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Broussard v. Go-Devil Manufacturing Co. of LA., Inc.
Citations: 29 F. Supp. 3d 753; 2014 WL 3377708; 2002 U.S. Dist. LEXIS 29114Docket: Civil Action No. 3:08-cv-00124-BAJ-RLB, 3:08-cv-00125-BAJ-RLB
Court: District Court, M.D. Louisiana; July 9, 2014; Federal District Court
In a consolidated patent infringement case, Gator Tail, LLC, represented by Kyle Broussard, claims that boat motors produced by Go-Devil Manufacturing Co. and Mud Buddy, LLC infringe its patents. A three-day bench trial focused on patent validity occurred from January 27 to January 31, 2014. The court is currently reviewing post-trial findings regarding the patents in question. The court concludes that all asserted claims are invalid due to obviousness, and that United States Patent Number 7,052,340 is invalid for lack of written description. Additionally, specific claims from this patent and another patent (7,297,035) are deemed invalid for lack of definiteness.
Key parties include:
- **Plaintiff**: Gator Tail, LLC, a Louisiana LLC founded by Broussard, specializing in shallow water outboard motors.
- **Defendants**: Go-Devil Manufacturing Co., a Louisiana LLC, and Mud Buddy, LLC, a Utah corporation, both also manufacturing shallow water outboard motors.
The court confirms it has jurisdiction over the matter.
Plaintiff Gator Tail and Defendants Go-Devil and Mud Buddy are manufacturers of mud motors, specifically designed for shallow water and muddy environments, primarily for hunting and fishing purposes. Historically, the mud motor market was dominated by long-tail motors, characterized by a lengthy drive shaft, but there has been a significant consumer shift towards surface-drive or short-tail motors due to their advantages in horsepower, speed, and maneuverability.
Gator Tail holds patents related to these surface-drive motors. The first patent, United States Patent Number 7,052,340 ('340 Patent'), titled "Method and Apparatus for Air Cooled Outboard Motor for Small Marine Craft," was issued on May 30, 2006, and is based on a 2003 application. It stems from a provisional application filed in 2002. The second patent, United States Patent Number 7,297,035 ('035 Patent'), titled "Marine Craft Adapted for Shallow Water Operation," was issued on November 20, 2007, as a continuation-in-part of the '340 Patent.
Both patents describe a high-horsepower, air-cooled engine designed to be mounted on small flat-bottom boats. They feature an efficient belt drive assembly that positions the drive shaft at an optimal angle for contact with water, facilitating better maneuverability and a shorter turning radius compared to previous designs. Key features include incremental tilt positioning, a pivotal steering handle, and a clutch system for disengaging the engine, along with an electric motor for reverse propulsion. Renderings of both patents are also referenced.
Plaintiffs allege that Defendants' products infringe multiple claims of two patents: the '340 patent (claims 1, 3-9, and 11-13) and the '035 patent (claims 1, 3-7, and 9-13). Specifically, Claim 1 of the '340 patent describes a portable drive assembly designed for temporary attachment to a shallow draft watercraft, featuring an elongated drive housing with upper and lower drive assemblies connected by a timing belt, an engine mounting plate, and a propeller shaft extending at least 12 inches from the housing.
Subsequent claims (3-8, 9, 11-12) detail additional features including steering and throttle controls (Claim 3), a shaft housing with thrust bearings (Claim 4), compatibility of timing pulleys (Claim 5), an air-cooled utility engine (Claim 6), water-sealed housing (Claim 7), and specific structural components like a sealed housing and pivotal attachment means (Claims 8-9). Claims 11 and 12 elaborate on the propeller shaft assembly incorporating thrust bearings and a rudder fin, respectively. All claims aim to establish the unique characteristics of the portable drive assembly as outlined in the patent.
Claim 13 of the '340 Patent specifies that the propeller shaft assembly must exceed 18 inches in length. The asserted claims of the '035 Patent include several key features of a marine craft:
- Claim 1 describes a marine craft with a hull featuring a transom and a portable drive assembly that includes an elongated drive housing, an upper drive assembly, a lower driven assembly, and a timing belt connecting them, with a propeller shaft portion enclosed within a shaft housing extending more than 18 inches beyond the drive housing.
- Claim 3 adds that the portable drive assembly includes steering and throttle controls.
- Claim 4 states that the shaft housing has a rudder fin.
- Claim 5 notes that both the upper and lower assemblies have timing pulleys compatible with the timing belt, which is unobstructed.
- Claim 6 introduces a mounting bracket assembly for temporarily attaching the drive assembly to the transom.
- Claim 7 specifies that a utility engine is mounted on the engine plate and coupled to the upper drive assembly.
- Claims 9 through 12 build on Claim 7, reiterating features related to steering controls, rudder fin, timing pulleys, and a mounting bracket assembly.
- Claim 13 extends Claim 12 by including a first pivoting assembly for positioning the drive housing beyond vertical relative to the mounting bracket.
The plaintiffs allege that Go-Devil’s Surface Drive models, including various horsepower options, infringe at least claim 1 of both the '340 and '035 Patents. Similarly, the complaint against Mud Buddy claims that its Hyper-drive series engines infringe at least one claim from the patents.
On February 28, 2008, Plaintiffs initiated two separate patent infringement lawsuits against Go-Devil (case 08-cv-00124) and Mud Buddy (case 08-cv-00125) in the same district. Mud Buddy counterclaimed on May 2, 2008, challenging the '340 and '035 Patents' validity. The Plaintiffs amended their complaint against Go-Devil on July 23, 2008, and Go-Devil subsequently filed counterclaims on August 1, 2008. The actions were conducted independently, with the Mud Buddy case being transferred to the U.S. District Court for the Eastern District of Louisiana on February 25, 2010. During the proceedings, Mud Buddy obtained ex parte reexaminations of the patents from the U.S. Patent and Trademark Office (PTO), which initially rejected all claims of both patents but later confirmed their validity. On April 26, 2011, the Mud Buddy case was returned to the original court, which noted its relevance to the Go-Devil case. On July 5, 2011, both cases were consolidated for a claim construction hearing, which took place on October 3 and December 5, 2011. Following the hearing, final briefs were submitted by the parties on September 26, 2012. The court issued a ruling on the claim construction on June 25, 2013, and set trial dates for the validity of the patents on October 31, 2013. A bench trial occurred from January 27-31, 2014, and post-trial briefs were filed by February 21, 2014. Supplemental briefs addressing definiteness were submitted on June 13, 2014, after a relevant Supreme Court decision. Ultimately, the court concluded that all asserted claims of the '340 and '035 Patents are invalid.
