Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 1 of 18 PageID #: 694
`
`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF NEW YORK
`
`
`Plaintiffs,
`
`
`v.
`
`Civil Action No. 1:21-cv-01443-MKB-SJB
`Hon. Margo K. Brodie, U.S.D.J.
`Hon. Sanket J. Bulsara, U.S.M.J
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`UNICORN GLOBAL, INC., AND
`HANGZHOU CHIC INTELLIGENT
`TECHNOLOGY CO., LTD.
`
`
`
`
`DGL GROUP, LTD.,
`
`
`
`
`
`
`Defendant.
`
`
`PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
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` DGL Exhibit 1016
`Page 0001
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 2 of 18 PageID #: 695
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`SUMMARY OF THE ARGUMENT ............................................................................... 1
`
`SUMMARY OF THE INVENTION ................................................................................ 1
`
`III. THE ’107 PATENT AND THE CLAIM TERMS AT ISSUE ....................................... 4
`
`IV. APPLICABLE LEGAL PRINCIPLES ........................................................................... 5
`
`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART ............................................... 7
`
`VI. AGREED CONSTRUCTIONS......................................................................................... 8
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`VII. DISPUTED CLAIM TERMS ........................................................................................... 8
`
`A. “electric balance vehicle” .................................................................................................... 8
`
`B. “controller” .......................................................................................................................... 9
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`C. “configured to control the hub motors” / “controls the motors” / “configured for
`controlling the first and second hub motors” ............................................................................ 11
`
`VIII. CONCLUSION ................................................................................................................ 13
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`
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`
`i
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` DGL Exhibit 1016
`Page 0002
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 3 of 18 PageID #: 696
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Arctic Cat Inc. v. GEP Power Products, Inc.,
`919 F.3d 1320 (Fed. Cir. 2019) ................................................................................................ 10
`
`Autogiro Co. of Am. v. United States,
`384 F.2d 391 (Ct. CI. 1967) ........................................................................................................ 5
`
`Comark Communs. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998) .................................................................................................. 7
`
`DeMarini Sports, Inc. v. Worth, Inc.,
`239 F.3d 1314 (Fed. Cir. 2001) ................................................................................................... 5
`
`Digital Biometrics, Inc. v. Identix, Inc.,
`149 F.3d 1335 (Fed. Cir. 1998) ................................................................................................... 5
`
`Embrex, Inc. v. Serv. Eng’g Corp.,
`216 F.3d 1343 (Fed. Cir. 2000) ............................................................................................... 5, 8
`
`Envtl. Designs, Ltd. v. Union Oil Co. of California,
`713 F.2d 693 (Fed. Cir. 1983) ..................................................................................................... 9
`
`Interactive Gift Exp., Inc. v. Compuserve Inc.,
`256 F.3d 1323, 1331 (Fed. Cir. 2001) ......................................................................................... 6
`
`Interactive Gift Express v. Compuserve Inc.,
`231 F.3d 859 (Fed. Cir. 2000) .................................................................................................... 7
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ................................................................................................... 5
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ..................................................................................................... 7
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) .................................................................................................................... 5
`
`Nautilus Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2119 (2014) ................................................................................................................ 8
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`512 F.3d 1351 (Fed. Cir. 2008) ................................................................................................... 8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................................... 6, 7
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) ................................................................................................... 6
`
`
`
`ii
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` DGL Exhibit 1016
`Page 0003
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 4 of 18 PageID #: 697
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`SRI Intern. v. Matsushita Elec. Corp. of Am.,
`775 F.2d 1107 (Fed. Cir. 1985) ................................................................................................... 7
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ................................................................................................... 8
`
`Vitronics Corp v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ..................................................................................................... 6
`
`
`
`
`
`
`
`iii
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` DGL Exhibit 1016
`Page 0004
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 5 of 18 PageID #: 698
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`Plaintiffs Unicorn Global, Inc. and Hangzhou Chic Intelligent Technology Co., Ltd.
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`(“Plaintiffs”) submit this opening claim construction brief setting forth their proposed
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`constructions of the disputed terms and phrases of the asserted claims of U.S. Patent No.
