MHL Custom Wins Against Waydoo in Patent Lawsuit Over eFoil Design | Whitcomb Selinsky, PC
MHL Custom took legal action against Waydoo for allegedly infringing on two U.S. Patents related to a type of personal hydrofoil watercraft called an eFoil. Following a jury trial in March 2023, where certain patent claims were examined, it was determined that Waydoo had indeed infringed on MHL’s patents and had to pay a $500 royalty per board sold, totaling $1,334,000 in damages.
Waydoo submitted post-trial motions looking to challenge several key aspects including the validity of a prior art report called the Evolo Report, the enablement of MHL’s patents, the alleged infringement of said patents, and whether any such infringement was willful. Waydoo sought renewed judgment as a matter of law (JMOL) or a fresh trial to address these concerns.
Evaluating Waydoo’s Prior Art Claim
During the trial and now at JMOL, a key point of contention is whether the “Evolo Report” had prefigured the patent claims in question.
In the context of patent law, when a claim is described as “prefigured,” it means that the subject matter of the claim was already disclosed or anticipated by prior art. Specifically, it suggests that the elements or features of the patent claims were already known or described in existing documents, publications, or other sources before the patent application was filed.
In the sentence you provided, the dispute revolves around whether the “Evolo Report” had already disclosed the same concepts or features that are now being claimed in the patent. If the report indeed prefigured the patent claims, it could impact the validity or scope of those claims during the trial and subsequent proceedings.
The jury did not get to the core of this issue as they determined that the Evolo Report was not easily accessible to the public and lacked sufficient detail to be functional, and these two reasons alone justify the verdict. Waydoo is contesting both these conclusions, but to make any headway, they need to succeed on both fronts. Let’s delve into each finding individually.
Public Access to the Evolo Report
The Evolo Report, documenting the final project of engineering students in Sweden, aimed to create a craft resembling an eFoil. At issue was whether this report, dated before the patents in question, was publicly accessible. Waydoo claimed it was, presenting evidence such as online posting and downloads. However, MHL argued that mere online presence does not guarantee public accessibility.
The accessibility of a reference as a ‘printed publication’ is a legal assessment grounded in factual determinations. In essence, for a reference to be deemed publicly accessible, it must have been disseminated or made available to the extent that individuals with interest and expertise in the relevant field, applying reasonable effort, could locate it. The responsibility lies with the party challenging the patent to prove that a specific document is a printed publication with clear and convincing evidence.
MHL contended that Waydoo did not sufficiently demonstrate the public accessibility of the Evolo Report. While the report was technically accessible online, true public accessibility demands more. Waydoo’s assertions about access through Google and a Swedish magazine lacked substantial proof of how easily interested parties could locate the report.
On assessment, the evidence provided does not convincingly establish that the Evolo Report was publicly accessible. The lack of clarity on the ease of access through the magazine or Google search raises doubts. While Waydoo argued its evidence was unchallenged, the burden of proving public accessibility rested with them, and this burden was not met sufficiently.
Consequently, Waydoo’s motion regarding the Evolo Report’s public accessibility is denied. The jury’s decision that the report was not publicly accessible stands, as it is supported by the available evidence. Thus, the request for a new trial on this matter is rejected.
Enablement of the Evolo Report
When it comes to Patent Law, it is crucial that the patent specification enables the full scope of the invention as outlined in its claims. For a patent claim to be considered “enabled,” the specification must provide a clear written description of the invention, including how to make and use it. The enablement requirement hinges on whether a person skilled in the field, after reading the specification, can practice the invention without resorting to undue experimentation. Several factors determine this, such as the level of detail in the guidance provided, the nature of the invention, the existing knowledge in the field, and the predictability of the technology involved.
During trial, the jury concluded that the Evolo Report was not enabled. The burden initially lies with the patentee to show that a prior art reference is indeed enabled. However, if the patentee presents evidence of enablement, the burden shifts to the challenging party to prove invalidity conclusively.
Waydoo contends that MHL failed to demonstrate enablement for the Evolo Report. They cited technical evidence suggesting that crucial information required for stability was inadequately addressed, arguing that undue experimentation would be necessary to replicate the invention successfully. Waydoo claimed that the instructions in the Evolo Report to use a more powerful motor for stability would make it enabled. They also argue that textbooks from the 1960s provide similar stability information as the patent specification, suggesting that the Evolo Report should also be considered enabled.
Despite Waydoo’s arguments, there is substantial evidence supporting the jury’s conclusion that the Evolo Report is not enabled. MHL presented evidence through Mr. Barry that the Evolo Report failed to address stability adequately and did not consider it in the design. Mr. Barry’s testimony highlighted the deficiencies in the Evolo Report regarding stability, emphasizing that the recommendations made in the report did not lead to a stable watercraft.
Overall, the jury’s determination appears well-supported by the evidence presented, as the Evolo Report’s shortcomings in addressing stability issues and discrepancies between stated requirements and actual performance paint a picture of non-enablement. Accordingly, Waydoo’s motions for judgment as a matter of law and for a new trial were denied.
Clarity and Validity of the Patents
Waydoo argues that the patents in question are not adequately explained or detailed for someone skilled in the field to understand and implement the technology they describe. They point to the fact that the Evolo report aspects like stability and hydrofoil design in more detail than the patents. Waydoo suggests that if the Evolo Report, which goes beyond what the patents explain, is not clear enough, then the patents themselves must also be lacking in clarity.
