1 

UNITED STATES DISTRICT COURT  

NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION 

ABC Corporation I and ABC Corporation II, 

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 

PAUL HATCH REBUTTAL TO  

LANCE RAKE DECLARATION 

   

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CONTENTS 

EXECUTIVE SUMMARY ............................................................................................................ 3

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

A. Background and Qualifications ............................................................................................ 4

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

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

ANALYSIS OF RAKE DECLARATIONS ........................................................................................ 6

A. The Reliability And Credibility of Rake Declarations Is Undermined By His Errors, Despite 

His Experience ............................................................................................................................. 8

B. Rake Declarations Include Contradictory Positions That Further Significantly Undermine 

His Credibility .............................................................................................................................. 9

C. Rake Declarations Are Based on Incorrect Understanding and Application of Egyptian 

Goddess ....................................................................................................................................... 9

1.  The Rake Declarations rely upon an incorrect understanding of the ordinary observer 

test .......................................................................................................................................... 9

2. The Rake Declaration omits defining the level of attention of the Ordinary Observer ... 10

3. The Rake Declarations are missing critical steps of infringement analysis ...................... 10

4. The Rake Declarations rely upon unrelated patents without analysis or evidence ......... 11

5. Mr. Rake’s evidence improperly relies upon dimensions ................................................. 11

6. Mr. Rake considers ornamental elements of the claimed designs as functional without 

analysis or evidence .............................................................................................................. 12

7. The Rake Declaration improperly relies upon comparing unclaimed areas .................... 12

8. The Rake Declaration fails to use the correct viewpoint through which to base opinions.

............................................................................................................................................... 13

9. Mr. Rake improperly relies upon whether individual differences are ‘obvious’ instead of 

comparing the overall impression ........................................................................................ 15

10. Mr. Rake improperly relies upon small, isolated differences in specific views and not 

the overall impression .......................................................................................................... 16

11. The Rake Declaration omits critical views and evidence ................................................ 17

ANALYSIS OF MR. RAKE’S REBUTTAL OF HATCH INFRINGEMENT REPORT .......................... 20

A Three‐Way Comparison of the Patents‐in‐Suit, the infringing products, and the ’D906 

patent ............................................................................................................................................ 22

CONCLUSION ...................................................................................................................... 22

RESERVATION OF RIGHTS .................................................................................................. 23

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EXECUTIVE SUMMARY 

Based upon the legal principles explained to me and my examination of the Rake Declarations, 

Defendant’s Infringing products, the Patents‐In‐Suit and their file histories, and the prior art, it 

is my opinion that: 

 The reliability and credibility of the Rake Declarations is undermined by many errors. 

 The opinions in the Rake Declarations include contradictory positions that may further 

significantly undermine his credibility. 

 The analysis in the Rake Declarations rely upon an incorrect understanding of the 

ordinary observer test and also omit defining the level of attention of the ordinary 

observer. 

 The Rake Declarations are missing critical steps of infringement analysis including failing 

to expressly construe the scope of the Patents‐In‐Suit.  

 The opinions in the Rake Declarations rely upon unrelated patents without providing 

analysis or evidence.  

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

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

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

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

It is my opinion that the overall appearance of each the Infringing Products is not “plainly 

dissimilar” to one or more of the Claimed Designs of the Patents‐In‐Issue.   

Further, an ordinary observer familiar with the prior art, giving such attention as a purchaser 

usually gives, would find the overall appearance of the Infringing Product to be substantially the 

same as the overall appearance of one or more of the claimed designs of the Patents‐In‐Issue in 

light of the prior art, inducing him or her to purchase each Infringing Product supposing it to be 

the Claimed Design.  

SCOPE OF OPINIONS 

I have been retained by counsel as an independent expert witness to provide my opinion 

regarding the above litigation matter, and matters related to the U.S. Patents D737,723, 

D738,256, D784,195, and D785,112 (“the Patents‐In‐Suit”). (Dkt. 37‐11). I also hereby provide 

my rebuttal to Mr. Rake’s Declaration of August 23rd, 2021 (“Rake1”) (Dkt. 376), and Mr. Rake’s 

subsequent four declarations, dated September 3rd, 2021 (“Rake2‐5”) (Dkts. 413‐4, 414‐4, 419‐

4, 420‐4, and 421‐4).  This declaration is an addition to my previous declaration in support of 

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

“Hangzhou”) motion for a preliminary injunction.  In this rebuttal declaration I may from time‐

to‐time refer back to my recent declaration The Expert Declaration of Paul Hatch Regarding 

Infringement, dated August 24, 2021 (“Hatch Declaration”) (Dkt. 388). 

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 

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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 further 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. 

A. Background and Qualifications 

I incorporate by reference my background and qualifications as outlined in my previous 

declaration.  See Hatch § I.B.  