Subject matter jurisdiction is established under 28 U.S.C. §§ 1331, 1338, and 2201, with proper venue under 28 U.S.C. §§ 1391 and 1400(b). The Court emphasizes the importance of a functioning patent system, citing *Medtronic, Inc. v. Mirowski Family Ventures, LLC* and notes that patents are presumed valid per 35 U.S.C. § 282. A challenger must overcome this presumption to prove invalidity. However, the public interest requires that patent monopolies remain within valid boundaries, leading to statutory mechanisms for challenging patent validity post-issuance.
To qualify for patent protection, an invention must meet criteria outlined in 35 U.S.C. §§ 101 (patentable subject matter), 102 (novelty), and 103 (nonobviousness). The Defendants argue that Gator Tail's patents are invalid based on various grounds. After reviewing the evidence, the Court concludes that: 1) all asserted claims are invalid due to obviousness; 2) the '340 Patent is invalid due to lack of written description; and 3) specific claims from the '340 and '035 Patents are invalid due to lack of definiteness. The Court finds that Defendants have provided clear and convincing evidence supporting their claims of obviousness in light of prior art.
Under Title 35, U.S.C. § 103(a), a patent cannot be obtained if the differences between the patented invention and prior art would render the invention obvious to someone with ordinary skill in the relevant field. To challenge a patent's validity on the grounds of obviousness, the challenger must provide clear and convincing evidence demonstrating that the invention would have been obvious at the time it was created. The standard of proof, "clear and convincing," lies between "beyond a reasonable doubt" and "preponderance of the evidence," and is understood as evidence that leads to a strong conviction of the truth in the factual claims.
Determining obviousness involves a legal assessment based on several factual inquiries, including: 1) the scope and content of the prior art; 2) the level of ordinary skill in the art; 3) the differences between the claimed invention and the prior art; and 4) secondary considerations of non-obviousness, such as commercial success, long-felt but unsolved needs, failures by others, industry acquiescence regarding the patent’s validity, and unexpected results. While the order of these inquiries may vary case by case, they remain central to the analysis. If a court finds the claimed invention obvious after considering these factors, the patent claim will be deemed invalid under § 103.
Gator Tail acknowledges that the '340 and '035 Patents are combination patents, which integrate prior art elements rather than featuring unique components individually. Mr. Broussard's invention is distinguished by its novel combination of these elements, leading to significant success. The Supreme Court's guidelines on determining the obviousness of such combinations include evaluating whether a person of ordinary skill could predictably modify existing designs or apply known techniques to similar devices. A court must assess whether the improvement represents more than a predictable application of prior art and consider insights from multiple patents, market demands, and the background knowledge of skilled individuals.
Key considerations in this analysis include avoiding hindsight bias, ensuring that any motivation to combine prior art is not rigidly applied, and recognizing that while absolute predictability is not required, there must be a reasonable expectation of success. Additionally, the presence of a finite number of predictable solutions can suggest obviousness. Overall, the inquiry into obviousness should be explicit and thorough, based on the context provided by established principles and case law.
The Court must establish the scope and content of prior art under the first element of the Graham test for obviousness, focusing on analogous art, which is defined as art not too remote to be considered prior art. A reference qualifies as analogous if it originates from the same field of endeavor or is reasonably pertinent to the inventor's problem. The determination of relevant prior art is factual and is further constrained by 35 U.S.C. § 102(a), which sets the timeline for prior art based on the effective filing date of the claimed invention. The '340 Patent application was filed on September 15, 2003, and the '035 Patent application was filed on May 22, 2006, with the latter being a continuation-in-part of the former. Consequently, the relevant prior art for both patents includes any analogous patents, publications, or products issued before September 15, 2003. It is agreed that the alleged prior art meets these criteria and includes various outboard marine motors and related patents, such as long-tail mud motors. A list of specific patents admitted at trial without objection includes numerous U.S. patents and a European patent, confirming their relevance. Additionally, the Plaintiffs acknowledged in post-trial documents that the prior art encompasses specific motors, including the Scavenger motor and various others. The Court will subsequently outline the features of certain prior art that are particularly significant for assessing obviousness.
United States Patent 2,996,035, known as the Torrey Patent, issued on August 15, 1961, describes a long-tail motor designed for use in shallow or weedy waters, specifically for powering row boats. Key features include a long propeller shaft housing that allows the propeller to be submerged or raised for access.
The Scavenger Backwater motor, produced since the early 2000s, is an air-cooled, belt-driven, horizontal shaft motor that is considered a practical embodiment of the Torrey Patent, with parties agreeing it is essentially a derivative design.
United States Patent 5,741,165, the Saito Patent, issued on April 21, 1998, introduces a gear-driven, vertical shaft motor aimed at enhancing maneuverability in shallow waters. It maintains advantages of long-tail motors while addressing their limitations, such as restricted turning radius and hull intrusion, by shortening the motor's overall length. Expert testimony highlighted that the short-tail design improves steering and control.
The Pro-Drive motor is an air-cooled, gear-driven, vertical shaft motor introduced in the early 2000s, noted for its shorter, heavy-duty outboard design that allows operation in shallow water and muddy conditions without requiring water cooling. It operates similarly to Mr. Broussard's design and is recognized as embodying the Saito patent's principles. The Pro-Drive's design offers advantages in maneuverability and ease of operation, particularly in shallow and open waters.
In evaluating obviousness under the Graham test, the level of ordinary skill in the relevant field is crucial, defined here as possessing an undergraduate degree in mechanical engineering or five years of marine motor experience. The analysis requires identifying differences between the claimed invention and prior art from the perspective of an ordinary skilled person, focusing on the patent claims as a whole rather than specific embodiments. The Federal Circuit emphasizes that patent claims must be interpreted as written, with courts limited to interpreting rather than altering the claims, and the specification can aid in understanding terminology without adding extraneous limitations. Additionally, reviewing prior art is not confined to claims that are asserted.
