Companies use patents to protect their innovative designs because those designs take significant investment and time, and provide a competitive advantage and differentiator in the marketplace. However, making sure that the patent actually covers the concept and easy “design arounds” is where the rubber hits the road.

This issue is illustrated in the running dispute between Sea Ray (Brunswick) and Cobalt Boats. The patent (US 8,375,880) relates to a boat step (see FIG. 3 from the patent reproduced below).

searay.jpg

The patent required rotation of the step of 180 Degrees. The Sea Ray product only rotated slightly less that that. From the Appeal Court’s opinion, we learn this as follows:

Under our construction of the “180 degrees” limitation, Brunswick’s swim step literally infringes only if it is capable of rotating at least 180 degrees. It is undisputed that Brunswick’s accused swim step is not capable of rotating 180 degrees. Uncontroverted testimony at trial established that the maximum rotation of Brunswick’s swim step is be-tween 172 and 179 degrees and that the hinges on the swim step have a “very rigid stop” that prevents any rotation beyond that, J.A. 2887. Cobalt’s own expert testified that he measured the amount of rotation of the accused swim step and determined that it was “within a couple tenths of a de-gree of 177.” JA 2441.

Below is a picture of a Sea Ray step from Boattest.com, which seems to be the product at issue in this case:

boattest.jpg

While Cobalt originally won the infringement trial, the Court of Appeals reversed the decision and found no infringement. While the evidence showed the alleged infringing product rotated around 177 degrees, that was not 180 as required by the patent. The court specifically noted that the patent owner did not use the phrase “about 180 degrees” which would have provided some wiggle room.

Companies need to be careful in ensuring that their patent counsel is integrated into their business and understands the competitive market place so that patent strategies can be aligned with the company’s direction.

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