Gator Tail, LLC v. Mud Buddy LLC, 618 Fed.Appx. 992 (2015)
`
`618 Fed.Appx. 992
`This case was not selected for
`publication in West's Federal Reporter.
`See Fed. Rule of Appellate Procedure 32.1
`generally governing citation of judicial
`decisions issued on or after Jan. 1, 2007.
`See also U.S.Ct. of App. Fed. Cir. Rule 32.1.
`United States Court of Appeals,
`Federal Circuit.
`
`GATOR TAIL, LLC, Plaintiff–Appellant
`v.
`MUD BUDDY LLC, dba Mud Buddy
`Manufacturing, Defendant–Appellee.
`Gator Tail, LLC, Plaintiff–Appellant
`v.
`Go–Devil Manufacturing Company of Louisiana
`Incorporated, dba Go–Devil Manufacturers
`of Louisiana, Inc., Defendant–Appellee.
`
`Nos. 2014–1747, 2014–1748.
`|
`June 22, 2015.
`
`Synopsis
`Background: Patentee brought action against competitors,
`alleging infringement of patents for horizontally mounted
`boat motor. Competitors counterclaimed for declaratory
`judgment of noninfringement and invalidity of patents.
`After Markman hearing, 2013 WL 3233328, and after
`denial of competitors' motions for summary judgment,
`2014 WL 46632, the United States District Court for
`the Middle District of Louisiana, Brian A. Jackson, J.,
`29 F.Supp.3d 753, found patents invalid, and patentee
`appealed.
`
`Holdings: The Court of Appeals, Clevenger, Circuit Judge,
`held that:
`
`[3]
`
`[1] district court's crediting of expert admissions at trial
`over PTO examiner's findings was not clearly erroneous;
`
`[2] prior boat motor patent did not teach away from use
`of horizontal motor; and
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`[3] patentee failed to produce evidence of success
`suggesting patents were not obvious.
`
`Affirmed.
`
`West Headnotes (5)
`
`[1]
`
`[2]
`
`Patents
`Expert opinion
`In action alleging infringement of patents for
`boat motors, district court did not clearly err
`in crediting expert admissions at trial that
`one of ordinary skill would be motivated to
`substitute vertical engine with a horizontal
`one to overcome balance problems over
`Patent and Trademark (PTO) examiner's
`reliance on expert declaration that one of
`ordinary skill would be discouraged from
`reorienting engine. 35 U.S.C.A. §§ 103, 282.
`
`1 Cases that cite this headnote
`
`Patents
`Boats; watercraft; maritime matters
`Boat motor patent did not teach away
`from use of horizontal motor,
`for
`purposes of determining validity of patents
`for horizontally mounted boat motor,
`where prior patent merely described the
`shortcomings of boat motors that used
`horizontal engines and nowhere suggested
`that using a horizontal engine would render
`the motor inoperable. 35 U.S.C.A. § 103.
`
`Cases that cite this headnote
`
`Patents
`Boats; watercraft; maritime matters
`Patentee
`failed
`to
`show
`evidence of
`commercial success suggesting that patents for
`horizontally mounted boat motor were not
`obvious, where only evidence of commercial
`success was fact that patentee was now selling
`one thousand motors per year, and patentee
`failed to establish the size of the market or any
`
`CATERPILLAR EXHIBIT 1051
`CATERPILLAR v. WIRTGEN
`IPR2018-01091
`
`Page 1 of 7
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`

`

`Gator Tail, LLC appeals the decision of the district court
`that the asserted patents are invalid as obvious, for lack
`of written description, and as indefinite. Broussard v. Go–
`Devil Mfg. Co., 29 F.Supp.3d 753, 757 (M.D.La.2014).
`This court has jurisdiction under 28 U.S.C. § 1295(a)
`(1) (2012). Because the district court's conclusion that
`the asserted claims are obvious was supported by factual
`findings that are not clearly erroneous, we affirm.
