Broussard v. Go-Devil Mfg. Co.
`
`United States District Court for the Middle District of Louisiana
`
`July 9, 2014, Decided
`
`CIVIL ACTION NO.: 3:08-cv-00124-BAJ-RLB LEAD CASE; 3:08-cv-00125-BAJ-RLB
`
`Reporter
`29 F. Supp. 3d 753; 2014 U.S. Dist. LEXIS 94352; 2014 WL 3377708
`
`KYLE BROUSSARD, ET AL. versus GO-DEVIL
`MANUFACTURING CO. OF LA., INC. D/B/A GO-DEVIL
`MANUFACTURERS OF LOUISIANA, INC.
`
`Defendants: Joel W. Mohrman, LEAD ATTORNEY, PRO
`HAC VICE, Anderson L. Cao, PRO HAC VICE,
`McGlinchey Stafford- Houston, Houston, TX; Juston M.
`O'Brien, McGlinchey Stafford PLLC, Baton Rouge, LA.
`
`Subsequent History: Affirmed by Gator Tail, LLC v.
`Mud Buddy LLC, 2015 U.S. App. LEXIS 10431 (Fed.
`Cir., June 22, 2015)
`
`Prior History: Broussard v. Go-Devil Mfg. Co. of La.,
`Inc., 2008 U.S. Dist. LEXIS 51833 (M.D. La., June 9,
`2008)
`
`[**1] For Kyle Broussard, Gator Tail, L.L.C.
`Counsel:
`(3:08-cv-00124-BAJ-RLB), Plaintiffs: Joel W. Mohrman,
`LEAD ATTORNEY, PRO HAC VICE, Anderson L. Cao,
`PRO HAC VICE, McGlinchey Stafford- Houston,
`Houston, TX; Juston M. O'Brien, McGlinchey Stafford
`PLLC, Baton Rouge, LA.
`
`For Go-Devil Manufacturing Co. of LA., Inc., doing
`business as Go-Devil Manufacturers of Louisiana, Inc.
`(3:08-cv-00124-BAJ-RLB), Defendant: Fredrick R.
`Tulley, LEAD ATTORNEY, John P. Murrill, Robin P.
`Toups, Taylor, Porter, Brooks & Phillips, Baton Rouge,
`LA.
`
`Inc.
`For Go-Devil Manufacturing Co. of LA.,
`(3:08-cv-00124-BAJ-RLB), Counter Claimant, Fredrick
`R. Tulley, LEAD ATTORNEY, John P. Murrill, Robin P.
`Toups, Taylor, Porter, Brooks & Phillips, Baton Rouge,
`LA.
`
`L.L.C.
`Tail,
`Gator
`Broussard,
`Kyle
`For
`Defendants:
`Counter
`(3:08-cv-00124-BAJ-RLB),
`Anderson L. Cao, LEAD ATTORNEY, PRO HAC VICE,
`McGlinchey Stafford- Houston, Houston, TX.
`
`L.L.C.,
`Tail,
`Gator
`For
`(3:08-cv-00125-BAJ-RLB),
`
`Kyle
`Plaintiffs,
`
`Broussard,
`Counter
`
`For Mud Buddy L.L.C., doing [**2] business as Mud
`Buddy Manufacturing
`(3:08-cv-00125-BAJ-RLB),
`Defendant: Samuel C. Straight, LEAD ATTORNEY, PRO
`HAC VICE, R. Layne Royer, Ltd., Baton Rouge, LA;
`Allen D. Darden, Phelps Dunbar, LLP, Baton Rouge,
`LA; Jed H. Hansen, PRO HAC VICE, Thorpe, North &
`Western, Sandy, UT; Karen Blakemore, Phelps Dunbar
`- B.R., Baton Rouge, LA.
`
`(3:08-cv-00125-BAJ-RLB),
`For Mud Buddy L.L.C.
`Counter Claimant: Samuel C. Straight, LEAD
`ATTORNEY, PRO HAC VICE, R. Layne Royer, Ltd.,
`Baton Rouge, LA; Allen D. Darden, Phelps Dunbar,
`LLP, Baton Rouge, LA; Jed H. Hansen, PRO HAC
`VICE, Thorpe, North & Western, Sandy, UT; Karen
`Blakemore, Phelps Dunbar - B.R., Baton Rouge, LA.
`
`Judges: BRIAN A. JACKSON, CHIEF UNITED
`STATES DISTRICT JUDGE.
`
`Opinion by: BRIAN A. JACKSON
`
`Opinion
`
`[*757] RULING AND ORDER
`
`I. INTRODUCTION
`
`In this consolidated patent infringement action,1 Plaintiff
`Gator Tail, LLC alleges that certain boat motors
`produced by Defendants Go-Devil Manufacturing Co.
