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 and D738,256 

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TABLE OF CONTENTS 

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

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

SCOPE OF OPINIONS ....................................................................................................... 2

A. Background and Qualifications ........................................................................................ 2

B. Compensation and Prior Testimony ................................................................................. 3

C. Materials and Information Considered ............................................................................. 3

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

A. The Limiting Purpose of a Design Patent ........................................................................ 3

B. Legal Principles in Analysis of Design Patent Infringement ........................................... 4

C. Claim Construction in Design Patents ............................................................................. 5

D. The Ordinary Observer Test ............................................................................................. 7

E. The Significance of Prior Art ............................................................................................... 8

F. Definition of the Ordinary Observer .................................................................................... 8

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 ................................................................................... 11

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

D. The Cited Prior Art Show The Patents-In-Suit Have A Broad Scope ........................... 16

ANALYSIS OF FUNCTIONALITY ................................................................................ 18

OVERVIEW OF THE ACCUSED PRODUCTS .............................................................. 21

THE ACCUSED PRODUCTS INFRINGES THE PATENTS-IN-SUIT...................... 26

A. The Accused Product Gyroor A Infringes on the D‘723 Patent .................................... 27

B. The Accused Product Gyroor A Infringes on the D‘256 Patent .................................... 30

C. The Accused Product Gyroor C Infringes on the D‘723 Patent ..................................... 32

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D. The Accused Product Gyroor C Infringes on the D‘256 Patent ..................................... 34

E. The Accused Product Gyroor E Infringes on the D‘723 Patent ......................................... 36

F. The Accused Product Gyroor E Infringes on the D‘256 Patent ......................................... 38

CONCLUSION .................................................................................................................. 41

RESERVATION OF RIGHTS ............................................................................................. 42

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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, and 

D738,256 (“the Patents-In-Suit”). This Declaration is in support of Plaintiffs Hangzhou 

Chic Intelligent Technology Co. and Unicorn Global Inc.’s (collectively “Hangzhou”) 

motion for a preliminary injunction 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 Defendant’s accused hoverboard products “Gyroor A”, “Gyroor C” 

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 

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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. 

SCOPE OF OPINIONS 

A. Background and Qualifications 

5. 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. 

6. 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. 

7. 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. 

8. 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 

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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. 

9. 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 

10. 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 

11. 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 Product. The list 

of materials I reviewed in my analysis is included in Appendix C. 

LEGAL STANDARDS 

12. 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 

13. 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 

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history of the patent application. See Goodyear Tire & Rubber Co. v. Hercules Tire & 

Rubber Co. Inc., 162 F.3d 1113, 1116 (Fed. Cir. 1998). 

B. Legal Principles in Analysis of Design Patent Infringement 

14. 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)). 

15. 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. 

16. 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)). 

17. 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. 

18. 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” 

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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 

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

infringement. Id. 

19. 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. 

20. 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). 

21. 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 

22. 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 

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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 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. 

23. 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). 

24. 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. 

25. 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). 

26. 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). 

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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. 

27. 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 

28. 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. 

29. 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). 

30. 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). 

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31. 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. . 

E. The Significance of Prior Art 

32. 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. 

33. 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. 

34. 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 

35. 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. 

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36. 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. 

37. 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. 

38. 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). 

39. 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). 

40. 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 

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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 

41. 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 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). 

42. 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). 

43. 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.” 

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

A. The Patents-In-Suit 

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

(“the D’256 Patent”), for Self-Balancing Vehicles. Such self-balancing vehicles are 

commonly referred to as “hoverboards”. 

45. 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. 

B. Examination of the D’723 Patent 

46. 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. 

47. 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 

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Fig.2 is a bottom plan 

view thereof 

Fig 3 is a rear elevational 

view thereof 

Fig. 4 is a front elevation 

view thereof 

Fig 5. Is a left side view 

thereof, the right side 

view being a mirror 

image thereof. 

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Fig.6 is a rear, top, right 

perspective view thereof 

Fig. 7 is a front, top, left 

perspective view thereof 

Fig 8 is a rear, bottom, 

left perspective view 

thereof 

48. 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. 

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49. 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 

50. 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”. 

Table 2: The Claimed Design of the D’256 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 

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Fig. 4 is a front elevation 

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 

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Fig. 7 is a front, top, left 

perspective view thereof

Fig 8 is a rear, bottom, left 

perspective view thereof

51. 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. 

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

53. 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.

54. 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 

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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 3: 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

55. 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. 

56. 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 

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. 

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relatively flat surface across the top of the main body, pronounced ‘footing’ areas, and 

open-arched fenders over the top of the wheel area. 

ANALYSIS OF FUNCTIONALITY 

57. 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

58. 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. 

59. First, in looking at the overall ‘hour glass’ shape of the main body, we need look no further 

than the prior art to find alternative ways to provide similar or the same functionality of 

providing adequate space for footing and allow for a central pivoting motion. Importantly, 

these alternative ornamental designs have distinctly different ornamental designs from the 

Claimed Designs. 

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). 

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Table 4: 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 

Appl. 2007-0273118 

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60. Second, the fenders of the Claimed Designs may prevent accidentally access to the top of 

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

table below). 

61. 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 5: 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-In-Suit but 

create distinctly different 

visual impressions. 

62. I have examined not only the three examples above but also other, less visually dominant 

parts of the ornamental design. 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-InSuit are dictated by function, or otherwise purely functional. 

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OVERVIEW OF THE ACCUSED PRODUCTS 

63. As noted above, there are three products accused of infringement in this case, the ‘Gyroor 

A’, ‘C’ and ‘E’. 

