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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

ABC Corporation I et al,

Plaintiff,

v.

THE PARTNERSHIPS and 

UNINCORPORATED ASSOCIATIONS 

IDENTIFIED ON SCHEDULE “A”,

Defendants.

CASE NO. 1:20-cv-04806 

Judge: Honorable Thomas M. Durkin

DEFENDANTS URBANMAX, HGSM, AND GYROSHOES’ ANSWER

TO COMPLAINT, AFFIRMTIVE DEFENSES AND COUNTERCLAIMS

NOW COME Defendants Urbanmax, HGSM, and Gyroshoes, by and through its attorney,

submit their Answers to the Third Amended Complaint filed by the Plaintiffs and states as follows:

ANSWER TO COMPALINT

I. IN ANSWER TO THE ALLEGATIONS OF NATURE OF ACTION

1. This action is for patent infringement arising under the patent law of the United States, 35 U.S.C. § 1

et seq., including 35 U.S.C. §§ 271, 281, 283, 284, 285, and 289.

Answer: Admitted that Plaintiffs filed this action for patent infringement under the United States 

patent laws. Defendants otherwise denies any infringement of any valid and enforceable claim of 

any patent identified in the Third Amended Complaint. 

2. Plaintiffs have filed this action to combat e-commerce store operators who trade upon Plaintiffs’

reputation and goodwill by making, using, offering for sale, selling and/or importing into the United

States for subsequent sale and use of unauthorized and unlicensed products, namely the selfbalancing transport devices known as hoverboards shown in Exhibit 1, that infringe Plaintiffs’

patented designs (“Infringing Products”). Defendants create e-commerce stores operating under one

or more seller aliases or fictitious names identified in Schedule A, Schedule B, and Schedule C that

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are making, using, offering for sale, selling, and/or importing into the United States for subsequent

sale or use of Infringing Products to unknowing consumers. Defendant Internet Stores share unique

identifiers establishing a logical relationship between them and Defendants’ operation, which arises

out of the same transaction, occurrence, or series of transactions or occurrences. Defendants attempt

to avoid and mitigate liability by operating one or more Defendant Internet Stores to conceal both

their identities and the full scope and interworking of their operation.

Answer: Defendants deny the allegations of this paragraph in their entirety for lack of knowledge as 

to the activities of other defendants, and specifically denies that it engaged in any conduct 

constituting infringement of any valid and enforceable claim of any patent identified in the Third 

Amended Complaint.

3. Plaintiffs are forced to file this action to combat Defendants’ infringement of their patented designs,

as well as to protect unknowing consumers from purchasing Infringing Products over the Internet.

Plaintiffs have been and continue to be irreparably damaged from the loss of their lawful patent

rights to exclude others from making, using, selling, offering for sale, and importing their patented

designs as a result of Defendants’ actions and seeks injunctive and monetary relief.

Answer: Defendants deny the allegations of this paragraph in their entirety, and specifically denies 

that it engaged in any conduct constituting infringement of any valid and enforceable claim of any 

patent identified in the Third Amended Complaint.

II. IN ANSWER TO THE ALLEGATIONS OF JURISDICTION AND VENUE 

4. This Court has original subject matter jurisdiction over the claims in this action under the Patent Act,

35 U.S.C. § 1, et seq., 28 U.S.C. §§ 1331 and 1338(a)-(b).

Answer: Admitted that the Court has subject matter jurisdiction over the claims asserted in 

Plaintiffs’ Third Amended Complaint.

5. Venue is proper in this Court under 28 U.S.C. § 1391, and this Court may properly exercise personal

jurisdiction over Defendants because each of the Defendants directly targets business activities

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toward consumers in the United States, including Illinois, through at least the fully interactive, ecommerce stores, operating under the Defendants Internet Stores. See Schedule A, Schedule B, and

Schedule C. Specifically, Defendants have targeted sales to Illinois residents by setting up and

operating e-commerce stores that target United States consumers using one of more Defendants

Internet Stores, offer shipping to the United States, including Illinois, accept payment in U.S. dollars

and, on information and belief, have sold products featuring Plaintiffs’ patented designs and features

to residents of Illinois. Each of the Defendants are committing tortious acts in Illinois, engaging in

interstate commerce, and have wrongfully caused Plaintiffs substantial injury in Illinois.

