Law360 (May 24, 2021, 5:54 PM EDT) — A federal jury in Tennessee has found that claims in two patents held by a self-proclaimed wakesurfing pioneer were invalid, handing a victory to wakeboarding and tow boat manufacturer Skier’s Choice in an infringement fight.
The verdict came down late Friday, clearing Tennessee-based Skier’s Choice Inc. of all the infringement claims that Malibu Boats LLC leveled in multiple — later consolidated — suits in 2019. Before the trial started, U.S. District Judge Jon P. McCalla ruled that Skier’s Choice already infringed one of the patent’s claims, but the 11-person jury also found that all the claims Malibu asserted in its patents were invalid in the first place.
“We are disappointed with the verdict, and Malibu is evaluating its options for the future of that case. Malibu continues to maintain a broad and robust portfolio of patents, claims and applications related to wakesurfing beyond the four claims that were at issue in this decision,” Cameron Westin of O’Melveny & Myers LLP, who represented Malibu in the case, told Law360 on Monday.
The verdict came after the end of a 10-day trial between the rivals. It featured a group excursion to the court’s parking lot, where jurors had the chance to look at boats made by the companies, which were arranged in order of when the surf system in each was released, according to filings in the case.
The jury, which had one member excused during the trial, found that all the asserted claims in the patents were obvious as anticipated as well invalid for lacking an adequate description of the invention in the patent.
Friday’s verdict followed a mid-trial non-infringement win for Skier’s Choice on May 16, after Judge McCalla ruled that Malibu’s “expert’s conclusions are not supported by the factual record” and scratched out one of the patents Malibu had asserted against Skier’s Choice.
All the patents covered wakesurfing technology, which, unlike wakeboarding, requires a larger wave that’s achieved by weighing a boat down on one side, allowing a surfer to ride the boat’s wake like a wave. Malibu’s patent-protected surf gate lets boaters adjust the surf zone in seconds “at the push of a button,” according to its complaint.
Malibu debuted it back in 2012, claiming its invention eliminated what used to be a “cumbersome” and dangerous process that requires boaters to shift hundreds of pounds of water into ballast tanks on the opposite side of the boat, along with its passengers.
The success and popularity of the invention led competitors to introduce their own surf systems, Malibu claimed, and the company began leveling infringement suits against rivals in the boating world shortly after. Over the past decade, Malibu has inked license agreements with MasterCraft Boat Co. LLC, Nautique Boat Company Inc., Chaparral Boats Inc. and Tige Boats Inc., among others.
Last year, Malibu CEO Jack Springer, who testified at trial, claimed that the company licenses its IP to more than 20 boating brands and claimed that “every significant towboat [original equipment manufacturer] now licenses Malibu’s patents,” except for Skier’s Choice.
Malibu’s arguments to the jury cast Skier’s Choice as an outlier in the marketplace in its refusal to license the technology, and jurors sorted through the language of those licensing agreements.
“You have heard testimony of licenses and settlement agreements between Malibu and third parties concerning patents, including the asserted patents. These third-party licenses and settlement agreements are not the result of a final ruling or judgment by a court or a jury,” Judge McCalla told the jury, according to filings.
Representatives for Skier’s Choice did not respond to a Monday request for comment on the verdict.
The patents-in-suit are U.S. Patent Nos. 10,322,777; and 9,260,161.
Malibu is represented by Cameron Westin, Darin Snyder, David Almeling and Meng Xu of O’Melveny & Myers LLP, and Michael E. Robinson and Matthew M. Googe of Robinson IP Law PLLC.
Skier’s Choice is represented by Ian Garrett McFarland, John T. Winemiller, R. Bradford Brittian and Lindsay Jones of Merchant & Gould PC, and Michael J. LaBrie, Spencer F. Smith and Zachary A.P. Oubre of McAfee & Taft.
The case is Malibu Boats LLC v. Skier’s Choice Inc, case number 3:19-cv-00225, in the U.S. District Court for the Eastern District of Tennessee.
–Additional reporting by Britain Eakin. Editing by Adam LoBelia.
Originally published at Law360 on Monday, May 24, 2021