the steps Mr. 

Gandy should have conducted. 

Table 35: Mr. Gandy did not construe the scope of the claim, and did not conduct the first step of 

the ordinary observer test. 

197. It is important to note that a finding of the conflicting designs as being plainly 

dissimilar is a high bar, as it represents that the dissimilarities are so great there is no need to 

compare them directly to the prior art. Mr. Gandy does not conduct the correct analysis to draw 

this conclusion. 

C. The Gandy Declaration Fails to Define The Level Of Attention Of The 

Ordinary Observer 

198. Mr. Gandy asserts only that the ordinary observer in this case is “is a potential 

purchaser who is familiar with hoverboards and their different designs.” (Gandy ¶ 21). I disagree 

that the purchaser of hoverboards at this entry-level price-point would be so familiar with the 

market. Nevertheless, the ordinary observer’s familiarity with the category is not relevant to this 

analysis, as the hypothetical ordinary observer already has knowledge of the relevant prior art. In 

infringement analysis the definition of the purchaser is used to establish the level of attention they 

may apply to aesthetics, form and styling details. In my opinion, the purchaser would be focused 

primarily on user reviews, brands and costs, and would apply very little attention to the intricacies 

of the finer styling details.

199. Based on the context of purchase, and the untrained eye of the purchaser, it is my 

opinion that the hypothetical ordinary observer would possess “ordinary acuteness” and would 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 94 of 113 PageID #:16310
90

apply a relatively low level of attention to the aesthetics of the product. (see Section IV for my full 

description of the ordinary observer). Thus, small visual details (e.g., such as the air vent pattern 

on the underside or the specific shape of the shallow grooves on the foot pads) would not affect 

their overall impression of the object as a whole. 

D. The Gandy Declaration Applies A Trained Eye Instead Of The Ordinary Level 

Of Attention Of The Ordinary Observer 

200. In many areas Mr. Gandy describes subtleties in form that he, as an expert in the 

field of patents was able to detect, but these small details seen only in isolated areas from certain 

angles are not salient to the eyes of an ordinary observer with ordinary acuteness, as the test 

requires. For example, Mr. Gandy detects a “slightly raised convex contour” in the very middle of 

the hoverboard when viewed from the front, whereas the corresponding area of the Accused 

Products is substantially flat (Gandy ¶ 30, 36, 53, 64, 69, 75, 86, 92, 103, 108, 114). 

Table 36: Mr. Gandy’s trained eye finds subtleties an ordinary observer would not

Closeup, middle section of the D’256 Patent.

In this particular view we can see curvature. 

Note also, the D’195 Patent does not have an 

upward curvature here.

Closeup, corresponding middle section of 

Accused Product A

But when viewed at other angles, this slightly raised convex contour is not salient to the overall 

impression of the object as a whole to the ordinary observer. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 95 of 113 PageID #:16311
91

201. Mr. Gandy uses his trained eye on several other areas too, often only focused on 

one particular viewpoint to draw comparisons of dissimilarity. For example, he finds subtle 

differences in the hourglass shape in the top view. I do not dispute there are differences, but they 

would not have a great effect on the impression of the design as a whole to the ordinary observer.

202. For example, when comparing the general hourglass shape of the body, Mr. Gandy 

opines that “the hour glass peripheral shape of the prior art ‘906 patent appears to be closer to the 

claimed design of the [Patents-in-Suit] than the design of the Accused Product[s]”. (Gandy ¶¶ 30, 

36, 42, 47, 53, 59, 64, 86, 92, 98, 103). First, any differences in the general hourglass shape are 

subtle and would not be significant to the ordinary observer when viewing the product as a whole. 

Second, even when (improperly) applying a trained eye level analysis on the contour of the 

hourglass shapes, it is the D’906 that differs the most, further undermining Mr. Gandy’s argument. 

203. Further, even though Mr. Gandy regards small differences in the hourglass outer 

shape to be important, he fails to detect any differences between the individual Patents-In-Suit

and handles them in exactly the same way. 

