ZUP, LLC v. Nash Manufacturing, Inc.,
MEMORANDUM OPINION. See for complete details. Signed by District Judge Henry E. Hudson on 01/13/2017. (nbrow)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
NASH MANUFACTURING, INC.,
JAN I 3 20!7
CLERK, U.S. DISTRICT COURT
Civil Action No. 3:16-CV-125-HEH
(Granting Defendant's Motion for Summary Judgment)
Plaintiff ZUP, LLC ("ZUP" or "Plaintiff') brings suit against Defendant Nash
Manufacturing, Inc. ("Nash" or "Defendant") after a proposed business deal for a joint
manufacturing venture turned sour. Both ZUP and Nash manufacture water recreational
devices, with the former being a relative newcomer to the industry and the latter having
worked in the area for over fifty years.
ZUP entered the market in 2012 with the introduction of its "ZUP Board,"
patented as U.S. Patent No. 8,292,681 (the "'681 Patent"). A year later, ZUP and Nash
began discussions about a potential partnership, which eventually dissipated. Soon
thereafter, Nash brought its "Versa Board" to market.
In response to Nash's new product, ZUP filed the present suit alleging four counts:
contributory infringement of the '681 Patent (Count I); inducement of infringement of the
'681 Patent (Count II); trade secret misappropriation (Count III); and breach of contract
(Count IV). Nash brought two counterclaims against ZUP, seeking declaratory relief
regarding non-infringement (Counterclaim I) and declaratory relief regarding invalidity
of the apparatus and method claims-Claims 1and9 respectively-of the '681 Patent
This matter is currently before the Court on Nash's Motion for Summary
Judgment, filed on September 14, 2016. (ECF No. 35.) Both parties filed memoranda
supporting their respective positions. Oral argument followed on November 16, 2016.
For the reasons discussed herein, the Court will grant the Motion as to Defendant's
Counterclaim II-rendering Counts I and II of Plaintiffs Complaint and Defendant's
Counterclaim I moot-and as to Counts III and IV of Plaintiffs Complaint.
Consequently, this case will be dismissed with prejudice.
As required, the Court resolves all genuine disputes of material fact in favor of the
non-moving party and disregards those factual assertions that are immaterial. Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Applying this standard, the Court
concludes that the following narrative represents the facts for purposes of resolving the
Motion for Summary Judgment.
In or around 2008, Glen Duff, ZUP's Chief Innovative Officer, and his wife
bought a boat and joined a local water skiing club. (Compl.
12; ECF No. 1.) Through
their volunteer activities with their church, the Duffs took groups of kids on their boat to
teach them how to water ski and wakeboard. (Id.
13.) During these outings, Glen Duff
noticed how difficult it was for many of the children to fully engage the water
recreational devices. (Id.) As a result, he decided to develop a new product that would
"allow any kind of rider, regardless of athleticism or amount of upper body strength, to
get up and achieve a full standing and riding position." (Id.) Over the next four years,
Duff and others tested various board designs until they developed a working prototype of
the ZUP Board. (Id. ,-r 15.) This new board allows riders "to transfer easily from a prone
position, to a kneeling position, to a full upright standing position," thereby permitting
"the widest spectrum of riders the most opportunity of experience." (Id. ,-r,-r 14, 16.)
The ZUP Board has a top surface and a bottom surface, two side-by-side foot
bindings located on the middle section of the board, two side-by-side handles on the front
section of the board, and a retractable tow hook attached to the front section of the board.
See generally U.S. Patent No. 8,292,681. Riders are instructed to grasp the handles and
lie flat on the board in a prone position. The retractable tow hook is attached to a tow
rope, which is in turn pulled by a boat. As the boat picks up speed, riders pull themselves
up on the board and assume a kneeling position. Then riders crouch on the board, still
grasping the handles for stability, and eventually place both feet in the side-by-side foot
bindings displaced on the middle section of the board. Riders finally release their grip
from the handles and then grasp the tow rope bar and disengage it from the retractable
tow hook on the board as they assume a full upright standing position.
While developing a working prototype of the new device, Duff arduously fought
to secure a patent for his new design, which he finally obtained on October 23, 2012. Id.
The '681 Patent includes twelve (12) total Claims, with Claim 1 covering the apparatus
and Claim 9 covering the method for using the ZUP Board. Id. at Claims 1, 9.
In September 2012, one month prior to the issuance of the '681 Patent, ZUP
formally introduced its new product at the Surf Expo, a trade show for the water sports
industry. (Compl. ii 17.) At some point during the spring of 2013, Nash became aware
that ZUP had entered the industry and saw the ZUP Board for the first time. (App. 255
Nash has been in the water recreational device industry for over fifty years and
"has designed and manufactured ... water skis, knee boards, wake boards and other
similar devices, and has sold these products to a variety of sporting goods retailers,
including Bass Pro Shop, Academy Sporting Goods, Dick's Sporting Goods, Big Five
Sporting Goods and others." (Mem. in Supp. of Mot. for Summ. J. 2.) Nash's president,
Keith Parten, is the named inventor for several patents, including an aquatic recreational
system with a retractable tow hook (U.S. Patent No. 7,530,872 B2), a retractable tow
hook (U.S. Patent No. 7,537,502), a water recreation board with a pass-through tow rope
(U.S. Patent No. 6,042,439), a towing harness for water recreational boards (U.S. Patent
No. 6,306,000), a design of a wake ski (U.S. Design Patent No. D557,635), a design of a
towed inflatable device (U.S. Design Patent No. D650,462), and a method for
manufacturing a skate board (U.S. Patent No. 921,513).
An initial round of conversations between the two parties concerning a potential
manufacturing deal took place in the fall of 2013. (See App. 271.) Before engaging in
serious discussions, it appears that ZUP requested that the parties enter into a
confidentiality agreement. (See id.) Parten questioned the necessity of such a contract on
attached a 567-page appendix to its Memorandum in Support of its Motion for Summary
Judgment. ZUP also attached a supplemental appendix to its Response, where it continued the numbering
from Nash's appendix. The Com1 will consider both appendices as one document and will cite to the
September 18, 2013, noting that"[w ]e just need a sample so we can quote you a price to
build your item. I assume we could just order one .... " (Id. (ellipses in original).)
Without signing the agreement, Nash obtained a sample of the board. (See id. at 272.)
On December 10, 2013, Parten determined that Nash would "[n]ever do this item" and
sent the board back to ZUP. (Id.)
Nevertheless, a little more than one month later, Parten reached out to Duff on
January 31, 2014, "to talk ... regarding production and distribution of [the] ZUP board."
(Id. at 451.) Before meeting with Nash to discuss the possibility of entering into a
manufacturing and distribution partnership or potential sale of the company, ZUP again
required Nash to execute a confidentiality agreement, which it did on February 5, 2014.
(Id. at 273-75.) After the agreement was signed, ZUP asserts that it provided Nash "with
confidential and proprietary information, including, but not limited to, information
regarding: (a) ZUP's vendors; (b) component costs and materials; (c) patent information;
(d) marketing plans and strategies; (e) retailer arrangements and contacts; (f) new design
concepts and materials; (g) ZUP's intellectual property development and enforcement
strategies; and (h) ZUP's proprietary roto-molded 3D computer designed model."
On February 5, 2014, the same day that the parties entered into the confidentiality
agreement, representatives from ZUP and Nash held a telephone conference about the
proposed deal. (See generally App. 568-72.) During the meeting, Parten allegedly told
ZUP's representatives that they "had a great product" and noted that Nash "ha[d] no
intentions in the next few years of doing anything that has any resemblance to the ZUP
Board." (Id. at 568, 572.) Also during that conversation, Nash inquired about the
issuance of the '681 Patent. (Id. at 572 ("Will your patent hold up against [another
competitor's] new product[?]").)
Two days later, on February 7, 2014, Parten sent Duff an email with several
questions regarding three Claims in the '681 Patent. 2 (Id. at 462.) In response, ZUP
spoke with its patent attorney and forwarded the responses to Nash. (Id. at 461.) The
scope of the patent attorney's advice was explaining the difference between independent
and dependent patent claims. (See id.)
At the same time that he posed these questions to Duff, Parten asked Nash's patent
attorney, Eric Karich, to look at the '681 Patent, specifically asking "[h]ow can this be
issued?" (Id. at 306.) Karich responded, "It is supposedly an improvement over other
such boards, the claims are quite narrow." (Id.) Parten and the attorney later spoke by
phone, and Parten asked whether Nash's proposed Versa Board would infringe the '681
Patent. (Id. at 259 ii 11.) Karich told Parten that Nash's new product would not infringe,
and later memorialized that opinion in writing on October 6, 2014. (Id. at 307-13.)
