MasterCraft and Malibu Boats - Wakesurfing patent dispute


MasterCraft and Malibu Boats may have finally settled their long-running feud over wake-surfing patents, but there is still a lot of interesting information to be had in looking into the patent cases related to the action.

The first aspect to note in the feud is that Malibu Boats did not have just a single patent at issue, but rather Malibu Boats was working on a portfolio. As sophisticated IP players know, the real goods are a well developed patent portfolio as it significantly increases one’s leverage against a competitor.

Today we review one aspect of Malibu’s strategy in the case to drive settlement - the idea of a pending application. One might think a pending application is useless as it cannot be asserted in litigation (since the patent has not yet issued). But of course the value in a pending application is not whether it can be asserted immediately, but rather that it has the ability to change and can be asserted at some unknown point in the future. One of Malibu’s pending applications (14/075,978) finally reached a decision after the case settled, and likely provided leverage to Malibu as MasterCraft was faced with the idea that even if they won the current lawsuit, they would still face the possibility of another patent lawsuit down the road. And since up to 6 years of past damages can be had, that risk would have been a significant motivator to settle.

Turning now to the pending application, the appeal was finally heard in November of 2018. Here is a link to the oral hearing. Patent practitioners will probably enjoy reading through the transcript as it gives insight as to how various issues play out before the appeal judges at the USPTO.

In the end, Malibu was successful with its appeal and so I suspect MasterCraft was smart to settle when they did.

Skim Milk

Obesity is an epidemic in many countries, including America, resulting from a lack of exercise and poor diet. Commonly, people are happier when they exercise and eat right, not to mention their vitals (BP, HR, etc.) change to more desirable values. This logic applies to household pets as well; dogs are happier and healthier when sufficiently walked and fed appropriately. Therefore, it is safe to assume that livestock, such as cows, would also be happier when provided with a medium for exercise. However, cows are naturally dormant animals that enjoying grazing and relaxing. Commonly, farmers, whether dairy or cattle, arrange drinking water for the cows far away from their food, thereby forcing the cows to walk. However, this requires a large plot of land that could be utilized in other ways.

Large animal veterinarian, Arlan Smith, realized that animal husbandry costs may be reduced by providing a treadmill shaped to accommodate a cow. He claims that a variety of bovine problems may be preempted, such as lame cow syndrome, calving problems, digestive upsets, misplaced abomasum, infertility, and short lifespans.

FIG. 1 from U.S. Patent No. 7,654,229

FIG. 1 from U.S. Patent No. 7,654,229

The patent, US7654229B2, comprises a variety of features that are purportedly non-obvious with relation to human treadmills.  For example, it teaches an identification system coupled to a database of workout durations and frequencies.  It includes a trough, which may hold food or water, to prompt the cow to continue walking on the treadmill.  Most importantly, the treadmill has a plurality of rigid plates, that may fall away from end rollers of the treadmill - the rigid plates may both wear down the hoof, as well as sweep fecal matter away from inner componentry of the treadmill.  The poop may be further swept away from the plates via a flushing system, which injects water at spaces between adjacent plates. 

The concept of the application is quite interesting as animal husbandry becomes a larger issue in the discussion of global warming.  Methane produced from cow flatulence aside, animal husbandry is often knocked for its excessive use of land, which results in deforestation.  With the introduction of the cow treadmill, land use for dairy and other types of farming may be reduced, thereby decreasing an environmental impact of the farm while also decreasing operational costs and increasing cow health. 

Operation space with regard to this concept is open, as the application was abandoned due to nonpayment of maintenance fees. Further improvements may yield interesting IP. One idea includes designing the platform to include an endless track that include a grass-like surface, which may trick the cow into thinking it is still walking the pasture.Additionally, the treadmill may be modified to include arms configured to massage the cow as it strolls on the treadmill.Lastly, to promote socializing between cows, a treadmill may include more than one track so that cows may walk next to one another and discuss their plans for the day.

