Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 1 of 11 PageID #: 1194
`
`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’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
`
` DGL Exhibit 1021
`Page 0001
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 2 of 11 PageID #: 1195
`
`TABLE OF CONTENTS
`
`I.
`
`SUMMARY OF THE ARGUMENT ............................................................................... 1
`
`II.
`
`DEFENDANT’S MISCHARACTERIZATION OF THE ’107 PATENT .................... 1
`
`III. DISPUTED CLAIM TERMS ........................................................................................... 2
`
`A. “Electric Balance Vehicle” .................................................................................................. 2
`
`B. “Controller” and “CONTROLLING MOTORS” ................................................................ 3
`
`C. “Configured To Control The Hub Motors” / “Controls The Motors” / “Configured For
`Controlling The First And Second Hub Motors” ........................................................................ 6
`
`IV. CONCLUSION .................................................................................................................. 7
`
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
` DGL Exhibit 1021
`Page 0002
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 3 of 11 PageID #: 1196
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) ................................................................................................... 4
`
`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008) ................................................................................................... 3
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ................................................................................................... 3
`
`
`
`
`
`
`
`ii
`
` DGL Exhibit 1021
`Page 0003
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 4 of 11 PageID #: 1197
`
`Plaintiffs Unicorn Global, Inc. and Hangzhou Chic Intelligent Technology Co., Ltd.
`
`(“Plaintiffs”) submit this brief in response (“Responsive Brief”) to Defendant DGL Group, Ltd.
`
`(“Defendant”)’s Opening Claim Construction Brief (Dkt. No. 46) (“Defendant’s Opening Brief”)
`
`to address the arguments made by Defendants regarding the disputed terms and phrases of the
`
`asserted claims of U.S. Patent No. 10,597,107 (the “’107 Patent”).
`
`I.
`
`SUMMARY OF THE ARGUMENT
`
`In its Opening Claim Construction Brief, Defendant makes wildly deceptive arguments to
`
`support improper claim constructions that conspicuously seek to inappropriately import limitations
`
`into the claims. These arguments, and Defendant’s proposed constructions, should be rejected.
`
`Defendant begins by mischaracterizes the scope of the inventions ’107 Patent in its opening
`
`discussion by including a lengthy review of prior art that is not relevant to the claim terms at issue.
`
`Additionally, as shown below, in each of its proposed constructions Defendant inserts limitations
`
`that do not exist in the claims or justified by the intrinsic evidence. The motivation for doing so
`
`is obvious—Defendant seeks to incorrectly narrow the claims with the hope of improving their
`
`non-infringement arguments. Also, in at least one instance, Defendant unjustifiably proposes an
`
`overly broad construction in what seems to be an effort to aid its invalidity arguments. Again,
`
`Defendant’s attempt to obtain incorrect claim constructions should be rejected.
`
`II.
`
`DEFENDANT’S MISCHARACTERIZATION OF THE ’107 PATENT
`
`The ’107 Patent is directed to a self-balancing electric vehicle, otherwise known as a
`
`hoverboard. The boards became popular around 2016 as did the term “hoverboard” to describe
`
`them. The face of the ’107 Patent cites numerous prior art references related to hoverboards.
`
`Defendant inexplicably draws its focus to one of the prior art references, U.S. Patent No.
`
`6,302,230 (the “Segway Reference”), which describes one embodiment of a hoverboard. While
`
`the Segway Reference provides some technical discussion related to the embodiment that it
`
`
`
`1
`
` DGL Exhibit 1021
`Page 0004
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 5 of 11 PageID #: 1198
`
`discloses, little if any of that discussion is pertinent to the claim term at issue. One can only
`
`surmise that Defendant draws attention to this reference because it includes the word
`
`“automatically,” which Defendant incorporates into its construction of “electric balance vehicle.”
`
`As shown below, Defendants focus on this reference, especially as this focus pertains to the claim
`
`term “electric balance vehicle” does nothing clarify the meaning of the claim term. Rather, it only
`
`adds confusion to the meaning of a readily understood term. One which Defendant already admits
`
`was “common in the art.”
`
`III. DISPUTED CLAIM TERMS
`
`A.
`
`“ELECTRIC BALANCE VEHICLE”
`
`Plaintiffs
`No construction necessary
`
`
`
`Defendant
`that automatically maintains
`
`its
`
`“vehicle
`balance”
`
`
`
`Defendants proposed construction unnecessarily introduces a jumble of possibilities that
`
`will certainly lead to a confused jury, and which Defendant has already admitted in its own briefing
`
`had become common in the art. Defendant heavily relies on the Segway reference—ostensibly
`
`because it includes the word automatically with respect to the embodiment is discloses. But this
`
`reliance is misplaced here. As Plaintiff’s expert Dr. Hartup explained, even embodiments
`
`disclosed in the ‘107 patent itself do not automatically maintain their balance at all times. Doc.