`
`10,597,107 (the “’107 Patent”) (attached as Exhibit A) and refuting the proposed constructions set
`
`forth by Defendant DGL Group, Ltd. (“Defendant”).
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`I.
`
`SUMMARY OF THE ARGUMENT
`
`There are a total of three terms presented for construction in this matter. Plaintiffs believe
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`that all the proposed terms have commonly understood plain and ordinary meanings—as supported
`
`by the intrinsic and extrinsic record—and do not require construction. In contrast, Defendant seeks
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`to improperly add unwarranted limitations to the claims and proposes circular construction for
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`these easily understood terms. Defendant’s proposed constructions violate bedrock claim
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`construction principles by ignoring the plain and ordinary meaning of the claim language in light
`
`of the specification and importing limitations from the specification into the claims. Accordingly,
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`the Court should reject Defendant’s proposed constructions and construe the claims according to
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`their plain and ordinary meanings, which are consistent with the specification and other evidence.
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`In the event the Court finds that construction is required for a term(s), Plaintiffs have proposed
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`alternative constructions to explain the plain and ordinary meaning.
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`II.
`
`SUMMARY OF THE INVENTION
`
`The ’107 Patent, which discloses a self-balancing electric vehicle, issued on March 24,
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`2020, and is in the same family as U.S. Patent Nos. 9,376,155 (the “’155 Patent”) (attached as
`
`Exhibit B) and 9,452,802 (the “’802 Patent”) (attached as exhibit C). The ’107 Patent contains
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`24 claims in total with the independent claims being claims 1, 8, 10, and 25. Figure 2 is an
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`exploded diagram of an exemplary electric balance vehicle 100 that “includes a top cover 1, an
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`inner cover 2, a bottom cover 3, two hub motors 4, two wheels 50, a rotating mechanism 60, a
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`
`
`1
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` DGL Exhibit 1016
`Page 0005
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 6 of 18 PageID #: 699
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`plurality of sensors 80, a power supply 81, and a controller 82”. ’107 Patent at 4:8-12.
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`
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`“The top cover 1 includes a first top cover 11 and a second top cover 12, and the first top
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`cover 11 and the second top cover 12 are disposed symmetrically and rotatable relative to each
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`other.” Id. at 4:13-16. “The shapes of the first top cover 11 and the second top cover 12 are
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`basically the same, and the first top cover 11 and the second top cover 12 can rotate relative to
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`each other under the action of the rotating mechanism 60.” Id. at 4:24-26.
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`“The bottom cover 3 includes a first bottom cover 31 and a second bottom cover 32, and
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`the first bottom cover 31 and the second bottom cover 32 are disposed symmetrically and rotatable
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`relative to each other. The shapes of the first bottom cover 31 and the second bottom cover 32 are
`
`
`
`2
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` DGL Exhibit 1016
`Page 0006
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 7 of 18 PageID #: 700
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`basically the same, and the first bottom cover 31 and the second bottom cover 32 can rotate relative
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`to each other under the action of the rotating mechanism 60.” Id. at 5:7-14.
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`“The inner cover 2 is fixed between the top cover 1 and the bottom cover 3. The inner cover
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`2 includes a first inner cover 21 and a second inner cover 22, and the first inner cover 21 and the
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`second inner cover 22 are disposed symmetrically and rotatable relative to each other. The shapes
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`of the first inner cover 21 and the second inner cover 22 are basically the same, and the first inner
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`cover 21 and the second inner cover 22 can rotate relative to each other under the action of the
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`rotating mechanism 60.” Id. at 5:43-51.
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`“The two wheels 50 are rotatably fixed at two sides of the inner cover 2, respectively, and
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`the two hub motors 4 are fixed in the two wheels 50, respectively. The hub motor 4 is also called
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`in-wheel motor, wherein power, transmission, and braking devices are incorporated into a hub, so
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`that a large quantity of transmission components can be omitted, the structure of the balance
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`vehicle can be simpler, a better space utilization rate can be obtained, and the transmission
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`efficiency can be improved at the same time. Since the hub motor 4 have the characteristic of
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`independently driving a single wheel, differential steering similar to a crawler-type vehicle can be
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`achieved by different rotating speeds and even by inversion of the left and right wheels 50, so that
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`the turning radius of the vehicle can be greatly reduced, and in-situ steering can be nearly achieved
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`under a particular condition.” Id. at 7:4-19.