`of La., Inc. and Mud Buddy, LLC infringe the asserted
`claims of the patents-in-suit. (08-cv-00124 Doc. 20;
`
`1 The Court consolidated civil actions 3:08-cv-00124-BAJ-RLB Kyle Broussard, et al. v. Go-Devil Manufacturing Co. of La., Inc. d/b/a
`Go-Devil Manufacturers of Louisiana, Inc. and 3:08-cv-00125-BAJ-RLB Gator Tail, et al. v. Mud Buddy, LLC d/b/a Mud Buddy
`Manufacturing for the Markman hearing and for bench trial on the issue of patent validity, pursuant to Rule 42(a)(1). (See 08-cv-00124
`Doc. 82, 90).
`
`Ex. 2017 1/37
`
`

`
`29 F. Supp. 3d 753, *758; 2014 U.S. Dist. LEXIS 94352, **5
`
`08-cv-00125 Doc. 1)). On January 27 through January
`31, 2014 the court held a three-day bench trial limited to
`the issue of patent validity. (See 08-cv-00124 Doc. 95 at
`p. 2; [**3] see also Docs. 121, 123). Presently before the
`Court are the parties' post-trial proposed findings of fact
`and conclusions of law concerning the validity of the
`patents-in-suit. (08-cv-00124 Doc. 124, 125, 130, 131;
`08-cv-00125 Docs. 139, 140, 144, 145)).
`
`Pursuant to Federal Rule of Civil Procedure ("Rule")
`52(a), and after having considered the entire record in
`this case and the applicable law, the Court concludes:
`(1) all asserted claims of the patents-in-suit are invalid
`due to obviousness; (2) United States Patent Number
`7,052,340 is invalid due to lack of written description;
`and (3) Claims 1, 8, and 14 of United States Patent
`Number 7,052,340, and Claim 1 of United States Patent
`Number 7,297,035 [*758] are each invalid due to lack of
`definiteness. These findings of fact and conclusions of
`law [**4] are set forth in further detail below.
`
`II. FINDINGS OF FACT2
`
`A. The parties
`
`1. Plaintiff and Counter Defendant Kyle Broussard ("Mr.
`Broussard") is a Louisiana resident residing at 2402
`Terre Ruelle, New Iberia,
`Louisiana
`70563.
`(08-cv-00125 Doc. 1 at ¶ 4).
`
`2. Plaintiff and Counter Defendant Gator Tail, LLC
`("Gator Tail") is a Louisiana limited liability company
`with its principal place of business at 306 Broussard
`Road, Loreauville, Louisiana 70552. (08-cv-00124 Doc.
`96-1 at ¶ 1).
`
`3. Mr. Broussard founded Gator Tail while completing
`his degree in mechanical engineering at the University
`of Louisiana. (Id. at ¶ 15).
`
`4. Gator Tail designs, builds, and sells outboard boat
`motors usable in shallow water, and is the owner of
`certain patents related to such motors. (Id. at ¶ 2, 7, 14).
`
`5. Where appropriate, Mr. Broussard and Gator Tail will
`be collectively referred to as "Plaintiffs."
`
`6. Defendant and Counter Claimant Go-Devil
`Manufacturing Co. of Louisiana, LLC ("Go-Devil") is
`
`[**5] the successor to Go-Devil Manufacturing Co. of
`Louisiana,
`Inc., and is a Louisiana limited liability
`company with its principal place of business at 18649
`Womack Road, Baton Rouge, Louisiana 70817. (Id. at
`¶¶ 9-10).
`
`7. Go-Devil manufactures and sells outboard boat
`motors usable in shallow waters, as well as blinds,
`custom boats, and boating accessories. (Id. at ¶ 13).
`
`8. At all times material hereto, Go-Devil has done, and
`continues to do business in the Middle District of
`Louisiana. (Id. at ¶ 14).
`
`9. Defendant and Counter Claimant Mud Buddy, LLC
`d/b/a Mud Buddy Manufacturing ("Mud Buddy") is a
`Utah corporation with its principal place of business at
`7956 South, 1530 West, West Jordan, Utah 84088. (Id.
`at ¶ 8).
`
`10. Mud Buddy manufactures and sells outboard boat
`motors usable in shallow waters, as well as blinds,
`custom boats, and boating accessories. (Id. at ¶ 11).
`
`11. At all times material hereto, Mud Buddy has done,
`and continues to do business in the Middle District of
`Louisiana. (Id. at ¶ 12).
`
`12. Where appropriate, Go-Devil and Mud Buddy will be
`collectively referred to as "Defendants."
`
`13. The Court has subject matter jurisdiction, as well as
`personal jurisdiction over all parties.