`
`No. 45-4, Ex. D at p. 6. Accordingly, this improper proposed construction reads additional
`
`limitations into—and therefore improperly narrows—the claims. Additionally, the inventions
`
`disclosed and claimed in the ‘107 Patent are unmistakably related to electric vehicles. Defendant’s
`
`proposed construction inexplicably broadens the claim so that it is not only limited to electric
`
`vehicles, but also includes additional vehicles such as ones powered by gas. Adopting this
`
`proposed construction would certainly leave the jurors scratching their heads. Dr. Hartup
`
`
`
`2
`
` DGL Exhibit 1021
`Page 0005
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 6 of 11 PageID #: 1199
`
`explained this problematic aspect of Defendant’s proposed construction at length. Id. at p. 7. From
`
`his explanation and the citations he relied on, it is undoubtedly clear that the invention relates to
`
`electric vehicles and not other types of vehicles.
`
`As discussed by Plaintiffs’ expert, the term “‘electric balance vehicle’ is a common term
`
`used to describe the hoverboard products in this case.” Hartup Decl. at 6. An understanding to
`
`which Defendant admits in its Opening Brief. Def. Opening Br. at 1 (“[T]he inventors used
`
`terminology that had become common the art, like . . . ‘electric balance vehicle.’”). This is not a
`
`term that would be confusing to a lay juror and as such it requires no construction. Id.
`
`
`
`As discussed in Plaintiffs’ Opening Brief, the term “electric balance vehicle” has a
`
`common and readily understood meaning. “Claim construction is a matter of resolution of
`
`disputed meanings and technical scope, to clarify and when necessary to explain what the patentee
`
`covered by the claims, for use in the determination of infringement. It is not an obligatory exercise
`
`in redundancy.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
`
`“[D]istrict courts are not (and should not be) required to construe every limitation present in a
`
`patent's asserted claims.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
`
`1362 (Fed. Cir. 2008). Given that the term at issue here is a commonly understood term, there is
`
`no need to construe it. Doc. No. 45-4, Ex. D at p. 6.
`
`B.
`
`“CONTROLLER” AND “CONTROLLING MOTORS”
`
`Claim Term
`Controller
`
`Defendant
`“single controller”
`
`
`Plaintiffs
`No construction necessary
`
`In the alternative:
`
`“a piece of equipment that
`controls the operation of
`another piece of equipment.”
`
`
`
`3
`
` DGL Exhibit 1021
`Page 0006
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 7 of 11 PageID #: 1200
`
`With respect to this term, Defendant’s unabashed attempt to improperly import a limitation
`
`into the claims should be rejected. The claim term is readily understood, and Defendant’s attempt
`
`to narrow the term is completely unjustified. Tellingly, Defendant requests that the Court insert
`
`the improper, overly limiting “single” language regardless of whether the Court adopts Plaintiffs’
`
`alternative construction. Defendant’s Opening Brief at 12. Defendant’s proposed construction is
`
`a brazen attempt to read limitations into the claims to strengthen its non-infringement position.
`
`However, Defendant’s proposed construction is not the correct construction and there is no
`
`justification for adopting it.
`
`
`
`As an initial matter, Defendant cites Harari for the statement that “it is not a ‘hard and fast
`
`rule that ‘a’ always means one or more.” Id. at 13 citing Harari v. Lee, 656 F.3d 1331, 1341 (Fed.
`
`Cir. 2011). This means that absent clear disavowal, “a controller” should NOT be expressly
`
`limited to “a single controller.” Here, the ’107 Patent has no such disavowal and Defendant is
`
`unable to point to any. Most importantly, Defendant does not provide any compelling reason to
`
`adopt such a limiting claim construction. Defendant further argues that the claim language also
`
`includes “two” and a “plurality” and as such, “a” must mean a single item. This is a
`
`mischaracterization at best. The claims require “two wheels” and a “plurality of sensors,” which
`
`means that to meet the claims, two wheels are necessary, and more than one sensor is necessary.
`
`This does not mean the claim language is excluding any embodiments which include more than a
`
`single sensor.
`
`Defendant also improperly attempts to limit the claims to an exemplary embodiment.