B. Compensation and Prior Testimony 

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 

In forming my opinions, I have reviewed the Rake Declarations, their referenced prior art, the 

Infringing Products, the ‘D857 Patent, the claimed designs of the Patents‐In‐Suit, their file 

history, and the prior art cited on the face of the patents.  

LEGAL STANDARDS 

A similar legal standards section was presented in my prior declarations, but it is worth 

restating here again because of the mischaracterization by the Gyroor Defendants. 

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)).  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. 

I am also informed that the Manual of Patent Examining Procedure (“MPEP”) provides guidance 

on how broken lines are to be used in design patent drawings. U.S. Pat. & Trademark Office, 

Manual of Patent Examining Procedure § 1503.02 (9th ed. 2018). Section 1503.02.III notes that 

broken lines include “[s]tructure that is not part of the claimed design, but is considered 

necessary to show the environment in which the design is associated” and that structure “may 

be represented in the drawing by broken lines.” Id. Such unclaimed subject matter represented 

by broken lines forms no part of the claimed design.  

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 

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corresponding portion of the accused design.” (emphasis added) Burstein, The “Article of 

Manufacture” in 1887, supra note 12, at 11 (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, 543 F.3d at 672). 

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. 

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).   

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.  Further, I 

understand that the three‐way comparison does not involve discussing a later‐granted patents, 

such as the D808,856, D808,857, and D891,297 (“Gyroor Patents”).  There is no place for these 

later‐granted patents under Egyptian Goddess, and I therefore do not opine on the merits of 

these patents.  However, I reserve the right to address these when appropriate. 

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, Inc. 

v. Swisa, Inc., 543 F.3d 665, 678‐79 (Fed. Cir. 2008) (en banc). 

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.” and “not minor or trivial 

differences that necessarily exist between any two designs that are not exact copies of one 

another.” (Emphasis added) Ethicon, 796 F.3d at 1335 (citing Richardson v. Stanley Works, Inc., 

597 F.3d 1288, 1295 (Fed. Cir. 2010), Int'l Seaway Trading Co. v. Walgreens Corp., 589 F.3d 

1233, 1243 (Fed. Cir. 2009). 

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 

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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.     

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).  

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 v. 

Thunder Craft Boats, 489 U.S. 141, 148 (1989).  “[W]hether a design is primarily functional or 

primarily ornamental requires viewing the claimed design ‘in its entirety.’” Ethicon Endo‐

Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329 (Fed. Cir. 2015).  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, 820 F.3d at 1321.  

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 

“essential to the use of the article.” Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 

(Fed. Cir. 2016).  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 Technologies, LLC v. St. John Cos., 

469 F.3d 1361, 1366 (Fed. Cir. 2002).  

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 Group Int'l, Inc., 222 F.3d 951, 956 (Fed. 

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

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

features are of little value.”. 

ANALYSIS OF RAKE DECLARATIONS 

Table 1 is provided below to facilitate the discussion of the infringing product types:  

Table 1: Infringing products by Defendants Gyroor 

Gyroor product type  Infringing product  Defendants 

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“Gyroor Product A”:  Gyroor  

(Gyroor.com; 

gyroorboard.com); 

Gaodeshang‐US; 

Gyroshoes; 

HGSM; 

Urbanmax; 

Jiangyou‐US; 

Gyroor‐US 

“Gyroor Product B”:  Gyroor  

(Gyroor.com; 

gyroorboard.com); 

Gaodeshang‐US 

“Gyroor Product C”:    Gyroor US; 

Jiangyou‐US; 

(Gyroor.com; 

gyroorboard.com); 

“Gyroor Product D”:    Fengchi‐US; 

(Gyroor.com; 

gyroorboard.com); 

In addition to the discussions below, the Rake Declarations discuss the Gyroor Patents when 

comparing each of the Infringing Products to the Patents‐in‐Suit.  Based on Section III above, 

Egyptian Goddess does not permit such comparison.  Therefore, instead of continuing to 

engage such erroneous analyses like the Rake Declarations, I am asked not to perform such 

review until necessary. 

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A. The Reliability And Credibility of Rake Declarations Is Undermined By His 

Errors, Despite His Experience  

Mr. Rake has a long history in giving testimonies in intellectual property. It is therefore 

surprising that the Rake Declaration included so many improper and inaccurate analyses. It is 

equally surprising that there are so many careless, critical errors and mistakes in his declaration, 

which together bear heavily on his credibility as an expert witness.  

For example, in all four declarations he proposes that he is “qualified to give an opinion about 

what would be understood by one skilled in the art of ceiling fans like those at issue here" 

(Rake1‐5 § 23) (emphasis added), and that his relevant experience includes “products that

contain metal components" (Rake1‐5 § 8).   