`
`B. [**6] Background
`
`14. Plaintiff Gator Tail and Defendants Go-Devil and
`Mud Buddy are each manufacturers of "mud motors,"
`(see Trial Transcript, Vol. I, Jan. 27, 2014 (hereinafter
`"Transcript Vol. I") at p. 99)—i.e., "outboard air-cooled
`motors, apparatuses, and assemblies for use on boats
`in shallow water and muddy environments," (Doc. 82 at
`p 3; see also Doc. 96-1 at ¶¶ 11, 13, 15). Such motors
`are used primarily for hunting and fishing.3
`
`15. Prior to the early 2000s, the mud motor market was
`(see Trial
`dominated by "long-tail" mud motors,
`Transcript,
`[*759] Vol. III, Jan. 31, 2014 (hereinafter
`
`2 Prior to trial, the parties submitted an exhibit of undisputed facts in conjunction with their Pretrial Order. (08-cv-00124 Doc.
`96-1). Where appropriate, the Court takes its findings of fact from these undisputed facts.
`
`3 At trial, Defendant Mud Buddy's expert witness, Don Kueny, described the concept behind a mud motor in the following
`terms:
`
`Page 2 of 37
`
`Ex. 2017 2/37
`
`

`
`29 F. Supp. 3d 753, *759; 2014 U.S. Dist. LEXIS 94352, **6
`
`"Transcript Vol. III") at p. 130), so-named because the
`drive shaft connecting the motor's engine to its propeller
`was upwards of six feet long, causing the propeller to
`extend a considerable distance behind the transom of
`the boat on which the motor is mounted. (See Transcript
`Vol. I at pp. 121-22).
`
`16. Long-tail mud motors continue to be manufactured
`and sold. (Transcript Vol. III at p. 145).
`
`in the last decade, consumers have
`17. However,
`increasingly switched to "surface-drive" (or "short-tail")
`mud motors, which achieve certain advantages over
`the traditional
`long-tail motor, such as greater
`(See
`horsepower,
`speed, and maneuverability.
`Transcript Vol. III at pp. 144-46).
`
`20. The '340 Patent arises out of a provisional
`application filed September 17, 2002. (Id.).
`
`2. United States Patent Number 7,297,035
`
`21. United States Patent Number 7,297,035 ("the '035
`Patent"), entitled "Marine Craft Adapted for Shallow
`Water Operation," naming Kyle Broussard [**9] as
`inventor, was issued on November 20, 2007, based on
`an application filed on May 22, 2006. (Gator Tail Ex. 2 at
`p. 01838).
`
`22. The '035 Patent is a continuation-in-part of the '340
`Patent. (Id.).
`
`23. Plaintiff Gator Tail is the assignee of the '340 and
`'035 Patents. (Doc. 96-1 at ¶ 2).5
`
`18. Plaintiffs are the owners of certain patents related to
`surface-drive/short-tail mud motors. (See Gator Tail Ex.
`1; Gator Tail Ex. 2).
`
`24. The '340 and '035 Patents each describe
`substantially the same invention, specifically:
`
`C. The patents-in-suit4
`
`1. United States Patent Number 7,052,340
`
`19. United States Patent Number 7,052,340 ("the '340
`Patent"), entitled "Method and Apparatus for Air Cooled
`Outboad [sic] Motor for Small Marine Craft," naming
`Kyle Broussard as inventor, was issued on May 30,
`2006, based on an application filed on September 15,
`2003. (Gator Tail Ex. 1 at 0652).
`
`[*760] A relatively high horsepower air-cooled
`engine in one embodiment of
`this invention is
`adapted to an efficient belt drive assembly capable
`of being transom mounted to small flat bottom
`boats in much the same manner as conventional
`outboard engines. The drive is equipped with a
`lower drive shaft that does not extend below the
`bottom of the boat but extends a sufficient distance
`behind [**10] the boat to insure contact with the
`water for conventional propulsion. A unique pivotal
`
`The concept of [a mud motor is to put] the propellor well behind the boat where the water wells up in kind of a
`mound. So you can keep the propellor very close to the surface and not run into things deep in the water. It allows
`you to use in shallow water. It's that part of the idea that the water mounds up behind the boat. And if you can put
`the propellor back behind the boat, it can run much—much higher in the water and still have solid water. And it
`avoids having the propellor deep, so you can run in shallow water. Particularly in the Far East it was developed
`more for debris in the water as much as for shallow water. But the whole [**7] idea is to put the propellor in that
`
`moun[d] of water so it can run shallow.
`
`(Transcript II at pp. 92-93 (Mr. Kueny)).
