Hoverboard raid at CES the result of effective patent enforcement

By Steve Brachmann
January 24, 2016

The consumer tech world has been ablaze with a trend in personal transportation vehicles which caught America by storm during the recent holiday season. Self-balancing scooters, also known as “hoverboards” (although that’s a slight misnomer as the boards use wheels and do not actually hover), were one of the more highly sought gadgets in recent months. The conventional configuration for these scooters includes two pressure-sensitive footpads upon which an operator stands to control the movement of the wheels, one of which is disposed on either side of the unit. It could be thought of as a type of Segway transportation device without the handlebars.

Not every single electronic scooter fits this precise design mold, however. Electronics firm Future Motion Inc. of Santa Cruz, CA, has developed an innovative electronic skateboard known as the OneWheel. Instead of two wheels propelling the scooter forwards, backwards or around turns, the Future Motion device uses a single wheel positioned between the two footpads. Instead of standing straight and facing forward the way most self-balancing scooters are driven, OneWheel users ride the unit like a skateboard, with the gaze directed towards the front foot of the driver in whichever direction the scooter is being guided. According to official specifications, the OneWheel has a maximum lean angle in excess of 30 degrees, a top speed of 15 miles per hour and a range of about six or seven miles before the unit requires recharging. Owners who use the OneWheel in conjunction with an official smartphone app also have the ability to change the riding modes to more aggressive or casual driving styles.

Future Motion launched a successful Kickstarter campaign to fund the earliest prototypes of the OneWheel on January 6th, 2014. Within 24 hours, the project had already collected 40 percent of the funds it needed for the next phase of development. Within three days, it had secured 85 percent of its funding request and it only took a total of four days to reach the $100,000 pledge goal that Future Motion had initially set out to achieve. All told, Future Motion received a total in excess of $630,000 within 25 days and was able to meet stretch goals for LED lighting systems and mobile app development.

A recent post on IPWatchdog discussed an unusual event occurring at this year’s Consumer Electronics Show that played out when U.S. federal marshals arrived on the scene to seize and confiscate a knock-off version of the OneWheel being sold by Chinese firm Changzhou First International Trade (CZ-First) and marketed under the brand name Trotter. The hoverboard raid was called in response to a patent infringement action and an emergency motion for injunctive relief filed by Future Motion in Nevada Federal District Court. Future Motion alleges that the self-balancing scooter marketed by CZ-First copies the look and function of Future Motion’s Onewheel product, and thus infringing upon two patents held by Future Motion related to the technology. The injunction was filed in Nevada district court on Wednesday, a day before the CES raid was conducted.

Many readers who are familiar with the process of enforcing patent rights will note that the seizure of goods is very odd in this case. As the blog post by Merritt and R. Austin Blakeslee acknowledges, U.S. patent holders are typically not capable of earning injunctive relief from the courts because a monetary award for damages has been found adequate for relieving the full harm to the patent holder which has been caused by infringement. However, as those authors noted, this point of view held by the court tends to change when the target of the injunction is a foreign firm without operations in the United States. Even more so when the foreign manufacturer is present in the jurisdiction for a matter of days displaying what appear to be infringing devices, or knock-offs, at a trade show. In those cases, seizure may be one of the few avenues of redress available to a patent holder if the infringers assets are all overseas and cannot be easily obtained for court-ordered damages. So although the CES seizure took many media outlets by surprise, it’s not unheard of in a region where swift action must be taken before foreign infringers are able to record large sales numbers at domestic trade shows for overseas production and import.

self-stabilizing skateboardThere were two U.S. patents granted to Future Motion that the company enforced in the temporary restraining and seizure orders. The electronic skateboard itself is protected by the issue of U.S. Patent No. 9101817, issued under the title Self-Stabilizing Skateboard. It claims an electric vehicle having a board with two deck portions for either foot of a rider, a wheel assembly with a ground-contacting portion between the deck portions, a motor assembly rotating the ground-contacting element to propel the vehicle, a sensor measuring orientation information of the board, a motor controller that propels the electric vehicle according to the collected orientation information and light assemblies disposed at opposite ends of the board to output light of a certain color depending on the vehicle’s direction. The patent’s description mentions that the snowboard/skateboard-style stance of the rider provides for increased safety, an important selling point skateboardconsidering the large number of injuries which are being incurred from other scooter products.