Bike Washing Machine

Image of the Bike Washing Machine

Image of the Bike Washing Machine

Balance between a patentable idea and market viability can be difficult to navigate.  Market demand may simply not exist for an idea, no matter how novel or ingenious.  On the other hand, simple modifications to well-known ideas can be very lucrative, while narrow in patent scope or not patentable at all.

Enter the bike washing machine, which from its name can be one of two things: a washing machine for bikes (akin to a car wash) or a washing machine for clothes combined with a bike.  The bike washing machine is the latter, and features a drum located where a front wheel of a bike would ordinarily be.  The drum comprises water hook ups for admitting and expelling water.  The patent KR 2011/0003822A, can be found here

Even more interesting, based on the fact that such patents even exist, are the references used during prosecution.  Two patents of interest include a “Combined bodybuilding energy-saving washing machine” (CN106498655A) and a “Bodybuilding bicycle with dewatering drum” (CN104958868A).  Each is somewhat related to the bike washing machine, however, their designs are quite different.

Image of the energy-saving washing machine

Image of the energy-saving washing machine

Image of the bicycle with dewatering drum

Image of the bicycle with dewatering drum

The water hookups and other features associated with the bike washing machine helped it overcome these cited references.  The application was allowed, however, the applicant failed to pay the issue fee.  Good news! Patent space is available in the bike laundry market.  The bike washing machine patent failed to describe any routines, such as reversing a spin direction within the drum, which is common to traditional washing machines, despite a fixed rotational direction of the pedals of the bike.  It also did not address adjusting a spin speed of the drum, which could be done with traditional bike gears.  Other patentable ideas may include coaching in relation to laundry completion.  Many bike trainers include coaching based on terrain, however, these coaching features are not readily translated to a bike washing machine (e.g., “Your clothes are really soiled; bike harder!” or “Don’t give up on your journey to cleaner clothes!”).  There are many patent roads one can travel with the bike washing machine, however, its viability in the marketplace remains to be seen. 

Filing Third Party Observations

Third-party or preissuance submissions are a tool for third parties to submit patents, published patent applications, or other non-patent literature that may be of potential relevance to the examination of a patent application. The U.S. Patent and Trademark Office’s Third-Party Submission Program has been available since September 2012, but has not been frequently used, though the USPTO considers third party submissions to be a valuable tool, as examiners are motivated to apply the best prior art available to make a rejection, regardless of who found the prior art.

 However, current U.S. law limits when a preissuance submission can be filed, and thus the owner of the subject patent application is free to work with the U.S. examiner to overcome any submitted references, and the third party cannot participate in the ongoing prosecution.

Regardless, third-party submissions can be useful in disrupting the prosecution of competitors’ patents.

In regards to filing the submission, the submission must be made in any non-provisional, design, or plant application before the earlier of:

1.      The date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or

2.      The later of:

2.1.   Six months after the date on which the application is first published under 35 U.S.C. 122 by the USPTO, or

2.2.   The date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

The third party should ideally file the submission electronically through EFS-Web, though submissions can also be submitted in paper via first-class mail, or by hand delivery, but not via facsimile.

The following forms should be included in the submission:

1.      Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted;

2.      A concise description of the relevance of each item listed in the document;

3.      A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;

4.      An English translation of any non-English language item identified in the document list;

5.      Statements by the party making the submission that:

5.1.   The party is not an individual who has a duty to disclose information regarding the application under section 1.56; and

5.2.   The submission complies with the requirements of 35 U.S.C. 122(e) and section 1.290; and

6.      Any required fee, or the statement that the fee exemption applies to the submission.

The USPTO issued a very handy guide for third-party submissions that can be found here:   


In regards to the fee, a fee is incurred for every ten documents listed or fraction thereof, unless the third party is submitting three or fewer documents, provided the submission is the first for the party, and a “first and only” statement is filed.

If the submission is found to be non-compliant, it won’t be entered into the image file wrapper of the application or considered by an examiner, and the fee will not be refunded. However, the third party can make another submission, provided that the statutory time period for filing a submission has not closed.

If the submission is entered into the image file wrapper, the applicant will be notified of the entry if the applicant participates in the USPTO’s e-Office Action program. Otherwise, the contents of the submission will be made available in the application’s image file wrapper.