Signs of accidental pasting from other cases are also evident in Rake1 § 52, "I determined that 

the overall Gestalt of the Infringing Product fan is more similar to the design of the ’857 Patent 

that that of the ‘723 Patent" (emphasis added). These types of mistakes make it unclear as to 

whether this represents his opinion or not.  

When addressing functionality for the very first time in the declaration, Mr. Rake refers back to 

an explanation of functionality that is not in the preceding declaration at all, "The overall shape 

of the ‘723 Patent claim is, as I explained earlier, largely based on functionality" (Rake1 § 58, 

Rake2‐5 § 70). 

In his review of the ‘857 Patent, not only does he omit the top and front views he refers to but 

also shows a figure from the wrong patent, from the ‘723 Patent instead of the ‘857 Patent.  

Mr. Rake also compares the wrong patent figures against in the ‘906 Patent in many parts of 

his 2nd, 3rd, 4th and 5th declarations, mistaking the ‘195 Patent for the ‘723 Patent (Rake2‐5 § 

63),  mistaking the ‘256 Patent for the ‘723 Patent (Rake2‐5 § 67), confusing the ‘723 Patent for 

the ‘256 Patent (Rake2‐5 § 74) and again in Rake2‐5 § 101, again in Rake2‐5 § 128, and once 

again in Rake2‐5 § 155.  Not only do these mistakes show a lack of visual acuity in Mr. Rake’s 

analysis of the designs, but also leave his opinions lacking the relevant evidence.  

These errors may show the lack of attention Mr. Rake paid to the individual designs of the 

Patents‐In‐Suit, and despite the patent examiner considering them as four distinct designs Mr. 

Rake did not identify any differences between the Patents‐In‐Suit, nor did he handle them 

differently in any way.  Moreover, his copy‐and‐paste of sections from other cases show his lack 

of attention paid to this case, and therefore his declarations may be given little or no weight in 

supporting Gyroor Defendants’ noninfringement position. 

In introducing the ‘856 and ‘857 Patents in the 2nd, 3rd, 4th and 5th Declarations, Mr. Rake states, 

in his own words, “Broken lines set forth the bounds of the claimed design and form no part 

thereof”, giving the impression that some of the figures include broken lines. However, there 

are no broken lines in the ‘856 and ‘857 Patents whatsoever, which Mr. Rake either failed to 

notice or he mistakenly wrote the wrong statement. 

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B. Rake Declarations Include Contradictory Positions That Further Significantly 

Undermine His Credibility 

Mr. Rake states that the size and shape of the fenders is an “important design feature that has 

a significant effect on the overall visual impression of the ordinary observer”. (Rake1 § 63) Mr. 

Rake illustrates this by showing a figure from the U.S. Patent 8,469,376 next to a partial figures 

of the ‘256 Patent the Infringing Product and states that “the differences are significant and 

glaring”.  While there may be some difference between the two designs, the prior art he 

included is devoid of a fender, and only demonstrates how similar the two conflicting designs 

are in light of the prior art, quite the opposite of his opinion.  

Table 2: Mr. Rake’s table on fenders compares the conflicting designs to a prior art that has 

no fender 

In the conclusions of the 2nd, 3rd, 4th and 5th Rake Declarations, Mr. Rake incorrectly states that 

the ‘857 Patent “was not part of [his] non‐infringement analysis”. However, this is an untrue 

statement as he repeatedly included it in his comparison to the Patents‐In‐Issue in his first non‐

infringement analysis. (Rake1 §§ 51‐76). 

C. Rake Declarations Are Based on Incorrect Understanding and Application of 

Egyptian Goddess

1.  The Rake Declarations rely upon an incorrect understanding of the ordinary observer test 

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

measurement of whether the designs are substantially the same, “If the resemblance deceives 

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

substantially the same” (emphasis added) (Rake1 §  38, Rake2‐5 § 39). As explained in Section 

III above, the true measurement of infringement using the ordinary observer test is not based 

on whether the ordinary observer is deceived into purchase.    

2. The Rake Declaration omits defining the level of attention of the Ordinary Observer  

In an infringement analysis we must define the ordinary observer in order to establish the level 

of attention they may apply to aesthetics, form and styling details, a crucial step which Mr. 

Rake does not do. Mr. Rake does, however, assert that the purchaser will “do their homework” 

when buying articles such as hoverboards, and research different brands online and read 

reviews (Rake Decl. §40).  I agree. A consumer informing themself about the products for the 

first time would be focused primarily on user reviews, brands and costs1, and would apply very 

little attention to the intricacies of the finer styling details.  

Based on the context of purchase, and the untrained eye of the purchaser, it is my opinion that 

the ordinary observer would possess “ordinary acuteness” and would apply a relatively low 

level of attention to the aesthetics of the product.  Thus, small visual details (e.g., such as the air 

vent pattern on the underside or the specific shape of the shallow grooves on the foot pads) 

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

I also note that Mr. Rake does not rebut the description I provided in my Infringement Analysis 

of the level of attention the ordinary observer would have. 