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`“The plurality of sensors 80 are disposed between the bottom cover 3 and the inner cover
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`2. In detail, a half of the sensors 80 are disposed between the first bottom cover 31 and the first
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`inner cover 21, and the other half of the sensors 80 are disposed between the second bottom cover
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`32 and the second inner cover 22. The power supply 81 is fixed between the first bottom cover 31
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`and the first inner cover 21. The controller 82 is fixed between the second bottom cover 32 and
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`
`
`3
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` DGL Exhibit 1016
`Page 0007
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 8 of 18 PageID #: 701
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`the second inner cover 22.” Id. at 7:20-28. “The controller 82 is electrically connected with the
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`plurality of sensors 80, the power supply 81, and the hub motors 4, and the controller 82 controls
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`the hub motors 4 to drive the corresponding wheels 50 to rotate according to sensing signals
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`transmitted by the sensors 80.” Id. at 7:52-57.
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`The invention is not intended to be limited to the particular embodiments described because
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`the specification states, “[a]lthough the present invention has been described in considerable detail
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`with reference to certain preferred embodiments thereof, the disclosure is not for limiting the scope
`
`of the invention. Persons having ordinary skill in the art may make various modifications and
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`changes without departing from the scope and spirit of the invention. Therefore, the scope of the
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`appended claims should not be limited to the description of the preferred embodiments described
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`above.” Id. at 10:24-32.
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`III. THE ’107 PATENT AND THE CLAIM TERMS AT ISSUE
`
`
`
`Plaintiffs accuse Defendant of infringing claims 1, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15,
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`16, 17, 18, 20, 21, 22, 23, and 24 of the ’107 Patent. Defendant seeks construction of the below
`
`terms. As emphasized below, Defendant’s proposed constructions improperly insert limitations
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`that did not exist into the claim language. In the case of the term “electric balance vehicle,”
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`Defendant improperly seeks to eliminate the explicit term “electric” altogether.
`
`Defendant’s Proposed
`Construction
`“vehicle that automatically
`maintains its balance”
`
`“single controller”
`
`
`Term
`
`“electric balance vehicle” (All
`asserted Claims)
`
`“controller” (Claims 1, 4, 10,
`20, 24 25)
`
`
`
`Plaintiffs’ Proposed
`Construction
`No construction necessary
`
`
`No construction necessary
`
`In the alternative:
`
`“a piece of equipment that
`controls
`the operation of
`another piece of equipment.”
`
`4
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`
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` DGL Exhibit 1016
`Page 0008
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 9 of 18 PageID #: 702
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`“controls both [hub] motors”
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`No construction necessary
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`In the alternative:
`
`“cause the hub motors to drive
`the corresponding wheels”
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`“configured to control the hub
`motors” (Claim 1)
`
`
`Or
`
`
`“controls the motors” (Claim
`10)
`
`
`Or
`
`“configured for controlling
`the first and second hub
`motors” (Claim 25)
`
`IV. APPLICABLE LEGAL PRINCIPLES
`
`Claim construction is “simply a way of elaborating the normally terse claim language in
`
`order to understand and explain, but not to change, the scope of the claims.” DeMarini Sports,
`
`Inc. v. Worth, Inc., 239 F.3d 1314, 1322-23 (Fed. Cir. 2001) (quoting Embrex, Inc. v. Serv. Eng’g
`
`Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (emphasis added); see also Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370 (1996). An inventor particularly points out and distinctly identifies
`
`the subject matter of the invention in the claims, and no one, including the Court, can change the
`
`invention through claim construction. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed.
`
`Cir. 1999) (citing Autogiro Co. of Am. v. United States, 384 F.2d 391, 396 (Ct. CI. 1967); Digital
`
`Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998).