In the meantime, discussions between Nash and ZUP ended without reaching an
agreement. (See id. at 464-86.) And in May 2014, Nash brought its new product, the
Versa Board, to market. (Id. 256 ii 8.)
Like the ZUP Board, the Versa Board has a top surface and a bottom surface, with
a retractable tow hook disposed on the front section of the board. On the top surface of
Significantly, none of the questions concerned either Claim 1 or Claim 9, which are at issue in this case.
(See App. 462.)
the board, there are several holes configured in different patterns. Users are instructed to
attach handles or foot bindings in these holes in one of four configurations. In the first
configuration, users can choose not to attach either the handles or the foot bindings to the
board and use it for ''wakeskating" or surfing. (Mem. in Supp. of Mot. for Summ. J. 30.)
In the second, users can choose to attach only the foot bindings to the board in a side-byside, horizontal configuration, allowing the user to water ski. (Id.) In the third
configuration, users can choose to attach only the foot bindings to the board in a vertical
configuration so they can wakeboard. (Id. at 29.) And in the fourth instructed
configuration, users can choose to attach only the handles to the Versa Board so they can
use it for kneeboarding. (Id. at 31.)
Nash instructs its customers to only use the product in these four ways and
specifically warns against leaving the handles attached while standing up on the board.
(Mem. in Supp. of Mot. for Summ. J. 33-34; see also App. 387-88.) Nevertheless, it is
feasible for a user to ignore those instructions and attach both the handles and the foot
bindings in a configuration that is nearly identical to the ZUP Board.
In September 2014, Nash unveiled its Versa Board at the 2014 Surf Expo.
(Comp!. if 23.) During the event, Duff approached Parten and expressed his concern that
Nash's product infringed on the '681 Patent. (Duff. Deel. if 7.) In response, Parten
allegedly told him to "get over it" and said that patents are meaningless in the water
recreation industry. (Id.) Nevertheless, Duff reached out to Parten one more time in an
attempt to secure a manufacturing or distribution deal and to avoid litigation. (App. 487,
489.) This last-ditch effort bore no fruit.
As a result, ZUP brought suit on March 1, 2016, and Nash filed its Answer and
Counterclaims on May 5, 2016. Upon reviewing the Complaint and counterclaims, the
Court finds that it has original jurisdiction over this matter pursuant to 28 U.S.C. §§
1331, 1338(a), and 1367(a).
After extensive discovery, Nash filed the present Motion for Summary Judgment
on September 14, 2016. (ECF No. 35.)
The analytical framework for reviewing motions for summary judgment is well
settled in both the Fourth and Federal Circuits. 3 Pursuant to Rule 56 of the Federal Rules
of Civil Procedure, summary judgment is appropriate "if the movant shows that there is
no genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law." Fed. R. Civ. P. 56. The relevant inquiry in a summary judgment analysis
is "whether the evidence presents a sufficient disagreement to require submission to a
jury or whether it is so one-sided that one party must prevail as a matter of law."
Anderson, 477 U.S. at 251-52. In reviewing a motion for summary judgment, the Court
must view the facts in the light most favorable to the non-moving party. See id. at 255;
see also Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 597
The party seeking summary judgment has the initial burden of showing an absence
of a material fact in dispute. Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). To
The Federal Circuit applies its own law with respect to issues of substantive patent law and procedural
issues pertaining to patent law. "For issues not unique to patent law, [the Federal Circuit] appl[ies] the
law of the regional circuit in which [the case] would otherwise lie." i4i Ltd P'ship v. Microsoft Corp.,
598 F.3d 831, 841 (Fed. Cir. 2010).
defeat summary judgment, the nonmoving party must go beyond the mere pleadings and
provide affidavits, depositions, interrogatories, or other evidence to demonstrate that
there is in fact a genuine issue for trial. Id. at 324. If a party who bears the burden of
proof at trial fails to come forward with sufficient evidence to establish the existence of
an element essential to that party's case, summary judgment should ordinarily be granted.
Anderson, 477 U.S. at 248.
This methodology is applied in a similar fashion to patent infringement cases. To
prevail, the party claiming infringement must establish that the accused product meets
every limitation recited in the accused claim, either literally or under the doctrine of
equivalents. V-Formation, Inc. v. Benetton Group SpA, 401F.3d1307, 1310 (Fed. Cir.
2005); Lifescan, Inc. v. Home Diagnostics, Inc., 76 F.3d 358, 359 (Fed. Cir. 1996).
Challenges to the validity of a patent, however, face a higher burden of proof.
Noting nearly a century of seamless jurisprudence, the United States Supreme Court
stated in Microsoft v. i4i Limited Partnership that "there is a presumption of [patent]
validity [that is] not to be overthrown except by clear and cogent evidence." 564 U.S. 91,
101 (2011) (citations omitted). In order to prove invalidity, the movant "must submit
such clear and convincing evidence of invalidity so that no reasonable jury could find
otherwise." Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001).
A. Claims 1 and 9 of the '681 Patent Are Invalid Due to Obviousness
Congress has stated that "[an issued] patent shall be presumed valid." 35 U.S.C. §
282(a). 4 Pursuant to this direction, Congress has also provided that "[e]ach claim of a
patent (whether in independent, dependent, or multiple dependent form) shall be
presumed valid independently of the validity of other claims." Id.
In challenging the validity of Claims 1and9 of the '681 Patent-both of which
are independent claims-Nash cites Section 103 of the Patent Act, which forbids the
issuance of a patent where "the differences between the claimed invention and the prior
art are such that the claimed invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having ordinary skill in the art to
which the claimed invention pertains." 35 U.S.C. §103(a).
The Supreme Court clarified the analysis trial courts are to use when assessing a
Section 103 claim of obviousness in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007).
In that case, the Supreme Court held that "[t]he ultimate judgment of obviousness is a
legal determination," id. at 427, to be assessed based on several underlying factual
findings, including: (1) "the level of ordinary skill in the pertinent art" at the time of the
invention; (2) "the scope and content of the prior art"; (3) the "differences between the
prior art and the claims at issue"; and (4) objective evidence ofnonobviousness such as
commercial success, long felt but unsolved needs, evidence of acclaim from the
inventor's peers, and the failure of others to innovate. Id. at 406 (quoting Graham v.
ZUP argues that the "factual determination [that Claim 1 was patentable over the prior art] made by the
examiner is entitled to deference." (Resp. to Mot. for Summ. J. 21.) While this is true, the Federal
Circuit has held that such deference "takes the form of the presumption of validity under 35 U.S.C. §
282." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir. 2007). Therefore, while the existence of
uncited prior art dqes not weaken the presumption, it does "make it easier for the party challenging the
validity of the patent to carry its burden of proof. Alco Std Corp. v. Tennessee Valley Auth., 808 F.2d
1490, 1497 (Fed. Cir. 1986).
John Deere Co. ofKansas City, 383 U.S. 1, 17-18 (1966)); see also Eli Lilly & Co., 619
F.3d at 1336; Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325, 1338 (Fed.
This Court has previously held that "[t]he determinative question" in
assessing a claim of obviousness "is whether 'one of ordinary skill in the art would
have been motivated to use the teachings of a prior art process, in its normal
disclosed operation, to create a product that [he] claims in a subsequent patent."
Rutherford Controls Int'l Corp. v. Alarm Controls Corp., Civ. Action No.
3:08CV369-HEH, 2009 WL 3423849, at *8 (E.D. Va. Oct. 23, 2009) (alteration in
original) (quoting LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 275 FJd
1347, 1359 (Fed. Cir. 2001)). "The question is not whether the combination was
obvious to the patentee but whether the combination was obvious to a person with
ordinary skill in the art." KSR, 550 U.S. at 420.
Therefore, the Court will assess the four KSR factors in determining whether
Claims 1 and 9 of the '681 Patent are invalid due to obviousness. 5
The level of ordinary skill in the pertinent art
Nash has proposed that one of ordinary skill in the art 2008 was "a person with at
least 3-5 years' experience in the design and manufacture of water recreational devices or
ha[s] a bachelor's degree in mechanical engineering." (App. 259 ifl2; App. 518.) ZUP
does not dispute this definition. (Resp. to Mot. for Summ. J. 14.)