`
`I
`
`This case concerns United States Patent Nos. 7,052,340
`(“the ′340 patent”) and 7,297,035 (“the ′035 patent”),
`collectively referred to as Gator Tail's patents. Both
`patents name Kyle Broussard as the sole inventor, and
`essentially claim the same invention: a short-tail mud
`motor with a horizontally mounted engine.
`
`A
`
`“Mud motors” are boat motors designed for shallow
`waters, and are primarily used in fishing and hunting.
`A mud motor's propeller is positioned near the water's
`surface so that the boat can maneuver in shallow water
`and in water congested with mud and vegetation.
`
`The traditional mud motor, which dominated the market
`from the 1970s until the early 2000s, is the long tail motor.
`United States Patent No. 2,996,035 (“the Torrey Patent”)
`describes one version of a long tail mud motor. The Torrey
`Patent discloses a propulsion unit that is mounted to
`the transom of a boat. It includes a motor (M), with
`a horizontally oriented engine that directly attaches to
`a propeller shaft (14). A belt (18) and pulleys (16 and
`17) drive motion of the propeller shaft. U.S. Patent No.
`2,996,035 (filed Dec. 3, 1958).
`
`Gator Tail, LLC v. Mud Buddy LLC, 618 Fed.Appx. 992 (2015)
`
`[4]
`
`[5]
`
`other facts that would indicate commercial
`success. 35 U.S.C.A. § 103.
`
`Cases that cite this headnote
`
`Patents
`In general; utility
`US Patent 2,996,035, US Patent 5,741,165.
`Cited as Prior Art.
`
`1 Cases that cite this headnote
`
`Patents
`In general; utility
`US Patent 7,052,340, US Patent 7,297,035.
`Invalid.
`
`Cases that cite this headnote
`
`*993 Appeals from the United States District Court
`for the Middle District of Louisiana in Nos. 3:08–cv–
`00125–BAJRLB, 3:08–cv–00124–BAJ–RLB, Judge Brian
`A. Jackson.
`
`Attorneys and Law Firms
`
`Matthew Wolf, Arnold & Porter LLP, Washington,
`DC, argued for plaintiff-appellant. Also represented by
`Joel Wiley Mohrman, Anderson Lam Cao, McGlinchey
`Stafford, Houston, TX.
`
`Samuel C. Straight, Ray Quinney & Nebeker P.C.,
`Salt Lake City, UT, argued for defendant-appellee Mud
`Buddy LLC. Also represented by Jed H. Hansen, Thorpe,
`North & Western LLP, Sandy, UT.
`
`John Parham Murrill, Taylor, Porter, Brooks &
`Phillips, Baton Rouge, LA, argued for defendant-
`appellee Go–Devil Manufacturing Company of Louisiana
`Incorporated. Also represented by Fredrick R. Tulley.
`
`Before MOORE, CLEVENGER, and WALLACH,
`Circuit Judges.
`
`Opinion
`
`CLEVENGER, Circuit Judge.
`
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`Gator Tail, LLC v. Mud Buddy LLC, 618 Fed.Appx. 992 (2015)
`
`*994 U.S. Patent No. 2,996,035 fig. 1.
`While the long tail mud motor provided for boat
`operation in shallow and muddy waters, it posed several
`disadvantages. In particular, the long propeller shaft
`means that these motors have a wide turning radius and
`are difficult to maneuver. Relatedly, steering the long
`propeller requires substantial space inside the boat.
`
`To avoid this problem with the long tail motors,
`companies started looking to short tail mud motor
`designs. United States Patent No. 5,741,165 (“the Saito
`Patent”) discloses one such motor. Saito's short tail motor
`was designed to increase range of movement, decrease
`boat space occupied by the motor, and incorporate
`a mounting bracket that would also permit use of
`conventional outboard motors on the same boat. See U.S.
`Patent No. 2,996,035 col. 1 ll. 45–51 (filed Jan. 27, 1996).