Differences between prior art and the claimed invention are evaluated through a comprehensive interpretation of both the prior art and the patent claims. A prior art reference must be fully considered in an obviousness analysis, including what it suggests to a person of ordinary skill in the field. The claims of the patent serve as the baseline for identifying differences, with claim construction being a legal issue for the court. The parties involved contested the meanings and technical scopes of the claims, prompting the court to conduct a Markman Hearing to clarify the coverage of the Gator Tail Patents. The court's claim construction is crucial to the obviousness determination, especially when technical terms are disputed.
Claim 1 of the '340 Patent details a portable drive assembly for shallow draft watercraft, featuring an elongated drive housing with an upper drive assembly, a lower driven assembly, and a timing belt connecting them. It also includes an engine mounting plate, a propeller shaft partially enclosed within a housing, and a propeller at the end of the shaft. The court finds minimal difference between the teachings of prior art and Claim 1, concluding that the improvement presented by Claim 1 does not exceed the predictable application of known prior art elements.
Claim 1 of the '340 Patent and the Saito Patent both describe a portable drive assembly designed for shallow draft boats. The assembly features an upper internal combustion engine connected to a lower propeller shaft that extends horizontally from the hull. Although the Saito Patent does not claim a shaft housing exceeding 12 inches, it indicates that the distance from the trim axis to the propulsion device is greater than from the tiller's forward end to the trim axis. The Saito Patent aims to enhance mud motor maneuverability compared to traditional long-tail designs, allowing for a shorter overall length that enables navigation in narrow waterways without the propeller or hull striking the shore. This is achieved through a short-tail design utilizing bevel gears to connect the engine and vertical drive shaft to the horizontally extending propeller shaft.
However, Saito's design introduces balance issues due to the weight distribution, as the vertical drive shaft motor is positioned far aft of the transom on an L-shaped bracket. This back-weighting results in a tendency for the propeller to pivot downward, necessitating continuous force from the operator on the steering shaft, leading to fatigue. Testimony indicated that the Saito design, including its embodiment in Pro-Drive, is excessively tail-heavy. The challenges posed by Saito's short-tail design create a motivation for those skilled in marine motors to adopt Gator Tail’s invention, as there are only a limited number of predictable solutions to the identified balance problem.
The trial evidence showed that relocating Saito’s engine to a pivot point above the boat’s transom would enhance balance and maneuverability. Expert Dr. Garris noted that those skilled in the field would readily recognize the benefits of applying Saito’s teachings, which advocate for improved steering and control through a short-tail design, to long-tail shallow-draft watercraft. He emphasized the importance of balance and suggested that a horizontal drive-shaft engine would be preferable to Saito’s vertical design for this purpose. The horizontal engine allows for greater design flexibility in positioning the motor, whether inside or further aft of the boat, and provides more options for the drive axis compared to a vertical engine, which is limited to downward positioning.
Experts agreed that adapting Saito’s improvements—like choke and steering geometry—would be feasible with a horizontal engine, and recommended connecting the horizontal drive shaft to the propeller shaft using a belt or chain, which is more economical and flexible for transferring torque over distances. Overall, the consensus among witnesses highlighted the advantages of using a horizontal engine to achieve Saito’s desired outcomes while optimizing the boat's performance.
A belt drive or chain drive is deemed superior for connecting a horizontal shaft engine to a horizontal propeller shaft due to its lower maintenance requirements, as agreed upon by Dr. Matthews during testimony. Experts concur that a timing belt is preferable over a chain or v-belt for such connections, considering efficiency, cost, manufacturing ease, and torque handling capabilities. The Court finds that a designer of ordinary skill would recognize the benefit of upgrading Saito's design with a horizontal shaft engine positioned above the transom, despite Gator Tail's contention that Saito explicitly rejected this approach. Gator Tail's arguments, which focus on a rigid application of the "teaching, suggestion, or motivation" test, are not persuasive to the Court. Consequently, the Court determines that the material in Claim 1 of the '340 Patent is obvious when viewed in light of Saito and Pro-Drive.
Additionally, the analysis extends to the Torrey Patent and Scavenger Backwater motor, both of which disclose portable drive assemblies compatible with shallow draft boats, featuring an upper drive assembly, lower driven assembly, and a Y-belt connection. Key components include propeller shafts and an engine mounting plate, but they lack a timing belt and an elongated drive housing. However, timing belts were already known in the outboard marine motor field prior to the '340 Patent.
Testimony at trial indicated that a person of ordinary skill in mud motors could easily replace a v-belt with a timing belt to enhance torque performance. Dr. Garris stated that timing belts are superior for higher torque due to their teeth, while v-belts, though effective, can slip under increased torque or misadjustment. Gator Tail's expert, Dr. Matthews, acknowledged that substituting a timing belt for a v-belt when connecting high horsepower to a propeller shaft is an obvious modification due to the slipping risk of v-belts.
Prior to the issuance of the '340 Patent, elongated drive housings were recognized in the field, with multiple examples cited from prior art, including patents by Newman and Watson. The PTO noted these precedents during reexamination. The drive housing serves various functions in an outboard marine motor: safety, aesthetics, sealing, and structural support. Dr. Garris and Mr. Kueny testified to these functions at trial.
The Court concluded that a mechanical engineer experienced in marine motors would see a drive housing as an improvement over existing patents. Gator Tail contested this by arguing that the elongated drive housing's structural role distinguishes it from the Torrey design, claiming that merely adding a safety guard would not provide structural benefits. The Court rejected this argument, emphasizing that if a technique enhances one device, it is deemed obvious to apply it to similar devices unless the application exceeds the skill level of a person in the field. The evidence demonstrated that Saito's innovation improved maneuverability in mud motors, which Mr. Broussard sought to enhance due to limitations of traditional long-tail motors.