The Federal Circuit has affirmed trial courts' usage of the KSR factors when invalidating patents due to
obviousness on summary judgment on multiple occasions. See, e.g., Ohio Willow Co. v. Alps South, LLC,
735 F.3d 1333 (Fed. Cir. 2013); Odom v. Microsoft Corp., 429 F. App'x 967 (Fed. Cir. 2011).
Because the parties are in agreement, the Court will treat this factual finding as
The scope and content of the prior art
Before discussing the scope and content of the prior art, the Court finds it
necessary to provide some context by detailing the Claims that Nash is challenging on
Claim 1 of the '681 Patent-the apparatus claim-teaches a water recreation
a riding board having a top surface, a bottom surface, a front section, a
middle section, and a rear section;
a tow hook disposed on the front section of the riding board;
first and second handles disposed side-by-side on the front section of the
top surface of the riding board aft of the tow hook;
first and second foot bindings disposed side-by-side on the middle section
of the top surface of the riding board aft of the first and second handles; and
a plurality of rails protruding from the bottom surface of the riding board
and extending substantially the full length of the riding board:
wherein the tow hook includes a rearward-facing concave section sized to
receive a tow rope bar and positioned to allow the riding board to be pulled
in a forward direction by a tow rope attached to the tow rope bar,
wherein the first and second handles and the first and second foot bindings
are configured for simultaneous engagement by a rider to position the rider
in a crouching stance facing in a forward direction,
wherein the plurality of rails are disposed relative to a longitudinal axis
along the bottom surface of the riding board, the longitudinal axis
projecting rearwardly from a reference location substantially central to the
front section, and each of the plurality of rails is laterally spaced closer to
the longitudinal axis nearest the rear section of the riding board than the
[sic] each of the plurality of rails is laterally spaced from the longitudinal
axis nearest the front section of the riding board thereby allowing the water
that moves across the bottom surface nearest the front section of the riding
board to funnel towards the bottom surface nearest the rear section of the
riding board for the purpose of generating lift force against the bottom
surface of the riding board.
Claim 9 of the '681 Patent-the method claim-teaches a method of riding the
apparatus described in Claim 1 by:
placing a water recreation device into a body of water, the water recreation
a riding board having a top surface, a bottom surface, a front section,
a middle section, and a rear section;
a tow hook disposed on the front section of the riding board;
first and second handles disposed side-by-side on the front section of
the top surface of the riding board aft of the tow hook; and
first and second foot bindings disposed side-by-side on the middle
section of the top surface of the riding board aft of the first and
attaching a tow rope to said tow hook, said tow rope also attached to a
grasping the first and second handles of the water recreation device to
establish a prone start position by a rider;
maintaining said prone start position by the rider until the riding board has
achieved a substantially parallel position relative to the surface of the water;
achieving a kneeling position by the rider by placing both knees on the top
surface of the riding board;
achieving a crouching position by the rider by placing a first foot into the
first foot binding and then placing a second foot into the second foot
grasping the tow rope by the rider by releasing the first and second handles;
removing the tow rope from the tow hook by the rider;
standing on the riding board by the rider while continuing to grasp the tow rope.
Having set out the specific Claims, the Court will now shift its focus to the scope
and content of the prior art at the time the '681 Patent issued.
"'Prior art' in the obviousness context includes the material identified in [35
U.S.C.] section 102(a)." Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1305 (Fed. Cir.
2006) (citing Riverwood Int'/ Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003)). Section 102(a) defines prior art as inventions that were "patented, described in a
printed publication, or in public use, on sale, or otherwise available to the public before
the effective filing date of the claimed invention," which in this case was December 2,
2008. 6 35 U.S.C. § 102(a)(l). "Art that is not accessible to the public is generally not
recognized as prior art." Ormco, 463 F.3d at 1305 (citing Minn. Mining & Mfg. Co. v.
Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002); OddzOn Prods., Inc. v. Just Toys,
Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997)).
The parties have identified eleven examples of prior art for the Court to examine.
The Court will address each in chronological order.
a. Atlantic Aquatic Stunt Team Board (1938-47) ("Atlantic Aquatic
Nash alleges that ZUP neglected its duty to disclose a photograph of the Atlantic
Aquatic Reference-a device apparently in use between 1938 and 1947-with its patent
ZUP initially filed its application for a patent of the ZUP Board on December 2, 2009 (App. 27), though
it claimed the benefit of earlier priority based upon the filing of a provisional application one year earlier,
on December 2, 2008. See Application No. 61/200,637 (filed on Dec. 2, 2008).
application, pursuant to 37 C.F.R. §1.56. (See Mem. in Supp. of Mot. for Summ. J. 20 n.
3, 20-21.) The picture of the Atlantic Aquatic Reference attached to Nash's
Memorandum in Support of its Motion for Summary Judgment shows a water recreation
device with side-by-side handles and side-by-side foot locators, both on the top side of
the board. (Id. 21.)
The only evidence that Nash provided regarding the source of the photograph was
an email attaching the image with the subject line reading "Photo from Nov. 6, 2013."
(App. 314.) Nash did not clarify how it obtained the image at oral argument. Instead, it
merely noted that it found the photograph on the internet.
As an initial matter, even if the Atlantic Aquatic Reference is admissible-which
is a point of contention between the parties-the Court has serious doubts as to whether it
qualifies as prior art. Nash has provided no evidence that the Atlantic Aquatic Reference
was "patented, described in a printed publication, or in public use, on sale, or otherwise
available to the public" prior to December 2, 2008. 35 U.S.C. § 102(a). Moreover, since
Nash was unable to provide a specific source for the picture, the Court is wary that the
reference may "not [be] accessible to the public." Ormco, 463 F.3d at 1305.
Therefore, the Court will not address the Atlantic Aquatic Reference in its
b. Schmitt, U.S. Patent 3,918,114 ("Schmitt Patent")
The Schmitt Patent, issued on November 11, 1975, teaches a water ski with "a
plurality of grooves which extend inwardly from each end a portion of the length of the
ski." U.S. Patent No. 3,918,114, abstract (filed May 24, 1974). The skis have a top
surface and a bottom surface.
According to Figures 1 and 2, the grooves along the bottom surface of the skis are
disposed relative to a longitudinal axis projecting rearwardly from a reference location
substantially central to the front section. Id. at figs. 1, 2. In those Figures, the rails are
spaced closely together at the longitudinal axis nearest the rear section of the riding board
and fan out to the sides of the board as they move towards the front section. Id.
In the preferred embodiment of the board, the rails converge, unlike the rails
taught in the '681 Patent. See id. However, the Schmitt Patent teaches that the front of
the skis will be out of the water when in use, thereby leading the submerged rails to
converge towards the rear of the board, like those on the ZUP Board. Id. at col. 1, 11. 5365.
c. Monreal, U.S. Patent No. 4,678,444 ("Monreal Patent")
The Monreal Patent, issued on July 7, 1987, teaches a "Water Gliding Scooter
Board" that is "intended to accommodate a rider gliding over water while towed from a
speed boat by a tow-rope." U.S. Patent No. 4,678,444, abstract (filed Feb. 24, 1986).
The patent depicts a board with a top surface and a bottom surface.
The device includes "a hard plastic hood" on the top surface of the board, which
allows for improved versatility of use by permitting riders to engage in a low kneeling,
high kneeling, or high sitting position. Id. at col. 1, 11. 39-43.
Two tow hooks-each of which can be engaged depending on the direction in
which the user is riding the board-are disposed on the front section of the board. Id. at
figs. 1-3, col. 3, 11. 11-22. The tow hooks include a rearward-facing concave section
sized to receive a tow rope. Id. at figs. 1-3. Additionally, the board has two sets of sideby-side foot bindings, disposed on the top surface of the board in the front and middle
d. Clark, U.S. Patent No. 5,163,860 ("Clark Patent")
The Clark Patent, issued on November 17, 1992, teaches a tow system for a water
board. U.S. Patent No. 5,163,860, abstract (filed Aug. 27, 1991). The patent depicts a
riding board with a top and bottom surface. The bottom surface "may be provided with
conventional strakes or grooves to facilitate planing on the water or directional stability."
Id. at col. 2, 11. 25-27. The top surface of the board has a recess for holding a tow rope
handle as the board is being towed. Id. at col. 3, 11. 1-10.
According to the patent, the addition of this recessed tow hook allows a user to
"lie prone on the board and grip the board with both hands as the towing operation
begins. As the towing speed increases, the user may either remain prone, pull himself
into a kneeling position, or rise to a standing position without worrying about holding the
tow rope." Id. at col. 1, 11. 41-46. Additionally, there is a leash on the board that is
attached to a bracket, which the user can grasp while kneeling or sitting on the board to
aid in stability while riding on the water. Id. at col. 2, 11. 30-34.