`To that end, Saito discloses a propulsion system that can
`be attached to the rear of a boat. It includes a vertically
`oriented engine (104) which connects to a drive shaft (117).
`The drive shaft, in turn, attaches to and drives motion in
`the propeller shaft (123).
`
`With this design, the propeller is shorter and that means
`better steering, maneuverability, and control. Broussard
`v. Go–Devil Mfg. Co., 29 F.Supp.3d at 771. However,
`because the Saito short tail design uses a vertical engine
`and vertical drive shaft, it has to hang off the back of a
`boat. And that creates balance problems. Id. at 775.
`
`B
`
`Gator Tail's ′035 patent is a continuation in part of the
`′340 patent. For the purposes of this appeal, the patents
`essentially claim the same invention: a belt-driven short
`tail mud motor with a horizontal engine capable of being
`mounted to the transom of a small boat in a manner
`common to outboard engines.
`
`*996 U.S. Patent No. 7,297,035 fig. 16 (filed May 22,
`2006).
`The overall design of the Gator Tail motor is similar to the
`Saito Patent, with two key differences. First, Gator Tail's
`patents require a horizontally oriented engine. See, e.g.,
`Broussard, 29 F.Supp.3d at 797 (describing Gator Tail's
`patents as containing horizontal output engines). Second,
`the engine connects directly to a timing belt drive gear
`(104) that attaches to and drives motion in the parallel
`propeller. Saito, on the other hand, does not disclose
`a timing belt and it requires a vertical, not horizontal,
`engine.
`
`As an example, claim 1 of the ′035 patent discloses:
`
`A marine craft comprising
`
`a hull comprising a transom; and
`
`a portable drive assembly temporarily attached to the
`transom, the portable drive assembly comprising
`
`*995 U.S. Patent No. 2,996,035 fig. 7.
`
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`Gator Tail, LLC v. Mud Buddy LLC, 618 Fed.Appx. 992 (2015)
`
`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 to the
`drive housing adjacent the upper drive assembly
`perpendicular to the drive housing;
`
`lower driven assembly comprises a
`wherein the
`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.
`
`The other asserted claims depend from, or are essentially
`identical to, this claim.
`
`II
`
`Gator Tail alleged that defendants, Mud Buddy, LLC
`(“Mud Buddy”) and Go–Devil Manufacturing Company
`of Louisiana (“Go–Devil”) manufacture products that
`infringe claims 1, 3–9, and 11–13 of the ′340 patent and
`claims 1, 3–7, and 9–13 of the ′035 patent.
`
`A
`
`After Gator Tail filed its complaints, Mud Buddy
`requested an ex parte reexamination of both patents by
`the United States Patent and Trademark Office (“PTO”).
`During those reexamination proceedings, the examiner
`initially rejected all the claims as obvious in light of
`the Saito Patent and other references. After a series of
`exchanges between Mr. Broussard and the PTO, including
`the introduction of expert declarations and additional
`claims, the PTO confirmed all claims of the patents. In
`relevant part, the PTO concluded that Mr. Broussard's
`expert successfully established “modification of the Saito
`Patent proposed in the rejection would lead to significant
`changes ... which would not be obvious to one of ordinary
`skill in the art.” Broussard, 29 F.Supp.3d at 790.
`
`The district court held a three day bench trial on the
`issue of patent validity. In its amended final judgment, the
`district court held that all the claims of the ′340 and ′035
`patents were invalid as either obvious, indefinite, or failing
`the written description requirement.
`
`On appeal, Gator Tail raises three specific challenges
`to the amended final judgment: (1) the holding of
`obviousness of the asserted claims of the ′ 340 and ′035
`patents, (2) the holding that claim 1 of the ′340 patent is
`invalid for lack of written description, and (3) the holding
`that claims 1, 8, and 14 of the ′340 patent and claim 1 of
`the ′035 patent are invalid as indefinite under 35 U.S.C.
