UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

HANGZHOU CHIC INTELLIGENT 

TECHNOLOGY CO.; and UNICORN 

GLOBAL, INC.,

Plaintiffs,

v.

GYROOR; GYROOR-US; URBANMAX;

FENGCHI-US; HGSM; GAODESHANG-US;

and GYROSHOES,

Defendants.

No. 20 C 4806

Judge Thomas M. Durkin

MEMORANDUM OPINION AND ORDER

Plaintiffs allege that Defendants’ “hoverboard” products infringe Plaintiffs’ 

design patents. Defendants have moved for summary judgment. That motion is 

granted.

Legal Standard

The “ordinary observer” is the “test for determining whether a design patent 

has been infringed.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. 

Cir. 2008). The “ordinary observer” is a person that “gives such attention as a 

purchaser usually gives.” Id. at 670 (quoting Gorham Co. v. White, 81 U.S. 511

(1871)). To prove infringement, a plaintiff must demonstrate by a preponderance of 

the evidence that “an ordinary observer, familiar with the prior art . . . would be 

deceived into believing the [accused product] is the same as the patented [product].” 

Egyptian Goddess, 543 F.3d at 681; see also id. at 670 (“two designs are 

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substantially the same, if the resemblance is such as to deceive such an observer, 

inducing him to purchase one supposing it to be the other”); id. at 679 (“the 

patentee bears the ultimate burden of proof to demonstrate infringement by a 

preponderance of the evidence”).

“In some instances, the claimed design and the accused design will be 

sufficiently distinct that it will be clear without more that the patentee has not met 

its burden of proving the two designs would appear ‘substantially the same’ to the 

ordinary observer.” Egyptian Goddess, 543 F.3d at 678. “In other instances, when 

the claimed and accused designs are not plainly dissimilar, resolution of the 

question whether the ordinary observer would consider the two designs to be 

substantially the same will benefit from a comparison of the claimed and accused 

designs with the prior art.” Id.

“When the differences between the claimed and accused design are viewed in 

light of the prior art, the attention of the hypothetical ordinary observer will be 

drawn to those aspects of the claimed design that differ from the prior art.” ABC 

Corp. I v. The P’ships, 52 F.4th 934, 942 (Fed. Cir. 2022). “In other words, where a 

dominant feature of the patented design and the accused products . . . appears in 

the prior art, the focus of the infringement substantial similarity analysis in most 

cases will be on other features of the design.” Id. The prior art provides a contextual 

“background” or a “frame of reference” that “can highlight the distinctions between 

the claimed design and the accused design as viewed by the ordinary observer.” 

Egyptian Goddess, 543 F.3d at 678. As a background feature, the “shared dominant 

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feature from the prior art will be . . . insufficient by itself to support a finding of 

substantial similarity.” ABC Corp., 52 F.4th at 942.

Applying these standards in Egyptian Goddess, the Federal Circuit affirmed 

a grant of summary judgment to the alleged infringer, holding that “no reasonable 

fact-finder could find that [the plaintiff] met its burden of showing, by a 

preponderance of the evidence, that an ordinary observer, taking into account the 

prior art, would believe the accused design to be the same as the patented design.” 

See 543 F.3d at 682. “Thus, where appropriate, courts, in applying the ordinary 

observer test, both before and after Egyptian Goddess, have not hesitated to grant 

summary judgment based on a mere visual comparison of the patented design and 

the accused product.” Harel v. K.K. Int’l Trading Corp., 994 F. Supp. 2d 276, 279 

(E.D.N.Y. 2014) (citing cases).

Analysis

There are four patents in-suit and five accused products. Defendants 

identified patent D739,906 as the relevant prior art, and Plaintiffs do not dispute 

this.

All four patents-in-suit and all five accused products share with the prior art 

an hourglass shape. In reversing this Court’s grant of a preliminary injunction, the 

Federal Circuit held that the “hourglass shape” is “a dominant feature of the 

patented design and the accused products” and also “appears in the prior art,” such 

that “the focus of the infringement substantial similarity analysis [should] be on 

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other features of the design. The shared dominant feature from the prior art will be 

no more than a background feature of the design[.]” ABC Corp., 52 F.4th at 942.