E. The Gandy Declaration Conducts the Analysis Only Through Skewed Photos 

and Not From Samples Of The Accused Products 

204. Mr. Gandy’s Declaration informs us that he did not analyze physical samples of 

the Accused Products at all. While not a mandatory part of analysis, his observations may have 

been very different had he evaluated the Accused Products in person instead of relying upon 

photographs with distorted perspectives. 

205. His non-analysis of the physical products also misled him into falsely believing 

that the front and back of the Accused Product are identical, an assumption that was repeated 

in many places in all the Declarations. Specifically, he used two views of the Patents-In-Suit to 

show the front and back, whereas for the Accused Product he only provided a view of the front. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 96 of 113 PageID #:16312
92

Table 37: Mr. Gandy was misled to think the front and back of the Accused Products are identical. 

Images from the Gandy Declaration

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 97 of 113 PageID #:16313
93

F. The Gandy Declaration Relies on Improper Analysis Of The Markings 

206. In his infringement analysis Mr. Gandy lists differences between the Accused 

Products and the Patents-In-Suit and includes as a point of differentiation that the Accused 

Products include the logo “GYROOR"(Gandy ¶¶ 33, 39, 44, 48, 54, 60, 65, 89, 95, 100, 105). As 

detailed in Section IV above, the use of a logo is not relevant to this comparison and does not 

afford avoidance of infringement. Considering Mr. Gandy’s extensive experience with patent 

analysis, his repeated inclusion of the logo as an argument for non-infringement may put the 

reliability of his testimony in question. 

G. The Gandy Declaration Relies on “Some Differences” as the Evidence for 

Infringement 

207. After finding isolated differences between the Accused Products and the PatentsIn-Suit, Mr. Gandy concludes “it’s my opinion that the claimed design of the ‘195 patent has some 

surfaces and features that are closer in overall shape and appearance to the design in the prior art 

patent D’906 patent than the design of the Accused Product” (Gandy ¶ 38) (emphasis added). In 

his opinion these differences make the Accused Products distinct which leads to his conclusion 

that “the design of the Accused Product does not infringe the claimed design of the ‘195” (Id.). 

The finding that “some” isolated features are similar to the prior art is not enough evidence to 

conclude non-infringement; the test concerns the overall impression of the object as a whole, and 

whether the impression of the Accused Products is closer to the Patents-In-Suit than to the D’906

Patent. This is especially critical considering the impression of the D’906 Patent has already been 

found to be substantially different and possibly dissimilar from the Patents-In-Suit by the 

examiner. 

H. Mr. Gandy Improperly Relies Upon Small, Isolated Differences in Specific 

Views and Not the Overall Impression

208. The Gandy Declaration improperly relies upon insignificant isolated features in 

specific views to analyze differences between the Accused Products and the Patents-In-Suit, and 

not the overall impression of the design as a whole. Specifically, he discusses only differences 

between isolated features such as the air vents and grooves when viewed from the underside, the 

lights when viewed from the front, the grooves in the foot pads and the exact outer contour of the 

hourglass shape when viewed in the top view. Such small, isolated details become of very low 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 98 of 113 PageID #:16314
94

significance to the overall impression when viewing the product as a whole, particularly when 

applying the level of attention that the purchaser would apply, which in this case is quite low. 

209. For example, Mr. Gandy repeatedly describes at length small, isolated differences 

such as the lines and bumps on the front of the Accused Products and the Patents-In-Suit (Gandy 

¶¶ 33, 39, 44, 72, 78, 83). While there are differences in the ‘light’ area of the conflicting designs, 

his detailed descriptions appear to be an attempt to detract from the fact that the closest prior art 

D’906 is completely devoid of such features in this area. 

210. A similar method of highlighting minute differences is also applied to other areas 

of the designs in specific views. For example, Mr. Gandy describes small differences in vents and 

styling lines the bottom view, but omits to mention the closest prior art D’906 has no such details 

whatsoever. As further example, Mr. Gandy describes differences between the grooves and shapes 

of the foot pads in the top view, where the D’906 is completely devoid of any definitive foot pads. 

211. Further, Mr. Gandy’s analysis improperly prioritizes selected views over others, 

which may skew the analysis unfairly toward specific features. In infringement analysis the 

hypothetical ordinary observer would be familiar with all sides of the product based on the 

combination of all viewpoints. The viewpoint of the hypothetical ordinary observer is not limited 

to specific views but views the form as a whole. 