Mr. Broussard testified about efforts to address deficiencies in the long-tail motor design, similar to Mr. Saito's approach. He noted that to convert long-tail motors like Torrey and Scavenger into a short-tail design, a "structural" drive housing is necessary to effectively transfer the propeller's thrust, which allows for a shorter propeller shaft and proper angle of attack. Mr. Broussard emphasized the limited options available for improving Torrey, indicating that applying Saito’s short-tail design to the Torrey Patent was feasible for someone skilled in marine motors, as evidenced by his undergraduate engineering capstone project that evolved into the Gator Tail product. The court determined that Claim 1 of the '340 Patent simply combined prior art elements from Saito and Torrey to create a predictable modification.
Regarding the '340 Patent's prosecution and reexamination history, the Federal Circuit has stated that an examiner's decision is critical in evaluating claims of invalidity, with the burden of proof being heavier for reissued patents. If the PTO lacked essential information, the burden on the challenger to prove invalidity may be reduced. The application for the '340 Patent was filed on September 15, 2003, but initially rejected by the PTO on July 25, 2004, due to obviousness under § 103, referencing multiple prior patents. Ultimately, after amendments and discussions, the PTO approved nearly all claims of the '340 Patent.
Mr. Broussard’s patent application was initially deemed to not meet the standards of 37 CFR 1.121, as indicated by the intermediate PTO determination. The PTO allowed the '340 Patent claims after determining that prior art, including patents by Watson, Newman, and Brindley, did not disclose an engine mounting plate attached perpendicularly to the drive housing or a lower driven assembly with a propeller shaft extending at least 12 inches beyond the drive housing. On April 8, 2010, Defendant Mud Buddy requested a reexamination of the '340 Patent, which the PTO granted due to a substantial new question of patentability affecting claims 1-14. During this reexamination, the PTO noted that the Saito Patent taught an engine mounting plate and a shaft housing extending beyond 12 inches, which was significant for the patentability assessment. Initially, the PTO rejected all claims as obvious, relying primarily on the Saito, Watson, and Foreman Patents, concluding that the Saito Patent provided a prima facie case of unpatentability. However, after reviewing additional information from Gator Tail, the PTO confirmed claims 1-14 of the '340 Patent on November 4, 2010, and added nine new claims.
The Patent and Trademark Office (PTO) determined that the prior art cited, specifically the Saito Patent in combination with several others, did not anticipate or render obvious the claims of the '340 Patent related to a marine craft's portable drive assembly. The Saito Patent lacked the teaching of a timing belt, which was essential for the claims. Furthermore, the PTO reasoned that a person skilled in the art would not find it obvious to replace bevel gears with a timing belt or to use both together in the Saito Patent, as such modifications would lead to significant changes in the drive system. Claims 2-7 and 15-20, dependent on claim 1, and claims 9-13 and 21-23, dependent on claim 8, were also found allowable for the same reasons. The PTO issued an Ex Parte Reexamination Certificate affirming the validity of the '340 Patent on January 25, 2010, without considering the Torrey Patent or Scavenger motor.
However, the Court concluded that evidence presented at trial clearly and convincingly demonstrated that Claim 1 of the '340 Patent was obvious, despite the PTO's contrary determination. The Court noted that the PTO had been inconsistent in its views on the patent's validity throughout its prosecution and reexamination. While the PTO's confirmation of the patent carries a presumption of validity, this presumption was weakened by the trial evidence. The PTO's reliance on Dr. Matthews' declaration, which asserted that a skilled person would not re-orient the Saito engine for a timing belt, was undermined by Dr. Matthews' admission at trial that the Saito Patent had inherent weight and balance issues that would be apparent to someone skilled in marine motors.
Dr. Matthews indicated that a horizontal output shaft engine would be beneficial for reducing mass distance from a boat. He suggested that a belt or chain drive was the optimal method to connect a horizontal shaft engine to a horizontal propeller shaft. He acknowledged that using a timing belt instead of a v-belt for a high horsepower, high torque application would be an obvious modification. However, Dr. Matthews’s trial admissions revealed that his prior Declaration, which was pivotal for the PTO in the reexamination, inadequately assessed the validity of the '340 Patent in relation to the Saito Patent. He admitted to a "blinders on" approach, limiting his review to Saito’s specific instructions against horizontal engines, contrary to the Supreme Court's KSR decision, which requires a broader, integrative analysis of related patents, market demands, and general knowledge in the field. The Court found that Dr. Matthews’s Declaration did not fully address the '340 Patent's validity concerning Saito, Torrey, or the Scavenger motor. The PTO's evaluation lacked comprehensive evidence and did not reference the KSR standard, relying instead on insufficient materials from the patent owner and Dr. Matthews. Consequently, the Court concluded that the PTO's confirmation of the '340 Patent was based on incomplete evidence and did not adhere to the proper legal standard for obviousness.
The PTO's validity determination is undermined due to the lack of "material facts" as required by the KSR standard, leading the Court to conclude that its judgment holds diminished weight. Consequently, Defendants are permitted to demonstrate their invalidity defense with clear and convincing evidence. The Court assesses the claims of the '340 Patent, finding Claim 1 obvious based on prior art, which also extends to the remaining claims.
Claim 3, detailing a portable drive assembly with steering and throttle controls, is deemed obvious as trial testimony confirmed that such controls have been standard in outboard motors historically.
Claim 4, which describes a propeller shaft assembly with specific features including a vertical triangular fin and thrust bearings, is also found to be obvious, supported by prior art references demonstrating these elements.
Claim 5, specifying a portable drive assembly with timing pulleys compatible with a timing belt, is similarly ruled obvious based on existing prior art. Each claim’s invalidity stems from the Court's analysis of their obviousness in light of established technologies.
Claim 6 of the '340 Patent, which involves a portable drive assembly with a self-contained air-cooled utility engine featuring a horizontal output shaft connected to an upper drive assembly, has been deemed invalid due to its obviousness in light of prior art. This conclusion is supported by evidence from various patents that disclose similar components. Claim 7, which specifies a water-sealed drive housing, is similarly found to be invalid as obvious based on prior art references.
Claim 8 describes a portable outboard engine and drive assembly with several features, including a sealed housing containing a timing belt drive assembly and a pivotal attachment to a boat transom. The court determines that Claim 8 essentially reiterates the subject matter of Claims 1-7, thus rendering it obvious as well. The only novel aspect in Claim 8, the pivotal means for attachment, is also considered obvious based on prior art.