Waydoo insists that the patents should have provided all necessary information rather than leaving it to an expert to figure out. They reference a case where a similar situation was deemed insufficient because essential details were missing. However, in this instance, while the Evolo Report may offer additional insights not present in the patents, Waydoo fails to prove that understanding and applying the technology would require excessive experimentation without the extra information. In a previous case, more concrete evidence was presented to show that crucial information was absent, unlike here.
Additionally, Waydoo argues that the patents don’t sufficiently explain how to create dual-wing crafts, therefore not covering all aspects outlined in the claims. This argument was not strongly made earlier and might have been overlooked. Nonetheless, it is argued that the patents do not provide enough guidance on setting up two hydrofoil wings for stability. Waydoo claims the patents even undermine the idea of dual-wing hydrofoils, suggesting they are only useful for training purposes. This new argument challenges the viability of the claims.
Despite these claims, it seems Waydoo struggles to prove that the patents are indeed unclear. They mention a lack of explicit instructions or practical examples in the patents, but established cases show that such examples are not obligatory. Moreover, the suggestion that the patents discredit dual-wing hydrofoils is refuted by the text itself, which simply highlights certain tradeoffs in design choices. The specifications actually discuss how a dual-wing hydrofoil can enhance stability, particularly for training purposes, without solely limiting its applicability.
The overall impression is that Waydoo has not convincingly demonstrated that the patents are too vague to be considered enabled. Hence, their motion challenging this aspect is rejected. Similarly, the jury’s decision in favor of the patents’ clarity is upheld, as there is no substantial evidence to the contrary. Consequently, Waydoo’s request for a new trial is dismissed.
Infringement of the ‘659 Patent
MHL alleged that Waydoo infringed the ‘659 patent based on testimony that Waydoo eFoils were dynamically stable. Waydoo argues that the evidence presented insufficient to prove stability or patent infringement, as the only evidence was videos showing use of the eFoils and an eigenvalue analysis. The eigenvalue analysis showed positive sigma values, indicating instability, and Waydoo contended the videos were unscientific and too short to assess stability.
The dispute centers around whether the eigenvalue analysis demonstrates that Waydoo’s eFoils are dynamically unstable. Mr. Barry’s eigenvalue analysis, which indicated some instability, was explained by the existence of real-world damping effects not considered in the program. These effects, if factored in, would likely alter the results. Despite this, Mr. Barry maintained that his analysis supported the eFoils’ stability, and the court agreed.
Although Waydoo argues that stability cannot be judged solely from videos, testimonies, including Mr. Barry’s observations and analyses, were crucial in the case. The jury had the opportunity to assess both the video evidence and the technical analysis to decide on the eFoils’ stability.
Ultimately, the jury’s decision to consider Mr. Barry’s testimony and analysis, alongside conflicting expert opinions, was deemed valid. The judge upheld the jury’s ruling, denying Waydoo’s motions for judgment as a matter of law and a new trial.
Determining “Willful” Patent Infringement
Waydoo argues that there isn’t enough proof to show that their patent infringement was intentional. They claim that MHL failed to show that Waydoo deliberately meant to violate their patents. Waydoo states that during the trial, the only evidence presented were warning letters sent by MHL to Waydoo in early 2019, but Waydoo denies receiving these letters. Additionally, Waydoo argues that even if they had received the letters, the warnings were not specific enough about the infringement, such as lacking detailed claim charts. Waydoo emphasizes that none of the letters mentioned the specific product they were selling, the Flyer ONE.
On the other hand, MHL believes there is substantial evidence to prove that Waydoo’s infringement was intentional. They argue that the short timeframe between Waydoo’s establishment and the development of their market-ready product suggests that Waydoo may have copied MHL. MHL asserts that the cease-and-desist letters sent to Waydoo informed them of the patent infringement back in 2019. These letters were sent to Waydoo’s email address and physical address.
According to legal standards, “willfulness” in infringement cases means deliberate or intentional violation. Looking at the facts favoring MHL’s side, it’s reasonable to assume that Waydoo received the warning letters since they were sent to the email address listed on Waydoo’s website.
Considering the content of the cease-and-desist letters, they seem specific enough for the jury to conclude that Waydoo knowingly infringed on the patents. The letters specifically mentioned the patents in question and referred to the Way doo Flyer, which was the product being promoted by Waydoo at that time.
Waydoo argues that without a detailed claim chart in the letters, it’s not sufficient to establish their knowledge of infringing on the patents. However, precedent shows that a mention of the patents and the product being marketed should be enough to indicate awareness of the infringement.
Although Waydoo started marketing the Flyer One after the 2019 letters were sent and they claim it wasn’t specifically mentioned, this does not automatically absolve them of intentional infringement. The lack of distinction between the Flyer One and the previously marketed Flyer in terms of patent infringement could still hold Waydoo accountable.
In conclusion, there is substantial evidence to suggest that Waydoo was aware of the patents they were infringing and that their products violated those patents. Therefore, Waydoo’s motion for judgment as a matter of law is denied. Similarly, the jury’s decision on willful infringement is upheld as it is supported by the evidence presented.
Final Ruling
For the reasons discussed above, Waydoo’s motion for renewed judgment as a matter of law and their motion for a new trial were both denied.
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