Steamboat Willie and the Impact of Trademarks on Public Domain Film


On January 1, 2019, for the first time in over 20 years, works published in the United States will fall into the public domain due to copyright term expiration.  After the passage of the 1998 Copyright Term Extension Act (CTEA), copyright on works published before January 1, 1978 was granted a 20-year extension, increasing the term of copyright from 75 to 95 years.  Though all works published in the United States prior to December 31, 1922 were already in the public domain, those scheduled to be admitted on January 1, 1999 (i.e., all U.S. works published in 1923) were to remain bound by copyright protections for another 20 years.

            The CTEA generated controversy during its development, as major media conglomerates, most memorably The Walt Disney Company, had been lobbying for nearly a decade to extend copyright protections.  As a result, the CTEA was derisively referred to as the “Mickey Mouse Protection Act” by opponents of the legislation.  Indeed, a major motivation for Disney’s intervention was to extend protections for its earliest cartoons.  A particularly defining moment in the company’s history was the release of Steamboat Willie, a short cartoon with synchronized sound which introduced one of the most well-known popular culture icons of modern times, Mickey Mouse.  Notably, the CTEA represented the third extension of copyright of Steamboat Willie since its publication in 1928, a term which was originally set to expire in 1956.

            Trademarks stemming directly from early films are rarities.  By and large, the nascent 1920s film industry had yet to capitalize on the potential for extensive marketing campaigns.  Films in this era were often viewed as one-off experiences likened to symphonies or plays, though with less artistic standing.  Mickey Mouse stands as perhaps the most notable anomaly, a character that became a trademarked symbol of one of the largest mass media organizations on the planet.  It is precisely as a trademarked symbol under which Mickey Mouse will retain extensive legal protection.

            As a result, marketing of footage of Mickey Mouse, even footage which may have unambiguously passed into the public domain, may not be so straightforward.  Perhaps an enterprising person, looking to capitalize or build upon Disney’s intellectual property, will be able to produce a DVD of Steamboat Willie – but can they feature Mickey Mouse on its cover?  Even as a still from the film?  It is highly likely that any attempt to do so would result in litigation.  Disney is notoriously protective of intellectual property.  In one of the most highly publicized cases, in 1989, Disney threatened legal action against daycare centers which had painted Mickey Mouse on their walls.

            Any precedent that may result as a consequence of similar legal action will not be decided upon for some time, as Steamboat Willie is not set to enter the public domain for another five years.  Yet the case of Mickey Mouse is only one legal issue among many which may arise from the reopening of the public domain.  As such, the complex interplay of creators and the market in which they commoditize their creations is sure to fall under renewed scrutiny.

Making Every Cocktail Neat and Perfect

Learning cocktail making, as with many hobbies, has an inherent barrier to novices guarded by vexing terminology. What does it mean to “muddle” something? Is a “dash” the same amount as a “splash?” How can a cocktail be “dry?” Combined with an array of intimidating contraptions and an overwhelming abundance of complex, multistep recipes, it may be tempting to head out to the bar and put home mixology on the rocks.

Somabar® and other companies are seeking to change that. In the age of instant and facile domestic comfort led by smart home technologies, one patentable space remains sparse – the automated home cocktail maker. As can be surmised by anyone who has been to a novelty robot bar, automated cocktail making is known. For example, Smart Bar USA claims to market “the world’s first patented touch-screen bar and automated cocktail dispenser” (see U.S. Patent No. 8,584,900, wherein the inventors recognize “a lack of the ability to provide mixed alcohol drinks” via the beverage dispensing systems in the prior art).

However, Somabar® seeks to push through U.S. Patent Application Publication No. 2016/0039653 by linking the size of the invention to specific applications. The primary argument is based upon similar inventions in the prior art being six feet in height or taller, whereas a housing of the drink vending apparatus of the ‘653 application is “less than two feet in height.” The invention is therefore “small enough to fit on a standard kitchen counter and underneath standard kitchen cabinets,” as supported in the specification.