3. The Rake Declarations are missing critical steps of infringement analysis  

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

provide analysis on whether they are ‘plainly dissimilar’, as is required in infringement analysis.  

As outlined above in section III, infringement analysis requires the claimed design of the 

Patents‐In‐Issue to first be construed. Mr. Rake only provided textual information from the face 

of the patents (Rake1 § 36) but did not provide any mention or analysis on their filing history, 

their prior art or about the scope of each patent in light of the prior art, which is not identical. 

Without construing the claims of the patent in light of the prior art, the analysis and resulting 

conclusions that follow may become greatly undermined. 

I am informed that after construing the claims, infringement analysis follows two steps: The 

first step is a comparison of the Infringing Product to the Patents‐In‐Issue to evaluate whether 

they are ‘plainly dissimilar’. If they are not plainly dissimilar the analysis moves on to the second 

                                                      

1

 In my prior declaration I stated that “an ordinary observer is the typical purchaser of hoverboards.”  Dkts. 385, 

pp. 18‐19; 388, p. 7.  “[T]hat person would be a consumer user or the parent of a user, each having little or no 

experience purchasing hoverboards.”  Dkts. 385, p. 19; 388, p. 8.  “The ordinary observer would encounter 

hoverboard products through online stores, television and social media, and then purchase them using online 

stores (e.g., Amazon.com) without the ability to view or discern minor differences or from ‘brick and mortar’ stores 

(e.g., Best Buy or Walmart).  Id.  Therefore, such an ordinary observer would view various hoverboard products, 

including those embodying prior art, while browsing through online images of hoverboards.   

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

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

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

In Rake1, Mr. Rake does not compare the conflicting designs to the prior art. The second step of 

infringement analysis involves establishing whether the Infringing Product is ‘substantially the 

same’ as the claimed design of the Patents‐In‐Issue through the eyes of an ordinary observer in 

light of the prior art. For this purpose, the closest prior art is to be selected by the defendant as 

a yardstick against which to evaluate whether the Accused Design is closer to the Patents than 

the prior art.  In Rake1, Mr. Rake did not offer an opinion on what he considers the closest prior 

art nor did he use prior art in his analysis other than to refer to a specific feature from one 

particular prior art (Rake1 § 63).  Without comparing the conflicting designs to the prior art, as 

the infringement process requires, his opinions or conclusions about infringement risk being 

considered meaningless.  

Furthermore, his declaration also informs us that he did not analyze a physical sample of the 

Infringing Product at all. While not a mandatory part of analysis, his observations may have 

been very different had he evaluated the Infringing Products in person instead of relying upon 

photographs with distorted perspectives.  

4. The Rake Declarations rely upon unrelated patents without analysis or evidence 

In the Conclusion Section of the 2nd, 3rd, 4th and 5th Declarations, Mr. Rake introduces for the 

first time in those documents, the Gyroor Patents. Without analysis or evidence, he states 

simply that “Although this patent was not a part of my non‐infringement analysis, I do believe 

that [the Infringing products] would be seen as substantially similar to the [newly introduced 

patent] in the eyes of an ordinary observer” (Rake 2‐4 §§ 187‐189). First, the Rake Declarations 

2‐4 do not provide any claim construction of these patents to define their scope. Mr. Rake also 

does not analyze or even reference their prior art. Furthermore, Mr. Rake improperly uses the 

viewpoint of the ordinary observer here instead of that of the Person of Ordinary Skill in the 

Art (“POSITA”) typical for analyzing whether a product is the commercial embodiment of a 

patent.  

5. Mr. Rake’s evidence improperly relies upon dimensions 

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

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

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

general, and provides dimensions of wheel diameters and the distance between them (Rake1 § 

47, Rake 2‐4 § 46). He later improperly relies upon these dimensions as evidence that the 

overall shape of the Patents‐In‐Issue is based on functionality; “The dimensions correspond to 

the dimensions of a human foot, the distance between footpads corresponds to approximate 

‘shoulder width’ dimensions of the user” (Rake1 §§ 58, 64, 70 and 76, Rake2‐5 §§ 70, 76, 82, 88, 

97, 103, 109, 115, 124, 130, 136, 142, 151, 157, 163, 169).  

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

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

own work (Rake1‐5 § 13). Skateboards too vary greatly in length, and even have short versions 

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

two adult feet spaced apart in a similar way to hoverboards.  

6. Mr. Rake considers ornamental elements of the claimed designs as functional without 

analysis or evidence 

Mr. Rake considers the overall hourglass shape of each of the claimed designs of the Patents‐In‐

Issue "largely based on functionality" (Rake1 § 58, 64, 70, and 76), but he provides no analysis 

or evidence to explain his opinion. As stated in my prior testimony, I disagree that any of the 

ornamental elements of the claimed designs should be considered to be driven by function 

(Hatch Decl. section III, G).  In applying the correct standards, it is my opinion that none of the 

ornamental designs claimed in the Patents‐In‐Issue are dictated by function, or otherwise 

purely functional.   