I. The Gandy Declaration Fails to Provide Evidence to Support Its Opinions 

212. Mr. Gandy also omits evidence that contradicts his opinions. For example, in each 

of Mr. Gandy’s charts he presents a figure from the Patent-In-Issue to a similar angle of the 

Accused Products and a similar angle of the D’906 Patent. However, when opining on the foot 

pads, he completely omits the corresponding image of the D’906 Patent which as we can see below, 

for example, differs greatly from the design of the Accused Products and contradicts his opinion. 

(See Gandy ¶¶ 32, 38, 49, 55, 71, 77, 88, 94, 110, 116). While the ordinary observer can see 

differences between these particular parts of the two designs, the D’906 presents a radically 

different impression. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 99 of 113 PageID #:16315
95

Table 39: Mr. Gandy omits showing the D’906 (added, right) in his table comparing the foot pads. 

Figures from the Gandy report

Omitted corresponding view 

from the D’906

213. In comparing the fender designs he states that “the wheel covers of the design of 

Gyroor “C” hoverboard are wider than those of the design of the ‘256 patent.” (Gandy Report ¶ 

76). His statement is not untrue, but it focuses on a small differences between the ‘256 Patent and 

the Accused Product, and completely ignores how entirely different the same area of the D‘906 

Patent presents itself. Below is the comparison Mr. Gandy provides, in which we can clearly see 

the starkly differing design of the D‘906 Patent which depicts a fender skirt that almost entirely 

occludes the wheel.

Table 40: The ‘906 Presents a Very Different Impression in the Wheel Area To The Ordinary 

Observer.

214. This tactic is also employed when discussing the front surface in the area of the 

‘lights’, where his accompanying illustration clearly shows that the ‘906 is ‘the odd man out’ in 

being devoid of any decoration, ‘lights’ or styling lines on the front surface. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 100 of 113 PageID #:16316
96

Table 41: The ‘906 Presents a Very Different Impression of the ‘Lights’ Area To The Ordinary 

Observer.

J. Analysis of Mr. Gandy’s Rebuttal of Hatch Infringement Report

215. In his short rebuttal of my Infringement Analysis, Mr. Gandy incorrectly states that 

certain features are not adequately described; the shape of the footpads, contour of the narrow 

central portion, the specific shape of the fenders, specific shape of the lights, and the features on 

the bottom. However, these were all part of my analysis, and many were referred to in several 

parts of my report. Moreover, the descriptors I used were to describe the impression of the design 

as a whole as seen by the ordinary observer, and therefore some details such as the vents on the 

bottom and the slight curvature on top of the middle portion were not specifically called out as 

they are insignificant to the overall impression.

216. Mr. Gandy is also misinterpreting the law in his assertions that I failed to 

“adequately” compare the designs to the prior art or define the closest prior art. I understand that 

it is the burden of the Defendants and not the Plaintiff to provide what they consider the closest 

prior art and provide an analysis that evidences their opinion. Egyptian Goddess specifically 

provides that “if the accused infringer elects to rely on the comparison prior art as part of its defense 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 101 of 113 PageID #:16317
97

against the claim of infringement, the burden of production of that prior art is on the accused 

infringer.” Egyptian Goddess, 543 F3d at 678.

217. Mr. Gandy also states I provide “overly broad” conclusions “not based upon 

sufficient evidence”. I disagree, as my opinions about non-infringement were evidenced in ways 

that Mr. Gandy failed, such as:

• Construing the claim scope of each the Patents-In-Issue, 

• Setting the level of visual acuity for the ordinary observer through which to view, 

• Presenting analysis on the cited prior art, and

• Presenting written descriptions of the overall impression of the design as a whole.