The design of the electronic skateboard itself is protected by U.S. Patent No. D746928, which is titled Skateboard. It may be interesting to note that this design patent was issued on January 5th, two days before Future Motion filed its injunction. If this design patent issued one week later, it’s quite possible that Future Motion would have had a more difficult time pleading its case. This is not to suggest there is not infringement of the ‘817 utility patent, but the product being shown at CES that was seized looks virtually identical to the device shown in the ‘928 design patent issued to Future Motion.

The Trotter hoverboard raid at CES is simply the latest twist in the murky saga of hoverboards which has been playing out over the past few years. We had previously reported here on IPWatchdog about the fact that the popular IO Hawk, a two-wheeled self-balancing scooter that garnered some media attention during the 2015 CES, is very likely a rip-off of a similar product debuted in 2014 by Chinese tech firm Chic Robotics. The country of China has been pursuing a policy of supporting indigenous innovation to become a world tech power but its lack of respect for foreign IP owners, as evidenced in its rules for mandated tech transfer to engage in domestic joint ventures, is cause for concern among patent holders. The fact that a Chinese firm is charged in Future Motion’s infringement allegations is not surprising.

At the end of the day, the decision to confiscate CZ-First’s Trotter skateboard and take it away from the CES showroom floor looks more and more like a proper decision made in defense of a legitimate American intellectual property rights owner. Preventing CZ-First from selling imported Trotters also protects American manufacturing jobs as Future Motion operates its factory facility in San Jose, CA. Anyone who follows CES closely will know that product copies are typically rampant at the event, even among the biggest names like Apple, Samsung and LG. That might make it even more encouraging that a small American start-up was able to enforce its patent rights to protect its share of a rapidly growing market for personal transportation gadgets.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than seven years. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 25 Comments comments.

  1. Anon January 24, 2016 9:54 am

    to be (only slightly) cynical, does this pass 101?

    All you have is a wheel and the abstract notion of controlling the rolling of said wheel. There is nothing “new” in rolling a wheel, and the only thing involved here is either old or abstract (whatever that means). All of the control pieces merely do what is expected of the engineered components – there is no “Flash” here.

  2. step back January 24, 2016 10:31 am

    Anon,

    Don’t back down when you’re onto something here.
    Let’s imagine the oral arguments at the Supreme Court:

    Justice Breyer: All well and good counselor. But isn’t the notion of “balance” a routine financial one as old as ancient Egypt? If King Tut’s grandmother saw him tilting the balance between the chits and the wheat off kilter, wouldn’t she say “Stop”? Do you see what I mean? It’s just balance, common sense and saying apply it using a generic computer?

    Justice Kennedy: If I may elucidate here. Couldn’t I go to any Silicon Oxide Valley hashish den in ancient Egypt, find some circus tight rope walkers, give them the idea of balance, say ‘apply it’ and over the weekend one of them will have worked out the balancing algorithm? It’s too simple to deserve a patent. There is no something more there there. Where is the inventive concept?

    Justice Thomas: (silently nods head affirmingly)

    Justice Scalia: Sometimes I’m off balance I must admit. I don’t fully understand what you guys is a talking about. But I’ll just go along to get along on this dizzying science stuff. It sounds like gobbledygook to me.

    Justice Ginsburg: What is the more accurate analogy here counselor? Is it more like plucking a papyrus reed out of the Nile or like building a canoe? To my mind, balance is merely a natural phenomenon.

    (sarcasm not ended yet) 🙂

  3. Gene Quinn January 24, 2016 12:28 pm

    Anon, Step-

    And therein lies the problem with a doctrine that can’t be defined. The hysteria surrounding the abstract idea doctrine feels an awful lot like what we are told was the collective mass hysteria surrounding the Salem witch trials.

    Hhhmmm…. I bet there is an article there!