`
`4
`
`Initially, Plaintiffs sued Defendants for infringement of three Patents. (See 08-cv-00124 [**8] Doc. 20 at ¶¶ 10-12;
`
`08-cv-00125 Doc. 1 at ¶ 11). However, Plaintiffs have since abandoned their cause of action as to U.S. Patent Number
`
`7,048,600 ("the '600 Patent"), entitled "Method and Apparatus for Air Cooled Outboard Motor for Small Marine Craft," and
`
`naming Kyle Broussard as inventor, (08-cv-00124 Doc. 20-1 at p. 1). (See 08-cv-00124 Doc. 54 at p. 1 ("The defendant willfully
`infringes on certain claims in Gator Tail's U.S. Patents Nos. 7,052,340 and 7,297,035." (footnotes omitted)); 08-cv-00125 Doc.
`45 at p. 1 (same)). Accordingly, the Court does not address the '600 Patent.
`
`5 Although the '035 Patent lists Gator Tail as the assignee, the '340 Patent does not indicate an assignee. (Compare Gator
`Tail Ex. 2 at p. 01838 (the '035 Patent, listing Gator Tail as the assignee), with Gator Tail Ex. 1 at p. 0652 (the '340 Patent, failing
`to list an assignee)). However, based on the parties' stipulation, the Court accepts as true that Gator Tail is, indeed, the
`assignee of the '340 Patent. (See Doc. 96-1 at ¶ 2).
`
`Page 3 of 37
`
`Ex. 2017 3/37
`
`

`
`29 F. Supp. 3d 753, *760; 2014 U.S. Dist. LEXIS 94352, **10
`
`arrangement allows the engine and drive assembly
`to be positioned for proper angle of attack when the
`propeller is in contact with mud and vegetation
`below the bottom of the boat. This arrangement
`allows for a much shorter turning radius than can be
`achieved by the related prior art transom mounted
`mud motor systems. The engine mount includes
`incremental tilt positioning capability and a pivotal
`horizontal steering handle. The propeller is capable
`of providing propulsion when in contact with solids
`such as mud and vegetation, and provides relatively
`fast hull speed in deep water. A clutch is provided to
`disengage the engine from the drive and an electric
`drive motor is provided in contact with the belt drive
`for turning the drive in a reverse direction.
`
`(Gator Tail Ex. 2 at p. 01852 ('035 Patent, "Summary of
`Invention"); see also Gator Tail Ex. 1 at p. 0657 ('340
`Patent, "Summary of Invention")).
`
`25. Selected renderings of the '340 Patent. (Gator Tail
`Ex. 1 at p. 0654)
`
`26. Rendering of the '035 Patent. (Gator Tail Ex. 2 at p.
`01840).
`
`[*761]
`
`D. The asserted claims
`
`that Defendants' products
`27. Plaintiffs assert
`[**11] "infringe[] claims 1, 3-9, and 11-13 of the '340
`
`patent." (08-cv-00124 Doc. 54 at p. 1 n.1; 08-cv-00125
`Doc. 45 at p.1 n.1 (same)).
`
`28. Further, Plaintiffs assert that Defendants' products
`"infringe[] claims 1, 3-7, and 9-13 of the '035 patent."
`(08-cv-00124 Doc. 54 at p. 1 n.2; 08-cv-00125 Doc. 45
`at p.1 n.2 (same)).
`
`1. The asserted claims of the '340 Patent
`
`i. Claim 1
`
`29. Claim 1 of the '340 Patent reads:
`
`A portable drive assembly having means for
`temporary attachment to the transom of a shallow
`draft watercraft said portable drive assembly
`comprising an elongated drive housing enclosing
`an upper drive assembly a lower driven assembly
`and a timing belt connecting said upper drive
`assembly to said lower driven assembly, an engine
`mounting plate attached externally to said drive
`housing located adjacent said upper drive assembly
`perpendicular to said drive housing said lower
`driven assembly further comprising a propeller shaft
`partially enclosed within a shaft housing attached to
`said drive housing adjacent said driven assembly
`extending at least 12 inches beyond said drive
`housing and a propeller attached to said propeller
`shaft.
`
`(Gator Tail Ex. 1 at p. 0658).
`
`ii. Claim 3
`
`'340 Patent reads: "The
`30. Claim 3 of the [**12]
`portable drive assembly according to claim 1 wherein
`said drive system further comprises steering and throttle
`controls." (Id.).
`
`iii. Claim 4
`
`31. Claim 4 of the '340 Patent reads:
`
`The portable drive assembly according to claim 1
`wherein said propeller shaft assembly further
`comprises a shaft housing having a vertical
`triangular fin located below said shaft housing, a
`shaft supported adjacent each end by thrust
`bearings in a manner whereby said shaft extends
`beyond each of said thrust bearings and a plurality
`of internal seals [*762]
`located along said shaft
`outboard of said thrust bearings.
`
`Page 4 of 37
`
`Ex. 2017 4/37
`
`

`
`29 F. Supp. 3d 753, *762; 2014 U.S. Dist. LEXIS 94352, **12
`
`(Id.).
`
`iv. Claim 5
`
`(Id.).