`
`The proper starting point for any claim construction exercise (i.e., the first analytical tool
`
`in the hierarchy) is the actual language of the claim itself. Interactive Gift Exp., Inc. v. Compuserve
`
`Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001); see also Vitronics Corp v. Conceptronic, Inc., 90 F.3d
`
`1576, 0332 (Fed. Cir. 1996) (“First, we look to the words of the claims themselves, both asserted
`
`and non-asserted, to define the scope of the patented invention.”); Phillips v. AWH Corp., 415
`
`F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he claims themselves provide substantial
`
`guidance as to the meaning of particular claim terms.”); Pitney Bowes, Inc. v. Hewlett-Packard
`
`
`
`5
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` DGL Exhibit 1016
`Page 0009
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 10 of 18 PageID #: 703
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`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“The starting point for any claim construction must be
`
`the claims themselves.”). The Federal Circuit reaffirmed the basic principles of claim construction
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`in Phillips, 415 F.3d at 1313-17. Briefly stated, these principles are: the words of a claim are to
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`be given the ordinary and customary meaning that a person of ordinary skill in the art would have
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`understood the claim language to have in light of the patent documents at the time the patent
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`application was filed. Id. at 1313. A court should derive this “ordinary and customary meaning”
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`by looking to the claim language, the specification, and the prosecution history. Id at 1314-17. In
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`looking to the specification, the Court must be careful to avoid unduly limiting the scope and
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`meaning of the claim term. See Comark Communs. v. Harris Corp., 156 F.3d 1182, 1186-87
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`(Fed. Cir. 1998) (“[T]here is sometimes a fine line between reading a claim in light of the
`
`specification, and reading a limitation into the claim from the specification”); see also
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`Interactive Gift Express v. Compuserve Inc., 231 F.3d 859, 866 (Fed. Cir. 2000). While the
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`claims should be interpreted in view of the specification, it is improper to read limitations from
`
`the specification into the claims. See SRI Intern. v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
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`1121 (Fed. Cir. 1985) (en banc); see also Comark, 156 F.3d at 1186. In conjunction with this
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`intrinsic evidence, a court may also consider extrinsic evidence (such as dictionaries), although
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`such evidence is generally “less significant” than the intrinsic record when determining the
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`meaning of the claim language. Phillips, 415 F.3d at 1317-18.
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`In Phillips, the Federal Circuit reiterated that “reading a limitation from the written
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`description into the claims is ‘one of the cardinal sins of patent law.’” Id. at 1320 (emphasis added).
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`Even where the patent contains only a single embodiment (unlike the patent-in-suit), it is reversible
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`error to read limitations into the claims absent a clear intention to do so. See Liebel-Flarsheim Co.
`
`v. Medrad, Inc., 358 F.3d 898, 904-06 (Fed. Cir. 2004).
`
`
`
`6
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` DGL Exhibit 1016
`Page 0010
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 11 of 18 PageID #: 704
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`Furthermore, not all claim terms require construction. “[D]istrict Courts are not (and
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`should not be) required to construe every limitation present in a patent’s asserted claims.” O2
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`Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 512 F.3d 1351, 1362-63 (Fed. Cir. 2008). Claim
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`construction “is not an obligatory exercise in redundancy.” U.S. Surgical Corp. v. Ethicon, Inc.,
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`103 F.3d 1554, 1568 (Fed. Cir. 1997). The purpose of claim construction is to aid the jury by
`
`explaining the scope of the claims. Embrex, 216 F. 3d at 1347. Despite this, Defendant repeatedly
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`asks this Court to erroneously and unnecessarily graft extensive limitations onto the unadorned
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`words of the claims and to construe terms which simply do not require construction.
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`As to indefiniteness, the Supreme Court has held “a patent is invalid for indefiniteness if
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`its claims, read in light of the specification delineating the patent, and the prosecution history, fail
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`to inform, with reasonable certainty, those skilled in the art about the scope of the invention.
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`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). One must bear in mind,
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`moreover, that patents are “not addressed to lawyers, or even to the public generally,” but rather
`
`to those skilled in the relevant art. Id. at 2128. Furthermore, “the definiteness requirement, so
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`understood, mandates clarity, while recognizing that absolute precision is unattainable.” Id. at
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`2129.