64. 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. 

65. 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 6: Accused Product Gyroor A

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Table 7: Accused Product Gyroor C

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Table 8: Accused Product Gyroor E

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THE ACCUSED PRODUCTS INFRINGES THE PATENTS-IN-SUIT 

66. 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. 

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67. 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. 

68. 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. 

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

dissimilar to the Claimed Designs 

70. 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. 

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

72. 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. 

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Table 9: 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 

FIG. 4 of the prior 

art ’D906 Patent 

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Figure 1 of the D’723 

Patent 

Top view of Gyroor A 

Figure 3 of the prior art 

D‘906 Patent. 

73. 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. 

74. 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. Specifically, 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. 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 

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a very uncluttered, rounded, smooth body with no pronounced footing area and closed 

fender skirts3. 

75. 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. 

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

76. 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 10: 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 

3

 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. 

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FIG. 4 of the prior 

art ’D906 Patent 

Figure 1 of the D’256 

Patent 

Top view of Gyroor A 

Figure 3 of the prior art 

D‘906 Patent. 

77. 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. 

78. 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. Specifically, Gyroor A and the claimed design of the D‘256 

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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. 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. 

79. 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. 

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

80. 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 11: 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

Perspective view of 

Gyroor C 

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FIG. 4 of the prior 

art ’D906 Patent 

Figure 1 of the D’723 

Patent 

Top view of Gyroor C 

Figure 3 of the prior art 

D‘906 Patent. 

81. 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. 

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82. 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. Specifically, 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. 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. 

83. 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. 

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

84. 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 12: 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

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Perspective view of 

Gyroor C 

FIG. 4 of the prior 

art ’D906 Patent 

Figure 1 of the D’256 

Patent 

Top view of Gyroor C 

Figure 3 of the prior art 

D‘906 Patent. 

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85. 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. 

86. 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. Specifically, 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. 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. 

87. 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. 

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

88. 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 13: 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

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Perspective view of 

Gyroor E 

FIG. 4 of the prior 

art ’D906 Patent 

Figure 1 of the D’723 

Patent 

Top view of Gyroor E 

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Figure 3 of the prior art 

D‘906 Patent. 

89. 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 the Accused Products are 

not plainly dissimilar. 

90. 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. Specifically, 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. 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. 

91. 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. 

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

92. 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. 

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Table 14: 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 

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Figure 1 of the D’256 

Patent 

Top view of Gyroor E 

Figure 3 of the prior art 

D‘906 Patent. 

93. 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 the Accused Products are 

not plainly dissimilar. 

94. 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. Specifically, 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. 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. 

95. 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. 

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CONCLUSION 

96. 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 ‘723 Patent and is 

substantially the same as the claimed design of the ‘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 ‘256 Patent and is 

substantially the same as the claimed design of the ‘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 ‘723 Patent and is 

substantially the same as the claimed design of the ‘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 ‘256 Patent and is 

substantially the same as the claimed design of the ‘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 ‘723 Patent and is 

substantially the same as the claimed design of the ‘723 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 ‘256 Patent and is 

substantially the same as the claimed design of the ‘256 Patent in the eyes of the 

ordinary observer in light of the prior art. 

97. 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. 

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RESERVATION OF RIGHTS 

98. 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. 

99. 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: Nov 8, 2022 

Respectfully Submitted, 

____________________________ 

Paul Hatch 

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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 

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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 

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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 #: 594 Filed: 11/09/22 Page 48 of 55 PageID #:14299
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 #: 594 Filed: 11/09/22 Page 49 of 55 PageID #:14300
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 #: 594 Filed: 11/09/22 Page 50 of 55 PageID #:14301
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 

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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 #: 594 Filed: 11/09/22 Page 52 of 55 PageID #:14303
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 Hangzhou Chic Intelligent 

Technology Co. and Unicorn 

Global Inc. v. Hangzhou Chic 

Intelligent Technology Co. et 

al. v. The Partnership and 

Unincorporated Associations

(20-cv-04806)

Design Patent Infringement

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 #: 594 Filed: 11/09/22 Page 53 of 55 PageID #:14304
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

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 C”, and “Gyroor E” 

Case: 1:20-cv-04806 Document #: 594 Filed: 11/09/22 Page 54 of 55 PageID #:14305
CERTIFICATE OF SERVICE

I hereby certify that on November 9, 2022, a true and correct copy of the foregoing

document was filed with the Clerk of the Court using CM/ECF which will generate and serve a

Notice of Electronic Filing to all parties to this action.

Dated: November 9, 2022

PALMERSHEIM & MATHEW LLP

Robert J. Palmersheim

Anand C. Mathew

Timothy G. Parilla

401 N. Franklin Street, Suite 4S

Chicago, IL 60654

Tel.: (312) 319-1791

E-mail: acm@thepmlawfirm.com

E-mail: rjp@thepmlawfirm.com

E-mail: tgp@thepmlawfirm.com

TARTER KRINSKY & DROGIN LLP

By: /s/ Richard J.L. Lomuscio

Richard J.L. Lomuscio

Mark Berkowitz

1350 Broadway

New York, NY 10018

Tel.: (212) 216-8000

Fax: (212) 216-8001

E-mail: rlomuscio@tarterkrinsky.com

E-mail: mberkowitz@tarterkrinsky.com

Attorneys for Plaintiffs

Case: 1:20-cv-04806 Document #: 594 Filed: 11/09/22 Page 55 of 55 PageID #:14306