In that same decision, the Federal Circuit also criticized Plaintiffs’ expert 

Paul Hatch—whose opinion Plaintiffs again rely upon in opposing summary 

judgment—because he found that “having an ‘hourglass body’ was ‘unlike’ the prior 

art,” despite the fact that the prior art clearly has an hourglass body. Id. at 938. 

Addressing this criticism in their brief here on summary judgment, Plaintiffs argue 

that their patents claim not just an hourglass body, but “the visual impression of an 

‘hourglass’ body in combination 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’ or styling ‘lines across the body.’” R. 668 at 9 (emphasis in original). 

Plaintiffs argue that because their patents claim these features that are not in the 

prior art, the “differences in the trivial styling details of each” are insufficient to 

establish that Defendants’ products are not substantially similar to Plaintiffs’ 

designs. See R. 668 at 9. Instead, “the focus is on the overall appearance of the 

design.” Id.

It is certainly true that the “overall effect” is the relevant focus of an 

infringement analysis. See Egyptian Goddess, 543 F.3d at 677 (Fed. Cir. 2008) (“An 

ordinary observer, comparing the claimed and accused designs in light of the prior 

art, will attach importance to differences between the claimed design and the prior 

art depending on the overall effect of those differences on the design.”). But 

Plaintiffs’ statement that the differences between the accused products and the 

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claimed designs are “trivial” does not necessarily make it so. A product-by-product

analysis is necessary to determine how the details of the designs contribute to their 

overall effects.

The Court undertakes this analysis with reference to single-page charts the 

Court has created for each accused product, which juxtapose the relevant images 

and drawings provided in the parties’ briefs, and which are attached hereto as 

appendices. The parties refer to the five accused products as “A” through “E,” but 

the Court will address Product C last because it is helpful to compare it to the other 

four.

A. Product A (Gyroor T581 series)

Plaintiffs argue that Product A infringes three of the four patents-in-suit: 

‘723, ‘256, and ‘195. Product A does not give the same overall impression as any of 

the three. 

First, Product A’s fenders are entirely different from any of the fenders of the 

patents-in-suit. Product A’s fenders cover only the top inner portion of each wheel. 

The “perspective view” in the appendix shows that the outer half of each wheel is 

entirely exposed. The “front/back view” shows that fenders do not cover any portion 

of the front or back of the wheel. Additionally, Product A’s fender features a 

somewhat angular appearance, with the facades being mostly flat and only partially 

curved. 

By contrast, the fenders of the patents-in-suit all cover a much greater 

portion of the wheels. The “fender views” in the appendix show that the fenders 

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shown in Patents ‘723 and ‘195 curve around the entire top half of the tires on the 

wheels. Patent ‘256’s fender does not fully cover the end of the tires, but it curves 

around the front such that it blocks part of the view of the tire in the “front/back 

view.” Further, unlike the angular appearance of Product A’s fender, the fenders of 

the patents-in-suit feature a curved appearance. Specifically, Patents ‘723 and ‘195 

feature 180-degree curves around the outer side of the wheels, and Patent ‘256 

features a 90-degree curve over the top of the wheel.

In addition to the significantly different fenders, the midsection of the 

hourglass shape (which the Court will refer to as the “neck”) for Product A is shaped 

differently from the patents-in-suit. The “front/back view” for each patent-in-suit 

shows that their “necks” rise above the level of the footpad areas, creating a ridge

between the footpads. By contrast, Product A’s neck dips below the level of the foot 

pads, which accentuates the greater size of the foot pads.

Besides the structural differences in the fenders and necks, there are also 

several decorative differences between Product A and the patents-in-suit. For 

instance, the decoration on the necks is different for each. Product A’s neck is a 

plain, smooth surface. By contrast, Patent ‘723 has an oval decoration at the neck, 

while Patent ‘256 has a bone shape (for lack of a better description), and Patent ‘195 

has a rectangular shape.

The treads on the foot pads are also all designed differently. Product A 

features six straight tread lines that run parallel to the edge of the foot pad and 

then fan out as they approach the neck. Both Patents ‘723 and ‘256 feature straight 

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lines that angle towards the center of the neck and are interrupted by a circular 

shape. The tread lines in Patent ‘195 are shown with dotted lines, which generally 

means that the feature is not claimed by the patent. If Patent ‘195 does not claim 

tread lines on its foot pads, it is clearly different from Product A because Product 

A's claimed design includes tread lines. But even considering Patent ‘195’s tread 

lines as claimed, the design is entirely different because it features a large area in 

the middle of the pad that is devoid of tread lines. 