FIG. 1 below provides one embodiment of the drink vending apparatus of the ‘653 application. Liquor cartridges may be placed on the manifolds 128 to provide ingredients for a mixed drink. A glass may then be placed on dispensing tray 203 to receive the mixed drink as prepared by the apparatus. Tying the invention further to the smart home paradigm are its wireless capabilities; a mobile phone or tablet can operate the apparatus, from which a user can request specific drinks via an associated mobile phone application.

Bloomberg prices the Somabar® at $2000, which may be a little steep for the cocktail-curious. For now, at least, most amateur mixologists will have to suffice with their martinis shaken, not automatically dispensed.

robot bar.png

Precision Farming and Intellectual Property

With all of the intellectual property buzz around self-driving cars and blockchain, those looking for new breakthrough concepts might consider adjacent technologies that typically do not receive the same media attention. One of those areas that shows great promise is precision farming.

Precision farming is at the cross-roads of numerous engineering disciplines, including artificial intelligence, e-commerce, mechanical engineering, genetic engineering, control systems, drones, and more. Farms are a business and rely on technology for everything from improved seeds to determining how and when to harvest to pest control.

Many of the recent patent filings in this field of technology originate from China. Given that so many Chinese inventors have recognized the value in this field, it may be fertile ground for start-ups if they can get their concepts on file at the patent offices in time.


Reefer Madness


The burgeoning marijuana industry is witnessing incredible growth as the previously forbidden fruit becomes legal in an increasing number of states.  While the public is quick to adopt its legalization, other sectors are slow to adapt and the USPTO is no exception.  

            Early internet patents predicting various ways in which the internet would be used are now viewed as overly broad and the USPTO has swung the pendulum in the opposite direction (hello Section 101 rejections). Marijuana patents appear to be in a similar phase; it’s hard to say what is overly broad for a new product.  However, unlike the internet, marijuana has been known and tested, with many experiments occurring in the last century.  This presents an interesting issue - companies may patent previously known compositions, strands, and the like with little consequence, for now, as documentation of marijuana experimentation was minimal and possibly incriminating. 

            One example of such a case is going through the courts.  United Cannabis Corp is accusing Pure Hemp Collective Inc. of infringing a patent covering a liquid formulation with a high concentration of CBD.  People in the industry believe that the United Cannabis Corp patent, if maintained, could apply to most of the CBD products on the market, despite the fact that highly concentrated CBD formulations have been known before this millennium. 

            The marijuana industry is expected to reach about $75 billion by 2030, and patents will play a large part in who the big players in the industry will be, meaning that patents may dictate who gets to compete for those billions.  It will be fascinating to see how the patent side of a laid-back, laissez-faire culture shapes.  Will there be enough documentation from decades of marijuana research to limit new marijuana patents?  With so much money at stake, it is safe to say patenting early and often should be high on the priority list for all marijuana companies. 

Lessons from the “Nut Wizard”

nut wizard.png

Inventions are often born out of a desire to improve upon current market products. If this is the case with your invention, clearly pointing out prior art that your invention has improvements over is useful information to include in a patent application.

One example of a patent application that includes discussion of prior art is for the “Nut Wizard” (U.S. Pat. No. 6,460,249 B1), a rolling basket with a handle that is used to pick nuts and fruit off of the ground.

The patent application for the “Nut Wizard” does a great job of emphasizing improvements made over other devices in the same space. For example, the “Nut Wizard” application points out how U.S. Pat. Nos. 3,215,293 and 3,604,190 includes axles that run through a basket, which may be difficult and expensive to produce. Then, to clearly contrast this prior art, the “Nut Wizard” application explains features that make it simple and inexpensive to construct.   

nut wizard 2.png

Pointing out disadvantages in prior art and how your invention addresses these disadvantages is a strategy that may improve prosecution efficiency. For example, it is less likely that you will need to re-explain improvements over this prior art through an Office action response.