Claim 9 adds that the pivotal means allows for both horizontal and vertical pivoting, but does not introduce a significant innovation beyond the previous claims. The court's findings consistently reference prior patents to establish the obviousness of each claim in the '340 Patent.
Claim 8 of the '340 Patent is deemed invalid by the Court as obvious, including its specific mention of pivotal means for both horizontal and vertical pivoting, which is established in prior art. The Court references Mr. Kueny's testimony that such pivoting mechanisms have been standard in outboard motors for over a century. Claim 11, which builds on Claim 8 by detailing a propeller shaft assembly with thrust bearings and seals, is also found invalid due to obviousness in light of prior art, specifically noted in the Torrey Patent. Claim 12, which adds a rudder fin below the shaft housing to Claim 11, is similarly ruled as obvious. Lastly, Claim 13, which specifies a propeller shaft assembly exceeding 18 inches in length, is also deemed obvious based on prior art examples. The Court concludes that all asserted claims of the '340 Patent lack novelty due to their obviousness.
For the '035 Patent, Claim 1 describes a marine craft with a specific configuration including a transom, a portable drive assembly, and a propeller shaft, which extends beyond the drive housing.
Minor stylistic differences exist between Claim 1 of the '340 Patent and Claim 1 of the '035 Patent, but these do not impact the Court's analysis of obviousness. Claim construction is based on the patent documents' content. Notably, Claim 1 of the '035 Patent claims a marine craft with a hull that includes a transom, while the '340 Patent references a transom without claiming it. Additionally, the '035 Patent specifies a shaft housing extending over 18 inches beyond the drive housing, compared to the '340 Patent's requirement of at least 12 inches. Despite these minor substantive differences, the Court concludes they do not significantly influence the obviousness determination. The Court finds the content of Claim 1 in both patents to be essentially indistinguishable, as affirmed by testimony indicating no material differences when compared line for line. Both patents combine prior art elements—a short-tail design and a belt-driven motor—to create a predictable variation, substantiating the claim of obviousness. Regarding the '035 Patent’s prosecution history, it mirrors that of the '340 Patent, with the PTO rejecting the application due to nonstatutory obviousness-type double patenting, stating that the conflicting claims are not patentably distinct as they both describe a portable drive assembly for watercraft with similar components.
Claims 1-12 of the current application describe a marine craft featuring a hull with a transom and a previously mentioned portable drive assembly. Claims 1-6, 8, and 13 of the '340 Patent detail the attachment of this portable drive assembly to a watercraft's transom. It was deemed obvious to a skilled artisan at the time of invention to combine the watercraft with a transom and the portable drive assembly, as the assembly was already disclosed with means for such attachment. The PTO initially approved Claims 1-16 of the '035 Patent without explanation. On August 20, 2007, Mr. Brous-sard was permitted to submit a substitute specification and additional drawings, again without any explanation from the PTO.
On November 13, 2009, Defendant Mud Buddy requested a reexamination of the '035 Patent, which the PTO granted, noting that the Saito Patent had not been considered in prior examinations and raised substantial new questions of patentability. During reexamination, the PTO rejected all claims in the '035 Patent as obvious, primarily relying on the Saito, Watson, and Foreman Patents. However, on November 30, 2010, after reviewing similar materials that influenced the reexamination of the '340 Patent, the PTO confirmed all claims of the '035 Patent and added one new claim. The PTO's rationale for confirming the '035 Patent mirrored that of the '340 Patent, concluding that the Saito Patent did not teach the timing belt in the drive assembly and was not obvious to a skilled artisan due to significant required changes, such as altering the orientation of the drive system output shaft. Claims 2-17, which depend on claim 1, were allowable for the same reasons.
The '035 Patent's reexamination history shows that the PTO did not consider the Torrey Patent or the Scavenger motor when determining its validity. Gator Tail's defense relied heavily on arguments and evidence from the '340 Patent, leading the PTO to use similar reasoning to validate the '035 Patent. Concerns raised by the Court regarding the '340 Patent's prosecution also apply to the '035 Patent, particularly regarding the reliance on Dr. Matthews's Declaration, which was deemed insufficient for a comprehensive analysis of the patent's validity in the context of prior art, specifically Saito and Torrey. The Court concluded that the PTO's decision was based on incomplete information, undermining its authority.
As for the specific claims of the '035 Patent, Claim 3, which includes steering and throttle controls, was found to be invalid due to obviousness, as it closely mirrors Claim 3 of the '340 Patent. The Court noted that steering and throttle controls are standard features in outboard motors. Claim 4, which discusses a shaft housing with a rudder fin, was similarly deemed obvious, given the commonality of rudder fins in the field and references to prior art, including the Torrey Patent. Lastly, Claim 5, involving timing pulleys and belts, was also ruled invalid based on the same reasoning of obviousness.
The Court determines that various claims within the '035 Patent are invalid due to obviousness in light of prior art. Specifically, for Claim 1, the elements of timing pulleys compatible with a timing belt and the unobstructed nature of the timing belt are found to be obvious based on existing patents, particularly referencing the Pignata Patent. Claim 6, which includes a mounting bracket assembly for attaching a portable drive assembly to a transom, is also deemed obvious, supported by prior art exemplified by the Saito and Torrey Patents. Claim 7, disclosing a utility engine mounted on an engine plate and coupled to the upper drive assembly, is similarly invalidated as obvious, with references to the Torrey and Foreman Patents providing evidence. Claim 9's addition of steering and throttle controls to the portable drive assembly is found to be obvious given longstanding practices in outboard motor design, with supporting evidence from the Saito Patent. Finally, Claim 10, which includes a rudder fin in the shaft housing, is also invalidated as obvious.
The Court determined that the claims presented in the '035 Patent, specifically claims 7, 11, 12, and 13, are invalid due to obviousness based on prior art. The additional materials, such as the shaft housing with a rudder fin and the timing pulleys compatible with a timing belt, were deemed obvious when compared to existing patents like the Torrey and Pignata Patents. Claim 11 was found to be obvious as it included components that were already disclosed in prior art, such as unobstructed timing belts and pulleys. Similarly, Claim 12's features, including a mounting bracket assembly for the portable drive, were also considered obvious, referencing prior patents that illustrated similar mounting mechanisms. Lastly, Claim 13, which incorporated a first pivoting assembly for positioning the drive housing, was invalidated as obvious in light of the Saito Patent. Overall, the Court concluded that the innovations in the claims lacked sufficient novelty when evaluated against prior disclosures.
