DCT
1:21-cv-00091
MHL Custom Inc v. Waydoo USA Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MHL Custom, Inc. (Puerto Rico)
- Defendant: Waydoo USA, Inc. (Delaware) and Shenzhen Waydoo Intelligence Technology Co., Ltd. (China)
- Plaintiff’s Counsel: Cooch and Taylor, P.A.
- Case Identification: 1:21-cv-00091, D. Del., 01/27/2021
- Venue Allegations: Venue is alleged in the District of Delaware because Defendant Waydoo USA has a place of business in the district and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Waydoo Flyer and Waydoo Flyer ONE personal hydrofoil watercraft infringe two patents related to weight-shift controlled, passively stable hydrofoil designs.
- Technical Context: The technology concerns electric-powered hydrofoil surfboards, or "eFoils," a recreational watercraft category that uses an underwater wing to lift the board out of the water, reducing drag and enabling high speeds with low power.
- Key Procedural History: Plaintiff alleges it sent three cease and desist letters to Defendant Shenzhen Waydoo in 2019, notifying them of the patents-in-suit and their alleged infringement. The complaint states these letters were ignored, which may form the basis for its willfulness allegations. Plaintiff also asserts its own commercial products ("Lift eFoil") are virtually marked with the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2013-10-10 | Earliest Priority Date for ’044 and ’659 Patents |
| 2016-06-07 | ’044 Patent Issued |
| 2017-03-07 | ’659 Patent Issued |
| 2019-01-31 | First Cease and Desist Letter Sent by Plaintiff |
| 2019-04-09 | Second Cease and Desist Letter Sent by Plaintiff |
| 2019-04-12 | Third Cease and Desist Letter Sent by Plaintiff |
| 2020-07-02 | Waydoo USA, Inc. Incorporated |
| 2021-01-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,359,044 - "Weight-Shift Controlled Personal Hydrofoil Watercraft," issued June 7, 2016
The Invention Explained
- Problem Addressed: The patent describes two problems with prior art watercraft. First, powered surfboards required significant power, making battery operation for extended periods impractical. Second, prior hydrofoil devices relied on mechanical controls like rudders or movable surfaces for steering, which detracts from the intuitive "surfing feel" that comes from controlling a board via weight shift alone (’044 Patent, col. 1:36-59).
- The Patented Solution: The invention is a personal hydrofoil watercraft where both longitudinal (pitch) and directional (yaw) control are achieved solely through the rider's weight shift. This is enabled by a hydrofoil specifically designed for "passive static stability," which eliminates the need for any movable control surfaces or a mechanical steering system, thereby aiming to replicate the feel of surfing or snowboarding (’044 Patent, Abstract; col. 2:7-15).
- Technical Importance: The technology's contribution was to create a hydrofoil system that is inherently stable, allowing a rider to control it intuitively with their body, which in turn made a mechanically simple, battery-powered eFoil a viable product (’044 Patent, col. 2:7-15).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶26).
- Essential elements of Claim 1 include:
- A passively stable, weight-shift controlled personal hydrofoil watercraft
- A flotation device (board) controlled via weight shift of the user
- A strut fixedly connecting the flotation device to a hydrofoil
- A hydrofoil fixedly interconnected with the strut, having no movable surface and designed to provide passive static stability controlled solely by weight shift of the user
- A propulsion system connected to the hydrofoil
- The watercraft having no movable steering system
- The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶25).
U.S. Patent No. 9,586,659 - "Powered Hydrofoil Board," issued March 7, 2017
The Invention Explained
- Problem Addressed: As a continuation of the '044 Patent, the '659 Patent addresses the same technical problems: the high power requirements of conventional powered surfboards and the non-intuitive, mechanical steering systems of prior hydrofoil designs (’659 Patent, col. 1:47-56; col. 2:10-16).
- The Patented Solution: The solution is materially the same as in the parent patent: a personal hydrofoil watercraft that is controlled by the rider's weight shift. The design relies on a hydrofoil with inherent passive stability to eliminate the need for rudders or other movable control surfaces, providing a "surfing feel" (’659 Patent, Abstract; col. 2:7-16).