Learning from the “Nut Wizard”, do not be shy to point out disadvantages with previous approaches. Your patent application is a chance to point out all the great features of your invention and why these features are improvements over other products out there. Getting specific with the prior art that your invention has improvements over not only highlights advantages of your invention but also can make patent prosecution go more smoothly.

Volvo's Emission Problem

Volvo Trucks has just admitted to serious engine emission control problems in a new Press Release. The problem is not clearly defined, but rather the press release vaguely refers to it as follows:

The Volvo Group has detected that an emissions control component used in certain markets is degrading more quickly than expected, which could cause the engines to exceed emissions limits for nitrogen oxides (NOx). All products equipped with the component meet emissions limits at delivery; the degradation is due to a materials issue that occurs over time. A full analysis of the issue is not completed and it is not possible to assess the financial impact at this stage; however, the cost could be material.
— Volvo Trucks Press Release

One possible source that fits with this wording is degradation of an SCR catalyst using reductant injection. Another, previous, Volvo Press Release touted the advantages of such as system:

The solution was to improve the selective catalytic reduction (SCR) technology that Volvo Penta had already implemented in its Tier 4i engine generation. With SCR technology, AdBlue™ is injected into the exhaust line and reacts with NOx in the catalytic converter to turn the harmful compound into nitrogen and water. Another crucial part of Volvo Penta’s Tier 4f solution is light exhaust gas recirculation (light EGR). Because NOx is created at very high temperatures, the EGR further contributes to reducing NOx by lowering the peak combustion temperature.

How it’s different
Many of Volvo Penta’s competitors have attacked the problem from another angle, configuring their base engines’ combustion rate to produce low levels of NOx but emit high levels of PM. Their solution is to add a diesel particulate filter (DPF), which captures the soot and periodically incinerates it down to harmless ash in a process called regeneration. Though effective, this approach has its own drawbacks, including higher fuel consumption. Furthermore, a DPF requires costly maintenance and must be replaced regularly. Overall, a DPF system requires many extra parts — from air pumps and compressors to ignition coils — all of which can fail or need replacing.
While most engine manufacturers installed a DPF to meet Tier 4i and SCR to meet Tier 4f regulations, Volvo Penta uses just SCR in its Tier 4F engines — a simpler, more straightforward solution for customers, with fewer parts and less maintenance than a DPF.
“Because we believed that reducing NOx and PM emissions to Tier 4f levels could be achieved with just SCR, we put all our effort into improving that technology — and making sure we didn’t need to use a DPF, which can end up being more hassle for customers,” says David Hanngren, manager of industrial product planning at Volvo Penta. “It would have been far easier for us to use a DPF, which was already an existing technology. And ultimately our competitors’ engines with DPFs emit the same low levels of PM and NOx as ours do. But because they’re configured to perform at optimum levels, burn less fuel and produce very little smoke, our Tier 4f engines have ended up being a much better solution.”
Though Tier 4 Final is major step forward, the process of lowering emissions in off-road engines isn’t over yet — there are more stringent regulations in the pipeline for years to come. Volvo Penta is already working with innovative technologies to meet future regulations — while continuing to keep customer needs at the forefront of every new advancement it makes in emissions reduction.
— Volve Trucks Press Release

So we looked to see if Volvo has any patents describing such as system and found US 9,097,159, related to a method for detecting urea deposits in an exhaust line of an automotive vehicle, a method for eliminating urea deposits and an automotive vehicle adapted to such methods. The abstract explains the method is for detecting urea deposits in an exhaust line of an automotive vehicle and includes determination if an exhaust gas's temperature is reached, if the result of determination is positive, stoppage of urea injection, and determination of the quantity of NOx in the exhaust gases on the outlet of the selective catalytic reduction system. A comparison is performed between the quantity of NOx determined on the outlet of the selective catalytic reduction system and a theoretical quantity or a measured quantity of NOx produced by the internal combustion engine. If the comparison shows that the quantities are different, it is considered that urea deposits are present in the exhaust line.

Volvo may have discovered their in-use problem via a diagnostic approach just like the one above. The question now is - what can they do to solve the issue. No doubt, whatever the solution, it may generate important IP that other competitors may not even realize they need.