I 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. 

Accordingly, aspects of a design at claim construction should not be lightly extracted when the 

ultimate inquiry is focused on the overall design.  I further understand that several factors 

suggest that a feature is primarily functional, including whether: 

(1) the protected design represents the best design,  

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

(3) there are any concomitant utility patents,  

(4) the advertising touts particular features of the design as having specific utility, and  

(5) whether the feature is clearly dictated by function.   

Mr. Rake did not conduct this or any functionality analysis, nor provide evidence that might 

support it.  Further, the Expert Reports of Jim Gandy (Dkts. 413‐3, 414‐3, 419‐3, 420‐3, and 421‐

3) does include consideration of the  overall hourglass shape in the analysis and Mr. Gandy does 

not consider its shape driven by function.  

   

Furthermore, Mr. Rake also opines the shape of the center potion is driven by function, 

reasoning that “the narrowing at the center facilitates the needed twisting motion without 

interference with the user or the ground" (Rake1 §§ 58, 64, 70, and 76) and provides as 

evidence the prior art U.S. Patent 8,469,376.  First, the center portion would not physically 

interfere with the ground or with the feet even if they were as wide as the foot pads. Second, 

referring to prior art with a portion that is similarly proportioned does not evidence 

functionality, in fact other prior art cited on the patent also include center portions that are 

much wider, such as the U.S. Patent 7,424,927.   

7. The Rake Declaration improperly relies upon comparing unclaimed areas 

Mr. Rake improperly compares unclaimed areas to corresponding areas in the Infringing 

Product and concludes an ordinary observer would “recognize that the [claimed design] has 

prominent design element in the middle and the Accused Product is clean, without 

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any such design element.” (Rake1 §§ 65 and 71).  I am informed that if an Infringing Product has 

a different ornamental pattern to that shown as unclaimed in the Patents‐in‐Issue, it does not 

serve to evidence non‐infringement.  

Table 3: Mr. Rake Improperly Relies Upon Unclaimed Areas For His Evidence 

Mr. Rake repeats this flawed analysis when annotating an unclaimed feature on the top of the 

foot plates, pointing out they are “different in shape, design and density”. (Rake1 §§ 65).   

A similar improper analysis is repeated on the underside of the hoverboard, when referring to 

the unclaimed vent pattern of the ‘112 Patent as not being “prominent vent holes” (Rake1 § 

74). 

8. The Rake Declaration fails to use the correct viewpoint through which to base opinions. 

The Rake Declarations include many paragraphs that explain Gestalt Theory and ‘figure‐ground 

theory’ to explain how an ordinary observer would perceive the designs, but they completely 

disregard the effect of prior art to the ordinary observer’s perception of visual form. Mr. Rake 

states he “relied on [Gestalt principles] in this analysis” and “using well established 

Gestalt principles, I then compared the differences/similarities between the ’723 Patent and 

Accused Product”. In doing so, Mr. Rake did not apply the correct viewpoint from which to 

understand how the ordinary observer would see the designs. How certain features are 

represented in the prior art greatly affects the impression of a design to the hypothetical 

ordinary observer (see example below) Mr. Rake neither analyzed the prior art nor did he 

compare the designs to it in his analysis, which may seriously undermine his opinions.  

   

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Table 4: The Prior Art Informs Us How The Ordinary Observer Would View The Designs.  

When comparing the Claimed Design directly to the Accused Product (as in the Gorham v. 

White, 81 U.S. 511 (1871) example above), we notice differences. However only when we 

compare them to the prior art (examples shown to the right), do we see how insignificant 

those differences are.   

For example, Mr. Rake states the exact size and shape of the fenders is an “important design 

feature that has a significant effect on the overall visual impression of the ordinary observer". 

(Rake1 § 57).  However, the use of open fenders on an hour‐glass body is completely unique 

among the prior art of the ‘723 and ‘256 Patents (shown below), and therefore an ordinary 

observer would not look to small details to differentiate between designs.  

Table 5: The Cited Prior Art On the Face of the ‘723 and ‘256 Patents, and the ‘906 Patent 

US 8,118,319  US 8,469,376 

US 8,414,000 

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Appl.  

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

US D739,9062

   

In contrast, for the purposes of my analysis I considered prior art to define the scope of the 

hoverboard market at the time the Claimed Designs were filed. In so doing, I was able to better 

discern the similarities and differences (or lack thereof) between the Patents‐In‐Issue and the 

Infringing products in the eyes of the ordinary observer. 