The Court determined that the asserted claims of the '035 Patent are obvious based on prior art, particularly demonstrated through the pivoting assembly and drive housing details referenced in the figures. Defendants established a prima facie case of obviousness, which shifts the burden to the patent applicant to present evidence of secondary considerations to counter this claim. Secondary considerations include commercial success, long-felt need, failure of others, skepticism, and unexpected results, which can be significant in determining non-obviousness but do not override a strong prima facie case. Gator Tail identified five secondary considerations to challenge this obviousness finding: commercial success, long-felt unsolved need, failure of others, copying, and unexpected results.
The Court noted that while commercial success can indicate non-obviousness, it must be linked to the unique aspects of the claimed invention rather than other market factors. The patent owner must establish a clear connection between sales and the claimed invention's characteristics to substantiate claims of commercial success.
Commercial success tied to a feature known in prior art does not support non-obviousness. Gator Tail's argument that its product's success demonstrates non-obviousness is unconvincing, as it fails to specify which unique characteristics of its invention contributed to its sales. The assertion that the "short-tail belt-driven mud motor" is commercially successful is supported only by anecdotal evidence of customer preference, lacking a clear connection to the claimed invention's success. Without identifying specific characteristics leading to this success, the court cannot determine if the success is attributable to the claimed invention.
Additionally, Gator Tail asserts that its invention meets long-felt but unsolved needs, a secondary consideration for non-obviousness. However, if the differences between the claimed invention and prior art are minimal, any purported long-felt need cannot be considered unsolved. Gator Tail identifies two needs its motor addresses: increased power and maneuverability compared to traditional motors, and year-round usability. While the court acknowledges the improvements claimed, it finds insufficient evidence to support that these advancements address long-felt needs, particularly in light of prior art, specifically Saito, which purportedly offers similar advantages. Thus, the court remains skeptical that Gator Tail’s motor resolves unmet needs.
Mr. Broussard acknowledged that the Pro-Drive motor, derived from the Saito Patent and available over a year before Gator Tail's motor launch, provided enhanced maneuverability, ease of use, and adaptability for both shallow and open water. He argued that since Pro-Drive already addressed key operational needs, there was no long-standing issue to resolve regarding power and maneuverability. The only remaining need identified by Gator Tail was for a motor usable in a single season; however, Broussard testified that his motor could operate year-round, an improvement over traditional long-tail motors. Yet, there was no evidence to suggest that Pro-Drive could not also be used year-round, making it difficult for the court to conclude that this feature represented an unmet need.
Additionally, Gator Tail cited the failure of others to create a horizontal drive shaft short-tail mud motor design, attributing a revolutionary change in the mud motor field to Saito's short-tail design. Broussard's adaptation of a horizontal output engine, while innovative, lacked evidence to show it significantly improved upon Saito's vertical output engine or connected to the failures of competitors. As a result, Gator Tail's argument did not sufficiently establish a link between the evidence and the merits of the invention, diminishing its weight as evidence of nonobviousness. Furthermore, the court found Gator Tail's claim that competitors failed to develop a short-tail mud motor with a horizontal output engine between the issuance of the Saito Patent in 1998 and Broussard's project in 2002 to be unconvincing. Testimony from Mr. Foreman indicated that he fabricated the first version of the Mud Buddy short-tail belt drive in spring 2001, supported by multiple witnesses, contradicting Gator Tail's assertions.
Mr. Balding fabricated a "short tube" for Mr. Foreman in mid-2001, while Mr. Saxon discussed a short-drive belt-driven motor with Mr. Foreman shortly after the Louisiana Sportsman Show in March 2001. Additionally, Mr. Hendricks discussed a similar motor with Mr. Foreman in the summer or fall of 2001. This evidence suggests that Mr. Foreman successfully developed a prototype of the Mud Buddy short-tail belt-drive motor as early as 2001, indicating that the field was not plagued by a failure to develop such motors prior to Mr. Broussard's efforts in 2002.
Gator Tail claims that Mr. Broussard's invention produced unexpected results that surprised dealers and customers. However, the Federal Circuit requires the patentee to demonstrate that the claimed range achieves unexpected results compared to prior art. Gator Tail fails to provide quantitative evidence comparing Mr. Broussard’s invention with existing short-tail and long-tail motors, relying instead on vague testimony that lacks specificity regarding performance metrics like top speeds and thrust loads. Consequently, the Court finds the evidence inconclusive regarding whether Mr. Broussard’s invention achieved unexpected results.
Regarding evidence of copying, Gator Tail asserts that the success of Mr. Broussard's invention attracted imitators, which is relevant to assessing non-obviousness. However, copying alone is only weak evidence without other compelling secondary considerations. Gator Tail has not presented such evidence, and it is noted that Mr. Foreman developed the Mud Buddy motor either before or simultaneously with Mr. Broussard's Gator Tail motor. The existence of independently developed inventions within a short timeframe suggests that the claimed apparatus may result from ordinary mechanical or engineering skill, leading the Court to conclude that the evidence does not sufficiently support a finding of non-obviousness for the patents in question.
The Court concludes that the evidence indicates the patents-in-suit are obvious due to their predictable combination of prior art elements, specifically Saito and Torrey, which aligns with their established functions. Consequently, the asserted claims are deemed invalid for obviousness. Additionally, the Defendants present further invalidity arguments: lack of enablement, lack of written description, and lack of definiteness for each patent. Under Section 112 of Title 35, a patent specification must fully describe the invention and its use, enabling skilled individuals to replicate it and demonstrating the inventor's possession of the claimed invention at the application time. The Court notes that although enablement and written description are often interrelated, they fulfill distinct legal requirements. Defendants argue that the patents do not adequately describe or enable a segmented propeller shaft, as defined in the Court's Markman Hearing Ruling. However, the Court disagrees, asserting that the patents sufficiently meet the written description requirement, as the term “drive shaft” is recognized within the relevant skilled community to include segmented shafts connected by universal joints.