Answer: Defendants deny the allegations of this paragraph in their entirety, and specifically denies 

any infringement of any valid and enforceable claim of any patent identified in the Third Amended 

Complaint and denies that it has conducted any acts in this forum that subject them to specific or 

general jurisdiction as alleged.

III. IN ANSWER TO THE ALLEGATIONS OF THE PARTIES

6. Plaintiff Chic is a high-tech company that manufactures and licenses hoverboard products for sale in

the United States. Chic is supported by Zhejiang University Ministry of Education Computer Aided

Product Innovation Design Engineering Center, the Zhejiang University International Design, and

Zhejiang Key Laboratory of Service Robot. Chic is located in the Liangzhu University Science and

Technology Park, Yuhang District, Hangzhou, China.

Answer: Defendants are without sufficient knowledge or information to admit or deny the truth of 

such allegations, and accordingly denies.

7. Chic designs and sells hoverboards, among other technologies, which incorporate the Patents-in-Suit

(collectively, “Plaintiffs’ Products”). Chic is the assignee of approximately 400 granted patents

related to technologies associated with the products at issue here, four of which are the subject of this

action.

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Answer: Defendants are without sufficient knowledge or information to admit or deny the truth of 

such allegations, and accordingly denies

8. Plaintiff Unicorn is a corporation organized under the laws of the State of California, having its

principal place of business in Ontario, California. Unicorn is the exclusive U.S. distributor of

Plaintiffs’ Products. Unicorn, through its affiliates and licenses, operates websites which promote and

sell genuine Plaintiffs’ Products, and which feature proprietary content, images and designs exclusive

to Plaintiffs.

Answer: Defendants are without sufficient knowledge or information to admit or deny the truth of 

such allegations, and accordingly denies.

9. Defendants are individuals and business entities of unknown makeup who own and/or operate one or

more Defendants Internet Stores identified in Schedule A, Schedule B, and Schedule C and/or other

seller aliases not yet known to Plaintiffs. Upon information and belief, Defendants reside and/or

operate in the People’s Republic of China or act as an entity from a foreign jurisdiction with less

efficient intellectual property enforcement systems, or redistribute products from the same or similar

sources in those locations. Defendants have the capacity to be sued under Federal Rule of Civil

Procedure 17(b).

Answer: Defendants admit that it owns and/or operates one of the storefronts identified in Schedule 

A and that it resides and/or operates in the People’s Republic of China. Defendants are without 

sufficient knowledge or information to admit or deny the truth of the remaining allegations, and 

accordingly denies.

10. Upon information and belief, Schedule A Defendants do not have substantial contacts within the

United States and are foreign entities operating Defendants Internet Stores and selling Infringing

Products.

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Answer: Defendants admit that it does not substantial contacts within the United States and is a 

foreign entity operating an Amazon storefront. Defendants deny the remaining allegations of this 

paragraph.

11. Upon information and belief, some evidence suggests that Schedule B Defendants may have some

contacts within the United States, but Plaintiffs are unable to confirm their actual location based on

the publicly available information on third party e-commerce platforms and based on state Secretary

of State (or similar state agency) records. Some indicia nonetheless suggests that Schedule B

Defendants may be foreign entities operating Defendants Internet Stores and selling Infringing

Products.

Answer: Defendants are without sufficient knowledge or information to admit or deny the truth of 

such allegations, and accordingly denies.

12. Upon Information and belief, Schedule C Defendants have contacts in both the U.S. and in foreign 

jurisdictions, but have submitted to jurisdiction and venue within the Northern District of Illinois and 

will comply with any injunctive orders from this Court.

Answer: Defendants are without sufficient knowledge or information to admit or deny the truth of 

such allegations, and accordingly denies.

13. On information and belief, Defendants either individually or jointly, operate one or more Defendants

Internet Stores listed in Schedule A, Schedule B, and Schedule C. Tactics used by Defendants to

conceal their identities and the full scope of their operation make it virtually impossible for Plaintiffs

to learn Defendants’ true identities and the exact interworking of their network. If Defendants

provide additional credible information regarding their identities, Plaintiffs will take appropriate

steps to amend the Complaint.

Answer: Defendants admit that it owns and/or operates an Amazon storefront identified in amended 

Schedule A. Defendants deny the remaining allegations in this paragraph.