9. Mr. Rake improperly relies upon whether individual differences are ‘obvious’ instead of 

comparing the overall impression  

In Rake1, Mr. Rake’s analysis concludes with his finding the Infringing Product’s overall 

appearance to be substantially different from both the (unspecified) prior art and the Patents‐

In‐Suit (Rake1 §§ 46 and 78, Rake2‐5 §§ 45, 90, 117, and 144).  First, differences between the 

prior art and patented designs do not evidence non‐infringement, in fact differences are wholly 

expected3.The correct analysis is whether the Infringing Product is closer to the Patents‐In‐Suit 

than they are to the Prior Art (see also table 4 above).  

Further, in Rake1, Mr. Rake does not compare the conflicting designs to the prior art nor does 

he provide an opinion on what the closest prior art may be, and therefore his conclusory 

statements are baseless and lacks evidence.   

As a further example, in Mr. Rake’s summary of opinions he explains “In my opinion, the visual 

differences between the claimed designs of the Patents‐in‐Suit and the design of the Infringing 

Product would be obvious to the ordinary observer.” (emphasis added), (Rake1 §§ 44 and 78‐

                                                       

2

 I am also informed that while the ‘906 Patent was not cited on the face of ‘723 and ‘256 Patents, it is technically 

prior art as its filing date precedes the filing.  3

 I am informed that “One who seeks to pirate an invention, like one who seeks to pirate a copy‐righted book or 

play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright 

duplication is a dull and very rare type of infringement.” Schnadig Corp v. Gaines Mfg. Co., 494 F.2d 383, 391‐92 

(6th Cir. 1974.) 

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81, and Rake 2‐4 §§ 43 and 171‐186). However, whether differences are obvious is not relevant 

to the ordinary observer test. 

10. Mr. Rake improperly relies upon small, isolated differences in specific views and not the 

overall impression 

The Rake Declaration improperly relies upon insignificant isolated features in specific views to 

analyze differences between the Infringing products and the Patents‐In‐Issue, and not the 

overall impression of the design as a whole4. Specifically, he completely ignores the overall 

shape of the hoverboard (improperly removing it asserting it to be functional) and discusses 

only differences between specific features such as the air vents and grooves when viewed from 

the underside, the lights when viewed from the front, and the grooves in the foot pads when 

viewed from the top.  

Mr. Rake’s analysis improperly prioritizes selected views over others because “the user most 

commonly sees a hoverboard from a position standing over the board” (Rake1 § 41, Rake2‐5 § 

39). This may skew the analysis unfairly toward specific features. In infringement analysis the 

hypothetical ordinary observer would be familiar with all sides of the product based on the 

combination of all viewpoints.  

For example, in discussing hoverboards in general, Mr. Rake identifies specific areas as "the 

most prominent features” and provides a list of four isolated features (Rake1 § 41 and Rake2‐5 

§ 40). First, he ignores the overall shape of the hoverboard, or how the main body‐parts form 

together, aspects that create the overall impression of the product as a whole. Second, Mr. 

Rake bases this narrow focus on his current view of current hoverboards as a whole and not 

based on the Patents‐In‐Issue or how the ordinary observer would view it in light of the prior 

art of the time. Viewing the prior art shown in table 6 below, it would be quite incorrect to only 

compare their visual impression based on only “the design of the two foot pads, the design of 

the wheels, visual details on the neck between the footpads, and the shape of the fenders that 

cover the wheels” 

   

                                                      

4

 I am informed that in evaluating infringement, courts determine whether "the deception that arises is a result  of  

the similarities in the overall design, not of similarities in ornamental features in isolation." Amini Innovation Corp. 

v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006) at 1371 

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Table 6: Mr. Rake improperly factors out the body from his analysis 

Mr. Rake describes these four selected areas as the “most prominent features impacting the 

overall visual impression to the ordinary observer”, factoring out the shape of the body itself 

and the impression of the object as a whole.  Also note that three of these four areas are 

unclaimed in one or more of the Patents‐In‐Suit and therefore should not be part of a 

comparative analysis. 

Other than simply listing the above four small differentiators, Mr. Rake does not provide 

evidence as to why these would be the most prominent areas of the overall impression as 

viewed by an ordinary observer, and does not present evidence on how the prior art may 

support this opinion.  For example, in analyzing differences between the Infringing Product and 

the Patents‐In‐Suit (without the prior art) Mr. Rake focusses on a single line in one view of the 

drawing as a prominent deviation (Rake1 § 53) or a pattern of vent holes on the underside 

(Rake1 § 55).  While these are differences between the designs, they are insignificant to the 

overall impression created by the design as a whole.  

11. The Rake Declaration omits critical views and evidence   

In several places in the Rake Declaration, Mr. Rake refers to appearances from specific views 

but illustrates this using a different view, completely omitting the evidence which he refers to. 