This invention was motivated by a desire to assist users of all skill levels in
achieving a riding position on kneeboards. See id. at col. 1, 11. 32-40.
e. Echols, U.S. Patent No. 5,083,955 ("Echols Patent")
U.S. Patent No. 5,083,955, entitled "Aquatic Recreational Towing Devices,"
issued on January 28, 1992. U.S. Patent No. 5,083,955 (filed Oct. 11, 1989). The
Echols Patent teaches a water recreation device with a top surface and a bottom surface.
The board has a tow hook on its front section that engages a removable handle, which is
connected to the tow rope. Id. at col. 5, 11. 35-57. The tow hook includes a rearward
facing concave section sized to receive the tow rope. See id. at figs. 8-10.
Figure 1 shows foot bindings, although they are not configured in a side-by-side
manner. See id. at fig. 1. And while the patent does not suggest the use of side-by-side
handles like the '681 Patent, the rider is instructed to hold on to the board or the handle
attached to the board-which in several embodiments is separate from the tow hook
handle-with one or both hands "to stabilize himself' before fully engaging the tow hook
handle to assume a standing or kneeling position. Id. at figs. 2, 3, 7-9, 12, col. 2, 11. 33-
34, col. 4, 11. 21-22.
Referencing the same feelings of exclusion cited by Duff in the creation of the
'681 Patent, Echols noted that he was motivated by a desire "to make it easier for a rider
to initiate the towing and positioning of [kneeboards and ski boards] preparatory to riding
and maneuvering them." Id. at col. 1, 11. 13-15, 28-38.
f. Stewart, U.S. Patent No. 5,797,779 ("Stewart Patent")
The Stewart Patent, issued on August 25, 1998, teaches a bodyboard with "a
differentiated topskin" to aid in rider maneuverability and stability. U.S. Patent No.
5,797,779 (filed Feb. 8, 1996). The board has a top surface and a bottom surface.
Noting that "the rider's grip is extremely important to maintaining bodyboard
control," id. at col. 1, 11. 38-39, the patent teaches the use of a "palm grip which provides
a rider handhold" and a "palm well" to aid in "gripping the side edge of the bodyboard
core." Id. at col. 2, 11. 56-57, 62-63. The palm grips are "positioned adjacent in a
forward corner of the board" and, in the preferred embodiment, "are raised and are given
enhanced surface friction characteristics." Id. at col. 6, 11. 9, 11-12. The palm wells are
located "just behind the palm grips," id. at col. 6, 11. 15, in order to provide the rider
something to grasp on to for aided stability.
Though the "palm grip" and the "palm well" do not amount to side-by-side
handles, like those found in the '681 Patent, the Court finds that they are functionally
g. Hornsby, et al., U.S. Patent 5,820,430 ("Hornsby Patent")
The Hornsby Patent, issued on October 13, 1998, teaches an aquatic recreational
device with a bifurcated hull to be used as a kneeboard by a pair of side-by-side riders.
U.S. Patent No. 5,820,430, abstract (filed Oct. 10, 1997). The board has a top surface
and a bottom surface.
According to figures 3, 4, and 6, there are a plurality of rails-channels and
skegs-which are disposed relative to a longitudinal axis along the bottom surface of the
riding board, the longitudinal axis projecting rearwardly from a reference location
substantially central to the front section. See id. at figs. 3, 4, 6. These rails were an
improvement over the then-existing prior art because they provided additional stability
for riders as they attempt to engage the board. See id. at col. 1, 11. 35-37.
h. Fleischman, U.S. Patent No. 5,979,351 ("Fleischman Patent")
U.S. Patent No. 5,979,351, entitled "Towable Recreational Water Sled," issued on
November 9, 1999. U.S. Patent No. 5,979,351 (filed May 2, 1998). The patent teaches a
"towable, flexible, unsinkable water sled for accommodating single or multiple riders."
Id. at abstract.
The patent depicts a water recreation device comprising a flexible board having a
top surface and a bottom surface. The image attached shows multiple handles secured to
the front of the board "that allow the riders to hang on while being towed." Id. at col. 2,
11. 45-46; see id. at fig. 1. A review of the patent demonstrates that these handles are
used for engaging the apparatus rather than to aid in rider stability, like those in the '681
Though used for different purposes, the Fleishmann Patent shows that the use of
side-by-side handles attached to the front of a water recreational device was present in the
prior art at the time the '681 Patent was issued.
i. Parten, et al., U.S. Patent No. 6,306,000 ("Parten '000 Patent")
U.S. Patent No. 6,306,000, entitled "Towing Harness for Water Recreation
Boards," issued on October 23, 2001. U.S. Patent No. 6,306,000 (filed Feb. 29, 2000).
Invented by Keith Parten and assigned to Nash, the Parten '000 Patent teaches an
"improved towing harness for use in combination with a water recreation device." Id. at
The patent depicts a water recreation device comprising a riding board with a top
surface and a bottom surface. The claimed invention is a tow rope that is connected to
the boat and passes through an eyelet in the front section of the board, which is then
attached to a handle that users can either engage or leave stationary on the board. Several
images depicting the patent's use contemplate riders in a variety of positions, such as
lying down, sitting, kneeling, or standing on the board. See id. at figs. 4-11. The patent
clearly anticipates riders moving between these positions while the board is in use. See
id. at col. 2, 11. 53-54 ("The rider may change positions while riding the board."), col. 6,
11. 18-44 (describing all of the positions in Claim 1 of the patent).
According to the Parten '000 Patent, the tow-rope configuration was already being
utilized in a commercial product called the Ski Skimmer at the time of issuance. Id. at
col. 5, 11. 33-34. The image of the Ski Skimmer attached to the patent shows a board
with first and second side-by-side foot bindings disposed on the middle section of the top
surface of the board, similar to those taught in the '681 Patent. Id. at fig. 14.
j. Fryar, U.S. Patent No. 6,585,549 ("Fryar Patent")
U.S. Patent No. 6,585,549, entitled "Momentum Induced Wakeboard Stabilization
System," issued on July 1, 2003. U.S. Patent No. 6,585,549 (filed Apr. 2, 2002). The
patent teaches a water recreation device comprising a riding board having a top surface
and a bottom surface.
Along the bottom surface are a plurality of rails (vanes) that are disposed relative
to the longitudinal axis of the board, projecting rearwardly from a reference location
substantially central to the front section. Id. at fig. 1. These rails extend substantially the
full length of the board. See id. Each of the plurality of rails is placed closer to the
longitudinal axis near the rear side of the board than those placed near the front side of
the board, allowing the water that moves across the bottom surface to funnel towards the
rear section of the board for the purpose of generating lift force. See id. at fig. 7A; see
also id. at col. 4, 11. 2-9 ("Figure 7A shows the flow of water over the generally planar
bottom surface in line with the longitudinal axis of the wakeboard. As the diagram
shows, the water flowing over the interior van surfaces of the vanes is channeled towards
the longitudinal axis of the wakeboard."). According to Nash's expert, Dr. Charles A.
Garris, Jr., "[i]t is well known in the art that the flow of fluid on the bottom of the
wakeboard has momentum that gives rise to lift forces according to Newton's Law of
motion." (App. 523.)
The patent's inventor, Jared Fryar, claims that using this channeling system on a
wakeboard "enhances the rider's control and hold while increasing the speed of the
wakeboard around [a] tum." '549 Patent, col. 2, 11. 5-9.
k. Parten, U.S. Patent No. 7,530,872 ("Parten '872 Patent")
The final piece of prior art offered by the parties, the Parten '872 Patent, teaches
an aquatic recreational device "configured for towing with a towline" and a method for
riding it. U.S. Patent No. 7,530,872, abstract (filed Feb. 23, 2005). The patent issued on
May 12, 2009. Also invented by Keith Parten, the patent depicts a kneeboard with a top
surface and a bottom surface. It has a retractable tow hook disposed on the front section
of the board. The tow hook includes a rearward-facing concave section to receive the
tow rope bar and is positioned to allow the board to be pulled in a forward direction by
the tow rope attached to the tow rope bar. Id. at figs. 2-4.
The apparatus contains straps on the board's midsection, preferably placed over
the rider's thighs to secure the user to the board. Id. at fig. 6. Next to the straps are sideby-side recesses for the user's knees. Id.
Like the ZUP Board, the Parten '872 Patent was specifically invented to "aid
young, weak, or inexperienced riders in achieving proper riding body positioning on an
aquatic recreational device." Id. at col. 2, 11. 49-51. The primary means of aiding those
riders was to use and incorporate a retractable tow hook within an aquatic recreational
device. Id. at col. 3, 11. 53-58.
