Unicorn Global, Inc. v. Hillo America, Inc.
2:19-cv-03028
C.D. Cal.Mar 31, 2021Background
- Plaintiffs: Unicorn Global, Inc., Hangzhou Chic Intelligent Technology Co., Ltd., and Shenzhen Uni‑Sun Electronic Co., Ltd.; Defendant: Hillo America, Inc. d/b/a Hoverheart.
- Plaintiffs own or exclusively license U.S. Patent Nos. 9,376,155; 9,452,802; D737,723; and D784,196 (the "Asserted Patents").
- Defendant was accused of infringing the Asserted Patents by making, importing, offering for sale, or selling Hoverheart‑branded hoverboards (HS450, LBW11, T580, HAI‑K6, LBW12).
- Parties filed a Joint Motion for Entry of Consent Judgment; the court granted the motion and entered the consent judgment without oral argument.
- The consent judgment: (a) finds HAI failed to prove invalidity or unenforceability of the Asserted Patents under 35 U.S.C. §§ 101, 102, 103, or 112; (b) adjudicates that the listed Hoverheart models infringe specified claims of the Asserted Patents; and (c) awards remedies.
- Relief: $3,000,000 in damages (to be paid by March 1, 2022), a permanent injunction against making/importing/advertising/distributing/selling infringing products, waiver of Cal. Civ. Code § 1542, mutual release collateral‑estoppel effect, and each party bears its own fees and costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of Asserted Patents under 35 U.S.C. §§ 101, 102, 103, 112 | Patents are valid | Asserted invalidity defenses: anticipation, obviousness, ineligible subject matter, lack of written description, lack of enablement, indefiniteness, public‑use/sale bar, improper inventorship/derivation | HAI failed to prove invalidity by clear and convincing evidence; no finding of invalidity under §§ 101,102,103,112 |
| Unenforceability due to inequitable conduct | Patents are enforceable | Alleged inequitable conduct rendering patents unenforceable | HAI failed to prove inequitable conduct; patents not held unenforceable |
| Infringement by Hoverheart models | Listed Hoverheart models infringe identified claims of the Asserted Patents | Denied/noninfringement contested in litigation | Consent judgment: HS450, LBW11, T580, LBW12, and HAI‑K6 adjudicated to infringe the specified claims as listed in the judgment |
| Remedies (damages, injunction, releases) | Plaintiffs seek damages and an injunction | Defendant agreed to settle per the consent judgment | $3,000,000 awarded for past infringement (due by Mar 1, 2022); permanent injunction precluding manufacture/import/advertising/distribution/sale of infringing products; Cal. Civ. Code § 1542 waiver; collateral estoppel effect; each party bears own fees |
Key Cases Cited
- None — the consent judgment does not cite any judicial opinions with official reporter citations.