PTAB

IPR2024-00086

FOil BoardIng Co Inc v. MHL Custom Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Personal Hydrofoil Watercraft
  • Brief Description: The ’044 patent discloses a personal hydrofoil watercraft controlled by the weight shift of a user. The invention's hydrofoil is designed to provide passive static stability without moveable control surfaces, purportedly achieved through a specific combination of airfoil, planform, and span-wise twist distribution designs.

3. Grounds for Unpatentability

Ground 1: Obviousness over EvoloReport and Woolley - Claims 1-2, 5-8, 10-15, 17-18, and 20-21 are obvious over EvoloReport in view of Woolley.

  • Prior Art Relied Upon: EvoloReport (a 2009 design document for a prototype electric hydrofoil) and Woolley (Patent 6,234,856).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that EvoloReport, a detailed technical report on the "Evolo" prototype, discloses all structural elements of independent claim 1: a personal, weight-shift controlled hydrofoil watercraft with a flotation device, a fixed strut, a hydrofoil with no moveable surfaces, a propulsion system connected to the hydrofoil, and no moveable steering system. To the extent EvoloReport does not explicitly detail how to achieve the claimed "passive static stability," Petitioner asserted that Woolley provides these missing teachings. Woolley was cited for its extensive disclosure on designing a hydrofoil with passive static stability in pitch, yaw, and roll by using features like counteracting lift/downforce between front and rear blades, swept wings, dihedral, and winglets.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine the references to improve the stability of the EvoloReport watercraft. A POSITA would have recognized that the prototype disclosed in EvoloReport could be made more stable and user-friendly by incorporating the well-documented stability-enhancing hydrofoil designs taught by Woolley, which addresses the same technical field.
    • Expectation of Success: A POSITA would have had a high expectation of success because Woolley provides detailed, specific instructions for achieving passive stability using predictable aerodynamic and hydrodynamic principles common to hydrofoil design.

Ground 2: Obviousness over EvoloVideos, Woolley, and TorqeedoManual - Claims 2, 12-14, and 20 are obvious over EvoloVideos in view of Woolley and TorqeedoManual.

  • Prior Art Relied Upon: EvoloVideos (a collection of 2009 YouTube videos showing the Evolo prototype), Woolley (’856 patent), and TorqeedoManual (a 2007 operating manual for a marine electric motor).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground is similar to Ground 1, but used the publicly accessible EvoloVideos as the primary reference disclosing the base watercraft structure, arguing the videos show the same craft described in the EvoloReport. The argument relied on Woolley for the same teachings regarding passive stability. The incremental reference, TorqeedoManual, was introduced to explicitly disclose elements of the propulsion system recited in dependent claims 2 and 12. Petitioner argued the videos show the installation of a Torqeedo brand motor, and the TorqeedoManual confirms that this system includes an electric motor, a motor speed controller (electronic control system), is powered by batteries, and includes a cooling system (thermal protection).
    • Motivation to Combine: Petitioner asserted that because the EvoloVideos show the use of a Torqeedo motor, a POSITA would naturally consult the corresponding TorqeedoManual to understand its components and operation, such as the location of the motor controller and its cooling features. The motivation to combine with Woolley remained the same: to improve the stability of the craft shown in the videos.
    • Expectation of Success: The combination was argued to be a predictable integration of known components, as a POSITA would expect the manufacturer's manual (TorqeedoManual) to accurately describe the motor system (EvoloVideos) and would expect the stability principles (Woolley) to apply successfully.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on further combinations. Ground 2 argued claims 1, 5-8, 10, 17, and 21 were obvious over EvoloVideos and Woolley, using the videos as the primary reference instead of the report. Ground 4 added Gleason (Patent 4,020,782) to the combination of Ground 3 to teach a waterproof compartment for the battery and controller. Ground 5 added Manning (Patent 8,290,636) to the combination of Ground 4 to teach a wireless handheld controller.

4. Key Claim Construction Positions

  • Petitioner argued that no special claim constructions were necessary because the prior art disclosed the claimed limitations under any plausible construction.
  • However, Petitioner noted that the Board could be advised by constructions from a related district court case for terms central to the obviousness arguments:
    • "Designed to provide passive static stability": Construed as "Designed such that the hydrofoil has an initial tendency to return to its original condition when disturbed without the hydrofoil having any moveable components." This construction was central to Petitioner's argument that Woolley's detailed stability teachings fulfilled this limitation.
    • "...combination of airfoil design, planform design and tailoring of span-wise twist distribution": Given its plain and ordinary meaning. Petitioner argued Woolley's teachings on airfoil shape and swept-wing planform met this limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 5-8, 10-15, 17-18, and 20-21 of the ’044 patent as unpatentable.