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IV. IN ANSWER TO THE ALLEGATIONS OF FACTUAL ALLEGATIONS

14. Chic has been issued with several U.S. design patents relating to hoverboard products, including but

not limited to, U.S. Design Patent Nos. D737,723 (“the ’D723 patent”), D738,256 (“the ’D256

patent”), D785,112 (“the ’D112 patent”), and D784,195 (“the ’D195 patent”) (collectively, the

“Patents-in-Suit”). See Exhibit 2.

Answer: Defendants admit the Patents-in-Suit attached to Third Amended Complaint as Exhibit 2 

identifies Hangzhou Chic Intelligent Co., Ltd. as the Assignee. Defendants are without sufficient 

knowledge or information to admit or deny the remaining and accordingly denies.

15. The Patents-in-Suit claim and illustrate ornamental features of hoverboards.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

16. The ’D723 patent and the ’D256 patent are entitled “Self-Balancing Vehicle,” and were issued on

September 1, 2015 and September 8, 2015, respectively.

Answer: Admitted as this information is shown in the Exhibit 2 to the Third Amended Complaint.

17. Admitted as this table is shown in the Exhibit 2 to the Third Amended Complaint.

18. Admitted as this table is shown in the Exhibit 2 to the Third Amended Complaint.

19. Both the ’D195 patent and the ’D112 patent are entitled “Human-Machine Interaction Vehicle,” and

were issued on April 18, 2017 and April 25, 2017, respectively.

Answer: Admitted as this information is shown in the Exhibit 2 to the Third Amended Complaint.

20. Admitted as this table is shown in the Exhibit 2 to the Third Amended Complaint.

21. Admitted as this table is shown in the Exhibit 2 to the Third Amended Complaint.

22. Jiawei Ying is the main named inventor of the Patents-in-Suit, and he has assigned all rights, title,

and interest to the patents to Chic.

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Answer: As shown in the Exhibit 2 to the Third Amended Complaint, Defendants admit the four 

Patents-in-Suit identify Jiawei Ying as the Inventor. Defendants are without sufficient knowledge or 

information to admit or deny the remaining allegations of the paragraph and accordingly denies. 

23. Chic has licensed to Unicorn the right to sell, offer to sell, and distribute products featuring the

Patents-in-Suit, including Plaintiffs’ Products.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

24. Plaintiffs utilize the Patents-in-Suit when designing, manufacturing, and selling Plaintiffs’ Products.

The Patents-in-Suit have revolutionized ornamental design for hoverboards that have a central

support platform.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

25. The Patents-in-Suit have streamline shapes that are appealing to United States customers.

Specifically, the ’D723 patent and the ’D256 patent have defined the fundamental ornamental

configurations of the hoverboard product class. The ’D112 patent features a soft edge between the

central support platform and the fenders, and the ’D195 patent features a sharper edge.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

26. Plaintiffs’ Products are stylish and modern, and are visually pleasing to the consumers, and have

become enormously popular to consumers of all ages, resulting in the sale of thousands of units in

the United States.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

27. Plaintiffs have identified numerous e-commerce stores, including Defendants Internet Stores, that

offer for sale and/or selling Infringing Products to consumers in this Judicial District and throughout

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the United States. E-commerce sales, including through stores like those of Defendants, have resulted

in a sharp increase in the shipment of unauthorized products into the United States. See Excerpts

from Fiscal Year 2018 U.S. Customs and Border Protection (“CBP”) Intellectual Property Seizure

Statistics Report at Exhibit 3.

Answer: Defendants deny that it offered for sale and/or sold products to consumers in this Judicial 

District and throughout the United States that infringed any valid and enforceable claim of any patent 

identified in the Third Amended Complaint. Defendants are without sufficient knowledge or 

information to admit or deny the remaining allegations of the paragraph, and accordingly denies.

28. Third party service providers like those used by Defendants do not adequately subject new sellers to

verification and confirmation of their identities, allowing infringers to use untraceably identifiers,

such as false names and addresses, when registering with e-commerce platforms. See “Combating

Trafficking in Counterfeit and Pirated Goods,” prepared by the U.S. Dep’t of Homeland Security’s

Office of Strategy, Policy, and Plans (Jan. 24, 2020) at Exhibit 4.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

29. Defendants have targeted sales to Illinois residents by setting up and operating e- commerce stores

that target United States consumers using one or more Defendants Internet Stores.