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`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART
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`As noted above, claim terms are generally given their plain and ordinary meaning as
`
`understood by one of skill in the art at the time of the invention. The Federal Circuit has set out a
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`number of factors a court should consider in determining level of ordinary skill in the art,
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`including: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3)
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`prior art solutions to those problems; (4) rapidity with which innovations are made; (5)
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`sophistication of the technology; and (6) educational level of active workers in the field. Envtl.
`
`Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 696-97 (Fed. Cir. 1983). In any given
`
`
`
`7
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` DGL Exhibit 1016
`Page 0011
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 12 of 18 PageID #: 705
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`case, not all such factors may be present, and one or more factor may predominate over another.
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`Id.
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`Plaintiffs contend that a person having ordinary skill in the art of the inventions of the
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`Patents-in-Suit (a “POSITA”) would have at least: (1) a bachelor’s degree in mechanical
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`engineering, electrical engineering, computer science, or a related field, or equivalent experience,
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`and; (2) at least two years of experience in the area of: (i) robotics or feedback control for
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`electromechanical systems; (ii) mechanical design, dynamic analysis, and/or control design for
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`mechatronic systems, or (iii) equivalent experience in (i) or (ii). See Decl. of Dr. David C. Hartup
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`at 6, attached hereto as Exhibit D (“Hartup Decl.”).
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`VI. AGREED CONSTRUCTIONS
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`The Parties have not agreed to any constructions.
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`VII. DISPUTED CLAIM TERMS
`
`A.
`
`“ELECTRIC BALANCE VEHICLE”
`
`Plaintiffs
`No construction necessary
`
`
`
`Defendant
`that automatically maintains
`
`its
`
`“vehicle
`balance”
`
`
`
`This Court should decline to construe the term “electric balance vehicle” as the term has a
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`readily understood plain and ordinary meaning. Defendant’s proposed construction for this term
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`adds in limitations which are not in the term and are unsupported by the specification, file history
`
`and any other intrinsic evidence. The term “‘electric balance vehicle’ is a common term used to
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`describe the hoverboard products in this case.” Hartup Decl. at 6. This is not a term that would
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`be confusing to a lay juror. Id.
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`
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`This Court should reject Defendant’s proposed construction for this simple term which
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`seeks insert “automatically maintain” into the claim language and completely eliminate the explicit
`
`
`
`8
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` DGL Exhibit 1016
`Page 0012
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 13 of 18 PageID #: 706
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`language of “electric.” First, Defendant’s proposed construction would include balance vehicles
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`which are not electric in nature and would include balance vehicles with alternate source of power
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`which are clearly not intended to fall within the scope of the claims when one considers the
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`specification and the claims themselves. Id. at 7. Specifically, claim 1 of the ’107 Patent refers to
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`a “power supply” which is “electrically connected” to the controller, sensors, and hub motors
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`which further supports the fact that the invention is an “electric balance vehicle.” Id. Second, the
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`specification states that “the electric self-balancing vehicle 100 in the embodiment achieves
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`automatic balance after sensing the stamping instead of balancing once the power supply is turned
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`on.” ’107 Patent, 8:25-26 (emphasis added). It is clear from the specification that the electric self-
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`balancing vehicle described in the ’107 Patent does not automatically maintain its balance until a
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`user steps onto the pedals. Hartup Decl. at 7. Defendant’s proposed construction must be rejected
`
`as it ignores the broader scope manifested in the specification.
`
`The Federal Circuit has “long ruled that ‘a preamble is not limiting’ where a patentee
`
`defines a structurally complete invention in the claim body and uses the preamble only to state a
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`purpose or intended use for the invention.” Arctic Cat Inc. v. GEP Power Products, Inc., 919 F.3d
`
`1320, 1328 (Fed. Cir. 2019). By imposing unwarranted limitations into this preamble term,
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`Defendant is also defying the well-established principle that a preamble like the present one is not
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`limiting. Its disregard of the law must be rejected.
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`Given that the preamble term “electric balance vehicle” has a common and readily
`
`understood meaning, Plaintiffs submit that the term does not require construction.
`
`B.