Lastly, Product A and the patents-in-suit feature lights entirely different 

designs. As can be seen in the “perspective” and “front/back views,” Product A’s 

lights are narrow strips that run nearly the entire length of the front of each end of 

the hourglass. By contrast, the lights on the patents-in-suit ‘723 and ‘256 are all 

much smaller, shorter, but wider. Patent-in-suit ‘195 has a longer light, which 

unlike the uniform width of Product A’s light, substantially widens towards the 

neck of the hourglass. 

The forgoing analysis shows that the Product A’s relevant features—those 

other than that dominant hourglass shape—are all designed differently than the 

features of any of the three patents-in-suit. These differently designed features 

combine to create an overall effect that is not substantially similar to any of the 

three patents-in-suit, when discounting the dominant hourglass shape. For these 

reasons, the Court finds that no reasonable juror could find Product A to be 

substantially similar to any of the patents-in-suit, ‘723, ‘256, or ‘195.

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B. Product B (Gyroor G2 series)

Plaintiffs argue that Product B infringes all four of the patents-in-suit: ‘723, 

‘256, ‘195, and ‘112. The differences between Product B and each of the patents-insuit are even more pronounced than for Product A. 

Like Product A, Product B’s fenders are distinctly different from the fenders 

shown in any of the patents-in-suit. As discussed, the fenders shown in the patentsin-suit all cover the top of the wheel, as can be seen in the “top view” and 

“perspective view.” They also cover at least part of the front of the wheel, as seen in 

the “front/back view.” Additionally, patents ‘723 and ‘195 curve over the wheel to 

cover part of its outer side, as can be seen in the “fender” view. By contrast, Product 

B’s fender does not cover any part of the front or outer side of the wheel, and covers 

a much smaller portion of the top of the wheel than any of the patents-in-suit. 

Moreover, like Product A, Product B’s fender features an angular appearance unlike 

the curved appearance of each of the fenders shown in the four patents-in-suit. 

Product B’s “neck” is also different from the “necks” of each of the four 

patents-in-suit, in part because the “neck” of Product B appears to maintain the 

same level of the foot pads, whereas the “necks” shown in each of the four patentsin-suit rise above the level of the footpads. More strikingly, however, Product B’s 

“neck” features an angular appearance, whereas each of the four patents-in-suit 

feature curved appearances. The “top view” shows that each side of Product B’s neck 

is composed of three straight lines to form one half of a hexagon. By contrast, the 

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“top view” of each patent-in-suit shows a smooth curve from the foot pads into the 

neck.

There are also several other notable decorative differences in the design of 

Product B when compared to each of the four patents-in-suit. For instance, the 

decoration on the necks is different for each. Product B’s neck is free of decoration

other than narrow extensions of the foot pads. By contrast, Patent ‘723 has an oval 

decoration at the neck, while Patent ‘256 has the already noted “bone” shape, and 

Patents ‘195 and ‘112 have rectangular or trapezoidal shapes at their center.

The treads on the foot pads are also all designed differently. Product 

B features broad, molded angular depressions in the foot pad to create treads. By 

contrast, all four of the patents-in-suit show multiple narrow tread lines. Both 

Patents ‘723 and ‘256 feature straight lines that angle towards the center of the 

neck and are interrupted by a circular shape. As mentioned, Patent ‘195’s tread 

lines are shown with dotted lines, and so are the tread lines shown in Patent ‘112. A 

lack of claimed tread lines makes the foot pad designs for Patents ‘195 and ‘112 

entirely different from the foot pad design of Product B. But to the extent the tread 

designs of Patents ‘195 and ‘112 should be considered, they are different than the 

tread design of Product B. Patent ‘195’s foot pad features a large section devoid of 

tread lines. And patent ‘112 features tread lines arching around a circular imprint.

Lastly, like the foot pads, the lights have entirely different designs. As can be 

seen in the “perspective” and “front/back views,” Product A’s lights are narrow 

strips that run nearly the entire length of the front of each end of the hourglass, 

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before turning up at the ends. By contrast, the lights on the patents-in-suit ‘723 and 

‘256 are all much smaller, shorter, but wider. Patent-in-suit ‘195 has a longer light, 

but it is not uniform in width like Product A, but rather substantially widens 

towards the neck of the hourglass. Patent ‘112 also features lights that run the 

length of the machine but are much wider than the lights on Product B, and unlike 

Product B, the lights shown in Patent ‘112 meet in the center of the machine.