Through its expert, Dr. Charles A. Garris, Jr., Nash asserts that the straps on the
midsection of the board have the same function as the side-by-side handles on the ZUP
board: to increase rider stability. (App. 520-21.) This position is a bit tenuous since it
appears that the straps' primary purpose is to secure the rider to the board rather than to
aid in stability. See '872 Patent, col. 5, 11. 18-19, 24-32. 7 However, Parten expressly
contemplated using a "type of rigid bar, semi-rigid bar, or other suitable device" instead
of straps to aid in stability. Id. at col. 5, 1. 39. Therefore, the Court will treat the concept
of using a rigid bar to aid in rider stability, like the side-by-side handles taught in the '681
Patent, as one contemplated by the prior art.
The differences between the prior art and the claims at issue
To aid in its analysis of Claims 1 and 9 in view of the prior art, the Court will first
recount the '681 Patent prosecution. The Court will then analyze the Claims at issue,
whether they are obvious in light of the prior art, and whether someone of ordinary skill
would have been motivated to combine the prior art references to create the apparatus and
method described in the '681 Patent.
"Kneeboard preferably comprises two straps adapted for releasable-interconnection with each other
through the use of hook-and-loop type fastening materials. More specifically, the hook-type material is
preferably permanently affixed to one strap and the loop type material is preferably permanently affixed
to the other strap; however, straps may be releasably joined through the use of buckles, knots, or other
suitable devices or means ofreleasably connecting the two straps." '872 Patent, col. 5 I. 24-32
a. Patent Prosecution
When initially filed, Claims 1 and 9 (formerly Claim 15) were much broader than
those that were issued in the final '681 Patent. And so, during the initial patent
prosecution, the examiner rejected all of the claims in the application. (App. 108.)
Relevant to the present matter is the examiner's determination that Claim 1was
anticipated by the Echols Patent and the Clark Patent, was obvious over the Monreal
Patent in view of the Clark Patent, and was obvious over the Hornsby Patent in view of
the Echols Patent. (Id. at 109-13.)
Additionally, the examiner initially rejected Claim 9 (formerly Claim 15) after
finding that it was anticipated by the Clark Patent. (Id. at 109-10 ("Clark teaches the
claimed method of riding a water recreation device, including the grasping of a handle (a
handle is anything designed to be grabbed by hand, and in this instance, such does not
define over the rail of the board), the removing of the tow rope from the deck attached
hook, and the subsequent standing of the operator.").)
As a result, Duff amended Claim 1 by arguing that the rails on the ZUP Board are
intended to provide lift as opposed to stability, like the ones contained in the Hornsby
Patent. (Id. at 127.) Duff also amended Claim 9 (formerly Claim 15) to include side-byside foot bindings, distinguishing them from the ones contained in the Monreal Patent.
(Id. at 132.)
Upon receiving the amendments, the USPTO issued a final action, again rejecting
all of the claims in the application. (Id. at 151.) The patent examiner noted that Duffs
argument regarding the rails' intended use in comparison to the Hornsby Patent was
insufficient as "[t]he claimed lift is a characteristic of all rails and fins." (Id. at 153.) The
examiner determined that Claim 1 was unpatenable as obvious over the Echols Patent in
view of the Fryar Patent. (Id. at 153-54 ("Echols discloses the claimed invention with
exception of the claimed protruding rails .... Fryar provides protruding rails on a bottom
of a water recreation device.").) He also rejected Claim 1 as obvious over the Hornsby
Patent in view of the Schmitt Patent and the Echols Patent. (Id. at 155-56 ("Hornsby ...
discloses the claimed invention with exception of a hook and handles and converging
rails .... Schmitt teaches the angling of such rails such that they converge as they
progress aft, thereby producing lift.... Echols ... shows ... a hook for engaging a tow
line with a handle lying on the deck, or as noted above ... a hook and a handle on the
deck.").) Finally, the examiner rejected Claim 1 as being obvious over the Monreal
Patent in view of the Fryar Patent and the Clark Patent. (Id. at 156-57 ("Monreal shows
the claimed invention with exception of a handle and protruding rails. Clark ... shows a
handle." And Fryar provides protruding rails on the bottom of a water recreation
The patent examiner similarly rejected Claim 9 (formerly Claim 15) as being
obvious over the Clark Patent in view of the Echols Patent and the Stewart Patent. (Id. at
158 ("Clark discloses the claimed method of riding with exception of using foot bindings
and the grasping handles .... Echols teaches a board generally as that of Clark, with the
provision of foot bindings .... Stewart teaches provision of handles in/on the top surface
of a riding board.").)
Subsequent to the USPTO's final rejection of the patent application, Duff, through
his attorneys, reached out to the patent examiner for an informal telephone interview,
which was held on June 7, 2012. (Id. at 163.) After the interview, the examiner issued a
summary of their discussion where he noted that Duffs inclusion of "side by side foot
bindings and handles configured for simultaneous engagement as now proposed ...
would appear to define over the rejection." (Id. at 167; see also id. at 177-78.)
Duff submitted a final round of amendments, which resulted in the issuance of the
'681 Patent. (Id. at 246.) Duff then assigned the patent to ZUP. (Id. at 250.)
Significantly, throughout the entire patent prosecution, there is no evidence that
the examiner referenced or contemplated the Fleischman Patent, the Parten '000 Patent,
or the Parten '872 Patent.
b. The prior art as it relates to Claims 1 and 9 of the '681 Patent
The central elements of Claims 1 and 9 of the '681 Patent are: ( 1) a riding board
with a top and bottom surface; (2) a tow hook dispensed on the front section of the board;
(3) a plurality of rails protruding from the bottom surface of the riding board; (4) side-byside handles disposed on the front section of the board; (5) side-by-side foot bindings
disposed on the middle section of the board; and (6) the simultaneous use of the handles
and foot bindings to achieve a standing position on the board.
Within the context of examining the prior art as it relates to Claims 1 and 9 of the
'681 Patent, the Court notes that the Federal Circuit has held that "[a] claim can be
obvious even where all of the claimed features are not found in specific prior art
references, where 'there is a showing of a suggestion or motivation to modify the
teachings of [the prior art] to the claimed invention."' Ormco, 463 F.3d at 1307 (second
alteration in original) (quoting SIEJA Neurosciences, Inc. v. Cadus Pharm. Corp., 225
F.3d 1349, 1356 (Fed. Cir. 2000)).
Additionally, the Supreme Court has stated that
[w ]hen there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or
her technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense.
KSR, 550 U.S. at 421. In simpler parlance, "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than yield
predictable results." Id. at 416. 8
Through this lens, the Court finds by clear and convincing evidence that Claim 1
of the '681 Patent would have been obvious to an ordinary person skilled in the art over
the Clark Patent in view of the Parten '000 Patent, the Parten '872 Patent, the Fleischman
Patent, the Stewart Patent, and the Fryar Patent.
The Clark Patent teaches all of the components of the apparatus Claim absent sideby-side foot bindings, and a plurality of rails protruding from the bottom surface of the
riding board. The Clark Patent discloses a board with a top surface and a bottom surface,
a recessed tow hook, and a handle-as the patent examiner noted, "a handle is anything
designed to be grabbed by hand." (App. 109-10.) The Parten '000 Patent discloses side8 But see
KSR, 550 U.S. at 418-19 ("[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently, known in the prior art. Although
common sense directs one to look with care at a patent application that claims as innovation the
combination of two known devices according to their established functions, it can be important to identify
a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements
in the way the claimed new invention does. This is so because inventions in most, if not all, instances
rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.").
by-side foot bindings disposed in the middle section of the top surface of the board,
similar to the ones described in Claim 1. The Parten' 872 Patent teaches a retractable tow
hook displaced on the front section of the board that is nearly identical to the one used on
the ZUP Board. The Fleischmann Patent teaches the use of side-by-side handles disposed
on the front section of a water recreation device, and the Stewart Patent shows the use of
side-by-side "grips", the functional equivalent of handles, on the front section of a board
to aid in rider stability. Finally, the Fryar Patent discloses a plurality of rails protruding
from the bottom of the board that are disposed relative to the longitudinal axis, like those
on the ZUP Board.
The Court further finds by clear and convincing evidence that Claim 9 of the '681
Patent would have been obvious to an ordinary person skilled in the art over the Clark
Patent in view of the Parten '000 Patent, the Stewart Patent, and the Monreal Patent.