Answer: Denied.

30. Upon information and belief, Defendants have sold and are selling Infringing Products on their ecommerce website, offered and are offering shipping to the United States, including Illinois, and are 

accepting payment in U.S. dollars.

Answer: Defendants deny that it has sold and is selling products to consumers on an e-commerce 

website that infringe any valid and enforceable claim of any patent identified in the Third Amended 

Complaint, or that it offered and is offering shipping of products to the United States, including 

Illinois, that infringe any valid and enforceable claim of any patent identified in the Third Amended 

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Complaint, or that it accepted and is accepting payment in U.S. dollars for products that infringe any 

valid and enforceable claim of any patent identified in the Third Amended Complaint. Defendants 

are without sufficient knowledge or information to admit or deny the remaining allegations of the 

paragraph, and accordingly denies. 

31. Defendants concurrently employ and benefit from substantially similar advertising and marketing 

strategies. For example, Defendants facilitate sales by designing the e-commerce stores operating the 

Defendants Internet Stores so that they appear to unknowing consumers to be authorized online 

retailers, outlet stores, or wholesalers. Defendants Internet Stores often include content and images 

that make it difficult for consumers to distinguish such stores from an authorized retailer. In addition, 

Defendants Internet Stores appear sophisticated and accept payment in U.S. dollars via credit cards, 

Paypal, and/or Amazon Pay, for example.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

32. Plaintiffs have not licensed the Patents-in-Suit to the Defendants and none of the Defendants are 

authorized retailers of genuine Plaintiffs’ Products.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

33. On information and belief, Defendants have engaged in fraudulent conduct when registering the 

Defendants Internet Stores by providing false, misleading and/or incomplete information to ecommerce platforms.

Answer: Defendants deny the allegations that it engaged in fraudulent conduct of any kind when 

registering its internet storefront. Defendants are without sufficient knowledge or information to 

admit or deny the remaining allegations of the paragraph, and accordingly denies.

34. On information and belief, Defendants have anonymously registered and maintained seller aliases to

prevent one from learning their true identities and the scope of their e- commerce operation.

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Answer: Defendants deny that it anonymously registered and maintained seller aliases to prevent 

others from learning their true identities and the scope of their e-commerce operation. Defendants are 

without sufficient knowledge or information to admit or deny the remaining allegations of the 

paragraph, and accordingly denies. 

35. On information and belief, Defendants regularly register or acquire new seller aliases for the purpose

of offering for sale and selling Infringing products. Such registration patterns are one of the many

tactics used by Defendants to conceal their identities and the interworking of their operation, as well

as to avoid being shut down.

Answer: Defendants deny that it regularly registered or acquired new seller aliases for the purpose of 

offering for sale and selling any Infringing products. Defendants further denies it uses such 

registration patterns as one of many tactics to conceal its identity and the interworking of their 

operation, as well as to avoid being shut down. Defendants deny that it has sold and is selling 

products to consumers on an e-commerce website that infringe any valid and enforceable claim of 

any patent identified in the Third Amended Complaint. Defendants are without sufficient knowledge 

or information to admit or deny the remaining allegations of the paragraph, and accordingly denies.

36. Despite operating under multiple fictitious aliases, the Defendants Internet Stores often share unique

identifiers, such as templates with common design elements with no contact information or other

identifying information, keywords, advertising tactics, similarities in prices and quantities, same

incorrect grammar and misspellings, and/or use of the same text and imagines.

Answer: Denied.

37. Infringing Products sold by the Defendants Internet Stores bear similar irregularities and indicia of

being unauthorized to one another, suggesting that Defendants are interrelated and that the Infringing

Products come from and were manufactured by a common source.

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Answer: Denied. In addition, Defendants deny that it has sold and is selling products to consumers 

on an e-commerce website that infringe any valid and enforceable claim of any patent identified in 

the Third Amended Complaint.

38. On information and belief, Defendants maintain off-shore accounts and regularly move funds from

their financial accounts to off-shore bank accounts outside this Court’s jurisdiction to avoid payment

of any monetary judgment awarded to Plaintiffs.

Answer: Defendants are without sufficient knowledge or information to admit or deny the 

allegations, and accordingly denies.