CONCLUSION

218. 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: 

- Gyroor A is not plainly dissimilar to the claimed design of the D‘723 Patent and is

substantially the same as the claimed design of the D‘723 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor A is not plainly dissimilar to the claimed design of the D‘256 Patent and is

substantially the same as the claimed design of the D‘256 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor A is not plainly dissimilar to the claimed design of the D‘195 Patent and is

substantially the same as the claimed design of the D‘195 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor B is not plainly dissimilar to the claimed design of the D‘723 Patent and is

substantially the same as the claimed design of the D‘723 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor B is not plainly dissimilar to the claimed design of the D‘256 Patent and is

substantially the same as the claimed design of the D‘256 Patent in the eyes of the 

ordinary observer in light of the prior art.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 102 of 113 PageID #:16318
98

- Gyroor B is not plainly dissimilar to the claimed design of the D‘195 Patent and is

substantially the same as the claimed design of the D‘195 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor B is not plainly dissimilar to the claimed design of the D‘112 Patent and is

substantially the same as the claimed design of the D‘112 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor C is not plainly dissimilar to the claimed design of the D‘723 Patent and is

substantially the same as the claimed design of the D‘723 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor C is not plainly dissimilar to the claimed design of the D‘256 Patent and is

substantially the same as the claimed design of the D‘256 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor C is not plainly dissimilar to the claimed design of the D‘195 Patent and is

substantially the same as the claimed design of the D‘195 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor D is not plainly dissimilar to the claimed design of the D‘723 Patent and is

substantially the same as the claimed design of the D‘723 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor D is not plainly dissimilar to the claimed design of the D‘256 Patent and is

substantially the same as the claimed design of the D‘256 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor D is not plainly dissimilar to the claimed design of the D‘195 Patent and is

substantially the same as the claimed design of the D‘195 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor D is not plainly dissimilar to the claimed design of the D‘112 Patent and is

substantially the same as the claimed design of the D‘112 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor E is not plainly dissimilar to the claimed design of the D‘723 Patent and is

substantially the same as the claimed design of the D‘723 Patent in the eyes of the 

ordinary observer in light of the prior art.

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 103 of 113 PageID #:16319
99

- Gyroor E is not plainly dissimilar to the claimed design of the D‘256 Patent and is

substantially the same as the claimed design of the D‘256 Patent in the eyes of the 

ordinary observer in light of the prior art.

- Gyroor E is not plainly dissimilar to the claimed design of the D‘195 Patent and is

substantially the same as the claimed design of the D‘195 Patent in the eyes of the 

ordinary observer in light of the prior art.

219. Therefore, an ordinary observer familiar with the prior art, giving such attention as 

a purchaser usually gives 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. 

RESERVATION OF RIGHTS

220. 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.

221. 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 

Defendant, and I understand that I may be asked to give rebuttal testimony on matters not covered 

in this expert Declaration.

I declare under penalty of perjury that the foregoing is true and correct.

Dated: January 25, 2023 Respectfully Submitted,

____________________________

Paul Hatch 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 104 of 113 PageID #:16320
Appendix A 

RESUME OF PAUL HATCH – August 2022 

Professional Design Experience: 

Oct 1998 – July 2020 

CEO, TEAMS Design USA, Inc 

May 2014 - 2018 

Co-Founder, Design House LLC (Non-profit organization) 

April 1993 - Oct 1998 

Senior Designer, TEAMS Design GmbH, Germany. 

Sept 1991- Sept 1992 

Junior Industrial Designer, IDEA Design, Germany 

July 1991 – Sept 1991 

Junior Industrial Designer, Schroerdesign, Germany 

June 1990 – Sept 1990 

Junior Industrial Designer, DA Display Ltd, UK 

Education: 

Ph.D. in Learning Sciences at University of Illinois, Chicago (current). 

BA (Hons) Degree ‘Design For Industry’ from University of Northumbria at Newcastle, Newcastle-upon-Tyne, 

UK. 

Diploma in General Art & Design, Sutton Coldfield College of Further Education, Sutton Coldfield, West 

Midlands, UK. 