`
`viii. Claim 9
`
`32. Claim 5 of the '340 Patent reads: "The portable drive
`assembly according to claim 1 wherein said upper drive
`assembly and said lower driven assembly further include
`timing pulleys compatible with said timing belt said belt
`being rotationally unobstructed or acted upon by other
`bodies." (Id.).
`
`v. Claim 6
`
`33. Claim 6 of the '340 Patent reads: "The portable drive
`assembly according to claim 1 further comprising a self
`contained air cooled utility engine having a horizontal
`output shaft attached to said engine mounting plate
`said output shaft coupled to said upper drive
`[**13] assembly." (Id.).
`
`vi. Claim 7
`
`34. Claim 7 of the '340 Patent reads: "The portable drive
`assembly according to claim 6 wherein said drive
`housing is water sealed." (Id.).
`
`vii. Claim 8
`
`35. Claim 8 of the '340 Patent reads:
`
`A portable outboard engine and drive assembly
`having means for temporary attachment
`to the
`transom of a shallow draft watercraft comprising:
`
`a) a sealed housing containing a timing belt drive
`assembly comprising an upper drive pulley
`assembly and a lower driven pulley assembly;
`
`b) an engine mounting plate attached externally to
`said sealed housing located adjacent said upper
`drive pulley assembly perpendicular to said sealed
`housing;
`
`c) a propeller shaft partially enclosed within a shaft
`housing attached to said sealed housing extending
`from said driven pulley assembly at least 12 inches
`beyond said sealed housing;
`
`d) a propeller attached to said propeller shaft;
`
`e) a pivotal means for temporarily attaching said
`sealed drive housing to a boat transom; and
`
`f) an air cooled engine mounted to said
`engine-mounting plate and coupled externally to
`said upper drive pulley assembly.
`
`36. Claim 9 of the '340 Patent reads: "The portable drive
`assembly according to claim [**14] 8 wherein said
`pivotal means comprises both horizontal and vertical
`pivoting means." (Id.).
`
`ix. Claim 11
`
`37. Claim 11 of the '340 Patent reads: "The portable
`drive assembly according to claim 8 wherein said
`propeller shaft assembly further comprises a plurality of
`thrust bearings and seals at each end of said shaft
`housing." (Id.).
`
`x. Claim 12
`
`38. Claim 12 of the '340 Patent reads: "The portable
`drive assembly according to claim 11 wherein said
`propeller shaft assembly further comprises a rudder fin
`extending below said shaft housing." (Id.).
`
`xi. Claim 13
`
`39. Claim 13 of the '340 Patent reads: "The portable
`drive assembly according to claim 8 wherein said
`propeller shaft assembly is in excess of 18 inches in
`length." (Id. at p. 0659).
`
`[*763] 2. The asserted claims of the '035 Patent i.
`Claim 1
`
`40. Claim 1 of the '035 Patent reads:
`
`A marine craft comprising a hull comprising a
`transom; and a portable drive assembly temporarily
`attached to the transom,
`the portable drive
`assembly comprising an elongated drive housing
`enclosing an upper drive assembly and a lower
`driven assembly and a timing belt connecting the
`upper drive assembly to the lower driven assembly;
`and an engine mounting plate attached externally
`[**15] to the drive housing adjacent the upper drive
`assembly perpendicular
`to the drive housing;
`wherein the lower driven assembly comprises a
`propeller shaft at least a portion of which is enclosed
`within a shaft housing attached to the drive housing
`adjacent the driven assembly, the shaft housing
`extending in excess of 18 inches beyond the drive
`housing, and a propeller attached to the propeller
`shaft.
`
`Page 5 of 37
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`
`

`
`29 F. Supp. 3d 753, *763; 2014 U.S. Dist. LEXIS 94352, **15
`
`(Gator Tail Ex. 2 at p. 01854).
`
`ix. Claim 11
`
`ii. Claim 3
`
`41. Claim 3 of the '035 Patent reads: "The marine craft
`according to claim 1, wherein the portable drive
`assembly further comprises steering and throttle
`controls." (Id.).
`
`48. Claim 11 of the '035 Patent reads: "The marine craft
`according to claim 7, wherein the upper drive assembly
`and the lower driven assembly further include respective
`timing pulleys compatible with the timing belt, the timing
`belt being unobstructed [*764] or acted upon by other
`bodies." (Id.).
`
`iii. Claim 4
`
`x. Claim 12
`
`42. Claim 4 of the '035 Patent reads: "The marine craft
`according to claim 1, wherein the shaft housing
`comprises a rudder fin." (Id.).
`
`iv. Claim 5
`
`43. Claim 5 of the '035 Patent reads: "The marine craft
`according to claim 1, wherein the upper drive assembly
`and the lower driven assembly further include respective
`timing pulleys compatible with the timing belt, the timing
`belt being unobstructed or acted upon by other bodies."
