The hoverboard industry suffered another major blow on Wednesday after the International Trade Commission (ITC) announced a ban on certain personal transporter devices being manufactured and imported into the country in response to a patent claim filed by Segway.
The ban is termed as a general exclusion order (see documents below) barring the unlicensed entry into the U.S. of "certain personal transporters that infringe one patent asserted in this investigation," as well as a limited exclusion order "prohibiting the unlicensed entry of infringing personal transporters, components thereof, and manuals."
In other words, the hoverboard selling party is likely over for a large number of companies based in China and elsewhere that have been selling the popular device in the U.S. Now, any hoverboard or balance-oriented personal transporter using technology covered by Segway’s patents will not be allowed into the U.S. for sale.
The notice also details a cease and desist order "directed against one domestic defaulting respondent," although that company is not named. The companies that are named in the ITC’s investigation include 13 companies, several of which make hoverboards, including China’s Ninebot, PowerUnion, Robostep, INMOTION, FreeGo China, U.P. Robotics, U.P. Technology, UPTECH as well as Tech in the City, FreeGo USA, EcoBoomer and Roboscooters.
Although named in the legal notice, China-based Ninebot acquired U.S.-based Segway in 2015 for an undisclosed amount. Ninebot/Segway did not immediately respond to a request for comment.
The ban is based on a patent infringement claim filed back in November of 2014 by Segway and DEKA Research (the company founded by Segway inventor Dean Kamen). Kamen unveiled the Segway in 2001. At the time, tech luminaries like late Apple co-founder Steve Jobs hinted that the device might change the way cities were built. However, the Segway failed to capture the public’s imagination and now the devices are most commonly seen in use by some law enforcement officers and at special events.
And while hoverboards are not specifically named in the ban, the details of Segway’s patents outline much of what anyone would describe as a "hoverboard" in current parlance.
"The transporter is capable of balanced operation on one or more ground-contacting elements," reads the patent description. "User-specified input may be conveyed by the user using any of a large variety of input modalities, including: ultrasonic body position sensing; foot force sensing; handlebar lean; active handlebar; mechanical sensing of body position; and linear slide directional input."
Segway owns roughly 400 patents related to personal transporters, covering a wide range of balance-oriented personal transporters.
For its part, Segway quietly released a statement on Monday via Twitter.
"[The general exclusion order] is particularly significant because it blocks importation of all products from all sources that infringe a broad patent covering Segway’s PTs," read the statement posted on Segway’s website.
"It will be enforced at the border by U.S. Customs, which will exclude all infringing imports from entry into the United States. Segway will work with both Customs and the ITC to support effective implementation of the order."
And while this will likely severely limit the number of hoverboards on sale, as recent history has shown us, that may be a good thing. Just last month, the U.S. Consumer Product Safety Commission (CPSC) issued a notice to all manufacturers and distributors of hoverboards advising the halt of sales of hoverboards until they are safety certified by UL. That notice came in the wake of a number of hoverboard fires that in some cases destroyed the homes of their owners.
But now, given Segway’s patent win, even if a hoverboard maker does manage to get its device UL safety certified, that doesn’t mean that that hoverboard can necessarily be sold in the U.S. Facing the safety certification issues and now the U.S. government-enforced patent concerns, many smaller hoverboard makers may opt to stop selling their devices in the U.S.
With this new constraint on the sale and distribution of hoverboards, the device may suffer a final, crushing blow, just as its popularity is at its highest.