39. On information and belief, Defendants are an interrelated group of infringers working in active

concert to knowingly and willfully make, use, offer for sale, sell, and/or import into the United States

for subsequent sale or use Infringing Products in the same transaction, occurrence, or series of

transactions or occurrences.

Answer: Denied. In addition, Defendants deny that it has made, used, offered for sale, sells, and/or 

imports into the United States any products that infringe any valid and enforceable claim of any 

patent identified in the Third Amended Complaint.

40. Defendants, without any authorization or license from Plaintiffs, have jointly and severally,

knowingly and willfully made, used, offered for sale, sold, and/or imported into the United States for

subsequent resale or use products that directly and/or indirectly infringe the Patents-in-Suit,

irreparably harming Plaintiffs.

Answer: Denied. In addition, Defendants deny that it has made, used, offered for sale, sells, and/or 

imports into the United States any products that infringe any valid and enforceable claim of any 

patent identified in the Third Amended Complaint. 

V. IN ANSWER TO THE ALLEGATIONS OF COUNT I DESIGN PATENT INFRINGEMENT – PATENT 

NO. D737,723 (35 U.S.C. § 271)

41. Plaintiffs re-allege and incorporate by reference the allegations provided in the preceding paragraphs.

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Answer: Defendants realleges and adopts for reference herein their answers to Paragraphs 1-40 of 

the Third Amended Complaint as though fully set forth herein. 

42. Defendants are making, using, offering for sale, selling, and/or importing into the United States for

subsequent sale or use Infringing Products that directly and/or indirectly infringe the Patents-in-Suit.

Answer: Denied.

43. Defendants have infringed the Patents-in-Suit through the alleged acts and will continue to do so

unless enjoined by this Court. Defendants’ wrongful conduct has caused Plaintiffs to suffer

irreparable harm resulting from the loss of control of their lawful patent rights to exclude others from

making, using, selling, offering for sale, and importing the patented invention. Plaintiffs are entitled

to injunctive relief under 35 U.S.C. § 283.

Answer: Denied.

44. Plaintiffs are entitled to recover damages adequate to compensate for the infringement, including

Defendants’ profits under 35 U.S.C. § 289. Plaintiffs are also entitled to recover any other damages

as appropriate under 35 U.S.C. § 284.

Answer: Denied.

VI. IN ANSWER TO THE ALLEGATIONS OF COUNT II DESIGN PATENT INFRINGEMENT –

PATENT NO. D738,256 (35 U.S.C. § 271)

45. Plaintiffs re-allege and incorporate by reference the allegations provided in the preceding paragraphs.

Answer: Defendants realleges and adopts for reference herein their answers to Paragraphs 1-44 of 

the Third Amended Complaint as though fully set forth herein. 

46. Defendants are making, using, offering for sale, selling, and/or importing into the United States for

subsequent sale or use Infringing Products that directly and/or indirectly infringe the Patents-in-Suit.

Answer: Denied.

47. Defendants have infringed the Patents-in-Suit through the alleged acts and will continue to do so

unless enjoined by this Court. Defendants’ wrongful conduct has caused Plaintiffs to suffer

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irreparable harm resulting from the loss of control of thier lawful patent rights to exclude others from

making, using, selling, offering for sale, and importing the patented invention. Plaintiffs are entitled

to injunctive relief under 35 U.S.C. § 283.

Answer: Denied.

48. Plaintiffs are entitled to recover damages adequate to compensate for the infringement, including

Defendants’ profits under 35 U.S.C. § 289. Plaintiffs are also entitled to recover any other damages

as appropriate under 35 U.S.C. § 284.

Answer: Denied.

VII. IN ANSWER TO THE ALLEGATIONS OF COUNT III DESIGN PATENT INFRINGEMENT –

PATENT NO. D785,112 (35 U.S.C. § 271)

49. Plaintiffs re-allege and incorporate by reference the allegations provided in the preceding paragraphs.

Answer: Defendants realleges and adopts for reference herein their answers to Paragraphs 1-49 of 

the Third Amended Complaint as though fully set forth herein. 

50. Defendants are making, using, offering for sale, selling, and/or importing into the United States for

subsequent sale or use Infringing Products that directly and/or indirectly infringe the Patents-in-Suit.