The Clark Patent discloses the claimed method of engaging a water recreation
device with the exception of using side-by-side foot bindings. It teaches users to lie
prone on the board, to grip the board with both hands-which is the functional equivalent
of side-by-side handles-before assuming a kneeling position, and ultimately to rise to a
standing position. The Parten '000 Patent teaches the use of side-by-side foot bindings
and expressly anticipates riders moving between a prone, a kneeling, and a standing
position while using the product. Moreover, as discussed above, the Stewart Patent
shows the use of side-by-side "grips", the functional equivalent of handles, on the front
section of a board to aid in rider stability, like those used on the ZUP Board. And the
Monreal Patent discloses similar foot bindings, permitting riders to engage in multiple
riding positions while on the water.
It is evident to the Court that Duff identified known elements in the prior art that
aided in rider stability while engaging a water recreational device and simply combined
them in one apparatus and method. The elements in Claim 1 and 9 are used for the exact
same purpose as they were in the prior art and, as expected, lead to the anticipated
success of assisting riders in reaching a standing position.
Additionally, the Court finds that one of ordinary skill in the art would have been
motivated in 2008 to combine these elements in order to aid in rider stability, to allow a
wide variety of users to enjoy the device, and to aid users in maneuvering between
positions on a water board. These motivations are a driving force throughout the prior art
and have been shared by many inventors in the water recreational device industry. See,
e.g., Clark Patent, col. 1, 11. 32-40; Echols Patent, col. 1, 11. 13-15, 28-38; Hornsby
Patent, col. 1, 11. 35-37; Parten '872 Patent, col. 2, 11. 49-51. And the specific desire to
aid users in maneuvering between positions on a water board has been a consistent
motivation in the prior art for decades. See, e.g., Clark Patent, col. 1, 11. 41-46; Monreal
Patent, col. 1, 11. 39-43; Parten '000 Patent, col. 2, 11.53-54, col. 6, 11. 18-44.
Consequently, the Court finds that there is a strongprimafacie case that Claims 1
and 9 of the '681 Patent are invalid due to obviousness in view of the above. Still, the
Court will assess the three secondary considerations proffered by ZUP to ensure against
hindsight bias in reaching this conclusion.
Trial courts are required to consider objective evidence of non-obviousness in
every case in order to preclude hindsight bias. See WBIP, LLC v. Kohler Co., 829 F.3d
1317, 1328 (Fed. Cir. 2016) ("Indeed, we have repeatedly stressed that objective
considerations of non-obviousness must be considered in every case."). Nevertheless,
strong evidence of obviousness cannot be overcome by the mere "presence of certain
secondary considerations ofnonobviousness." DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006). Moreover,
"a strong prima facie obviousness showing may stand even in the face of considerable
evidence of secondary considerations." Rothman v. Target Corp., 556 F.3d 1310, 1322
(Fed. Cir. 2009).
The Federal Circuit has held that secondary considerations are inadequate to
establish non-obviousness where the "claimed invention represents no more than the
predictable use of prior art elements according to established functions." Ohio Willow
Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1344 (Fed. Cir. 2013). And, even if
secondary considerations exist, the patentee is still required to establish a prima facie
case that a nexus exists between the novel aspects of the claimed invention and the
evidence of secondary considerations in order for that evidence to be given substantial
weight. See Croes, Inc. v. Int'l Trade Comm 'n, 598 F.3d 1294, 1310-11 (Fed Cir.
2010); Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 998 (Fed. Cir.
ZUP offers three considerations for the Court to consider: (1) that the ZUP Board
satisfied a long-felt but unresolved need in the water recreation industry; (2) that Nash
copied the ZUP Board; and (3) that the ZUP Board has experienced commercial success.
The Court will address all three considerations.
a) The ZUP Board has not satisfied a long-felt but unresolved need in the
water recreation industry
ZUP, through its expert, James Emmons-who owns a 2 % equity interest in the
company (Emmons Deel. if 2)-asserts that "[t]he water-recreation industry had failed
over a 50-year period to innovate beyond providing riders stability within various predetermined positions of tubing, kneeboarding, skiing, or wakeboarding." (Resp. to Mot.
for Summ. J. 22 (citing Emmons Deel.
ZUP alleges that this unresolved need
is evidenced by Nash's "enthusiastic acceptance" of the ZUP Board's "simultaneous
engagement of components so riders could more easily get up out of the water." (Id
(citing WBIP, 829 F.3d at 1332-33 (holding that an acknowledgement by defendant that
"The need is clear!" is sufficient to establish evidence of a long felt but unresolved need
in an industry)).)
ZUP's assertion of Nash's "enthusiastic acceptance" is wholly derived from two
statements allegedly attributable to Keith Parten: (1) "You have a great product by the
way!" (App. 568); and (2) "Think you are spot on with Wally Weekender. Same guy that
rides a kneeboard and tube. Want to be able to do it the first time every time." (Id)
The Court finds this argument to be entirely devoid of merit. These statements are
nothing more than passing compliments at the outset of a business relationship and can
hardly be construed to have the same effect as the acknowledgement made by the
defendant in WBIP, 829 F.3d at 1332-33 ("The need is clear!" (emphasis added)). As
such, the Court finds that ZUP has provided no evidence apart from conclusory
statements made by its expert that any long-felt but unresolved need existed in the
Further, "where the differences between the prior art and the claimed invention are
as minimal as they are here ... it cannot be said that any long-felt need was unsolved."
Geo. M Martin Co. v. Alliance Mach. Sys. Int'! LLC, 618 F.3d 1294, 1304 (Fed. Cir.
Additionally, even ifthe differences between the prior art and the claimed
invention were substantial, the Court would find that ZUP has failed to provide any
evidence that others in the industry attempted and failed to make a board with stabilizing
features, such as handles, foot bindings, and rails. (App. 519-32 (collecting prior art).)
Absent such a showing, "the mere passage of time without the claimed invention is not
evidence ofnonobviousness." Iron Grip Barbell Co. v. USA Sports, Inc., 392 FJd 1317,
1325 (Fed. Cir. 2004).
Consequently, the Court finds that ZUP has failed to establish either that a longfelt but unresolved need existed in the water recreational device industry or that its
product somehow solved any such need. As such, this consideration does not aid ZUP in
overcoming a finding of obviousness.
b) There is no evidence that Nash copied the ZUP Board
The Federal Circuit observed in WBIP that "[t]he fact that a competitor copied
technology suggests it would not have been obvious." WBIP, 829 F.3d at 1336.
ZUP asserts that Nash copied its product because the Versa Board "has a tow hook
at the front section, side-by-side handles at the front section, and side-by-side foot
bindings at the middle section." (Resp. to Mot. for Summ. J. 23.) But even a cursory
review of this claim reveals that, while the Versa Board possesses each of these
components, there is no evidence that Nash advertises, instructs, or even encourages its
customers to use them at the same time. (See App. 266, 379-380, 387-88, 428-42.)
Absent such evidence, the Court is hard pressed to reach the conclusion that Nash copied
either the apparatus or method claim of the '681 Patent.
Moreover, ZUP has provided no evidence that Nash attempted to independently
create the device described in the '681 Patent and failed. See Vandenburg v. Dairy
Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984) ("The copying of an invention may
constitute evidence that the invention is not an obvious one. This would be particularly
true where the copyist had itself attempted for a substantial length of time to design a
similar device, and had failed." (citations omitted)). This deficiency lends even more
weight to a finding that Nash did not copy the ZUP Board.
As a result, the Court finds that this consideration does nothing to tip the scales
towards a finding of non-obviousness.
c) ZUP's evidence of the '681 Patent's commercial success is insufficient
Finally, ZUP argues that the commercial success of the ZUP and Versa Boards
supports a finding of non-obviousness. (Resp. to Mot. for Summ. J. 24; see WBIP, 829
F.3d at 1337 ("Demonstrating that an invention has commercial value, that it is
commercially successful, weighs in favor of its non-obviousness.").) In support of this
consideration, ZUP has provided documents showing its total sales since 2012,
amounting to $1,562,426.74. 9 (Wawrzyn Deel.~ 3.)
This evidence, alone, is insufficient for the Court to make a determination that
ZUP has experienced commercial success. As the Federal Circuit has noted, "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); see also In re Applied
Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) ("[T]he number of units sold
without evidence of the market share is only weak evidence of commercial success.").
ZUP has failed to provide sufficient evidence of its market share or how other water
recreational devices-apart from the Versa Board-performed in the market during the
same time period.
Further, ZUP has failed to make a showing of a nexus between its alleged
commercial success and the supposedly novel features contained in the '681 Patent. See
Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016) ("[T]he
patentee must establish a nexus between the evidence of commercial success and the
Therefore, the Court has no choice but to reach the conclusion that ZUP's
evidence of commercial success is insufficient to overcome a finding of obviousness.