`§ 112. Claims 1 and 8 of *997 the ′340 patent and claim
`1 of the ′035 patent were all asserted claims. Because
`those claims were held invalid as obvious, and we affirm
`that holding, we do not address the alternative holding
`that those claims are invalid on other grounds. Method
`claim 14 of the ′340 patent was not listed as an asserted
`claim, but the district court's holding of invalidity includes
`claim 14, and the obviousness analysis of the district court
`applies as well to claim 14 of the ′340 patent, making the
`indefiniteness holding an alternative ground that we need
`not reach.
`
`The district court's obviousness analysis focused primarily
`on claim 1 of the ′035 and claim 1 of the ′340 patent.
`The court determined the content of the two claims
`was indistinguishable, and applied the same reasoning to
`invalidate both. All the other asserted claims depend from
`these claims. Building on its analysis of claim 1 of the ′340
`patent, the court made separate findings that each asserted
`claim was obvious.
`
`As it relates to this appeal, the district court focused on
`the Torrey and Saito Patents when assessing obviousness.
`And the court found that there were only limited ways
`to improve upon Torrey or Saito. What is more, those
`improvements were merely predictable uses of prior art
`elements. The court also found that one of ordinary skill
`in the art is a person with an undergraduate education
`in mechanical engineering and experience with marine
`propulsions systems. Because, through the lens of a
`person of ordinary skill, the asserted claims were merely a
`predictable combination of Saito and Torrey, the district
`court held that the claims were invalid.
`
`B
`
`First, the court considered whether it would be obvious
`to replace Saito's vertical engine with a horizontal one.
`
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`Gator Tail, LLC v. Mud Buddy LLC, 618 Fed.Appx. 992 (2015)
`
`Because Saito used a vertical drive shaft motor, the whole
`propulsion unit had to hang off the back of a boat. This,
`in turn, created balance problems. The court found that
`one of ordinary skill would be motivated to solve this
`balance problem by moving Saito's engine further into
`the boat—above the transom. And “the expert witnesses
`tended to agree that in order to relocate the engine
`above the transom, one of ordinary skill in the art would
`necessarily substitute Saito's vertical drive-shaft engine for
`a horizontal drive-shaft engine.” Broussard, 29 F.Supp.3d
`at 775. In addition, the court was persuaded by expert
`testimony that one of ordinary skill would use a timing
`belt to connect a horizontal drive engine to the horizontal
`propeller. Overall, the court concluded this was a case
`where there were a limited number of design options
`available. And one of ordinary skill would have seen the
`benefit of upgrading Saito in the way Gator Tail's patents
`did.
`
`The district court then conducted a separate obviousness
`inquiry, based primarily on the Torrey Patent. The only
`significant limitation present in Gator Tail's patents,
`but missing from the Torrey Patent, is the elongated
`drive housing. This drive housing refers to the overall
`housing that contains the engine, the timing belt, and
`the connection to the propeller in the lower portion.
`And the district court found that, like Mr. Broussard
`and the Saito inventors, a person of ordinary skill would
`be motivated to improve on the long tail motor with a
`short tail design. Furthermore, implementing the short tail
`requires an elongated drive housing. Therefore, the court
`concluded that claim 1 of both patents was an obvious
`combination of prior art elements.
`
`Concluding that the defendants established a prima facie
`case of obviousness, the district court then considered
`Gator Tail's evidence of secondary considerations *998
`—as potentially objective evidence of non-obviousness.
`The court determined that Gator Tail's evidence of
`commercial success was not enough to support a finding of
`non-obviousness. Similarly, the court was not persuaded
`by Gator Tail's arguments of unexpected results, long
`unmet need, failure of others, or copying.
`
`II
`
`On appeal, Gator Tail makes three main arguments
`challenging the district court's obviousness analysis: that
`
`the court failed to give proper deference to the PTO,
`that the Saito reference teaches away from the claimed
`invention, and that the court failed to correctly consider
`evidence of Gator Tail's commercial success.