For example, in Rake1 §§ 53, 59, 65 and 71 "From the top and front views, the differences in 

shape and design of the footpads is clear" and in Rake1 §§ 54, 60, 66 and 72, "The front view 

we can see dramatic and obvious difference in the size, shape, and character of the lights". In 

addition to adding confusion this may only provide unhelpful opinion without evidence. 

Additionally, Mr. Rake states, "I consider the Top and Front views to be the most important in 

my analysis" and omits to provide these views. (Rake1 §§ 55, 61, 67 and 73).  While it is not 

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evidence of malintent to omit selected views from the declaration, it is nevertheless unhelpful 

to omit the specific views he refers to and instead only show other figures. 

Mr. Rake also purposefully omits evidence that contradicts his opinions. For example, in each 

of Mr. Rake’s charts he presents a figure from the ‘723 Patent to a similar angle of the Accused 

Patent and a similar angle of the ‘857 Patent. However, when opining on the fender 

comparison, he omits the corresponding image of the ‘857 Patent, (Rake1 §§ 57, 63, 69 and 75) 

which as we can see below in Table 7, differs greatly from the design of the Infringing Product 

and contradicts his opinion.  

In analyzing the hourglass shape of the ‘906 Patent using only the top views as evidence, Mr. 

Rake remarks only of its similarity to the design of the ‘723 and ‘256 Patents, and omits 

providing an opinion or evidence about the design of the ‘195 or ‘112 Patents, or how any of 

these may compare in this regard to the Infringing products (Rake2‐5 § 55). Again, selecting 

only specific views and omitting important evidence is clearly unhelpful for the finder of fact.  

The 2nd, 3rd, 4th and 5th Rake Declarations provide a three‐way comparison between the 

Accused Product, the Patents‐In‐Suit and the ‘906 Patent. The corresponding view of the ‘906 is 

ominously omitted when comparing the “lights” area and the fenders. It is unclear why Mr. 

Rake omitted these views, but we can see they would clearly contradict his opinions about the 

Patents‐In‐Issue being more similar to the ‘906 than to the Accused Designs. If we compare 

these specific elements to the ‘906 (see Table 7), it is clear how the ‘906 stands as the ‘odd man 

out’. 

   

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Table 7: Mr. Rake Omitted Critical Views of the ‘906 That Contradict His Opinion  

While differences exist between the fenders all of the Patents‐In‐Suit and the Infringing 

products, they all have fenders, and all have fenders that visually reveal most of the wheel. 

The ‘906 in contrast is not a fender but a ‘fender skirt’5 which hides most of the wheel and 

therefore creates a starkly different overall impression to the ordinary observer. 

                                                      

5

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

Buick Electra, the 1986 Citroen CX 

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While differences exist between the ‘light’ area of all of the Patents‐In‐Suit and the Infringing 

products (below), they all have some form of visual details or lines, whereas the ‘906 is 

completely devoid of any visual details in this area, thus creating a very different impression 

to the ordinary observer.  

For brevity I have only shown one view of each, but my analysis was conducted regarding the 

designs in whole. Note also, the above closeups were only shown to illustrate the deliberate 

omission of critical evidence in Mr. Rake’s Declarations. 

ANALYSIS OF MR. RAKE’S REBUTTAL OF HATCH INFRINGEMENT REPORT 

In his short rebuttal of my Infringement Analysis (Rake 2‐4 §§ 51‐61), Mr. Rake misstates my 

opinion by truncating my sentences, while omitting critical evidence that would contradict the 

opinion he makes. Also, in Rake2‐5 § 56 Mr. Rake includes a very similar truncated quotation 

that misrepresents my testimony. For example, he quotes me as describing the Infringing 

Product as having “’an integrated ‘hourglass’ body with a relatively flat surface across the top of 

the main body’” and remarks that I failed to report “that the ‘906 also has an integrated 

hourglass body with relatively flat surface across the top.” (Rake 2‐4 § 54). However, my 

description of the Patents‐In‐Issue never once reduced the claimed design to these two 

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elements, and always included mention of additional visual features, the unique combination 

of which sets it apart from the prior art. Further, my evidence was not based on verbal 

descriptions alone, but the wording accompanied the images to help illustrate the most salient 

aspects of the visual impression as seen through the eyes of the ordinary observer.    

Mr. Rake is also incorrect in his assertions that I “fail[] to examine relevant prior art”, provide 

“overly broad” conclusions “not based upon sufficient evidence” (Rake2‐5 § 51). Unlike the 

Rake Declarations, my Infringement Analysis did provide all four patents’ cited prior that I had 

analyzed, including the ‘906 Patent. I also applied the correct legal procedure of analysis in 

support of the position of the plaintiff. Further, I understand it is the burden of the Defendants 

to provide evidence of non‐infringement and to provide the corresponding comparative 

analysis. 