As with Product A, the forgoing analysis shows that the Product B’s relevant 

features—those other than that dominant hourglass shape—are all designed 

differently than the features of any of the four patents-in-suit. These differently 

designed features combine to create an overall effect that is not substantially 

similar to any of the three patents-in-suit, when discounting the dominant 

hourglass shape. For these reasons, the Court finds that no reasonable juror could 

find Product B to be substantially similar to any of the patents-in-suit, ‘723, ‘256, 

‘195, or ‘112.

D. Product D (Gyroor G5 series)

Plaintiffs argue that Product D infringes four patents-in-suit: ‘723, ‘256, ‘195, 

and ‘112. Product D does not give the same overall effect as any of the four patentsin-suit. 

All four patents-in-suit are similar to the prior art in that the “top view”

shows a smooth curve from the ends of the “hourglass” into the “neck” of the 

hourglass. By contrast, Product D angles towards the neck with straight lines with 

the neck ultimately forming nearly a right angle against the ends of the hourglass.

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Comparing the “front/back view” of Product D compared to those of the 

patents-in-suit also reveals that Product D’s neck is shaped differently. The 

patents-in-suit each have a neck that rises above the level of the base of the 

hoverboard such that it is at or above the height of the foot pads. By contrast, the 

neck of Product D is narrower than the necks of the patents-in-suit such that the 

level of Product D’s neck is below the level of the base and the foot pads.

The fenders of the patents-in-suit are also much more like each other than 

the fenders on Product D. The fenders of the patents-in-suit are necessarily wider 

than that of Product D for the simple reason that the wheels on each of the patentsin-suit are wider than those on Product D. The wheels in each of the patents-in-suit 

are the width of the ends of the hourglass, whereas Product D’s wheels are 

narrower than the ends of the hourglass. 

More significantly, the fenders of each of the patents-in-suit cover a much 

greater portion of the wheel than Product D. Patents ‘723 and ‘195 cover the top 

half of the tire, and Patent ‘112 covers only slightly less. By contrast the fender of 

Patent ‘256 does not extend to the front edge of the tire. But Product D’s fender 

covers very little of the tire in comparison to the four patents-in-suit. It extends only 

over the top of the tire, and even then, is well short of the tire’s front edge.

Most importantly, Product D’s fender is angular, whereas the fenders of the 

patents-in-suit are curved. The fenders give entirely distinct impressions.

The foot pads of Product D and the four patents-in-suit all have unique tread 

designs. Patents ‘723 and ‘256 have similar straight lines spraying across the pad. 

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Patent ‘195 has similar straight lines but only across half of the pad. By contrast, 

Patent ‘112 features tread lines that are curved. The tread lines on Product D are 

entirely different and cannot be described as “lines” at all. Rather, they are 

impressions in the pad instead of lines across the pad. Similar to its fender, the 

design of the tread lines on Product D’s foot pad gives an entirely different 

impression than the tread lines for any of the four patents-in-suit.

For these reasons, the Court finds that no reasonable juror could find Product 

D to be substantially similar to any of the patents-in-suit, ‘723, ‘256, ‘195, or ‘112.

E. Product E (Gyroor G11 series)

Plaintiffs argue that Product E infringes three patents-in-suit: ‘723, ‘256, and 

‘195. Product E does not give the same overall impression as any of the three.

Like Products A, B, and D, Product E’s fenders are entirely different from any 

of the fenders of the three patents-in-suit. Product E’s fenders cover only the top 

inner portion of each wheel. The “perspective view” shows that the outer half of 

each wheel is entirely exposed. The “front/back view” shows that fenders do not 

cover any portion of the front or back of the wheels. Additionally, like Product A, 

Product E’s fender features a somewhat angular appearance, with the facades being 

mostly flat and only partially curved.