Answer: Denied.

51. Defendants have infringed the Patents-in-Suit through the alleged acts and will continue to do so

unless enjoined by this Court. Defendants’ wrongful conduct has caused Plaintiffs to suffer

irreparable harm resulting from the loss of control of thier lawful patent rights to exclude others from

making, using, selling, offering for sale, and importing the patented invention. Plaintiffs are entitled

to injunctive relief under 35 U.S.C. § 283.

Answer: Denied.

52. Plaintiffs are entitled to recover damages adequate to compensate for the infringement, including

Defendants’ profits under 35 U.S.C. § 289. Plaintiffs are also entitled to recover any other damages

as appropriate under 35 U.S.C. § 284.

Answer: Denied.

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VIII. IN ANSWER TO THE ALLEGATIONS OF COUNT IV DESIGN PATENT INFRINGEMENT –

PATENT NO. D784,195 (35 U.S.C. § 271)

53. Plaintiffs re-allege and incorporate by reference the allegations provided in the preceding paragraphs.

Answer: Defendants realleges and adopts for reference herein their answers to Paragraphs 1-54 of 

the Third Amended Complaint as though fully set forth herein. 

54. Defendants are making, using, offering for sale, selling, and/or importing into the United States for

subsequent sale or use Infringing Products that directly and/or indirectly infringe the Patents-in-Suit.

Answer: Denied.

55. Defendants have infringed the Patents-in-Suit through the alleged acts and will continue to do so

unless enjoined by this Court. Defendants’ wrongful conduct has caused Plaintiffs to suffer

irreparable harm resulting from the loss of control of their lawful patent rights to exclude others from

making, using, selling, offering for sale, and importing the patented invention. Plaintiffs are entitled

to injunctive relief under 35 U.S.C. § 283.

Answer: Denied.

56. Plaintiffs are entitled to recover damages adequate to compensate for the infringement, including

Defendants’ profits under 35 U.S.C. § 289. Plaintiffs are also entitled to recover any other damages

as appropriate under 35 U.S.C. § 284.

Answer: Denied.

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AFFIRMATIVE DEFENSES

Defendants affirmatively asserts the following defense:

1. Defendants’ Accused Products (ASIN No. B08HW9TTBG and B07WPK7KY3, identified in Dkt. No. 

227-3, p. 4 of 4) have not infringed, and are not infringing, directly or indirectly by inducement, any 

valid and enforceable claim contained in U.S. Patent Nos. D737,723, D738,256, D785,112, and 

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

2. As shown in table below, Defendants’ product is based on the unique design of U.S. Design Patent 

D808,857, of which Defendants obtained a license.

Plaintiffs’ Patents-in-Suit (one of four D737,723) Defendants’ Licensed Patent D808,857

Plaintiffs’ Product Defendants’ Accused Products

3. Defendants further incorporates its Motion for Summary Judgement of Noninfringement [Dkt. No. 

110] in support of its noninfringement defense.

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

been infringed is the “ordinary observer” test. Under the “ordinary observer” test, “if, in the eye of an 

ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the 

same, if the resemblance is such as to deceive such an observer, inducing . . . purchase [of] one 

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supposing it to be the other, the first one patented is infringed by the other.” Egyptian Goddess, Inc. v. 

Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008).

5. The “ordinary observer” test requires the fact finder to “compare similarities in overall designs, not 

similarities of ornamental features in isolation.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 

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

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

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

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

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

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

the fenders that cover the wheels. 

7. It is obvious that the D808,857 has a unique design from the Patents-in-Suit.

8. In this case, an ordinary observer will either a) find the Accused Products substantially similar to the 

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

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

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

ordinary observer.

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

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COUNTERCLAIMS

JURISDICTION AND VENUE

1. These are Counterclaims brought by Defendant/Counterclaimant Defendants (“Defendants”), against 

Plaintiffs/Counterdefendant Hangzhou Chic Intelligent Technology Co., Ltd., and Unicorn Global, Inc. 

(collectively “Plaintiffs”) for declaratory judgment that U.S. Patent Nos. D737,723, D738,256, 

D785,112, and D784,195 (collectively “the Patents-in-Suit”) are not infringed, either directly or 

indirectly by inducement, by Defendants’ use, manufacture, sale, and offer for sale of products and 

technology as identified in the Third Amended Complaint. 

