On the first day of the biggest annual convention for their industry, Shane Chen’s wife began to cry.
Hoverboards, a rideable toy patented by Chen before they shot to popularity in 2015, whirred around the showroom floor. They were not his, but knockoffs that the couple had spent years battling.
“It was very emotional moment. After two years, still so many knockoffs,” said Chen, who grew up in Beijing. His wife was so distraught, he told her “Let’s go. We don’t have to be here.”
Chen, 62, is an inventor in Camas who has been fighting patent infringement for years. Hoverboards became his most popular creation, sweeping through social media and pop culture on their way to becoming a must-have toy. But it was a bitter experience for him, since most of the success was enjoyed by cheap imitators from factories in China.
Still, Chen and his company Inventist Inc. remain free-wheeling, for better or worse. With at least one more lawsuit against knockoffs on the horizon, Chen said he toggles between the frustration of pursuing a lengthy legal battle and the joy of tinkering away at his workbench.
“It’s definitely disappointing,” he said. “Luckily, I have too much fun inventing.”
Inventist perches above Camas Meadows Golf Course. It is an invention house, as Chen calls it, where a staff of seven tinker and engineer all sorts of new ideas. Many do not make it to the prototype phase. Half-built efforts dot the carpets, and a basement testing ground doubles as a morgue for past ideas.
The early days were simpler, according to Ywanne Chen, Chen’s daughter and co-inventor. Products the firm released included a tubular device that functions like a pogo stick on water, called the AquaSkipper. In many cases, Inventist filed filed patents itself.
“We did a few where a lawyer didn’t touch it the whole time,” said Ywanne Chen, 28. “Sometimes that hasn’t mattered. Nowadays, we have a bunch of stuff that’s in the tech and rideables field. That’s really competitive now.”
Success in the last decade came in the form of electric, auto-balancing vehicles. The breakthrough product was Solowheel, a quasi-unicycle where riders control movements by leaning forward or back like a Segway. That eventually inspired the Hovertrax, a two-wheeled board that became the basis of the hoverboard trend.
While Chen views Solowheel as a potential advent in human transportation — a device for people to replace short bike rides or long walks — he only ever saw the hoverboard as a toy. He was surprised that it became as popular as it did.
But it wasn’t Hovertrax that enjoyed that popularity. That brand retailed for about $1,000, and was soon undercut by copycats that sold for a fraction of that cost. A March 2017 report from the U.S.-China Economic and Security Review Commission found that the United States imported 4.5 million Chinese hoverboards in 2015 alone.
“My daughter said, ‘Dad, if we got this right from the beginning, you would be billionaire by now,’ ” said Shane Chen. “I feel terrible.”
Patent problems
Getting rich has not really been a priority for Shane Chen, however. A lifelong tinkerer who first immigrated to the U.S. three decades ago, he readily admits he is more driven by inspiration and creativity. And that may be partly why they are in this position.
“Invention is sometimes simple. You’ve got an idea, make it. But in order to turn that into money, you have to do all the business things. Business people, they love it. That’s gold for them,” he said.
As the inventions have become more successful, so too have the legal demands. Inventist was quickly overwhelmed by a deluge of knockoff hoverboard products. Their only recourse, Shane Chen said, was licensing the product to a larger toy company with a bigger legal department.
Scott E. Davis, an intellectual property lawyer at the Portland-based firm Klarquist, said this isn’t an abnormal experience for independent inventors in consumer tech. Filing for patents can be expensive, even before hiring an expert in patent law to make sure it is watertight.
“And of course, when you apply for a patent there’s no guarantee it will be patented,” he said. “It’s somewhat costly, but also very essential to protect from knockoffs and copying down the line.”
Foreign competition is also a different story. A patent in the U.S. isn’t going to shut down factories in other countries, but it can hold retailers and importers accountable. Inventist and its licensee, toymaker Razor USA, sought to do so in 2016 when they filed a case with the United States International Trade Commission.
But the year-long case ultimately sided with the imitators, largely due to a typo in Inventist’s initial patent.
“They said the way it was written with the mistake in it, it didn’t cover the knockoffs,” said Ywanne Chen. “This was a textbook, ideal ITC case but it was all brought down by this typo.”
Shawn Kolitch, another patent lawyer and partner at Kolisch Hartwell, P.C. in Portland, was not sympathetic. Inventors he represents have faced knockoffs just the same, and his firm made headlines two years ago when it arrived at the International Consumer Electronics Show with a pair of U.S. Marshals and seized an imitator’s booth. That was the same convention Shane Chen and his wife fled from.
“If you do things right and get high-quality help from the beginning there are many other outcomes than what Inventist experienced,” he said. “For God’s sake, look at your own patent and make sure that it doesn’t have a glaring typographical error that’s going to cost millions of dollars.”
That is a lesson Inventist has learned, said Shane Chen. The company hopes to go back to the International Trade Commission for another enforcement action with a stronger patent.
Plus, the firm has a new invention close to market and already drawing attention. Called the IOTATrax, it is said to combine the best of the Solowheel and the Hovertrax. Portland website Digital Trends named it the best rideable gadget at the International Consumer Electronics Show in January.
Shane Chen is not sure how the IOTATrax will fare, but he said it will be better protected. He will also keep tinkering.
“You have to have interest, otherwise you would give up,” he said. “You have to have fun.”
Correction: A previous version of this article mislabeled the amount of knockoffs estimated by the U.S.-China Economic and Security Review Commission.