In view of the above, the Court finds that it would have been obvious for one of
ordinary skill in the art to combine the references in the prior art in order to invent both
ZUP also includes Nash's sales of the Versa Board, totaling $792,361.00 since 2014. (Wawrzyn Deel.,
4.) Since the Court has determined that the Versa Board does not infringe the '681 Patent-either
contributorily or by inducement-this figure is irrelevant to the present analysis. See infra Part III. B.
the apparatus and method Claims in the '681 Patent. And this finding is not overcome by
ZUP's evidence ofnonobviousness. Consequently, the Court finds by clear and
convincing evidence that Claims 1 and 9 of the '681 Patent are invalid pursuant to 35
Therefore, the Court will grant Defendant's Motion for Summary Judgment as it
pertains to Defendant's Counterclaim II, which renders Counts I and II of Plaintiffs
Complaint and Defendant's Counterclaim I moot.
B. Alternatively, Nash Has Not Contributorily Infringed Claim 9 of the '681
Patent Nor Has It Induced Others to Do So
Assuming arguendo that Claim 9 of the '681 Patent was valid, the Court would
still grant Nash's Motion for Summary Judgment as it pertains to ZUP's claims of
contributory infringement (Count I) and inducement of infringement (Count II).
i. Nash did not contributorily infringe the '681 Patent
Congress defined liability for contributory patent infringement in 35 U.S.C. §
Whoever offers to sell or sells within the United States ... a component of
a patented machine, manufacture, combination or composition, or a
material or an apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be
especially made or especially adapted for use in an infringement of such
patent, and not a staple article or commodity of commerce suitable for
substantial noninfringing use, shall be liable as a contributory infringer.
The Federal Circuit has held that "there can be no ... contributory infringement
without an underlying act of direct infringement." Linear Tech. Corp. v. Impala Linear
Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004) (citation omitted); see also Dynacore
Holdings Corp. v. U.S. Phillips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004) ("Indirect
infringement, whether inducement to infringe or contributory infringement, can only arise
in the presence of direct infringement, though the direct infringer is typically someone
other than the defendant accused of indirect infringement."); Joy Techs., Inc. v. Flakt,
Inc., 6 F.3d 770, 774 (Fed. Cir. 1993) ("Liability for either active inducement of
infringement or for contributory infringement is dependent upon the existence of direct
In this case, ZUP has provided no evidence of direct infringement. Instead, ZUP
relies solely on a Nash customer survey where two customers admitted to "leav[ing] the
handles on the Versa board while using the side-by-side foot bindings" to substantiate its
assertions that there was direct infringement of Claim 9 of the '681 Patent. 10 (Resp. to
Mot. for Summ. J. 15; see also App. 389-404 (containing the results of the online
Of course, the fact that two customers left the components on the Versa Board
necessary to potentially infringe the apparatus claim of the '681 Patent does not mean
ipso facto that they infringed the method claim as well. See, e.g., Ormco, 463 F.3d at
1311 ("Method claims are only infringed when the claimed process is performed, not by
the sale of an apparatus that is capable of infringing use."); Joy Techs., Inc. v. Flakt, Inc.,
6 F.3d 770, 773 (Fed. Cir. 1993) (holding that "[t]he sale of [an apparatus capable of
In the same breath, however, ZUP argues that the "survey evidence is entitled to little weight because
of the small sample size of 44 customers and bias inherent in the survey." (Resp. to Mot. for Summ. J. 15
n.5.) It is a bit disingenuous for ZUP to argue both that the survey is entitled to little weight and that it
should be given substantial weight as the sole source of evidence that direct infringement occurred.
performing a claimed process is] not a direct infringement because a method or process
claim is directly infringed only when the process is performed"); Standard Havens
Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1374 (Fed. Cir. 1991) (holding method
claims were not directly infringed by the mere sale of an apparatus capable of performing
the claimed process). For example, a reasonable jury could find these customers knelt on
the board, using the side-by-side foot bindings as kneepads while holding onto the
handles. Alternatively, the users could have stood on the board without using the handles
at all, merely gripping the side of the board for added stability. Neither use would
constitute a direct infringement of every step of Claim 9 of the '681 Patent.
However, the Federal Circuit has upheld claims of indirect infringement based
only on circumstantial evidence of direct infringement by unknown parties. See, e.g.,
Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1318 (Fed. Cir. 2009) ("[T]hejury in
the present case could have reasonably concluded that, sometime during the relevant
period from 2003 to 2006, more likely than not one person somewhere in the United
States had performed the claimed method using the Microsoft products."). Of course,
this broad interpretation renders toothless the Federal Circuit's previous holdings
requiring plaintiffs to provide evidence of direct infringement. But, since a jury could
reasonably conclude that a hypothetical consumer using the Versa Board "more likely
than not" used the product in a way that infringed Claim 9 of the '681 Patent, the Court
will proceed in its analysis.
Beyond providing evidence of direct infringement, the patent holder must also
show that the alleged contributory infringer was both aware of the patent and that its
actions would lead to the infringement. Commit USA, LLC v. Cisco Systems, Inc., 135 S.
Ct. 1920, 1926 (2015) (citing Afro Mfg. Co. v. Convertible Top Replacement Co., 377
U.S. 476 (1964)). The parties in this case do not dispute whether Nash was aware of the
patent. It clearly was. (See e.g., App. 572.) However, Nash contends that it cannot be
held liable for having knowledge that its actions would lead to an infringement of Claim
9 of the '681 Patent, in part, because the Versa Board has multiple substantial
Due to the risk of patentees' attempts to extend their monopolies beyond the limits
of a specific grant, the Supreme Court has held-and the Patent Act requires-that the
allegedly infringing article or commodity must be unsuited for any commercial
noninfringing use. See generally 35 U.S.C. § 271(c); Dawson Chem. Co. v. Rohm and
Haas Co., 448 U.S. 176 (1980). In other words, the allegedly infringing article must
"have no substantial noninfringing uses, and be known (by the party) 'to be especially
made or especially adapted for use in an infringement of such patent.'" i4i Ltd.
Partnership v. Microsoft Corp., 598 F.3d 831, 851-52 (Fed. Cir. 2010) (quoting 35
U.S.C. § 271(c)).
"[A] substantial non-infringing use is any use that is 'not unusual, far-fetched,
illusory, impractical, occasional, aberrant, or experimental." In re Bill ofLanding
Transmission & Processing Sys. Patent Litig., 681F.3d1323, 1337 (Fed. Cir. 2012).
(quoting Vita-Mix Corp. v. Basic Holdings, Inc., 581F.3d1317, 1327-29 (Fed. Cir.
2009)). When reaching a determination regarding whether a use is "substantial[ly] noninfringing," the Federal Circuit has instructed that trial courts must "consider not only the
use's frequency, but also the use's practicality, the invention's intended purpose, and the
intended market." i4i Ltd. Partnership, 598 F .3d at 851. In sum, "the inquiry focuses on
whether the accused product can be used for purposes other than infringement." In re
Bill ofLanding Transmission & Processing Sys. Patent Litig., 681 FJd at 1338.
ZUP relies solely on the Federal Circuit's decision in Ricoh Co., Ltd. v. Quanta
Computer Inc., 550 F.3d 1325(Fed. Cir. 2008), to support its assertion that "[t]he Versa
board is especially adapted to infringe Claim 9 of the '681 patent." (Resp. to Mot. for
Summ. J. 26.) In Ricoh, the court reversed summary judgment for the defendant where it
sold a product containing an infringing microcontroller embedded within a larger product
that contained noninfringing components. Ricoh, 550 F.3d at 1337. The Ricoh court held
that "it is entirely appropriate to presume that one who sells a product containing a
component that has no substantial noninfringing use in that product does so with the
intent that the component will be used to infringe." Id. at 1338.
ZUP argues that, like the infringing microcontroller in Ricoh, the Versa Board's
"side-by-side handles ... and side-by-side foot bindings" can "only be used to infringe
claim 9 of the '681 patent." (Resp. to Mot. for Summ. J. 26 (emphasis added).) At oral
argument, ZUP appeared to contend that even if the Court found that the Versa Board had
a single substantially noninfringing use, such a determination would not be fatal to its
claims for contributory infringement. This argument contravenes clearly settled and
applicable law, and ZUP's assertion that the components of the Versa Board can only be
used to infringe defies both sound logic and common sense.
Both the Supreme Court and the Federal Circuit have repeatedly held, without
qualification, that a claim for contributory infringement can only stand if the infringing
product has no substantial non-infringing use. See, e.g., Sony Corp. ofAm. v. Universal
City Studios, Inc., 464 U.S. 417, 443--47 (1984); In re Bill ofLading, 681 F.3d at 1337;
Cross Med. Prods, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed.