- Technical Importance: This patent continues the technical contribution of its parent, focusing on a mechanically simple and intuitive control paradigm for powered hydrofoil watercraft (’659 Patent, col. 2:10-16).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶42).
- Essential elements of Claim 1 include:
- A passively stable, weight-shift controlled personal hydrofoil watercraft
- A flotation device (board) with specific dimensions and sections
- A strut with an upper end fixedly interconnected with the flotation device
- A hydrofoil fixedly interconnected with the strut, having no movable surface
- A propulsion system connected to the hydrofoil
- The watercraft having no movable steering system
- The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶41).
III. The Accused Instrumentality
Product Identification
- The "Waydoo Flyer" and "Waydoo Flyer ONE" personal hydrofoil watercraft (collectively, the "Accused Products") (Compl. ¶12).
Functionality and Market Context
- The Accused Products are electric-powered personal hydrofoil watercraft consisting of a board, a strut, and a hydrofoil assembly with an integrated propeller (Compl. ¶12). The complaint alleges that these products are "passively stable, weight-shift controlled personal hydrofoil watercraft" (Compl. ¶¶28, 44). An image in the complaint depicts a user riding the accused Waydoo Flyer ONE, appearing to lean to maneuver the watercraft (Compl. ¶12). The complaint alleges Defendants have marketed and sold the Accused Products in the U.S. through exhibitions and a Kickstarter campaign (Compl. ¶16).
IV. Analysis of Infringement Allegations
’044 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A passively stable, weight-shift controlled personal hydrofoil watercraft, comprising: | The complaint alleges the Accused Products are passively stable and weight-shift controlled. An image shows a rider leaning on the board, suggesting weight-shift control. | ¶28, ¶12 | col. 2:7-15 |
| a flotation device that has a fore-aft length greater than a lateral width...the flotation device being controlled via weight shift of the user; | The Accused Products have a board-like flotation device that the complaint alleges is controlled by the user's weight shift. | ¶28 | col. 3:6-26 |
| a strut having an upper end and a lower end, the upper end fixedly interconnected with the flotation device... | A product image of the Waydoo Flyer shows a strut connecting the board to the hydrofoil assembly. The complaint alleges it is fixedly interconnected. | ¶29, ¶12 | col. 3:45-54 |
| a hydrofoil fixedly interconnected with the lower end of the strut, the hydrofoil having no movable surface and designed to provide passive static stability controlled solely by weight shift of the user; | The complaint alleges the hydrofoil on the Accused Products has no movable surfaces and provides stability controlled by user weight shift. | ¶30 | col. 3:55-66 |
| a propulsion system for propelling the watercraft...connected to the hydrofoil; and | The complaint alleges a propulsion system is connected to the hydrofoil, which is consistent with product images showing a propeller integrated with the hydrofoil assembly. | ¶31, ¶12 | col. 4:4-7 |
| the watercraft having no movable steering system. | The complaint alleges the Accused Products have no movable steering system. | ¶32 | col. 2:10-15 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern the scope of "passively stable" and "designed to provide passive static stability controlled solely by weight shift of the user." The defense may argue that its hydrofoil design does not meet the specific technical and mathematical criteria for passive stability described in the patent's specification (e.g., ’044 Patent, col. 6:3-19).
- Technical Questions: A factual question is whether the Accused Products are indeed "controlled solely by weight shift." The evidence needed to prove this would involve technical analysis of the product's hydrodynamic properties.