`
`Obviousness is a question of law, which this Court reviews
`de novo, and underlying factual questions are reviewed
`for clear error. Scanner Techs. Corp. v. ICOS Vision Sys.
`Corp. N.V., 528 F.3d 1365, 1379 (Fed.Cir.2008).
`
`A
`
`[1]
` Gator Tail complains that the district court
`misunderstood
`the nature of PTO reexamination
`proceedings, which led the court to misapply the
`presumption of validity. Brief for Plaintiff–Appellant at
`35–36, Gator Tail v. Mud Buddy, Nos. 14–1747, 14–
`1748 (Fed.Cir. Nov. 3 2014); see also 35 U.S.C. § 282.
`According to Gator Tail, the court overemphasized the
`PTO's interim rejections, and therefore found that the
`“ultimate acceptance of those patents was half-hearted
`and due little deference.” Brief for Plaintiff–Appellant at
`35.
`
`to consider a PTO
`District courts are directed
`reexamination decision as evidence when determining
`invalidity. Fromson v. Advance Offset Plate, Inc., 755
`F.2d 1549, 1555 (Fed.Cir.1985). While the court must
`consider the reexamination as evidence, it is not bound
`by the PTO's decision. Id. at 1555. Here, the district court
`discussed the PTO proceedings at length, and explained
`why it did not afford substantial weight to the PTO's
`decision.
`
`In particular, the court credited expert testimony
`introduced during trial—testimony which was contrary to
`declarations submitted during reexamination and which
`undermined the PTO's reasoning. Gator Tail's expert
`declaration to the PTO stated that one of ordinary skill
`would be discouraged from reorienting the engine in Saito
`to match the claimed horizontal engine. And the PTO
`examiner relied heavily on that declaration when allowing
`the patents. Broussard, 29 F.Supp.3d at 782. However,
`at trial, all parties' experts admitted that one of ordinary
`skill would be motivated to substitute the vertical engine
`with a horizontal one to overcome balance problems.
`See, e.g., Broussard, 29 F.Supp.3d at 775–76, 782–83.
`The court considered the trial testimony to be a more
`
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`Gator Tail, LLC v. Mud Buddy LLC, 618 Fed.Appx. 992 (2015)
`
`complete picture of the evidence, and concluded that the
`PTO decision on reexamination deserved less weight. The
`district court's consideration of the PTO reexamination
`was not clearly erroneous.
`
`B
`
`[2]
` Next, Gator Tail argues that the Saito reference
`unequivocally teaches away from using a horizontal
`engine in a short tail motor. And, where a reference
`teaches away from the claimed invention, the patents
`are more likely to be non-obvious. See KSR Int'l Co. v.
`Teleflex, 550 U.S. 398, 416, 127 S.Ct. 1727, 167 L.Ed.2d
`705 (2007). According to Gator Tail, the district court
`disregarded Saito's teaching away. However, we agree
`with the district court that Saito does not teach away from
`Gator Tail's patents.
`
`A reference teaches away from a claimed invention “when
`a person of ordinary *999 skill, upon reading the
`reference, would be discouraged from following the path
`set out in the reference, or would be led in a direction
`divergent from the path that was taken by the applicant.”
`In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994). References
`may also teach away if, when taking the two references in
`combination, it would produce a “seemingly inoperative
`device.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339,
`1354 (Fed.Cir.2001).
`
`On the other hand, if a reference describes a modification
`as “somewhat inferior,” then the reference does not teach
`away. Gurley, 27 F.3d at 553. “A reference does not teach
`away ... if it merely expresses a general preference for
`an alternative invention but does not ‘criticize, discredit,
`or otherwise discourage’ investigation into the invention
`claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 567 F.3d 1314, 1327 (Fed.Cir.2009).