Books Published 

"REALIZE - Design Means Business" (Portuguese translation), 2009 

"REALIZE - Design Means Business" (Chinese translation), 2008 

“REALIZE – Design Means Business” (US original. Co-editor and contributor), 2006 

“IMPACT, the Synergy of Technology, Business and Design” (Co-editor and contributor), 2005 

Published Articles and Papers: 

Innovation Magazine: “Immersive Design: What The Metaverse Means For Industrial Design”, April 2022 

Innovation Magazine: “Design Is Dead, Long Live Design”, June 2018 

LinkedIn Pulse: “Disruptive Innovation ...For Stability”, May 2017 

Innovation Magazine: “The State of Design – Maintaining a Proper Vision”, Summer 2016 

LinkedIn Pulse: “Getting Emotional – Design, UX and Magic” – Sept 2016 

LinkedIn Pulse: “The Local Revolution –How Design is Reinventing Manufacture”, Mar 2016 

LinkedIn Pulse: “Design Thinking Is Only Half The Story”, Jan 2016 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 105 of 113 PageID #:16321
LinkedIn Pulse: “The Macintosh Moment –Why IoT Needs ID, UX and Design Thinking” Feb 2016 

LinkedIn Pulse: “User Experience – Fun For All The Family”, Dec 2015 

Innovation magazine: “To Design Is Human”, Spring 2013 

Innovation magazine: “Finding The Sweet Spot”, Spring 2010 

Insight magazine: “Profit, By Design”, April 2005 

Innovation magazine “Designer In The Middle”, Spring 2004 

Innovation magazine: “How To Avert The Asian Shift”, Fall 2004 

International Housewares Association Magazine: “Brand Differentiation Through Design Details”, Feb 2003 

Television, Book and Magazine Interviews 

(Book) “Extended Reality: The Next Frontier of Design”. Ralf O Schneider, April 2021 

PRISM Podcast: "The Changing World of Design with Paul Hatch", April, 2021 

Learning Sciences Research Institute – “Seeing A Way To Help”, Sept 2020 

DesignDrives Podcast – “Paul Hatch – Driving Innovation in Connected AI Products”, March 2020 

Apple podcast “Context” – “Interview with Paul Hatch” , July 2019 

Appliance Design Magazine: “The Internet of Things and The Pampered User”, March 2019 

Appliance Design Magazine: “Connected Product Design”, July 2018 

Appliance Design Magazine: ”Paul Hatch Discusses the Intersection of Quality Data and a Better User 

Experience, April 2018 

Bosch Connected World: “Industrial Design in the Age of IOT”, Feb 2018 

Child Art /Learning From Design: “Paul Hatch” , Fall 2016 

Pittsburgh Technology Council (site): “It’s All In The Jam!”, Feb 2016 

Chicago Tribune: “How A Group of Chicago Product Designers Aims to Boost Manufacturing”, June 30 2014 

IDSA site: “Paul Hatch on The Changing Mechanics of the Design Business”, June 2014 

(Book) “Breaking In” by Amina Horozic, May 2014 

(Book) “Drawing For Product Designers” by Kevin Henry, Sept 2012 

Taiwan “Designer” Magazine: “Teams Design To Success in Past 50 Years”, Dec 2011 

IDSA site: “What Paul Hatch Thinks About Contrast”, Mar 2011 

New York Daily News: “From 0 to 60 in the Kitchen”, June 2009 

(Television) “190 North”, June 2006 

Appliance Design Magazine: “IATC Review: Taking A World View”, May 2006 

Appliance Design Magazine: “Industrial Design and Human Factors”, March 2004 

(Television) “World Business Review with Alexander Haig”, May 2003 

Conference Presentations, Proceedings and Invited Lectures: 

Invited Speaker: Design & Cognitive Psychology – SCAD, Georgia, Sept 2020 

Invited Speaker: Design & Cognitive Psychology – UIC Chicago, Mar 2020 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 106 of 113 PageID #:16322
Keynote Speaker: UX and IOT – Newell Congress Chicago, July 2018 

Invited Speaker: Connecting the Smart Home to the Homeowner – International Housewares Show, Jan 

2018 

Invited Panelist: Intellectual Property and Design Rights – 13th Annual Foley IP Conference, Sept 2017 

Keynote Speaker: Naked Design and Visual Perception – North Carolina State University, Nov 2017 

Keynote Speaker: Communicate or Die – UIUC, Dec 2016 

Keynote Speaker: The World Class Designer – Newell Summit, Kalamazoo, Oct 2016 

Invited Speaker: IOT and The Macintosh Moment –Connected World Conference, Sept 2016 