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

Court, 28 U.S.C. § 1331, 28 U.S.C. § 1338(a), 28 U.S.C. § 1367(a), the Declaratory Judgment Act, 28 

U.S.C. § 2201-2202, the patent laws, 35 U.S.C. § 1, et seq., and under Rule 13 of the Federal Rules of 

Civil Procedure.

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

infringement arising under the patent laws of the United States and pursuant to 28 U.S.C. § 1391(b) 

and (c), as Plaintiffs/Counter defendants have a principal place of business and thereby reside in this 

judicial district, a substantial portion of the events giving rise to these Counterclaims occurred in this 

judicial district, and Plaintiffs are subject to personal jurisdiction of this Court having commenced its 

action in this Court.

THE PARTIES

4. Defendant/Counterclaimant are three Chinese companies with their principal place of business in China.

5. Defendants have internet storefronts that they use to sell hoverboards.

6. Upon information and belief, Plaintiff/CounterDefendant Hangzhou Chic Intelligent Technology Co., 

Ltd. (“Hangzhou”) is a Chinese company located in the Liangzhou University Science and 

Technology Park, Yuhang District, Hangzhou, China.

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7. Upon information and belief, Plaintiff/CounterDefendant Unicorn Global, Inc. is (“Unicorn”) is a 

corporation organized and existing under the laws of the State of California, having its principal place 

of business in the Ontario, California.

COUNT I

Declaratory Judgment of Noninfringement

8. Defendants’ Accused Products has not infringed, and is not infringing, directly or indirectly by 

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

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

9. As shown in table below, Defendants’ product is based on the unique design of U.S. Design Patent 

D808,857, of which Defendants obtained a license.

Plaintiffs’ Patents-in-Suit (one of four D737,723) Defendants’ Licensed Patent D808,857

Plaintiffs’ Product Defendants’ Product

10. Defendants further incorporates its Motion for Summary Judgement of Noninfringement [Dkt. No. 

110] in support of its noninfringement defense.

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

been infringed is the “ordinary observer” test. Under the “ordinary observer” test, “if, in the eye of an 

ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the 

same, if the resemblance is such as to deceive such an observer, inducing . . . purchase [of] one 

Case: 1:20-cv-04806 Document #: 368 Filed: 08/14/21 Page 18 of 21 PageID #:8311
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supposing it to be the other, the first one patented is infringed by the other.” Egyptian Goddess, Inc. v. 

Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008).

12. The “ordinary observer” test requires the fact finder to “compare similarities in overall designs, not 

similarities of ornamental features in isolation.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 

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

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

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

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

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

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

the fenders that cover the wheels. 

14. It is obvious that the D808,857 has a unique design from the Patents-in-Suit.

15. In this case, an ordinary observer will either a) find the Accused Products substantially similar to the 

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

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

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

ordinary observer.

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

DEFENDANTS’ PRAYER FOR RELIEF

WHEREFORE, Defendants pray that 

1. Plaintiffs be denied all relief against Defendants;

2. The Accused Products does not infringe the Patents-in-Suit;

3. Plaintiffs’ Third Amended Complaint be dismissed with prejudice and judgment entered in 

favor of Defendants;

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4. Plaintiff takes nothing by way of this action; 

5. Defendants be awarded compensatory and punitive damages;

6. Defendants be awarded costs of suit, attorneys’ fees and any other relief which the Court 

deems proper.

DEMAND FOR JURY TRIAL

Defendants demand a jury trial on any issue triable of right by jury.

Date: 08/14/2021 /s/ Tianyu Ju 

Tianyu Ju,

Iris.Ju@glacier.law

Glacier Law PLLC

200 E. Randolph Dr., Ste. 5100

Chicago, IL 60601

Tao Liu,

Tao.Liu@glacier.law

He Cheng,

Robin.Cheng@glacier.law

Glacier Law PLLC

200 Park Avenue, Suite1703 

New York, NY 10166

Attorney for Defendant

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CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on this August 14, 2021, I electronically filed the foregoing file 

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

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

documents via CM/ECF.

Date: 08/14/2021 /s/ Tianyu Ju 

Tianyu Ju, Esq.

Case: 1:20-cv-04806 Document #: 368 Filed: 08/14/21 Page 21 of 21 PageID #:8314