DCT
3:22-cv-21258
MHL Custom Inc v. Foil Boarding Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MHL Custom, Inc. (Puerto Rico)
- Defendant: Foil Boarding Company, Inc. (Florida)
- Plaintiff’s Counsel: Beggs & Lane, RLLP; Middleton Reutlinger
- Case Identification: 3:22-cv-21258, N.D. Fla., 10/21/2022
- Venue Allegations: Venue is alleged to be proper in the Northern District of Florida because the Defendant maintains a place of business in the district and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s personal hydrofoil watercraft infringe two patents related to passively stable, weight-shift controlled hydrofoil technology.
- Technical Context: The technology concerns electrically powered surfboards equipped with a hydrofoil, which lifts the board above the water at speed to reduce drag and enable a unique riding experience.
- Key Procedural History: The complaint states that Plaintiff sent Defendant a cease and desist letter on September 20, 2019, providing pre-suit notice of the patents-in-suit and the alleged infringement. The complaint also asserts that Plaintiff’s own products are virtually marked with the patent numbers.
Case Timeline
| Date | Event |
|---|---|
| 2013-10-10 | Priority Date for ’044 and ’659 Patents |
| 2016-06-07 | U.S. Patent No. 9,359,044 Issued |
| 2017-03-07 | U.S. Patent No. 9,586,659 Issued |
| 2019-09-20 | Plaintiff allegedly sent cease and desist letter to Defendant |
| 2022-10-21 | 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’s background section notes that conventional powered surfboards require significant power and that existing hydrofoil watercraft rely on movable control surfaces (like rudders) or thrust vectoring for steering. These approaches are described as mechanically complex and failing to accurately mimic the "surfing feel" that comes from weight-shift control. (’044 Patent, col. 1:38-59).
- The Patented Solution: The invention is a personal hydrofoil watercraft that eliminates the need for movable control surfaces by using a hydrofoil specifically designed for "passive static stability." (’044 Patent, col. 2:8-13). As described in the detailed description, control of the watercraft, including both altitude and direction, is achieved entirely through the rider's shifting weight, which alters the craft's center of gravity relative to the hydrofoil. (’044 Patent, col. 4:35-40).
- Technical Importance: This design approach purports to greatly reduce the power required to achieve planing speeds, making battery-powered electric motors viable, while also simplifying the craft’s mechanics and providing a control method intuitive to those familiar with board sports. (’044 Patent, col. 2:1-16).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1. (Compl. ¶19).
- The essential elements of Claim 1 are:
- A passively stable, weight-shift controlled personal hydrofoil watercraft;
- A flotation device with a specific geometry, controlled by the user's weight shift;
- A strut fixedly connected to the flotation device;
- A hydrofoil fixedly connected to the strut, having no movable surface and designed for passive static stability controlled solely by weight shift;
- A propulsion system connected to the hydrofoil; and
- The watercraft having no movable steering system.
U.S. Patent No. 9,586,659 - “Powered Hydrofoil Board,” issued March 7, 2017
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’044 Patent, the ’659 Patent addresses the same technical problems: the high power demands of conventional powered surfboards and the mechanical complexity of prior art hydrofoils that use movable surfaces for control. (’659 Patent, col. 1:42-56).
- The Patented Solution: The invention described is functionally identical to that of the ’044 Patent, centered on a personal watercraft with a fixed hydrofoil designed for passive stability. This design allows the craft to be controlled longitudinally and directionally via the rider's weight shift, obviating the need for rudders or other mechanical steering systems. (’659 Patent, Abstract; col. 2:10-18).
- Technical Importance: The stated importance is the creation of a mechanically simple, electrically-powered hydrofoil that provides an authentic "surfing feel" by relying on weight-shift control. (’659 Patent, col. 2:2-18).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1. (Compl. ¶34).
- The essential elements of Claim 1 are:
- A passively stable, weight-shift controlled personal hydrofoil watercraft;
- A flotation device with a specific geometry;
- A strut fixedly connected to the flotation device;
- A hydrofoil fixedly connected to the strut and having no movable surface;
- A propulsion system connected to the hydrofoil; and
- The watercraft having no movable steering system.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Foil," "Foil X," and "Foil R" watercraft, collectively referred to as the "Accused Products." (Compl. ¶10).
Functionality and Market Context
- The complaint alleges the Accused Products are "personal hydrofoil watercraft." (Compl. ¶10). Visuals provided in the complaint depict surfboard-style flotation devices connected via a mast to a submerged hydrofoil and propulsion unit. An image of the "Foil" product shows the board, strut, and hydrofoil assembly from a side profile. (Compl. ¶10). Another image shows the "Foil R" model, which appears to have a similar configuration. (Compl. ¶10). A separate image of the "Foil" product in use shows the watercraft operating with the board elevated above the water's surface, supported by the hydrofoil assembly. (Compl. ¶10). The complaint does not provide further detail on the technical operation or market positioning of the Accused Products.