`(Id.).
`
`v. Claim 6
`
`44. Claim 6 of the '035 Patent reads: "The marine craft
`according to claim 1, further comprising a mounting
`bracket assembly for
`[**16] temporarily attaching the
`portable drive assembly to the transom, the mounting
`bracket assembly comprising a mounting bracket and a
`pivotal assembly for positioning the portable drive
`assembly in the horizontal plane." (Id.).
`
`vi. Claim 7
`
`45. Claim 7 of the '035 Patent reads: "The marine craft
`according to claim 1 further comprising a utility engine
`mounted on the engine mounting plate and coupled to
`the upper drive assembly." (Id. at p. 01855).
`
`vii. Claim 9
`
`46. Claim 9 of the '035 Patent reads: "The marine craft
`according to claim 7, wherein the portable drive
`assembly further comprises steering and throttle
`controls." (Id.).
`
`viii. Claim 10
`
`47. Claim 10 of the '035 Patent reads: "The marine craft
`according to claim 7, wherein the shaft housing
`comprises a rudder fin." (Id.).
`
`49. Claim 12 of the '035 Patent reads: "The marine craft
`according to claim 7, further comprising a mounting
`[**17] bracket assembly for temporarily attaching the
`portable drive assembly to the transom, the mounting
`bracket assembly comprising a mounting bracket and a
`pivotal assembly for positioning the portable drive
`assembly in the horizontal plane." (Id.).
`
`xi. Claim 13
`
`50. Claim 13 of the '035 Patent reads: "The marine craft
`according to claim 12, further comprising a first pivoting
`assembly for positively positioning the elongated drive
`housing beyond vertical relative to the mounting bracket
`in the vertical plane." (Id.).
`
`B. The accused products
`
`51. Plaintiffs' Amended Complaint against Go-Devil
`alleges that Go-Devil's "Surface Drive models"—i.e.
`"air-cooled outboard motors[,] alone and in combination
`with boat hulls"—"infringe . . . at least claim 1" of the
`'340 and '035 Patents. (Doc. 20 at ¶¶ 7, 11-14). Such
`Go-Devil motors include the following models: (a) "18hp
`Vanguard SD"; (b) "23hp Delta Waterfowl Vanguard
`SD"; (c) "35hp Vanguard SD"; (d) "23hp Vanguard SD";
`(e) "25hp Kohler SD"; and (f) "27hp Kohler SD." (Id. at ¶
`7).
`
`52. Plaintiffs' Complaint against Mud Buddy alleges that
`Mud Buddy's "Hyperdrive and HD series engines"—i.e.
`"outboard air-cooled motors, apparatuses, and
`assemblies"—"infringe [**18] at least one claim in at
`least one of the patents." (Id. at ¶ 12).
`
`C. Procedural history
`
`53. On February 28, 2008, Plaintiffs filed their Complaint
`for patent infringement against against Go-Devil in this
`District, in what was labeled 08-cv-00124.
`
`54. In a separately captioned action, also filed in this
`District on February 28, 2008, Plaintiffs sued for patent
`infringement against Mud Buddy, 08-cv-00125.
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`

`
`29 F. Supp. 3d 753, *764; 2014 U.S. Dist. LEXIS 94352, **18
`
`55. On May 2, 2008, Mud Buddy filed counterclaims for
`declaratory judgment of noninfringement and invalidity
`of the '340 and '035 Patents. (08-cv-00125 Doc. 9 at ¶¶
`24-32).
`
`56. On July 23, 2008 Plaintiffs filed an Amended
`Complaint against Go-Devil. (08-cv-00124 Doc. 20).
`
`57. On August 1, 2008, Go-Devil filed counterclaims for
`declaratory judgment of noninfringement and invalidity
`of the '340 and '035 Patents. (08-cv-00124 Doc. 22 at
`¶¶ 38-43, 47-53).
`
`58. The two actions proceeded independently. On
`February 25, 2010 the Mud Buddy action, 08-cv-00125,
`was transferred to the U.S. District Court for the Eastern
`District of Louisiana. (08-cv-00125 Doc. 25).
`
`59. At various times during the pendency of these
`proceedings, Mud Buddy requested and received ex
`parte reexaminations of
`the '340 and '035 Patents
`[**19] by the U.S. Patent and Trademark Office ("PTO").
`(See Doc. 96-1 at ¶¶ 18-20).
`
`60. Because the PTO reexamination proceedings were
`ex parte, neither Mud Buddy nor Go-Devil were
`permitted to comment on the evidence or arguments
`submitted by Gator Tail
`in support of its claims of
`patentability. (08-cv-00124 Doc. 96-1 at ¶¶ 19-20).
`
`61. Upon reexamination, the PTO initially rejected all of
`the claims in the '340 Patent. (Gator Tail Ex. 16 at p.