Keynote Speaker: Talking Loud & Clear- CSULB San Francisco, Aug 2016 

Invited Speaker: UX and IOT – Windy City Things, June 2016 

Keynote Speaker: Design For Local – IDSA International Conference, Atlanta, Aug 2016 

Keynote Speaker: Design Like an ID-IOT – Manifest, Chicago, May 2016 

Keynote Speaker: UX and the ID-IOT – IDSA Western District Conference, Denver, March 2016 

Invited Speaker: Brand Personalities – DMI National Conference, Boston, Sept 2015 

Keynote Speaker: Design For Local – PD+I Conference, London, May 2015 

Keynote Speaker: Paul Hatch and the Evolution Of Consumer Products – Garmin Center, March 2015 

Invited Speaker: The Changing Mechanics of the Design Business, IDSA International Conference, Austin, 

June 2014 

Invited Speaker: Design as a Center Of Excellence – Bosch Global Summit May 2014 

Keynote Speaker: Visual Perception and the Designer – Purdue University Oct 2013 

Invited Participant: The Meaning Of Life – Ignite Talk, ORD Camp, Chicago May 2013 

Keynote Speaker: Communicate Or Die – IDSA Midwest District Conference 2012 

Keynote Speaker: Designing For International Markets – Stryker Summit, Kalamazoo, June 2012 

Invited Speaker: Run Like A Designer – IDSA Southern District Conference, May 2011 

Invited Speaker: Reinventing The Wheel - IDSA Midwest District Conference, April 2011 

Keynote Speaker: Future Tech trends – IATC Engineering Conference, May 2010 

Invited Panelist: The Top i-Gadgets – Consumer Electronics Show, Jan 2010 

Invited Participant: Designer Mixtape– IDSA International Conference Aug 2009 

Keynote Speaker: Creating A Creative Culture -ID-DNA- IDSA Midwest Conference, March 2009 

Invited Speaker: Protecting Brand Equity – PDMA, 2008 

Invited Panelist: Developing A Brand Identity To Grow Your Margins -Consumer Electronics Show, Jan 

2006 

Invited Speaker: Brand Differentiation Through Design Details – International Housewares Show, Jan 2003 

Invited Speaker: Design in the USA – USA Forum, Frankfurt Germany, Feb 2000 

Professional Honors and Other Achievements: 

2022 Graduate Research Fellow, National Science Foundation 

2018 Presented the IDSA Fellowship Award. 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 107 of 113 PageID #:16323
2016 was elected onto the board of the IDSA as Director-at-Large. 

2015 Called to meeting at The White House by Barack Obama and Secretary of 

Commerce Penny Pritzger for Forum on supporting US manufacture. 

2014 Founded Design House Inc, a nonprofit organization whose mission is to help 

revitalize local manufacture through design. 

2013 Elected Chair of IDSA International Conference ‘Breaking The Rules’ 

2009 Third design professional ever to be awarded the IDSA Midwest Honors for 

Outstanding Achievement. 

2005-07 Elected to The Board of Directors, Industrial Designer Society of America. 

2006 Elected Chair for IDSA Midwest Conference “Home, Urban Seduction & Design”, 

Chicago, IL 

2005 Elected Chair for IDSA Midwest Conference “Impact -Design Means Business” at 

University of Urbana-Champaign, IL. 

2005 Founded and ran ‘Fight Club’, which NY Times called “A Designer Slugfest”. It 

later became a pilot Reality TV show. 

2004 Elected Chair for IDSA Midwest Conference “Shift Happens”, Chicago, IL 

2000 Received the “Design of The Decade Award” from Business Week and the IDSA 

for TEAMS Design’s achievements. 