`
`“CONTROLLER”
`
`Plaintiffs
`No construction necessary
`
`In the alternative:
`
`
`
`
`
`Defendant
`“single controller.”
`
`
`
`9
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` DGL Exhibit 1016
`Page 0013
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 14 of 18 PageID #: 707
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`
`“a piece of equipment that controls the
`operation of another piece of equipment.”
`
`
`
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`This Court should adopt Plaintiffs’ position for the term “controller” as this term has a
`
`readily understood plain and ordinary meaning and simply does not require construction. In the
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`alternative, Plaintiffs’ have proposed a construction for this term, which is “a piece of equipment
`
`that controls the operation of another piece of equipment” to explain the ordinary meaning.
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`Defendant’s proposed construction does nothing other than add a limitation to the term, while
`
`doing nothing to actually construe “controller” itself. As such, this Court should reject
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`Defendant’s attempt to add the limitation “single” to this simple term.
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`
`
`There is nothing in the specification which supports Defendant’s position that the term
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`must be construed as a “single controller.” Defendant’s construction is nothing more than taking
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`the exact term and then adding another word. The ’107 Patent did not intend to limit the invention
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`to embodiments of either a single controller or one or more controller on the opposite side of the
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`vehicle from the power supply. Hartup Decl. at 9.
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`The specification states that “the controller in the present invention controls the self-
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`balancing vehicle to achieve a self-balancing state and controls the wheels…belongs to the prior
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`art, and will not be described herein for a concise purpose.” Id. The specification also includes
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`multiple examples and references how a controller could work in the present invention. ’107 Patent,
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`8:50-9:45. For example, the specification expressly states that “other control devices and control
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`methods can also be selected….” 107 Patent, 9:5-6. Hartup Decl. at 10. It is incorrect for
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`Defendant to conclude that the controller is a single controller, as opposed to a distributed network
`
`of multiple controllers working together to control the machine as that will improperly limit this
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`general term of “controller” to just one embodiment disclosed in the specification.
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`
`
`10
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` DGL Exhibit 1016
`Page 0014
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`

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`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 15 of 18 PageID #: 708
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`
`
`The plain and ordinary meaning of a controller would be readily understood by even one
`
`of less than ordinary skill. The purpose and behavior of the controller is well established by the
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`specification of the ’107 Patent: “the controller controls the hub motors to drive the corresponding
`
`wheels to rotate according to sensing signals transmitted by the sensors.” 107 Patent, 2:6-9. This
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`description is repeated at 107 Patent, 7:55-57: “the controller 82 controls the hub motors 4 to drive
`
`the corresponding wheels 50 to rotate according to sensing signals transmitted by the sensors 80.”
`
`Hartup Decl. at 8.
`
`
`
`Given this, the Court should rely on the plain and ordinary meaning for this term as it
`
`requires no construction. Defendant’s proposed limitations have no support in the specification
`
`and would violate the commonly held understanding of the term. In the alternative, if this Court
`
`should find construction necessary, the proper construction consistent with the plain and ordinary
`
`meaning is “a piece of equipment that controls the operation of another piece of equipment.”
`
`C.
`
`“CONFIGURED TO CONTROL THE HUB MOTORS” / “CONTROLS
`THE MOTORS” / “CONFIGURED FOR CONTROLLING THE FIRST
`AND SECOND HUB MOTORS”
`
`Defendant
`“controls both [hub] motors”
`
`Plaintiffs
`No construction necessary
`
`In the alternative:
`
`“cause the hub motors to drive the
`corresponding wheels.”
`
`
`This Court should reject Defendant’s proposed construction for the terms “configured to
`
`control the hub motors,” “controls the motors,” and “configured for controlling the first and second
`
`hub motors” as they have a readily understood meaning and require no construction. In the
`
`alternative, should the Court believe construction is required, it should construe these terms as
`
`
`
`11
`
` DGL Exhibit 1016
`Page 0015
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 16 of 18 PageID #: 709
`
`“cause the hub motors to drive the corresponding wheels” as it is consistent with the specification
`
`and the understanding a POSITA would have.