`01332).
`
`[*765] 62. Likewise, upon reexamination, the PTO
`initially rejected all of the claims in the '035 Patent.
`(Gator Tail Ex. 17 at p. 01722).
`
`63. Ultimately, however, the PTO confirmed the validity
`of each Patent. (08-cv-00124 Doc. 96-1 at ¶¶ 19-20).
`
`64. On April 26, 2011 the Mud Buddy action,
`08-cv-00125, was returned to this Court. (08-cv-00125
`Doc. 89). In its Order of Transfer, the District Court for
`the Eastern District of Louisiana noted that the Mud
`Buddy action "involves subject matter that comprises a
`material part of the subject matter of Broussard et al. v.
`Go-Devin [sic] Manufacturing Co. of LA, Inc., Civil Action
`No. 08-0124." (Id. at p. 1; see also 08-cv-00124 Doc.
`69).
`
`65. On July 5, 2011, this Court consolidated the Go-Devil
`action, 08-cv-00124,
`[**20] and the Mud Buddy action,
`
`for purposes of a claim construction
`08-cv-00125,
`hearing on the '340 and '035 Patents, pursuant to
`Markman v. Westview Instruments, Inc., 517 U.S. 370,
`116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). (See
`08-cv-00124 Doc. 73; see also Doc. 82 at p. 1 n.1).
`
`66. On October 3, and December 5, 2011, the Court
`held a claim construction hearing on the '340 and '035
`Patents. (08-cv-00124 Doc. 77; see also Doc. 82 at p.
`1).
`
`67. Following the claim construction hearing, the Court
`allowed the parties to submit post-hearing briefs.
`(08-cv-00124 Doc. 77).
`
`68. On September 26, 2012, the parties submitted their
`final briefs on claim construction. (See Doc. 81).
`
`69. On June 25, 2013, this Court issued its Ruling on
`Construction of Disputed Terms (hereinafter "Markman
`Hearing Ruling"). (08-cv-00124 Doc. 82).
`
`70. On October 31, 2013, upon stipulation of the parties,
`the Court set dates for a consolidated bench trial on the
`issue of
`the validity of
`the '340 and '035 Patents.
`(08-cv-00124 Doc. 95).
`
`71. On January 27 through January 31, 2014, the court
`held a three-day bench trial on patent validity. (See
`Transcript Vols. I-III).
`
`72. At the close of evidence, the Court directed the
`parties to submit post-hearing briefs on [**21] the issue
`of patent validity. (Transcript Vol. III at p. 313).
`
`73. On February 21, 2014, the parties submitted their
`initial post-trial briefs on the validity of the '340 and '035
`Patents. (08-cv-00124 Doc. 124, 125; 08-cv-00125 Doc.
`139, 140).
`
`the parties submitted
`74. On June 13, 2014,
`supplemental briefs limited to the issue of definiteness
`in light of the U.S. Supreme Court's decision in Nautilus,
`Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 189 L.
`Ed. 2d 37 (2014).
`
`75. For reasons fully explained below, the Court now
`determines that each of the asserted claims of the '340
`and '035 Patents is invalid.
`
`II. DISCUSSION AND CONCLUSIONS OF LAW
`
`The Court has subject matter jurisdiction over this matter
`pursuant to 28 U.S.C. §§ 1331, 1338, and 2201. Venue
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`29 F. Supp. 3d 753, *765; 2014 U.S. Dist. LEXIS 94352, **21
`
`is proper in this Court under 28 U.S.C. §§ 1391 and
`1400(b).
`
`"The public interest . . . favors the maintenance of a
`Inc. v.
`well-functioning patent system," Medtronic,
`Mirowski Family Ventures, LLC, 134 S. Ct. 843, 851,
`187 L. Ed. 2d 703 (2014), and, once issued, "[a] patent
`shall be presumed valid," 35 U.S.C. § 282. See Microsoft
`Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 2245, 180 L. Ed.
`2d 131 (2011)
`("[B]y its express terms, § 282
`[*766]
`establishes a presumption of patent validity, and it
`provides [**22] that a challenger must overcome that
`presumption to prevail on an invalidity defense.").
`However, "the public also has a paramount interest in
`seeing that patent monopolies are kept within their
`legitimate scope." Medtronic, 134 S. Ct. at 851
`(quotation marks and alterations omitted). For this
`reason, various statutory provisions exist for challenging
`the validity of a claimed invention, even after a patent
`has been issued. Cf., Microsoft Corp., 131 S. Ct. at
`2242 ("To receive patent protection a claimed invention
`must, among other things, fall within one of the express
`categories of patentable subject matter, § 101, and be
`novel, § 102, and nonobvious, § 103."). Defendants
`argue that Gator Tail's patents are invalid under various
`statutory provisions.