Awards: 

2020 

IDEA Jury Chair Award 

IDEA Medical Device Gold Award 

2011 

Appliance Design EID Silver Award : Business Machine – HoMedics Inc. Black & 

Decker Hanging Crosscut 6-Sheet Paper Shredder 

Appliance Design EID Silver Award: Small Appliances – Robert Bosch Corp., 12" DualBevel Glide Miter Saw 

Appliance Design EID Silver Award: Small Appliances – HoMedics Inc., Black & 

Decker iShred 

Appliance Design EID Bronze Award: Small Appliances – Jarden Consumer Solutions, 

Mr. Coffee Optimal Brew Thermal Coffeemaker 

2010 

iF Product Design Award: Mr. Coffee Optimal Brew Thermal Coffeemaker 

ID Magazine Annual Design Review: Robert Bosch Full Force Pneumatic Nail Guns 

Appliance Design EID Award: Federal Signal Automated Parking Products 

Appliance Design EID Award: Robert Bosch Full Force Pneumatic Nail Guns 

Appliance Design EID Silver Award: Federal Signal Automated Parking Products 

Universal One & Universal PS 

Appliance Design EID Silver Award: Robert Bosch Full Force Pneumatic Nail Guns 

Appliance Design EID Bronze Award: Sunbeam Products Flat Panel Heater 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 108 of 113 PageID #:16324
Appliance Design EID Award: Sunbeam Products Flat Panel Heater 

2009 

Appliance Design EID Silver Award: Robert Bosch RS35 Reciprocating Saw 

Appliance Design EID Silver Award: Argus Camera Company Kid's Cameras Bean 

and Sprout 

IHA Award: Wusthof-Trident Precision Edge Electric Knife Sharpener 

IHA Award: Smith's Edge Diamond Edge Electric Knife and Scissors Sharpener 

Good Design Award: Robert Bosch Pneumatic Nailers 

Good Design Award: RS35 Demolition Reciprocating Saw 

Good Design Award: Precise Path Robotics RG3 Robotic Greens Mower 

IDEA Award: Argus Bean Children's Digital Camera 

2008 

ADEX Award: Mansfield Reo Bathroom Suite 

ADEX Award: Mansfield Essence Bathroom Suite 

Good Design Award: Argus Camera Kid's Cameras Bean and Sprout 

Spark Award Bronze: Precise Path RG3 Mower 

2005

Good Design Award: LR Nelson Costco 3 Piece Nozzle Set 

2001 

iF Product Design Award: Karcher HDS 698 CSX Heated Pressure Washer 

2000

Design of the Decade (IDSA /BusinessWeek): Karcher Full Line of Power Washers 

I.D. Magazine Design Awards: Siemens Easy Control Climate Control Unit 

iF Product Design Award: Siemens Easy Control Climate Control Unit 

LIST OF PATENTS (Design patents, utility patents and patents pending). 

2021/0076929 2021 Vision Measurement Device and Method of Measuring Vision Using The Same 

2020/0069089 2020 Food Product Dispenser and Valve 

WO 063584 2019 Vision Measurement Device and Method of Measuring Vision Using the Same 

EP3687373 2018 Vision Measurement Device and Method of Measuring Vision Using the Same. 

10,470,597 2019 Food Product Dispenser and Valve 

10,194,763 2019 Food Product Dispenser and Valve 

2019/0006,862 2019 Power pack vending apparatus, system and method of use for charging packs with 

biased locking arrangement 

10,084,329 2018 Power pack vending apparatus, system, and method of use for charging power 

packs with biased locking arrangement 

D800803 2017 Table Saw 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 109 of 113 PageID #:16325
D794407 2017 Power tool 

9,717,354 2017 Food product dispenser and valve 

2017/0251846 2017 Food Product Dispenser and Valve 

D761337 2016 Saw 

DE10 209490 2016 Werkzeugaufbewahrungsvorrichtung (Tool Storage Device) 