In a similar fashion, Mr. Rake declares that I “apparently only considered references cited on 

the face of these patents” and “ignores [the ‘906] when analyzing the’723 and’256” (Rake 2‐4 

§§ 52‐53). Again, representing the cited prior art on the face of the patent to establish the claim 

scope is the correct procedure for the plaintiff, and it is the burden of the Defendant to 

present any prior art that they consider to be closer than those referenced on the face of the 

patent, if any.  Egyptian Goddess specifically provides that “if the accused infringer elects to rely 

on the comparison prior art as part of its defense against the claim of infringement, the burden 

of production of that prior art is on the accused infringer.”  Egyptian, 543 F3d at 678.   

Mr. Rake also asserts that I do not provide sufficient analysis of functionality (Rake 2‐4 § 58). 

However, again, it is the burden of the Defendants to provide evidence of ornamental elements 

being driven primarily by function, if they consider it exists. To this end, Mr. Rake’s opinion that 

the general body shape is driven by functionality is not evidenced, nor does he conduct the 

correct analysis (as outlined above).  

Mr. Rake states that “the overall shape, proportions, and configuration of the ’906 patent are 

strikingly similar to the ’723 and ’256 patents” as “each of these designs plainly show an 

integrated hourglass body with a relatively flat surface across the top of the main 

body”.(Rake2‐5 § 53). I disagree. While the ‘723 and ‘256 Patents do include an hourglass body 

with a relatively flat surface across the top of the main body, the open‐sided fenders and the 

‘busyness’ of the body styling are inextricable aspects of the impression of the design as a 

whole and distinct from the ‘906.  

Mr. Rake also incorrectly asserts that I ignored the design of the footpads and the overall design 

of the fenders (Rake2‐5 § 53). First, I did analyze both the fenders and the footpads of not only 

the Patents‐In‐Suit but also in the Infringing products and referred to them in thirteen separate 

paragraphs in my declaration. Second, the exact design of the footpads, specifically the groove 

pattern that Mr. Rake considers would “draw the eye” is relatively insignificant to the overall 

impression compared to other more salient visual features, which were the foci of my analysis 

and supporting descriptions. Third, the exact shape of the fenders (or “arched covers”) is also 

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relatively insignificant to the overall impression when construing the Patents‐In‐Suit in light of 

the prior art (note also that Defendant’s purported “closest prior art” does not include fenders).  

Further, Mr. Rake failed to respond to any of the other opinions or evidence presented in the 

Hatch Infringement Declaration. While this is not evidence that he agrees with all my opinions, I 

understand his silence on the matter thus forfeits providing an opposing opinion.  

A Three‐Way Comparison of the Patents‐in‐Suit, the infringing products, and the ’D906 

patent 

In view of the ’906 Patent, which is no more relevant than the prior art already known at the 

time, I have conducted another comparison between the Patents‐in‐Suit, the Infringing 

Products, and the ’906 Patent in Exhibit 1.  My conclusions are that in the eyes of the ordinary 

observer, the claimed design of the Patents‐in‐Suit is substantially the same as the overall visual 

impression presented by the Infringing Products as discussed in Exhibit 1. 

CONCLUSION 

Based upon the legal principles explained to me and my examination of the Rake Declarations, 

Defendant’s Infringing products, the Patents‐In‐Suit and their file histories, and the prior art, it 

is my opinion that: 

 The reliability and credibility of the Rake Declarations is undermined by many errors. 

 The opinions in the Rake Declarations include contradictory positions that may further 

significantly undermine his credibility. 

 The analysis in the Rake Declarations rely upon an incorrect understanding of the 

ordinary observer test and also omit defining the level of attention of the ordinary 

observer. 

 The Rake Declarations are missing critical steps of infringement analysis including failing 

to expressly construe the scope of the Patents‐In‐Suit.  

 The opinions in the Rake Declarations rely upon unrelated patents without providing 

analysis or evidence.  

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

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

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

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

It is my opinion that the overall appearance of each the Infringing Products is not “plainly 

dissimilar” to one or more of the Claimed Designs of the Patents‐In‐Issue.   

Further, an ordinary observer familiar with the prior art, giving such attention as a purchaser 

usually gives would find the overall appearance of the Infringing Product to be substantially the 

same as the overall appearance of one or more of the claimed designs of the Patents‐In‐Issue in 

light of the prior art, inducing him or her to purchase each Infringing Product supposing it to be 

the Claimed Design.  

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RESERVATION OF RIGHTS 

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. 

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 Plaintiff, and I understand that I may be asked to give rebuttal 

testimony on matters not covered in this expert declaration. 

I HEREBY DECLARE under penalty of perjury that all statements made herein of my own 

knowledge are true and that all statements made on information and belief are believed to be 

true; and further that these statements were made with the knowledge that willful false 

statements and the like so made are punishable by fine and imprisonment, or both, under 18 

U.S.C. §1001. 

Dated: Sept 24th, 2021        Respectfully Submitted, 

____________________________ 

Paul Hatch    

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