    -Gene

  4. Grizzle January 25, 2016 4:32 am

    Have any of the commenters actually read the patent? The claims aren’t solely based on the notion of controlling the balance of a wheel. All of the independent claims include the limitation of light assemblies being present at each end of the board and those assemblies being controlled to output a first color when the board is propelled in a first direction and to output a second color when the board is propelled in a second direction. This is the inventive concept of the Patent.

    The actual balancing of the board was found not to be new during examination. But don’t let the reality of the situation detract from your ridiculous and oh so hilarious ranting about Section 101!

  5. Benny January 25, 2016 8:05 am

    Anon,
    Closer examination of the patent Steve mentioned shows that a) Future Motion were granted a patent only for the trick of changing the lighting pattern of the board in response to its’ motion and b)their hoverboard may well be infringing US patent 7424927.

  6. Gene Quinn January 25, 2016 9:20 am

    Grizzle-

    Perhaps you are not all that familiar with current 101 jurisprudence. Clearly it is an idea to change color when the board is propelled in a first direction and then changed color again when the board is propelled in a second direction. Since that is an idea, which under SCOTUS jurisprudence has to mean it is abstract since an idea and abstract idea are one and the same, the implementation is nothing particularly important. In fact, the implementation could no doubt have been accomplished by a second year engineering student over a weekend.

    I would recommend you read the 101 cases from the Supreme Court, the 101 cases from the Federal Circuit, the 101 case from the district courts, and take a look at how many patent examiners are applying 101. You will see there are no limiting principles in much of the application.

    -Gene

  7. step back January 25, 2016 11:08 am

    Grizzle,

    The hard part about commenting on the Internet is that you cannot see the mocking facial expressions of Anon and I.

    Of course the subject matter of physical machinery is patent eligible. It says so right there in the Congressionally passed legislation: 101 … ANY new and useful machine.

    However those that abide by SCOTUS fabricated legislation would have you believe otherwise, that everything is abstract. That is what we were trying to point out with our snarky sarcastic remarks. Alice v. CLS is untenable.

  8. Benny January 25, 2016 11:19 am

    Step,
    Isn’t your level of dis-respect towards the judges just a little bit over the top? After all, software patent applications do spread into a grey area which are to some extent abstract (how many of the routines in MATLAB software are patent eligible?).
    The concept of changing color of a light automatically according to the direction of a motor, while used decades ago in model locomotives by the simple trick of placing colored LEDs back to back in parallel with the motor, is definitely a device and not abstract.

  9. Gene Quinn January 25, 2016 11:21 am

    Step-

    Let us also not forget that the statute also says that processes are patentable. Whether the technically illiterate Supreme Court will ever admit it or not, software is best understood as a process. Software directs a machine, which also happens to be another category of patent eligible innovation under 101.

    I don’t think you or Anon were at all being too harsh. If you apply SCOTUS reasoning to its logical extreme little or nothing, including machines, would be patent eligible.

    I am also told that patent examiners are rejecting board games under Alice. Board games have been patentable forever, but apparently the set of rules make games nothing more than abstract ideas. So if you look at how Alice is being applied in at least some Art Units and by some decision makers (i.e., examiners and judges) it is not difficult to understand why so many are legitimately concerned that we have a threshold test without any logical limitations.

    -Gene

  10. step back January 25, 2016 11:53 am

    Benny,

    No.

    My utter disrespect for the current crop of judicial shallow thinkers is well below where it should be. Where did these Medieval maniacs come from? Who anointed them as gatekeepers of science and its “fundamental” building blocks? Since when is SCOTUS empowered to legislate its own laws?

    Everything they utter is sheer scientific nonsense. A machine is a machine. A chemical reaction is a process. A composition of matter is just that. Nature does not manufacture isolated genomes or pluck them as leaves from a mythical tree of knowledge. They deserve everything I’m dishing at them and way above that level. We have not yet approached the top of the beer mug.

    http://patentu.blogspot.com/2015/10/the-myth-and-magic.html

  11. Anon January 25, 2016 12:26 pm

    I do believe that people have missed the gist of the jest.

    As far as different colors for different directions – not only is that “abstract” given the ability to morph the (not really defined) word “abstract,” the fact that cars have white lights in front and red in the rear makes the (abstract) obvious.