9,132,559 2015 Cutlery having improved gripping ergonomics 

2014/0214,518 2014 System and method for price matching and comparison 

D689252 2013 Portion of floor cleaning machine 

D686791 2013 Vacuum cleaner handle 

D674371 2013 Portable audio device 

2012/0159793 2012 Slidable chopping attachment for kitchen knives 

D646935 2011 Cutlery block 

D645715 2011 Pull saw 

D639616 2011 Cutlery handle 

D639615 2011 Cutlery handle 

D639614 2011 Cutlery handle 

JP005278 2011 IV Pole 

7,703,750 2010 Storage apparatus 

WO 019238 2010 Rotary food cutter with removable blade assembly 

2010/0037,787 2010 Rotary food cutter with removable blade assembly 

7,708,167 2010 Dispensing Apparatus 

D607024 2009 Hinge boring bit 

D594292 2009 Pizza cutter 

D593817 2009 Box grater 

D591118 2009 Bottle opener 

D584111 2009 Colander 

D583207 2008 Can opener 

2008/0093,489 2008 Spice Grinder Assembly with Grind Adjusting Wheel 

7,325,785 2008 Storage apparatus 

D565164 2008 Volatile Dispenser 

D559640 2008 Palm Grip Sander 

D555435 2007 Spice grinder 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 110 of 113 PageID #:16326
D550027 2007 Pan handle 

D555902 2007 Case for tool accessories 

D553857 2007 Case for tool accessories 

2007/0023455 2007 Dispensing Apparatus 

D553233 2007 Volatile Dispenser 

2007/0197152 2007 Powered paint removal tool 

7,270,496 2007 Ring Mechanism for a ring binder 

D533041 2006 Drilling and driving tool 

D523634 2006 Insert bit dispenser 

D518893 2006 IV Pole 

D525096 2006 Tuck pointer 

6,983,930 2006 Clamping device with flexible arm 

WO 027702 2005 Dispensing apparatus 

CA 2469977 2005 Ring mechanism for a ring binder 

2005/0265775 2005 Ring mechanism for a ring binder 

6,969,031 2005 Adjustable moveable IV stand 

2004/0151,531 2004 Sound deadening mechanism for a ring binder 

EP 1,706,010 2004 IV Pole 

6,754,935 2004 Power tool handle 

EP 1,509,366 2003 Power Tool Handle 

2003/0221292 2003 Power tool handle 

D470871 2003 Mobile oil dispenser 

CA 2488612 2003 Power tool handle 

D475595 2003 Circular saw with top handle 

D475265 2003 Circular saw with rear handle 

D441342 2001 Power station with corded backup 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 111 of 113 PageID #:16327
Appendix B 

PRIOR TESTIMONY 

The following is a list of all cases I have served as an expert witness and testified either at trial or by 

deposition in the last 4 years: 

Year Case Type

2022 Cambria Company LLC v. 

Lakeside Surfaces Inc 

Design Patent Infringement 

2020 Shure Inc., and Shure 

Acquisition Holdings, Inc., v. 

ClearOne, Inc 

Design Patent Infringement 

2020 Skull Shaver, LLC v. 

Ideavillage Products 

Corporation 

Design Patent Infringement 

2020 Cixi City Liyuan Auto Parts Co. 

Ltd., Tyger Auto, Inc., And 

Hong Kong Car Start Industrial 

Co. Ltd v. Laurmark 

Enterprises, Inc 

(ITC) Utility Patent Infringement 

2019 Simpson Strong-Tie Company 

v. Oz-Post International 

Design Patent Infringement, Utility Patent 

Infringement 

2019 Black & Decker Corporation v. 

Harbor Freight Tools 

JAMS Arbitration, Design Patent Infringement, 

Utility Patent Infringement, Trade Dress 

Infringement 

2019 Focus Products Grp, Int’l & 

Zahner Design & Hookless 

Systems & Sure Fit Home v. 

Kartri Sales, Co. & Marqui 

Mills Int’l 

Trade Dress and Trademark Infringement, Design 

Patent Infringement, Utility Patent Infringement 

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 112 of 113 PageID #:16328
Appendix C

Materials Considered

The following is a list of materials I considered in preparing this Report:

U.S. Patent D737,723 and its filing history

U.S. Patent D738,256 and its filing history

U.S. Patent D784,195 and its filing history

U.S. Patent D785,112 and its filing history

Prior Art cited on the face of each of the above patents.

U.S. Patent No. D739,906 (filed March 12, 2013; issued September 29, 2015)

The Accused Products “Gyroor A”, “Gyroor B”, “Gyroor C”, “Gyroor D” and “Gyroor E”

Expert Declaration of Jim Gandy (signed September 12, 2022)

Expert Declaration of Lance Rake (signed August 21, 2021)

Case: 1:20-cv-04806 Document #: 637 Filed: 01/25/23 Page 113 of 113 PageID #:16329