’659 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A passively stable, weight-shift controlled personal hydrofoil watercraft, comprising: | The complaint alleges the Accused Products meet this description. The preamble may inform the construction of other terms. | ¶44 | col. 2:7-16 |
| a flotation device that has a fore-aft length greater than a lateral width... | The Accused Products have a board that appears to meet these general physical descriptions. | ¶44 | col. 3:15-32 |
| a strut having a upper end and a lower end, the upper end fixedly interconnected with the flotation device... | The complaint alleges the Accused Products have a strut fixedly connected to the board, as shown in product images. | ¶45, ¶12 | col. 3:52-61 |
| a hydrofoil fixedly interconnected with the lower end of the strut, the hydrofoil having no movable surface; | The complaint alleges the Accused Products' hydrofoil is fixed and has no movable surfaces. | ¶46 | col. 4:1-11 |
| a propulsion system for propelling the watercraft...wherein the propulsion system is connected to the hydrofoil; and | The complaint alleges the Accused Products have a propulsion system connected to the hydrofoil. | ¶47, ¶12 | col. 4:12-17 |
| the watercraft having no movable steering system. | The complaint alleges the Accused Products lack a movable steering system. | ¶48 | col. 2:10-16 |
- Identified Points of Contention:
- Scope Questions: Compared to Claim 1 of the ’044 Patent, Claim 1 of the ’659 Patent is broader because it omits the requirements that the flotation device is "controlled via weight shift" and that the hydrofoil is "designed to provide passive static stability." The infringement analysis may therefore be simpler, focusing on the structural elements and the absence of a "movable steering system."
- Technical Questions: The primary technical question for this patent will be whether any component of the Accused Products constitutes a "movable steering system."
V. Key Claim Terms for Construction
The Term: "passively stable" (preamble of both patents; body of ’044 Patent, Claim 1)
- Context and Importance: This term is the technological core of the patents. Its construction will likely determine whether the Accused Products' design infringes, particularly with respect to the ’044 Patent. Practitioners may focus on this term because the patent provides a highly technical definition that may be a point of contention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the concept qualitatively, stating the invention "exploits passive stability to obviate the necessity for mechanisms or active control systems" (’044 Patent, col. 5:61-64). This could support a less rigid, functional definition.
- Evidence for a Narrower Interpretation: The specification details specific aerodynamic conditions required for a "trimmable, stable hydrofoil," including mathematical relationships between coefficients like Cmo, Cma, and Cmq (’044 Patent, col. 6:12-19). A defendant may argue that "passively stable" is limited to hydrofoils that satisfy these specific equations.
The Term: "no movable steering system" (’044 and ’659 Patents, Claim 1)
- Context and Importance: This negative limitation is critical to distinguishing the invention from prior art that used rudders or other mechanical controls. The dispute will be over what constitutes a "steering system."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (for Plaintiff): The specification contrasts the invention with prior art using "moveable surfaces (such as rudders) or thrust vectoring" (’044 Patent, col. 1:44-47). Plaintiff could argue the term simply means the absence of these conventional steering mechanisms. The specification also highlights the "lack of a mechanical steering system" (’044 Patent, col. 2:12-13).
- Evidence for a Narrower Interpretation (for Defendant): The defense could argue that if any component can be manipulated to affect direction, it is part of a "steering system." However, the patent clearly contemplates a throttle, which affects speed and could indirectly affect turning, suggesting the term is not intended to be construed so broadly as to include the throttle (’044 Patent, col. 4:15-24).
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of indirect infringement (Compl. ¶¶22, 38). It does not, however, plead specific facts to support the knowledge and intent elements required for induced infringement, such as references to user manuals or marketing materials that instruct on an infringing use.
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It alleges Defendants had actual pre-suit knowledge via three cease and desist letters sent in 2019, which they allegedly ignored (Compl. ¶¶17, 34, 50). It also alleges constructive notice based on Plaintiff's virtual marking of its commercial products (Compl. ¶¶20, 34, 50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "passively stable", as used in the ’044 patent, be met by any hydrofoil that is generally stable and weight-steerable, or must it be construed narrowly to require satisfaction of the specific aerodynamic equations disclosed in the specification?
- A key evidentiary question will be one of technical fact: are the Accused Products "controlled solely by weight shift," as required by the ’044 patent, and do they lack a "movable steering system," as required by both patents? This will necessitate a detailed technical comparison of the products' operational principles.
- The case may present a question of claim differentiation: given that Claim 1 of the ’659 patent is demonstrably broader than Claim 1 of the ’044 patent, the litigation may focus on whether the accused product can escape the narrower limitations of the ’044 patent while still being captured by the broader claims of the ’659 patent.