  12. step back January 25, 2016 12:32 pm

    Anon,

    Yeah but a light bulb no matter how “obvious” (as 102 or 103 prior art) is not an abstraction. It is a physical manufacture. Edison is turning over in his cement casket grave.

  13. Anon January 25, 2016 4:18 pm

    step back,

    I could have also used the “natural law” of doppler shift to say that different color lights in different directions is just not “significantly more”….

    😉

  14. step back January 25, 2016 5:26 pm

    Anon @#13

    You are not SCOTUS.
    You are not above the laws.
    They are.
    Because the Constitution tells us so. They are the final say so on any litigated case that reaches them.

    So you don’t get final say so on what is significantly more or not on an arbitrary and capricious basis. They do. 😉 (right back at yah brother)

  15. Night Writer January 25, 2016 5:38 pm

    I think the SCOTUS could prohibit alcohol consumption now. Before we needed a Constitutional amendment. Now they could fabricate some nonsense and ban its sale and consumption.

  16. Benny January 26, 2016 2:05 am

    Anon at 11,
    A controller which switches different lights as a function of motor direction is most certainly a machine and not an abstract idea, though as I pointed out earlier, it is far from a novel and non-obvious machine in light of well known applications and devices. As for Genes’ discussion of patent eligibility of rules of board (and card) games, yes , I have read a few such patents, and I have always wondered how the applicant expected to enforce the rights. They are still being granted (9240095 issued just last week).

    Gene, this is just me, but I find the level of dis-respect in the comments. towards officials who are not in a position to respond to be in poor taste.

  17. step back January 26, 2016 4:57 am

    Benny @16

    I forget which country you come from. However, here in the USA it is the heart of our 2nd Amendment democratic rights under the US Constitution to be able to disrespect “the authorities” and kick their butts (verbally) by trash talking them when they deserve it.

    I know of no reason why our “Supreme” leaders (as in Supreme Court) deserve respect for the inane proclamations they make about the human “mind” and how it operates just like a “generic” computer or about the further laughable pontifications they make about the “fundamental” building blocks of science and how 2nd year engineering students can just ‘apply it’ (abstract ideas) over the weekend by writing them there magic codes.

    If we can’t express our disrespect for the Idiocracy here, where else can we express that disrespect? What right do you have to disrespect our disrespect?

    You do know that we don’t have a king or queen, right?
    And if any “official” parades around in his/her birthday suite, we are going to instantly heckle them. That’s just who we are and how we roll.

  18. Benny January 26, 2016 5:07 am

    Step,
    I live in a free democratic country where we are all free to criticize our leaders, but while criticism is to be encouraged, it can also be done constructively rather than contemptuously. Furthermore, it is normal practice in my country that anyone accused of inadequate behaviour be given a chance to respond, but this does not hold true for judges, who do not comment in public on judicial matters, for obvious reasons.

  19. step back January 26, 2016 5:43 am

    Benny,

    On this side of the pond it it eminently clear that the “officials” have zero respect for the American inventor when the pompous officials talk about “unleashing” the mad dogs of technology and first mover advantage and “innovation” and “stuff”. They are totally clueless about science and the invention process and yet remain unabashedly proud of their ignorance.

    See for example the below Guardian article about SCOTUS members not knowing how to use them there emails. They wait patiently by the gates of the ranch for the pony express fella to show up,

    http://www.theguardian.com/law/2013/aug/21/elena-kagan-supreme-court-email-games

  20. Anon January 26, 2016 9:24 am

    Benny at 16,

    Please re-read and understand what happened in the Alice case.

    Your desire to say, “but machine” does not help you. In the Alice case, the plain fact of the matter is that claims stipulated by both sides to pass the “machine” statutory category aspect of 101 were nonetheless STILL found to be “abstract.”

    Since both sides had stipulated to this factual occurrence of meeting a legal standard, that issue then was not before the Court – but that did not stop the Court.

    I remain amazed at several in the “blogosphere” that maintain a 19th century view of “drop it on my toe” and yet remain blithely unaware of this direct result of the Alice case. The exception has indeed swallowed the rule.