Mr. Broussard's testimony indicated no intent to exclude the use of a universal joint in the propeller shaft. Testimonies from Go-Devil's owner, Warren Coco, and Mud Buddy's manager, Glenn Foreman, revealed that both experimented with various universal joint designs in their surface drive motors. The Court concluded that a person skilled in mud motor fabrication would interpret Mr. Broussard’s patents as encompassing a segmented propeller shaft, allowing for practical use without undue experimentation. Therefore, the patents were deemed sufficient for enablement and written description.
Regarding the '340 Patent, the Defendants claimed it lacked written description because the term "engine mounting plate" was not present in the original application. The Court concurred, noting that Mr. Broussard added this term through an amendment after his application was rejected. The original application did not describe an engine mounting plate, and amendments must be supported by the original specification. The Court emphasized that any added material must be inherently contained in the original application, which means it must be recognized as present by someone skilled in the art. Mr. Broussard's initial specification discussed the engine's vertical mounting but did not include details about the engine mounting plate.
The description of the engine mounting in the '340 Patent is ambiguous, particularly regarding the term "vertically mounted," which implies a connection through a “mounting flange” but lacks clarity. Mr. Broussard's request to amend Claim 1 indicates that an external engine mounting plate is necessary, contradicting prior interpretations. Dr. Matthews acknowledged that while unusual, mounting on a vertical surface is possible, complicating the interpretation of the original specification. Consequently, the Court concluded that the necessary engine mounting plate is not mandated by the original application, leading to a failure of the written description requirement.
Additionally, the Defendants argue that Claims 1 and 8 lack a written description for a propeller shaft housing "extending at least 12 inches beyond said drive housing," as this limitation is absent from the original specification. However, the Court disagrees, noting that the original application claimed a propeller shaft exceeding 18 inches in length, and the specification supported this claim. Amendments made by Mr. Broussard after the PTO's rejection introduced the 12-inch limitation but did not update the specification accordingly, resulting in a discrepancy between the claims and the specification. Mr. Broussard later attempted to address this inconsistency during reexamination by adding claims that described a propeller shaft and housing exceeding 18 inches.
The Court determined that the discrepancy between the claims of the '340 Patent and its specification does not render it invalid for lack of written description. Amendments made by Mr. Broussard, specifying a propeller shaft “extending at least 12 inches,” are supported by the original specification, which indicates a need for a length “in excess of 18 inches.” Thus, the new claims find adequate support within the original document, contradicting the Defendants' arguments.
Regarding the Defendants' claim of indefiniteness, they argue the Broussard Patents' use of a belt and pulley drive system, with an undefined housing length, allows for a variety of design configurations. The Patent Act requires that a patent specification clearly defines its claims. Historically, the Federal Circuit defined indefiniteness as a claim being ‘not amenable to construction’ or ‘insolubly ambiguous.’ However, the Supreme Court, in Nautilus, Inc. v. Biosig Instruments, Inc., established a stricter standard, stating a patent is invalid for indefiniteness if its claims do not reasonably inform skilled individuals about the scope of the invention. This new standard emphasizes clear public notice and avoids ambiguity that could hinder innovation.
The Supreme Court has rejected a standard allowing for a "trial and error" approach by skilled artisans in determining patent scope. Upon reviewing the claims, specifications, and prosecution histories of the '340 and '035 Patents, the Court found that Claims 1, 8, and 14 of the '340 Patent and Claim 1 of the '035 Patent do not meet the new definiteness standard. The claims describe an “elongated drive housing” and “a lower driven assembly” with specific lengths for the propeller shaft—at least 12 inches for the '340 Patent and over 18 inches for the '035 Patent. The Court previously defined "elongated drive housing" as one that is longer in one dimension than in the others and accepted that "drive shaft" includes segments connected by universal joints. However, these definitions, coupled with the absence of maximum length limitations, broaden the patents' scope to encompass traditional long-tail motors. This ambiguity persists even when considering the patents' specifications, which emphasize the necessity for significant length extensions beyond 18 inches based on engine horsepower. Expert testimonies at trial confirmed that the Broussard Patent is not limited to short-tail designs, and the claims do not specify maximum lengths for the propeller shaft. Additionally, testimonies highlighted the development process involving combining features from both short-tail and long-tail motors.
A motor was designed with the housing elevated six inches compared to the Gator Tail motor, as outlined in the trial testimony. This development involved a "trial and error" methodology, akin to what the Supreme Court rejected in Nautilus. The court determined that relying solely on the claims, specifications, and prosecution history of the '340 and '035 Patents left uncertainty about whether a skilled artisan would recognize the scope of Mr. Broussard’s invention, particularly concerning a hybrid motor tested by Go-Devil. Consequently, the court found that Claims 1, 8, and 14 of the '340 Patent and Claim 1 of the '035 Patent failed to provide reasonable certainty about the invention's scope, leading to their invalidation for lack of definiteness under the Nautilus standard.
The court concluded that all asserted claims of the patents-in-suit are invalid due to obviousness, with the '340 Patent specifically invalidated for lack of written description. Additionally, Claims 1, 8, and 14 of the '340 Patent and Claim 1 of the '035 Patent are invalid due to lack of definiteness. The court granted the defendants' requests for declaratory judgment of invalidity and instructed the Clerk of Court to enter final judgment in favor of the defendants against the plaintiffs in the consolidated civil actions. The court also directed that this order be documented in the respective case dockets.
The propeller is designed to be positioned behind the boat, allowing it to operate effectively in shallower waters while avoiding debris, particularly relevant in the Far East. Plaintiffs initially sued Defendants for infringing three patents but have since dropped the claim regarding U.S. Patent Number 7,048,600. The defendants are accused of willful infringement of claims from U.S. Patents Nos. 7,052,340 and 7,297,035. Although the '340 Patent does not list an assignee, Gator Tail is accepted as the assignee based on the parties’ stipulation. Plaintiffs can claim the benefit of the filing date of the '340 Patent for the '035 Patent, but all relevant prior art predates the '340 Patent's application date. Both patents contain independent and dependent claims, and while Mud Buddy argues that the analysis can focus on independent claims, the law dictates that each claim is presumed valid independently. Therefore, the Court must evaluate the validity of all claims in light of prior art, determining if they are obvious and thus invalid.