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...a flotation device...controlled via weight shift of the user | The Accused Products are alleged to be passively stable, weight-shift controlled personal hydrofoil watercraft with a flotation device (board) that is controlled by the user's weight shift. | ¶21 | col. 1:11-16 |
| a strut having an upper end and a lower end, the upper end fixedly interconnected with the flotation device... | The Accused Products are alleged to have a strut with an upper end fixedly interconnected with the flotation device between the middle and rear section. | ¶22 | col. 4:44-48 |
| 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 Accused Products are alleged to have a hydrofoil fixedly interconnected with the strut that has no movable surface and is designed to provide passive static stability controlled solely by the user’s weight shift. | ¶23 | col. 4:56-65 |
| a propulsion system for propelling the watercraft...wherein the propulsion system is connected to the hydrofoil | The Accused Products are alleged to have a propulsion system connected to the hydrofoil for propelling the watercraft. | ¶24 | col. 4:4-7 |
| the watercraft having no movable steering system | The Accused Products are alleged to have no movable steering system. | ¶25 | col. 10:47-49 |
’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...a flotation device... | The Accused Products are alleged to be passively stable, weight-shift controlled personal hydrofoil watercraft with a flotation device (board). | ¶36 | col. 1:15-18 |
| a strut having a upper end and a lower end, the upper end fixedly interconnected with the flotation device... | The Accused Products are alleged to have a strut with an upper end fixedly interconnected with the flotation device between the middle and rear section. | ¶37 | col. 4:35-43 |
| a hydrofoil fixedly interconnected with the lower end of the strut, the hydrofoil having no movable surface | The Accused Products are alleged to have a hydrofoil fixedly interconnected with the lower end of the strut that does not have any movable surface. | ¶38 | col. 4:56-61 |
| a propulsion system for propelling the watercraft...wherein the propulsion system is connected to the hydrofoil | The Accused Products are alleged to have a propulsion system connected to the hydrofoil for propelling the watercraft. | ¶39 | col. 3:12-14 |
| the watercraft having no movable steering system | The Accused Products are alleged to have no movable steering system. | ¶40 | col. 8:53-54 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's allegations are made "upon information and belief" and largely track the claim language. A central point of contention will be the evidence Plaintiff proffers to demonstrate that the Accused Products actually meet the claimed functional and negative limitations. For instance, what evidence will be presented to prove the accused hydrofoil is "designed to provide passive static stability" or that the craft has "no movable steering system"?
- Technical Questions: A key technical question for the ’044 Patent is whether the specific design of the accused hydrofoils achieves stability through the passive means described in the patent (e.g., specific airfoil, planform, and twist characteristics) or through other principles. The factual basis for the allegation that control is "solely by weight shift" may also be contested.
V. Key Claim Terms for Construction
The Term: "passively stable"
- Context and Importance: This term is fundamental to the patents’ assertion of novelty over prior art that allegedly used active control systems. Its construction is critical because infringement of the '044 Patent's asserted claim hinges on whether an accused device is "designed to provide passive static stability."
- Intrinsic Evidence for a Broader Interpretation: A party might argue the term should be understood broadly as a system that tends to maintain or return to a stable state without requiring active, moving control surfaces. The patent’s summary states the invention "exploits passive stability to obviate the necessity for mechanisms or active control systems." (’044 Patent, col. 6:62-64).
- Intrinsic Evidence for a Narrower Interpretation: The specification provides a highly detailed technical explanation for how passive stability is achieved, including through a "combination of airfoil design, planform design and tailoring of span-wise twist distribution" and specific aerodynamic conditions. (’044 Patent, col. 5:55-6:29). This detailed disclosure could be used to argue for a narrower construction limited to hydrofoils that achieve stability through these specific, disclosed principles.
The Term: "no movable steering system"
- Context and Importance: As a negative limitation, the scope of this term is central to the infringement analysis for both asserted patents. The dispute will likely focus on what constitutes a "steering system."
- Intrinsic Evidence for a Broader Interpretation (of what is prohibited): A party could argue the term is intended to cover any mechanism, however subtle, that provides directional control beyond the hydrodynamics of weight-shifting. The patents repeatedly emphasize that control is achieved via weight shift alone, which may suggest any other means of steering falls outside the claim. (’044 Patent, col. 10:33-34).
- Intrinsic Evidence for a Narrower Interpretation (of what is prohibited): The patent contrasts the invention with prior art using "moveable surfaces (such as rudders) or thrust vectoring." (’044 Patent, col. 1:43-45). This context could support an interpretation where "no movable steering system" means the absence of conventional, dedicated steering mechanisms like rudders, potentially allowing for other forms of minor directional influence (e.g., from the propulsion unit) without falling under the definition of a "steering system."
VI. Other Allegations
- Indirect Infringement: The complaint includes general allegations of indirect infringement. (Compl. ¶¶16, 31). However, it does not plead specific facts to support a claim for either induced infringement (e.g., by referencing user manuals that instruct on infringing use) or contributory infringement.
- Willful Infringement: The complaint alleges willful infringement based on both constructive and actual notice. It claims Defendant had constructive notice through Plaintiff's virtual marking of its products (Compl. ¶27(a), ¶42(a)) and actual pre-suit notice via a cease and desist letter sent on September 20, 2019, which allegedly identified the patents and the infringing products. (Compl. ¶27(b), ¶42(b)).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical proof: Can the Plaintiff produce sufficient evidence to demonstrate that the accused hydrofoils are, in fact, "passively stable" as a result of their intrinsic design, and that the accused watercraft are controlled "solely by weight shift," as required by the functional language of the ’044 Patent?
- The case will also likely involve a question of definitional scope: How will the court construe the negative limitation "no movable steering system"? The outcome may depend on whether this term is interpreted narrowly to mean the absence of traditional rudders, or more broadly to forbid any mechanism that provides directional control apart from the rider’s weight shift.
- A final question is one of claim differentiation: Given the subtle differences in the claim language between the ’044 and ’659 patents—particularly the ’044 patent’s explicit recitation of a hydrofoil "designed to provide passive static stability controlled solely by weight shift of the user"—a key issue will be whether the accused products might be found to infringe one patent’s claims but not the other’s.