Today the US International Trade Commission issued an order banning virtually all imports of hoverboards into the United States. But this time it has nothing to do with safety.
The reason for the ban involves Segway’s patent claims on self-balancing personal transport technology in the United States. Hoverboard imports, most of which are coming from China, will have to be halted almost entirely for the time being.
Previously the US Consumer Product Safety Commission has warned about hoverboard imports because the products have a tendency to overheat and cause massive fires. The US ITC’s decision was based solely on patent disputes.
Some of the biggest hoverboard brands currently being imported from overseas are expected to be affected by this decision, including names like Swagway and IO Hawk. Any infringing products will be seized at the border.
Segway holds over 400 patents involving technology that allows so-called hoverboards to balance. But the main one they’re hanging their hat on is 8830048, which was filed as recently as April 2013. [Update for clarification: That same patent claims priority in 1999.]
The Commission says that any company wishing to temporarily import hoverboards will have to post a bond equal to the entire cost of the hoverboard until a final decision about the fate of imports is determined.
The US ITC has also issued a cease and desist order against Ecoboomer, a company that has already imported hoverboards, and is prohibiting them from selling the hoverboards that have already entered the country.
Segway’s complaint named 13 companies in particular that it felt were infringing on its patents. These companies include UPTECH, U.P. Technology, U.P. Robotics, FreeGo China, EcoBoomer, and Roboscooters—all of whom export hoverboards to the United States.
There is countless litigation currently taking place amongst hoverboard manufacturers, much of which doesn’t even involve Segway and instead deals in contested IP law within mainland China.
We’ve reached out to Segway for comment on this story and will update this post when we hear back.
Update, March 17th, 6:00pm: We still haven’t heard back from Segway, but some lawyers disagree about whether hoverboards without handlebars are included in the ban.
I received this email from Jordan L. Coyle, a Senior Associate at Orrick, Herrington & Sutcliffe who believes that the import ban doesn’t apply to all self-balancing scooters—only those with handlebars. I’m publishing his email in full below.
The referenced article is way off-base. The import ban applies only to Segway-like “personal transporters” with a handlebar; it does not cover “hoverboards” like the one pictured in your article that consist of two wheels, a platform in between them, and a motor, but no handlebar. The actual ITC General Exclusion Order (not the notice you linked to at the bottom of your article) is attached. The GEO orders that “[p]ersonal transporters covered by one or more of claims 1, 2 and 4-7 of [U.S. Patent No. 8,830,048] are excluded from entry into the United States.” (GEO at 2, ¶ 1.) If you look at those claims, claim 1 requires a “yaw input mechanism comprising a user support element” and claim 2 requires that the “user support element” be a handlebar. Claims 4, 6 & 7 also require a “user support element.” Without a handlebar, hoverboards are not covered by claim 1, which is the only independent claim identified in the GEO. (Indeed, claim 1 is the only independent claim in the ‘048 patent.) A patent cannot cover a product unless that product practices an independent claim of that patent.
The scope of GEOs is often very confusing and both the ALJ and Segway carefully chose to identify only the ‘048 patent in the GEO precisely because infringement of it “can be determined by a simple physical inspection of a personal transporter,” for example by reference to the handlebar.
I’d strongly suggest that you correct your article, so businesses, consumers, and perhaps even personnel of the CBP, which is charged with enforcing ITC exclusion orders, aren’t misled or confused by it.
It should be noted that Segway mentioned a number of other patents in their own press release, but again, they have not gotten back to Gizmodo with a statement.
Obviously this is a ruling that’s going to be fought over by a number of lawyers. And as Ars Technica notes, Customs and Border Patrol is a long way from enforcing the order, whether it’s interpreted to include so-called hoverboards or not:
Enforcing an exclusion order isn’t simple. Lawyers for the plaintiff will have to work with US Customs to get the order enforced. Microsoft won an exclusion order in 2013 and found it so difficult to enforce it ended up filing a lawsuit to demand compliance. The ITC has the power to ban imports of goods that are found to infringe US patents. ITC investigations tend to move forward faster than federal courts, and because they can ban imports, the commission essentially has the injunction power that federal courts now rarely exercise in patent cases.