United States: It´s Hard Enough to Make Boats

By W. Scott Harders

Earlier this year, a ruling by an appeals court designated to hear appeals on patent matters, seemed to allow executives at Regal Marine Industries to breathe easier. The ruling announced that Regal did not infringe a planing boat hull patent held by Harry Schoell. That's right, a patent suit over a boat hull.

Mr. Schoell filed a patent application in 1990 claiming as his invention a planing boat hull that had two parts - a front hull and a rear hull connected by a stepped offset. He described the front hull as including a V-shaped keel extending from the bow to the stepped offset. The rear hull was described as including a generally flat aft keel.

The patent, in patent parlance called "the '202 patent," was granted in 1995. Mr. Schoell sued Regal in 1997 alleging that their FasTrac design infringed his patent. The FasTrac design indeed includes a front V-shaped hull connected by a stepped offset to a rear hull. Specifically, the front keel has about a twelve-degree deadrise at the offset, which increases toward the bow. The aft keel also has about a twelve-degree deadrise at the stern.

Regal argued that their FasTrac could not have both a V-shaped front hull of twelve-degrees deadrise and greater, and a generally flat aft keel also of twelve-degrees deadrise. Regal asserted that its twelve-degree V must be either "V-shaped" or "generally flat." It could not be both.

The court was persuaded. On April 17, 2001, the court entered judgment for Regal because the FasTrac aft keel was not "generally flat."

You might think a judgment of non-infringement would end the matter. Usually, but not always, it does. Remember one thing, the court's ruling was a factually specific comparison of the features of the FasTrac design and the particular claims of the '202 patent. That comparison ended favorably to Regal. However, Mr. Schoell had other weapons at hand.

In 1997, shortly after the lawsuit discussed above was filed, Mr. Schoell filed another patent application. This was a so-called "reissue application" which, because it was filed within two years from the issue date of the '202 patent, is entitled to broaden the claims of the parent. In other words, if a reissue application is filed within two years of its parent, the applicant can remove particular limitations from the claims of the parent case. This is exactly what Mr. Schoell appears to have done.

The reissue application eventually issued as the '879 reissue patent. To this new patent, Mr. Schoell had added eight independent claims. While similar in many respects to the claims of the '202 patent, notably lacking in many is a specific limitation of a "generally flat aft keel." In fact, many claims merely require "an aft keel" with no specific geometry, or an aft keel "different from" the forward keel.

Currently, the author is unaware of any renewed litigation or negotiation based on the '879 reissue patent, but the prospects seem likely. Consider that the original patent infringement lawsuit took more than 5 years and two separate court proceedings. Regal won by failing to have a "generally flat aft keel." Mr. Schoell reissued his patent with claims omitting this requirement. The costs of another patent infringement lawsuit would quickly reach hundreds of thousands, if not, millions of additional dollars.

Consider also, that although Regal is not listed as an owner or assignee of any US Patents, it refers to its FasTrac design as "patented."

Yes it is, and that patent seems to be owned by a Mr. Harry Schoell.

New designs of any kind should be cleared by a pre-production patent search. While this is no guarantee, this search will apprise you and your design engineers of the "prior art." Moreover, improvements on the prior art may themselves be patentable, which builds your intellectual property portfolio and provides recognition to your creative employees. Once your portfolio has a few assets, it can be used both defensively and offensively.

Defensively, your portfolio can provide technology to trade in response to an infringement claim. Offensively, your portfolio can provide the basis for a counterclaim of infringement, a source of licensing revenue, or to legally block a competitor in a key area of technology.

The pre-production patent search coupled with a "right to make" opinion can also protect your company from a claim of willful infringement. Where patent infringement is found, any damages can be tripled if the court believes the infringement was willful. A competent opinion letter can shield a company from a willfulness finding and the associated triple damages.