    Further, Benny, to your dialogue with step back, to want “politeness” when umbrage is the call of the day is merely a device to create false politeness. Step back nails it when he says our system was purposefully devised differently. We had the shackles of “must be polite” and we purposefully chose to NOT have those shackles. I would also point out – since apparently is does need to be reiterated again – that the Supreme Court is not above the law. The Court is merely one of the three branches of the government and it is excessively dangerous to think that that branch can do no wrong and is above the law. Our founding fathers wrote extensively of the danger of such power doled out in an unthinking manner. If you are not an attorney, I invite you to talk with your counsel and ask your counsel about the actual words in their sworn oath. I know of not one single state that has the oath swearing fealty to the Court ABOVE the Constitution – rather it is much the other way around. What this means, in case it is unclear to you, is that as our positions align and mingle with the power of the law, we have a duty to be critical of anyone – yes including those on the Supreme Court that take the law into their own hands inappropriately (and there is no doubt that legislating from the bench on the matter of patent law – expressly designated under the constitution as being the sole domain of the legislative branch – is precisely the type of inappropriate action at law by those who would wield their power as they merely feel).

    In fact, I would posit that attorneys that do not feel umbrage at this should examine their own oaths and question their meekness on the issue. If we look back to the very first issue of separation of powers (Marbury), that issue was a spat over something as minimal as a Justice of the Peace appointment. And yet, today – with the economic driver of the entire patent system in the balance, we have those unwilling to see a very real – albeit different – violation of the separation of powers.

  21. Benny January 26, 2016 10:46 am

    Anon,
    I didn’t mention the “Alice” case. I didn’t think it relevant to the Hoverboard patent under discussion. Unlike hoverboard motor controls, “Alice” is nowhere near my field of expertise.
    I would love to see a reply to office action written by you to a clueless patent examiner with the same lack of politeness seen on these pages. (I’ve seen this once – from an veteran attorney named Douglas Chaikin, app 12/272730).

  22. Anon January 26, 2016 11:40 am

    Benny,

    What you would “love” to see just won’t happen.

    This is simply NOT the same type of forum, so your “desire” is decidedly off.

    Further, what you think is relevant clearly shows that you simply do not get the point that I made: what you “want” is just not enough. Your view of “but machine” is flawed.

    Maybe instead of replying to some odd notion of what you want to see, you instead reply on point….

  23. step back January 26, 2016 1:44 pm

    Just to clarify, the current thread of comments started @1 with Anon hypothesizing on how SCOTUS or some lower judiciary tribunal might dispatch this clearly hardware patent to the nether world using the analysis of Alice v. CLS.

    I egged him on at comment 3.
    Gene somehow got his after the fact comment to be number 2.

    Grizzle at comment 4 got it, that we were ridiculing the system and having fun with it.

    Gene kept the mockery ball rolling at comment number 8.

    Then Benny came in at comment 9 with his demand for “respect” for our government officials, autocrats and bureaucrats just because they are in authoritative roles and wear black robes with or without fake white wigs.

    I said piss on that. Just because you have power doesn’t make you right. You can be so off base and wrong as to deserve being publicly ridiculed.

    Speaking of ridicule, have any of you spotted this You Tube re-enactment of the Alice v. CLS oral arguments:

    /watch?v=9urfFAmyK1g

  24. Anon January 26, 2016 2:16 pm

    step back,

    You may (but probably will not 😉 ) be surprised that one of my favorite political quotes comes from Ben Franklin (who was known to be a bit acerbic – under pseudonyms, no less) at times.

    The quote:

    It is the first responsibility of every citizen to question authority.

    Note how Benny shied away under a blanket of “politeness” and left out – entirely – the more important points of my post. When one has nothing meaningful to say, and merely hews to a “let’s be polite” offering, well – clearly, the lack of anything substantive cannot hide behind “politeness.”

  25. step back January 26, 2016 3:22 pm

    Anon @25,

    Perfectly understandable why one on the British side of the pond might be inclined to kiss royal buttocks while those of the revolutionist classes in France and here among the Yanks are ready at minutes notice to question and ridicule them who think G-d hath anointed them as kings and queens over the less-bright commoners. Off with their pompous heads (figuratively, not literally of course).