`
`Having considered the entire record in this case, the
`substantial evidence in the record, the parties' post-trial
`submissions, and the applicable law,
`the Court
`concludes: (1) all asserted claims of the patents-in-suit
`are invalid due to obviousness; (2) the '340 Patent is
`invalid due to lack of written description; and (3) Claims
`1, 8, and 14 of and '340 Patent, and Claim 1 of the '035
`Patent are each invalid due to lack of definiteness.
`[**23] The Court's reasoning follows.
`
`A. Obviousness
`
`Go-Devil and Mud Buddy each challenge the validity of
`the asserted claims as obvious in light of the prior art.
`(See 08-cv-00124 Doc. 124 at pp. 7-29; 08-cv-00125
`Doc. 1-33). For the reasons that
`follow,
`the Court
`determines that Defendants have established by clear
`and convincing evidence that each asserted claim of
`the patents-in-suit is, indeed, obvious.
`
`1. The legal standard
`
`Title 35, United States Code, Section 103(a) provides
`that a patent may not be obtained "if the differences
`between the subject matter sought to be patented and
`
`the prior art are such that the subject matter as a whole
`would have been obvious to a person having ordinary
`skill in the art." 35 U.S.C. § 103(a). A party seeking to
`challenge the validity of a patent based on obviousness
`must demonstrate by "clear and convincing evidence"
`that the invention described in the patent would have
`been obvious to a person of ordinary skill in the art at the
`time the invention was made. See Dennison Mfg. Co. v.
`Panduit Corp., 475 U.S. 809, 810, 106 S. Ct. 1578, 89 L.
`Ed. 2d 817 (1986) (per curiam). "The 'clear and
`convincing' standard of proof of facts is an intermediate
`standard which lies somewhere between 'beyond
`[**24] a reasonable doubt' and a 'preponderance of the
`evidence.'" Buildex Inc. v. Kason Indus., Inc., 849 F.2d
`1461, 1463 (Fed. Cir. 1988)
`(citations omitted).
`"Although not susceptible to precise definition, 'clear
`and convincing' evidence has been described as
`evidence which produces in the mind of the trier of fact
`an abiding conviction that
`the truth of
`the factual
`contentions are highly probable." Id. (quotation marks
`and alterations omitted).
`
`Obviousness is a question of law that is predicated on
`inquires. See Richardson—Vicks v.
`several
`factual
`Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997).
`Specifically, the trier of fact is directed to assess four
`considerations: (1) the scope and content of the prior
`art; (2) the level of ordinary skill
`in the art; (3) the
`differences between the claimed subject matter and the
`prior art; and (4) secondary considerations of
`non-obviousness, such as commercial success, long
`felt but unsolved need, failure of others, acquiescence
`of others in the industry that the patent is valid, and
`unexpected results. See Graham v. John Deere Co.,
`383 U.S. 1, 17-18, 86 S. Ct. 684, 15 L. Ed. 2d 545
`(1966). "While the [*767] sequence of these questions
`might be reordered in any particular case, the factors
`[**25] continue to define the inquiry that controls." KSR
`Int'l Co. v. Teleflex Inc., 550 U.S. 398, 407, 127 S. Ct.
`1727, 167 L. Ed. 2d 705 (2007). "If a court . . . conducts
`this analysis and concludes the claimed subject matter
`was obvious, the claim is invalid under § 103." Id.
`
`Gator Tail concedes that the '340 and '035 Patents are
`combination patents—i.e., "patent[s] based on the
`combination of elements found in the prior art," KSR Int'l
`Co., 550 U.S. at 415. (See 08-cv-00124 Doc. 125 at p.
`10 ("Gator Tail does not contend that every individual
`nut, bolt, and component, taken individually, is unique
`to Mr. Broussard's invention. Instead, Mr. Broussard's
`invention combines these elements in a way that was
`never done before and achieved great success."). For
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`29 F. Supp. 3d 753, *767; 2014 U.S. Dist. LEXIS 94352, **25
`
`such situations—specifically, "when the question is
`whether a patent claiming the combination of elements
`of prior art is obvious"—the Supreme Court has distilled
`certain "principles" as "instructive." Id. at 417.
`
`When a work is available in one field of endeavor,
`design incentives and other market
`forces can
`prompt variations of it, either in the same field or a
`different one.
`If a person of ordinary skill can
`implement a predictable variation, § 103 likely bars
`its patentability.
`[**26] For the same reason, if a
`technique has been used to improve one device,
`and a person of ordinary skill
`in the art would
`recognize that it would improve similar devices in
`the same way, using the technique is obvious unless
`its actual application is beyond his or her skill. . . .
`[A] court must ask whether the improvement is
`more than the predictable use of prior art elements
`according to their established functions.
`
`Id. at 417. The Supreme Court has further instructed
`that when con