`
`Defendant cites an embodiment where “one power supply and one controller can control the two
`
`hub motors simultaneously” Id. at 14. However, the ’107 Patent and the established caselaw
`
`makes clear that the patent is not limited to this embodiment, and nothing has been disclaimed to
`
`
`
`4
`
` DGL Exhibit 1021
`Page 0007
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 8 of 11 PageID #: 1201
`
`impose this limitation. See ’107 Patent, 10:24-32. (“Although the present invention has been
`
`described in considerable detail 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 changes without departing from the scope and spirit of the
`
`invention. Therefore, the scope of the appended claims should not be limited to the description of
`
`the preferred embodiments described above.”)
`
`Finally, with respect to Dr. Maslen’s prior deposition, Defendant clearly mischaracterizes
`
`Dr. Maslen’s testimony. Dr. Maslen was asked what the explicit language of the embodiment was.
`
`Dr. Maslen’s responses were limited to the specific embodiment that he was questioned about.
`
`Indeed, Dr. Maslen distinguished the claims in the ’107 Patent from the parent patents which
`
`claimed a single controller controlling two hub motors. In fact, Dr. Maslen testified as follows:
`
`
`
`Depo. Dr. Eric Maslen, Dkt. No. 46-6 at 39:4-18. Dr. Maslen clearly testified that the claims of
`
`the ‘107 Patent are not limited to requiring a “single controller.” Id. Defendant’s proposal that
`
`the Court modify Plaintiff’s proposed construction to read “a single piece of equipment” also
`
`appears to rely on Defendant’s mischaracterization of Dr. Maslen’s testimony. Def. Opening Br.
`
`at 12, 15. Again, Dr. Maslen testified to the contrary, and quite clearly stated that a controller could
`
`
`
`5
`
` DGL Exhibit 1021
`Page 0008
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 9 of 11 PageID #: 1202
`
`be “multiple devices that are coordinated” as long as they “control—regulates the behavior of
`
`another device.” Maslen Depo. at 42:9-15, Dkt. No. 46-6. Defendant apparently mischaracterizes
`
`Dr. Maslen’s testimony to aid its improper proposed construction.
`
`
`
`The plain and ordinary meaning of a controller would be readily understood by even one
`
`of less than ordinary skill. Doc. No. 45-4, Ex. D at p. 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 fact, Defendant relies on the description of merely one embodiment
`
`to support its argument. Def. Open Br. At 14. This is in spite of the fact that the patent itself states
`
`that other embodiments can be selected in practicing the invention. ‘107 Patent; 9:5-6.
`
`Accordingly, Defendant’s construction is wrong and should be rejected.
`
`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.”
`
`
`For at least the same reasons described above, the Court should also reject Defendant’s
`
`attempt to insert the extraneous limitation “both” into the terms at issue. As with its proposed
`
`construction for the term “a controller” discussed above, Defendant attempts to improperly add
`
`limitations to a claim term which is readily understood. In fact, Defendant again brazenly
`
`mischaracterizes Dr. Maslen’s testimony where he clearly set out the differences between the ‘107
`
`Patent claims and those in the parent patents which had limitations specifying that a single
`
`
`
`6
`
` DGL Exhibit 1021
`Page 0009
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 10 of 11 PageID #: 1203
`
`controller controls two hub motors. Those limitations are not present here and they should not be
`
`read into the claims.
`
`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.” As noted by Dr. Hartup in his
`
`Declaration, there is simply nothing in the specification of the ‘107 Patent that precludes
`
`embodiments of the controller as multiple boards on one or both sides of the vehicle. Doc. No.
`
`45-4; Exhibit D at p, 11. Similarly, either the specification nor the claims limit the invention to
`
`one controller, or a controller constructed of a single controller board to control both motors. Id.
`
`Defendant relies on cherry picked passages related to particular embodiments to support a
`
`construction that wrongly imports limitations from the specification. Accordingly, Defendant’s
`
`proposed construction should be rejected.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Defendant’s proposal to add extraneous limitations to the easily
`
`understood claim as well as its attempt to unjustifiably broaden the claims should be rejected.
`
`Plaintiffs respectfully submit that their claim construction positions should be adopted by the
`
`Court.
`
`
`
`
`
`
`
`
`
`7
`
` DGL Exhibit 1021
`Page 0010
`
`

`

`Case 1:21-cv-01443-MKB-SJB Document 50 Filed 03/08/22 Page 11 of 11 PageID #: 1204
`
`DATED March 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 March, 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
`
`
`
`8
`
` DGL Exhibit 1021
`Page 0011
`
`