`
`The Saito Patent does not teach away from the use of
`horizontal motors. Instead, it describes the shortcomings
`of long tail motors that use horizontal engines. For
`example, the Saito Patent explains how the horizontal
`engine motors that were on the market at the time
`took up too much space in the boat. The Saito Patent
`also describes the limited range of movement enabled
`by the long tail motor. In fact, the Saito Patent states
`that it was “directed towards several embodiments of
`outboard marine propulsion systems that overcome the
`
`disadvantages of the prior art ...” U.S. Patent No.
`5,741,165 col. 1 ll. 45–55.
`
`Nowhere does Saito suggest that using a horizontal engine
`would render the motor inoperable. It merely describes
`the benefits of its vertical engine when compared to the
`dominant prior art—the long tail motor. These are not
`statements that would deter one of ordinary skill from
`combining features of the long-tail motor with the Saito
`Patent. See United States v. Adams, 383 U.S. 39, 52,
`86 S.Ct. 708, 15 L.Ed.2d 572 (1966) (finding that one
`of ordinary skill in the art would have to ignore long-
`accepted factors in the field of wet batters to arrive at the
`claimed invention). In fact, the district court heard several
`experts testify regarding why one of ordinary skill in the
`art would be motivated to replace Saito's vertical motor
`with a horizontal one.
`
`The Saito Patent explains why it is an improvement over
`the prior art—prior art that had a horizontal engine.
`Therefore, Saito inevitably suggests that horizontal
`engines are inferior to its vertical engine. However, these
`statements do not teach away from Gator Tail's invention.
`
`C
`
`[3]
` Finally, Gator Tail argues that the district court
`applied the wrong legal test when considering evidence of
`commercial success. Any error by the district court was,
`however, harmless error because Gator Tail has failed to
`produce evidence of success suggesting the patents are not
`obviousness.
`
`Evidence of commercial success is only relevant to
`the obviousness inquiry if “there is a nexus between
`the claimed invention and the commercial success.”
`Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
`1312 (Fed.Cir.2006). Where the marketed product is
`coextensive with the claimed features, then the court
`should presume that commercial success of the product
`is due to the patented invention. Brown & Williamson
`Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130
`(Fed.Cir.2000).
`
`According to Gator Tail, the district court failed to
`presume that the company's commercial success was due
`to the patented invention. Instead, the court incorrectly
`*1000 evaluated whether individual patented features
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`were present in the prior art. And where an individual
`feature was present in the prior art, the court concluded it
`was not relevant to commercial success.
`
`In this case, the parties do not dispute that the Gator Tail
`product embodies the patents in question. Therefore, the
`court should have presumed that any commercial success
`of Gator Tail's motors was a function of the claimed
`patent. And that commercial success should have weighed
`in favor of non-obviousness, unless the defendants proved
`the alleged success was due to something else. See Brown
`& Williamson, 229 F.3d at 1130 (once the patentee
`shows that the patent and product are coextensive, the
`“burden shifts to the party asserting obviousness to
`present evidence to rebut the presumed nexus”).
`
`“This court has noted in the past that evidence related
`solely to the number of units sold provides a very weak
`showing of commercial success, if any.” In re Huang,
`100 F.3d 135, 140 (Fed.Cir.1996) (citing Cable Elec.
`Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026–27
`(Fed.Cir.1985)). Because Gator Tail failed to introduce
`any evidence that establishes commercial success, the
`court's arguably flawed nexus analysis is harmless error.
`
`CONCLUSION
`
`All of the claims at issue of the two patents in suit are
`invalid under 35 U.S.C. § 103. The amended judgment of
`the district court is affirmed.
`
`However, if there was any error in the district court's nexus
`analysis, it was harmless. In this case, Gator Tail's only
`evidence of commercial success is the fact that it sold zero
`motors in 2004 and by 2014 it was selling one thousand
`motors per year. Gator Tail has failed to establish the
`overall size of the mud motor market, the size of the
`short tail motor market, or any other facts that would
`indicate whether selling one thousands units per year is a
`commercial success in this industry.
`
`AFFIRMED
`
`No costs.
`
`All Citations
`
`618 Fed.Appx. 992
`
`End of Document
`
`© 2019 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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