By contrast—as already discussed—the fenders of the patents-in-suit all 

cover a much greater portion of the wheels. The “fender views” in the appendices 

show that Patents ‘723 and ‘195 curve around the entire top half of the tires on the 

wheels. Patent ‘256’s fender does not fully cover the end of the tires, but it curves 

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around the front such that it blocks part of the view of the tire in the “front/back 

view.” Further, unlike the angular appearance of Product A’s fender, the fenders of 

the patents-in-suit show a curved appearance. Patents ‘723 and ‘195 are 180-degree 

curves around the outer side of the wheels. Patent ‘256 is a 90-degree curve over the 

top of the wheel.

In addition to the significantly different fenders, the “neck” of the hourglass 

shape for Product E is shaped differently from the three patents-in-suit. The 

“front/back view” for each patent-in-suit shows that their “necks” rise above the 

level of the footpad areas, creating a ridge between the footpads. By contrast, 

Product E’s neck dips below the level of the foot pads, which accentuates the greater 

size of the foot pads.

Besides the structural differences in the fenders and necks, there are also 

several decorative differences between Product E and the three patents-in-suit. For 

instance, the decoration on the necks is different for each. Product E’s neck is a 

plain, smooth surface. By contrast, as already noted, Patent ‘723 has an oval 

decoration at the neck, while Patent ‘256 has a bone shape, and Patent ‘195 has a 

rectangular shape.

The treads on the foot pads are also all designed differently. Product E

features four straight and relatively broad tread lines that run parallel to the edge 

of the foot pad and then fan out as they approach the neck. Both Patents ‘723 and 

‘256 feature straight lines that angle towards the center of the neck and are 

interrupted by a circular shape. As discussed, 

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The tread lines in Patent ‘195 are shown with dotted lines, which generally means 

that the feature is not claimed by the patent. The dotted lines show treads featuring 

a large area in the middle of the pad that is devoid of tread lines. In either case, 

Patent ‘195’s foot pad design is clearly different from Product E’s foot pad design 

because it either does not claim a tread design or claims a design that is distinct 

from Product E. 

Lastly, like the foot pads, the lights have entirely different designs. As can be 

seen in the “perspective” and “front/back views,” Product E’s lights are strips of 

uniform width that run much of the length of the front of each end of the hourglass. 

By contrast, the lights on Patents ‘723 and ‘256 are all much smaller, shorter, but 

wider. Patent ‘195 has a longer light, but it is not uniform in width like Product E, 

but rather substantially widens towards the neck of the hourglass. 

As with the first three accused products, Product E’s relevant features are all 

designed differently than the features of any of the three patents-in-suit. These 

differently designed features combine to create an overall effect that is not 

substantially similar to any of the three patents-in-suit. For these reasons, the 

Court finds that no reasonable juror could find Product E to be substantially similar 

to any of the patents-in-suit, ‘723, ‘256, or ‘195.

C. Product C (Gyroor T580 series)

Plaintiffs argue that Product C infringes three patents-in-suit: ‘723, ‘256, and 

‘195. Like the other four accused products, Product C does not give the same overall 

effect as any of the three patents-in-suit.

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Unlike the other four accused products, Product C’s fender has some 

similarities to the fenders of two of the patents-in-suit. Like Patent ‘195, the 

“front/back view” shows that Product C’s fender covers almost the entire top-front 

half of the wheel, while curving around the front in a similar fashion. However, 

unlike Patent ‘195, Product C’s fender does not cover any portion of the end of the 

wheel, as can be seen in the “fender” and “perspective” views. In this way, Product 

C’s fender is similar to the fender shown in patent-in-suit ‘256. But, Product C’s 

fender differs from Patent ‘256 because Product C’s fender covers almost the entire 

top-front of the wheel, whereas Patent ‘256 shows the fender revealing almost half 

of the top-half of the wheel in the “front/back view.” Thus, while Product C’s fender 

shares some features with the fenders shown in Patents ‘256 and ‘195, Product C’s 

fender as a whole shows a different overall appearance than the fenders shown in 

Patents ‘256 and ‘195. The fender shown in the third patent-in-suit ‘723 covers both 

the end of the wheel and a greater portion of the front of the wheel, such that it too 

shows an overall appearance different from Product C’s fender.

The rest of the design features of Product C are as different from the those in 

each of the patents-in-suit as are the four accused products already discussed. Like 

Products A, B, D, and E, the “neck” of Product C is narrower than the three patentsin-suit, which can be seen with reference to the “front/back view.” The “front/back 

view” for each patent-in-suit shows that their “necks” rise above the level of the 

footpad areas, creating a ridge between the footpads. By contrast, the “front/back 

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view” for Product C shows that its neck dips below the level of the foot pads, which 

accentuates the greater size of the foot pads.

