PTAB

IPR2024-00085

FOil BoardIng Co Inc v. MHL Custom Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Personal Hydrofoil Watercraft
  • Brief Description: The ’659 patent discloses a personal hydrofoil watercraft controlled by the user's weight shift. The technology is directed at a hydrofoil design that provides passive stability without requiring active control surfaces or a movable steering system.

3. Grounds for Unpatentability

Ground 1: Obviousness over EvoloReport and Woolley - Claims 1, 2, 4-5, 7-11, 13, and 15 are obvious over EvoloReport in view of Woolley.

  • Prior Art Relied Upon: EvoloReport (a 2009 technical report from the KTH Royal Institute of Technology) and Woolley (Patent 6,234,856).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that EvoloReport discloses all structural elements of independent claim 1: a personal, weight-shift controlled watercraft with a floatation device, a fixed strut, a hydrofoil with no movable surfaces, an electric propulsion system connected to the hydrofoil, and no movable steering system. However, while EvoloReport discusses stability, Petitioner asserted that Woolley provides the explicit teachings for making the hydrofoil "passively stable." Woolley was cited for its detailed disclosure of achieving passive static stability through specific design choices, such as using counteracting upward and downward forces from front and rear blades for pitch stability, and employing blade sweep, dihedral, and winglets for roll and yaw stability.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) seeking to design the watercraft in EvoloReport would be motivated to improve its stability for user-friendliness. A POSITA would combine EvoloReport with Woolley because Woolley addresses the same technical problem—stabilizing a personal hydrofoil watercraft—and provides well-known, detailed solutions for achieving passive static stability that could be readily applied to the Evolo design.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in applying Woolley’s stability principles to the Evolo watercraft, as both describe hydrofoils of a similar configuration, and the combination involves applying known hydrodynamic principles to achieve a predictable result.

Ground 2: Obviousness over EvoloVideos and Woolley - Claims 1, 4-5, 7, and 15 are obvious over EvoloVideos in view of Woolley.

  • Prior Art Relied Upon: EvoloVideos (a collection of YouTube videos published in 2009 showing the Evolo watercraft) and Woolley (Patent 6,234,856).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the EvoloVideos visually disclose the same weight-shift controlled hydrofoil watercraft shown in the EvoloReport, thereby teaching the core structural limitations of claim 1. The videos show a user in a kneeling position controlling the craft via weight shift, and depict the floatation device, strut, hydrofoil, and propulsion system. As in Ground 1, Petitioner relied on Woolley to supply the teachings for the "passively stable" limitation, arguing Woolley’s extensive discussion of stability-enhancing design features renders this element obvious.
    • Motivation to Combine: The motivation was presented as identical to Ground 1. A POSITA viewing the EvoloVideos would be motivated to ensure the craft's stability for a rider and would consult prior art like Woolley, which provides an explicit blueprint for achieving passive stability in such a device.
    • Expectation of Success: The expectation of success was argued to be high for the same reasons as in Ground 1.

Ground 3: Obviousness over EvoloVideos, Woolley, and TorqeedoManual - Claims 2, 9, and 10 are obvious over the combination.

  • Prior Art Relied Upon: EvoloVideos, Woolley (Patent 6,234,856), and TorqeedoManual (an operating manual for the Torqeedo brand motor used in the Evolo project).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination of EvoloVideos and Woolley to address dependent claims reciting specific features of the propulsion system. Petitioner argued the EvoloVideos show the installation and operation of a Torqeedo electric motor. The TorqeedoManual was introduced to explicitly disclose details of that system, such as that the motor and the electronic motor speed controller are integrated into the waterproof lower pylon (the "pod"), and that the system includes a cooling mechanism (temperature protection that reduces output). This combination was argued to teach the limitations of claim 9 (motor in a waterproof, streamlined pod with a cooling system).
    • Motivation to Combine: Petitioner argued that since the EvoloVideos show the use of a specific commercial product (a Torqeedo motor), a POSITA would be directly motivated to consult that product's own technical literature—the TorqeedoManual—to understand its components and functionality, such as the location of the motor controller and its cooling features.
    • Expectation of Success: A POSITA would expect success because the combination merely involves understanding the known, documented features of an off-the-shelf component shown to be used in the primary reference device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges against claims 8, 11, and 13 based on further combinations including Gleason (Patent 4,020,782) for teaching a water-tight battery compartment in a motorized surfboard and Manning (Patent 8,290,636) for teaching a wireless handheld controller for a water board.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4-5, 7-11, 13, and 15 of Patent 9,586,659 as unpatentable.