`
`This term has a common and readily understood meaning and simply requires no
`
`construction. This is supported by the specification which states that “controller 82 is electrically
`
`connected with the plurality of sensors 80, the power supply 81, and the hub motors 4, and the
`
`controller 82 controls the hub motors 4 to drive the corresponding wheels 50 to rotate according
`
`to sensing signals transmitted by the sensors 80.” ’107 Patent at 7:52-57; see also id. at 8:36-40
`
`(“The controller 82 drives the hub motors 4 according to the sensing signals transmitted by the
`
`accelerometer sensor 85 and the gyroscope 83, thereby determining to change the direction or the
`
`speed of the self-balancing vehicle 100 or not.”); 8:53-55 (“The controller 72 drives the hub motors
`
`4 to operate according to an internal control program, to enable the user to turn, advance or retreat,
`
`so that ‘foot control’ is achieved”). Given that this term has a commonly understood meaning,
`
`which is clearly supported by the specification, there is no need to construe this term. See Hartup
`
`Decl. at 14 (These variants on a core phrase “in the context of the claims, would all be readily
`
`understood.”).
`
`In contrast, Defendant’s proposed construction should be rejected as it improperly attempts
`
`to limit the claims. For example, Defendant’s proposed construction would require that “the
`
`controller” or “a controller” “controls both motors.” That is, a single controller must control both
`
`motors. Again, there is “nothing in the specification or claims precludes embodiments of the
`
`controller as multiple boards on one or both sides of the vehicle.” Hartup Decl. at 11. As such,
`
`these terms “should not be limited to a single controller that “controls both motors” as suggested
`
`by Defendant.” Id. at 11-12. It would make little to no sense for the claim to include multiple
`
`controllers which each to control both motors. Even if this Court believes these terms require
`
`
`
`12
`
` DGL Exhibit 1016
`Page 0016
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 17 of 18 PageID #: 710
`
`construction, they should be construed in a manner which allows for “one or more controllers” to
`
`each control one or more of the motors, rather than requiring one of the plurality of controllers to
`
`control “both motors” as it would make little sense to include a superfluous controller. Plaintiffs’
`
`proposed alternative construction allows for a controller to control the “corresponding wheel”.
`
`The Court should reject Defendant’s proposed construction as no construction is required.
`
`In the alternative, should the Court find these terms require construction, the proper construction
`
`is “cause the hub motors to drive the corresponding wheels.”
`
`VIII. CONCLUSION
`
`For the foregoing reasons, Plaintiffs’ claim construction positions should be adopted and
`
`Defendant’s proposed positions should be rejected.
`
`
`
`
`
`
`
`
`
`13
`
` DGL Exhibit 1016
`Page 0017
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 45 Filed 02/08/22 Page 18 of 18 PageID #: 711
`
`DATED February 8, 2022.
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Timothy T. Wang
`John H. Choi (JC1286) (local counsel)
`John H. Choi & Associates LLC
`65 Challenger Road, Suite 100
`Ridgefield Park, NJ 07660
`Tel: (201) 580-6600
`Fax: (201) 625-1108
`jchoi@jchoilaw.com
`
`NI, WANG & MASSAND, PLLC
`Timothy T. Wang
`Texas Bar No. 24067927
`twang@nilawfirm.com
`Hao Ni
`Texas Bar No. 24047205
`hni@nilawfirm.com
`8140 Walnut Hill Ln., Ste. 500
`Dallas, TX 75231
`Tel: (972) 331-4602
`Fax: (972) 314-0900
`
`ATTORNEY FOR PLAINTIFFS
`UNICORN GLOBAL, INC., AND
`HANGZHOU CHIC INTELLIGENT
`TECHNOLOGY CO., LTD.
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 8th day of February, 2022, I electronically filed the foregoing
`
`document with the clerk of the court for the U.S. District Court, Eastern District of New York, ,
`using the electronic case filing system of the court. The electronic case filing system sent a “Notice
`of Electronic Filing” to the attorneys of record who have consented in writing to accept this Notice
`as service of this document by electronic means.
`
`
`
`
`
`/s/ Timothy Wang
`Timothy Wang
`
`
`
`14
`
` DGL Exhibit 1016
`Page 0018
`
`