Like the other four accused products, Product C’s non-structural, decorative

features also differ from the three patents-in-suit. Product C features two “c” 

shaped decorations facing opposing directions near the center of its neck. By 

contrast, Patent ‘723 has an oval decoration at the neck, while Patent ‘256 has a 

bone shape (for lack of a better description), and Patent ‘195 has a rectangular 

shape.

Product C’s foot pads treads are just as different from the patents-in-suit as 

the other accused products. Product C features six straight and relatively broad 

tread lines that run parallel to the edge of the foot pad and then fan out as they 

approach the neck. Both Patents ‘723 and ‘256 feature straight lines that angle 

towards the center of the neck and are interrupted by a circular shape. Patent 

‘195—to the extent its tread design is claimed—shows a tread design featuring a 

large area in the middle of the pad that is devoid of tread lines.

Lastly, like the foot pads, the lights have entirely different designs. As can be 

seen in the “perspective” and “front/back views,” Product C’s lights are strips of 

uniform width that run about two-thirds of the length of the front of each end of the 

hourglass. By contrast, the lights on Patents ‘723 and ‘256 are all much smaller, 

shorter, but wider. Patent ‘195 has a longer light, but it is not uniform in width like 

Product C, but rather substantially widens towards the neck of the hourglass. 

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Although Product C’s fenders share some features with the patents-in-suit, 

the majority of Product C’s relevant features are all designed differently than the 

features of any of the three patents-in-suit. These differently designed features 

combine to create an overall effect that is not substantially similar to any of the 

three patents-in-suit. For these reasons, the Court finds that no reasonable juror 

could find Product C to be substantially similar to any of the patents-in-suit, ‘723, 

‘256, or ‘195.

F. Summary

Plaintiffs argue that an ordinary observer “would pay little attention to the 

small differences identified by the Defendants, and instead conclude that the 

Accused Products share very similar visual traits—e.g., pronounced ‘footing’ areas, 

and open-arched fenders over the top of the wheel area.” R. 668 at 17. The Court 

finds this to be an unreasonable assessment of the similarities and differences 

between the accused products and the claimed designs. 

Plaintiffs argue that the Accused Products copy the “pronounced footing 

areas” featured by the patents-in-suit. But the “pronounced footing areas” are part 

of the hourglass shape which the Federal Circuit found to be background because it 

is shown in the prior art. Plaintiffs are correct that the Accused Products’ design 

share the feature of “open-arched fenders” with the patents-in-suit. Unlike the 

hourglass shape, the “open-arched fenders” are not mere background because the 

prior art does not claim a fender design.

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However, although the prior art does not claim any particular wheel or 

fender design, it contemplates two wheels at opposing ends of the machine. An 

ordinary observer—which the Court finds to be a retail purchaser—would observe 

that the hourglass shape with wheel at opposing ends is the overall dominant 

feature. But the hourglass shape with wheels at opposing ends is such an 

overwhelmingly dominant feature that small design details—which Plaintiffs 

erroneously characterize as “trivial”—stand out in relief. The ordinary observer 

purchasing a hoverboard product of this kind would assume that all the products 

they would consider would have this dominant feature. The ordinary observer 

would decide which product to purchase based on the details Plaintiffs 

mischaracterize as “trivial.” While the details might be small, they stand out 

against the background of the hourglass shape and become the primary 

characteristics the ordinary observer would use to distinguish the products. For 

instance, the ordinary observer might prefer the appearance of: smaller rather than 

larger fenders; or rounded rather than angled fenders; or a midpoint of the 

hourglass that dips below the footpads rather than rises above them or remains 

level with them. Furthermore, the designs of the shape and treads of the footpads 

are undeniably different. The ordinary observer would certainly notice the footpad 

designs because they have varying degrees of appeal for both aesthetic and 

functional purposes that the ordinary observer would infer based on the shape and 

size of the tread (i.e., how do they feel under your feet). And the different shapes of 

the lights would also draw the ordinary observer’s attention for both aesthetic and 

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functional reasons, which the ordinary observer would infer based on the size and 

positioning of the lights.