The Court's Markman Hearing Ruling defined several terms related to the patent in question. "A portable drive assembly having means for temporary attachment" is characterized as being easily movable between crafts without significant effort or alteration. An "elongated drive housing" is specified as having one dimension greater than the other two. An "engine mounting plate" is described as a surface for engine attachment, with the distinction that an "engine mounting plate attached externally to [the] drive housing" is affixed to the outside of the elongated drive housing. Additionally, an "engine mounting plate located adjacent [to the] upper drive assembly" is positioned near the upper assembly without constraints regarding its placement relative to the lower driven assembly. A "shaft housing attached to [the] drive housing" entails direct attachment, while "a shaft housing attached to [the] drive housing adjacent [the] driven assembly" indicates proximity to the lower assembly. The term "driven assembly extending at least 12 inches beyond [the] drive housing" means the shaft housing's far end must be at least 12 inches from the drive housing.
Dr. Matthews testified that a skilled person would not consider replacing Saito's vertical engine with a horizontal one to address balance issues; however, his earlier deposition contradicted this view, suggesting a horizontal engine was preferable in certain contexts. At trial, he admitted that his deposition statement was incorrect and acknowledged the benefits of a horizontal output shaft engine for balance. The Court found that his deposition and trial admissions undermined his initial stance.
Lastly, the Court examined the Scavenger Backwater motor, which features a "see through guard" around its components. However, this guard was determined not to be equivalent to the "elongated drive housing" as defined in the '340 Patent since the claim does not specify that the housing must be structural.
The Court determines that a limitation is necessary based on the '340 Patent's specification, as established in E.I. du Pont de Nemours Co. v. Phillips Petroleum Co. Interpretation of patent claims can rely on the specification, but limitations not required by the specification should not be inferred. Mr. Broussard disclaimed authorship of the Marsh Runner Project Report despite being part of the project group that submitted it and receiving an “A” grade. His name appears on the report's cover, which the Court accepts as evidence of his responsibility for its content. The Court finds that Mr. Broussard’s motor represents a predictable variation of prior art elements, as stated in KSR v. Teleflex. The PTO approved 14 of the 15 claims from the patent application, initially rejecting it for obviousness before issuing the '340 Patent after amendments. During reexamination, the PTO rejected all claims but later confirmed the patent and added nine claims based on additional information. The Court previously misattributed the KSR analysis to the PTO due to an incomplete record, as the PTO had considered prior art in its reexamination under KSR. Gator Tail's submissions to the PTO included remarks discussing KSR, which the Court referenced in denying summary judgment. The validity of the '340 Patent and the related '035 Patent was confirmed based on the patent owner’s responses during the reexamination process.
The PTO's Statements for confirming the validity of the '035 and '340 patents indicate that Gator Tail's "Remarks" were misattributed in the Court's January 6, 2014 Order. The Court concluded that the PTO relied on Gator Tail’s "Remarks" when affirming the patents, but these remarks were actually part of a later response submitted on October 22, 2010, not the August 26, 2010 response referenced by the PTO. The August response did not address KSR, which was crucial to the evaluation of patent validity. The Court acknowledges a lack of complete reexamination history in its previous analysis, leading to doubts about whether the PTO properly considered KSR’s guidance.
Regarding the remaining claims of the '340 Patent, the PTO's judgment is viewed as losing significant weight, allowing Defendants to challenge their validity with clear and convincing evidence. Definitions of key terms from the patent include: "thrust bearings" as tapered roller bearings for extreme loads; "horizontal output shaft" as a shaft exiting the engine, horizontally positioned; "engine attached to the engine mounting plate" as any secure mounting method; and "water sealed" or "sealed" as designed to resist water intrusion. Additionally, "pivotal means" refers to the motor's ability to rotate on both vertical and lateral axes.
The term "engine mounted to the engine-mounting plate" denotes that the engine is secured to the mounting plate in a manner that maintains it in an operational position. "A plurality of thrust bearings and seals at each end of said shaft housing" refers to having multiple thrust bearings and seals located at both ends of the propeller shaft housing. "A shaft housing extending in excess of 18 inches beyond the drive housing" specifies that the far end of the shaft housing must be at least 18 inches away from the drive housing. The '035 Patent was amended to include Claim 17 during re-examination. The PTO cover sheet for the reexamination lacks a mailing date, and the decision does not specify when it was issued. Gator Tail presented different versions of Dr. Matthews’s Declaration for the reexaminations of the '340 and '035 Patents, though the variations did not materially influence the PTO's or the Court's reasoning. The examiner's analysis on reexamination noted that claims 2-17 are allowable because they depend on claim 1. Consequently, the Court finds the PTO's judgment regarding the remaining claims in the '035 Patent to be less persuasive, allowing defendants to argue for the claims' invalidity with clear and convincing evidence. A "mounting bracket" is defined as the structure for temporarily attaching the portable drive assembly to the transom, while a "mounting bracket assembly" includes both the mounting bracket and a pivotal assembly for horizontal positioning. A "pivotal assembly" is described as a mechanism for pivoting the motor to steer the boat. The Court also addressed the ambiguity in the drawings of the '340 Patent, particularly regarding whether certain lines depict a "cowling" or an "engine mounting plate." The Court concluded that these drawings are inherently ambiguous, further complicated by the original specification suggesting the engine is mounted "vertically" or "in a cowling."
The Court expresses dissatisfaction with the assertion that the missing descriptive matter must be present in the original application’s specification, despite the accompanying drawings. Gator Tail claims the Court previously ruled that the engine mounting plate is enabled in its Markman order, but the referenced ruling pertains to the '035 Patent, not the '340 Patent. Defendants initially raised the lack of definiteness issue during summary judgment but did not address it in their post-trial briefs, which focused solely on arguments of obviousness, lack of enablement, and written description. Following the Supreme Court's decision in Nautilus, Inc. v. Biosig Instruments, the Court requested supplemental briefs on the definiteness issue, determining that all parties had the opportunity to fully address it. Consequently, the Court concludes that the definiteness argument is properly raised and not waived, referencing Fresenius USA, Inc. v. Baxter Int’l, Inc. for support.