Razor Announces Further Confirmation of Its Patented Self-Balancing Scooter Technology
May 26, 2023
Razor USA LLC recently announced resolution of Razor’s long-running patent infringement litigation against DGL Group, Ltd. regarding self-balancing scooters, which are often referred to as “hoverboards.” As previously announced, Razor agreed to grant DGL a non-exclusive license to the asserted hoverboard patents, invented by Shane Chen, as part of the settlement. Razor’s Hovertrax line of self-balancing scooters is now joined by DGL’s Hover-1 line of products as the only self-balancing scooters authorized in the U.S. under the asserted Chen patents.
Two recent events confirming the validity and importance of the licensed Chen patents makes DGL’s license even more significant to the industry:
First, the U.S. Patent Office recently reconfirmed the validity of one of Chen’s foundational utility patents on self-balancing scooter technology. The patent has survived a series of challenges, including an inter partes review (“IPR”) instituted by a competitor in the Patent Office in 2016. The patent reissued in 2018 with additional claims (Patent No. RE46,964 (“RE964 patent”)). In 2022, while Razor’s infringement lawsuit against DGL was pending, DGL argued the patent was invalid and asked the Patent Office to conduct a reexamination. The Patent Office rejected DGL’s arguments and confirmed the validity of the RE 964 patent without even requesting a response from the patent owner. Thus, the patent issued as an original patent, survived an IPR challenge, reissued, and was recently reexamined. Having survived all these challenges, its claims are now stronger than ever.
Second, in a case between infringers, the U.S. Court of Appeals for the Federal Circuit prominently discussed U.S. Design Patent No. D739,906 (“D906 patent”), the foundational design patent Razor had asserted in the DGL litigation. In the opinion, the Federal Circuit pointed to the D906 patent’s early priority date and noted the predominance of the iconic hourglass shape for self-balancing scooters embodied in the design patent.
Carlton Calvin, one of Razor’s founders, said, “Razor is proud of its tireless fight to enforce the intellectual property rights of its inventors against infringers. These recent events should serve as a strong warning to the rest of the industry that manufacturers and importers of self-balancing scooters will need to seek licenses or stop selling their infringing products. We look forward to working with retailers to present consumers with only licensed products.”
About Razor USA LLC
Razor embodies the spirit of fun and freedom. The company was founded in 2000 with the introduction of its now legendary, original Razor kick scooter, which quickly became an essential ride for anyone on the go. Today, Razor products are available worldwide, with a full range of wheeled rides to inspire and excite riders everywhere. Innovative products and great value have distinguished Razor as a trusted global brand and industry leader. For more information, please visit www.razor.com .