Plaintiffs argue that this sort of analysis impermissibly “compares the 

designs element-by-element” rather than focusing on the “overall visual 

impression.” But as discussed, the fenders, the midpoint of the hourglass, and the 

designs of the footpads and lights, standout against the dominant background 

hourglass shape with wheels at opposing ends. The “overall visual impression” of 

each design can only be described with reference to these details, albeit taken 

together as a whole. 

Oddly, Plaintiffs note that the prior art lacks footpads and suggests closed 

fenders. See R. 668 at 18-19. On this basis, Plaintiffs argue that the patents-in-suit 

and accused products all present the same overall 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.” But this characterization cannot be correct because it includes the hourglass 

shape of the prior art, which must only be considered as background. Further, the 

fact that the prior art does not include footpads, fenders, or lights indicates that 

these features will be the focus of the ordinary observer and most relevant to the 

infringement analysis. Thus, the relevant “overall impression” here is primarily 

given by the designs of the fenders, footpads, and lights, along with the style of the 

midpoint of the hourglass. Plaintiffs incorrectly dismiss the significance of the 

details of these features. By ignoring these details, Plaintiffs have failed to 

Case: 1:20-cv-04806 Document #: 686 Filed: 01/12/24 Page 19 of 25 PageID #:17528
20

demonstrate that a reasonable juror could find that any of the accused products are 

substantially similar to any of the patents-in-suit.

Conclusion

For these reasons, the Defendants’ motion for summary judgment [665] is 

granted and Plaintiffs’ claims are dismissed. Defendants’ motions to strike 

Plaintiffs’ expert reports [645] [675] are denied as moot in light of the grant of 

summary judgment. Defendants’ motions to clarify [560] [567] [625] are also denied 

as moot.

Still pending or anticipated are Plaintiffs’ motion for release of the bond [653] 

and Defendants’ motion for damages alleging that the preliminary injunction was 

wrongful, for which briefing has been stayed [652]. The parties should meet and 

confer and determine how they would like to proceed with respect to these 

remaining issues and submit a joint status report on the outcome of their meeting 

by January 26, 2024.

ENTERED:

______________________________

Honorable Thomas M. Durkin

United States District Judge

Dated: January 12, 2024

Case: 1:20-cv-04806 Document #: 686 Filed: 01/12/24 Page 20 of 25 PageID #:17529
Top View Bottom View Perspective View Front/Back View Foot Pad Fender

Accused 

Product 

A

Prior 

Art 

D’906

n/a

Patentin-Suit 

D’723

Patentin-Suit 

D’256

Patentin-Suit 

D’195

Case: 1:20-cv-04806 Document #: 686 Filed: 01/12/24 Page 21 of 25 PageID #:17530
Top View Bottom View Perspective View Front/Back View Foot Pad Fender

Accused 

Product 

B

Prior 

Art 

D’906

n/a

Patentin-Suit 

D’723

Patentin-Suit 

D’256

Patentin-Suit 

D’195

Patentin-Suit

D’112

Case: 1:20-cv-04806 Document #: 686 Filed: 01/12/24 Page 22 of 25 PageID #:17531
Top View Bottom View Perspective View Front/Back View Foot Pad Fender

Accused 

Product 

C

Prior 

Art 

D’906

n/a

Patentin-Suit 

D’723

Patentin-Suit 

D’256

Patentin-Suit 

D’195

Case: 1:20-cv-04806 Document #: 686 Filed: 01/12/24 Page 23 of 25 PageID #:17532
Top View Bottom View Perspective View Front/Back View Foot Pad Fender

Accused 

Product 

D

Prior 

Art 

D’906

n/a

Patentin-Suit 

D’723

Patentin-Suit 

D’256

Patentin-Suit 

D’195

Patentin-Suit

D’112

Case: 1:20-cv-04806 Document #: 686 Filed: 01/12/24 Page 24 of 25 PageID #:17533
Top View Bottom View Perspective View Front/Back View Foot Pad Fender

Accused 

Product 

E

Prior 

Art 

D’906

n/a

Patentin-Suit 

D’723

Patentin-Suit 

D’256

Patentin-Suit 

D’195

Case: 1:20-cv-04806 Document #: 686 Filed: 01/12/24 Page 25 of 25 PageID #:17534