Cir. 2005). As such, it is clear that a finding of a single noninfringing use delivers a fatal
blow to a claim of contributory infringement. And in this case, the Court finds that the
Versa Board has several.
The Versa Board's side-by-side handles and side-by-side foot bindings can be
used in a number of substantially noninfringing ways, and a reasonable jury could not
find otherwise. "The foot bindings may be placed side-by-side to ski, but also may be
placed in different positions to wake board, or be completely removed to wakesurf."
(Reb. Br. 15-16.) "The handles may be used for kneeboarding, and may be removed
when wakeboarding, waterskiing, or wakesurfing." (Id. at 16.) To argue that these
components are designed "solely to infringe" ignores the multi-functional use of the
After reviewing the record, the Court concludes that this case is much more
similar to the Supreme Court's decision in Sony Corp. ofAmerica v. Universal City
Studios, Inc., 464 U.S. 417 (1984), than it is to the Federal Circuit's decision in Ricoh.
In Sony, the Supreme Court held that VCR manufacturers were not liable for
contributory copyright infringement when"[t]he accused VCR could be used in two
ways: to infringe a copyright by building a 'library' of broadcast movies, or in a
substantial, noninfringing way to 'time-shift' a program for later viewing or to record an
uncopyrighted program." Ricoh, 550 F.3d at 1339 (citing Sony, 464 U.S. at 443-446). As
the Federal Circuit noted when discussing Sony, "[w]here the [accused] product is
equally capable of, and interchangeably capable of both infringing and substantial noninfringing uses, a claim for contributory infringement does not lie." In re Bill ofLading,
681 F.3d at 1338. And "[t]he fact that a product may be unavailable for simultaneous
non-infringing uses while being used to infringe, is not determinative." Id.
Applying the analysis from Sony to this case, the Court concludes that the
components of the Versa Board can be used in multiple ways that, at most, are "equally
capable and interchangeably capable of both infringing and substantial non-infringing
uses." Id. (discussing Sony, 464 U.S. 417). Unlike the infringing microcontroller
embedded with noninfringing devices in Ricoh, the Court finds that the components of
the Versa Board, by themselves, do not directly infringe the '681 Patent. As such, this
claim is entirely unmeritorious.
Consequently, even if the '681 Patent was valid, the Court would still grant Nash's
Motion for Summary Judgment as it pertains to Count I of ZUP's Complaint.
ii. Nash did not induce the infringement of the '681 Patent
"Whoever actively induces infringement of a patent shall be liable as an
infringer." 35 U.S.C. § 271(b). Like contributory infringement, "inducement liability
may arise 'if, [and] only if, [there is] ... direct infringement."' Limelight Networks, Inc.
v. Akamai Technologies, Inc., 134 S. Ct. 2111, 2117 (2014) (quoting Afro Mfg. Co. v.
Convertible Top Replacement Co., 365 U.S. 336, 341 (1961)). As stated above, though
ZUP has provided no evidence of direct infringement of Claim 9 of the '681 Patent, the
Court will proceed in its analysis under the Federal Circuit's relaxed standards allowing
circumstantial evidence to suffice. See Lucent Techs., Inc., 580 F.3d at 1318.
The Supreme Court has held that liability for induced infringement "requires
knowledge that the induced acts constitute patent infringement." Global-Tech
Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011); see also DSU Med. Corp. v. JMS
Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) ("[I]nducement requires that the alleged
infringer knowingly induced infringement and possessed specific intent to encourage
another's infringement." (citations omitted)). The knowledge requirement may be
satisfied by either a showing of actual knowledge or willful blindness. Global-Tech
Appliances, Inc., 563 U.S. at 766-71.
Beyond the knowledge requirement, "the inducement must involve the taking of
affirmative steps to bring about the desired result." Id. at 760. In other words, the "mere
knowledge of possible infringement by others does not amount to inducement; specific
intent and action to induce infringement must be proven." Warner-Lambert Co. v.
Apotex Corp., 316 F.3d 1348, 1363 (Fed. Cir. 2003). The Federal Circuit has also found
that "[e]specially where a product has substantial non-infringing uses"-ofwhich the
Versa Board has several-"intent to induce infringement cannot be inferred even when
the defendant has actual knowledge that some users of its product may be infringing the
patent." Id. at 1365.
In this case, ZUP has offered no evidence that Nash took affirmative steps to
induce its customers to infringe Claim 9 of the '681 Patent. To the contrary, the evidence
clearly and unequivocally supports the opposite conclusion, and no reasonable jury could
The entirety ofNash's promotional materials encourages customers to use the
Versa Board in a noninfringing manner. (See App. 266, 379-380, 387-88, 428-42.)
None of the images included in these marketing materials shows users operating the
Versa Board in a way that would constitute infringement. (See id. at 428-42.) Moreover,
the instructions that accompany the product-including a printed warning decal on the
board, a warning label in the instructional manual, and a warning molded into the board
itself on either side of where the handles could be placed-direct users to remove the
handles before attempting to stand up on the board, which would prevent infringement of
the method claim. (Mem. in Supp. of Mot. for Summ. J. 33-34; see also App. 387-88.)
Rather than taking affirmative steps to encourage its customers to use the board in an
infringing manner, Nash has done the opposite.
ZUP argues that the wide variety of marketing materials and instructions
accompanying the Versa Board are somehow "illusory" because the customer must
engage in the "cumbersome" process of "return[ing] to the boat and unscrew[ing] the
handles" before standing up on the board. (Resp. to Mot. for Summ. J. 27 .) In support of
this assertion, ZUP cites only to a Y ouTube video-which it produced-where it takes a
Versa Board user no more than fifty-five (55) seconds to remove the handles. To argue
that unscrewing four screws in fifty-five (55) seconds is somehow "cumbersome" or time
consuming shows how desperate ZUP is to make this claim stick. Moreover, given the
versatility of the Versa Board and the multiple noninfringing uses of the product's
component parts, the Court sees no reason to infer intent where there clearly is none. See
Warner-Lambert Co., 316 F.3d at 1365.
Therefore, assuming arguendo that Claim 9 of the '681 Patent was valid, the Court
would still grant Nash's Motion for Summary Judgment as to Count II of ZUP's
Complaint because ZUP has provided no evidence that Nash intended to or took active
steps towards inducing its customers to infringe the method claim.
C. ZUP Has Provided No Evidence That Nash Misappropriated Its Trade
In Count III of its Complaint, ZUP asserts that Nash violated the Virginia Uniform
Trade Secrets Act ("VUTSA"), Va. Code§§ 59.1-336, et seq., by using information that
Nash obtained from ZUP in the creation of its Versa Board. (Compl.
alleges that it provided Nash with "confidential information, including 3d AutoCAD
design drawings of the ZUP Board and ZUP's confidential supplier-pricing information
for the ZUP Board's components," which qualify as "trade secrets" 11 under the VUTSA.
Va. Code §59.1-336.
In its Response to the present motion, ZUP attempts to change the scope of Count
III by summarily alleging that there is "no doubt" that Nash used both ZUP's cost
information and the advice that ZUP shared from its patent attorney regarding patent's
validity-a claim not previously raised in the Complaint-"in its determined effort to
bring the Versa board to market." (Resp. to Mot. for Summ. J. 28.) Regardless of which
"Trade secret means information, including but not limited to, a formula, pattern, compilation, program,
device, method, technique, or process that: (1) Derives independent economic value, actual or potential,
form not being generally known to, and not being readily ascertainable by proper means by, other persons
who can obtain economic value from its disclosure or use, and (2) Is the subject of efforts that are
reasonable under the circumstances to maintain its secrecy." Va. Code §59.1-336.
alleged trade secrets ZUP contends that Nash has misappropriated, ZUP has provided no
evidence to support its assertion.
Under the VUTSA, the plaintiff bears the burden of proving by a preponderance of
the evidence that the defendant misappropriated its trade secrets. MicroStrategy Inc. v.
Li, 268 Va. 249, 255 (2004). ZUP has failed to satisfy that burden in this case. It has
provided nothing more than pure speculation and conclusory statements that there is "no
doubt" that Nash used ZUP's trade secrets in creating its Versa Board. 12 (Resp. to Mot.
for Summ. J. 28.) Absent more, this statement alone is clearly deficient.
Tellingly, ZUP did not contest Nash's assertions concerning Count III at oral
argument. Based on its failure to provide a scintilla of evidence or argument that Nash
misappropriated trade secrets, the Court can only conclude that ZUP has conceded this
Therefore, the Court will grant Nash's Motion for Summary Judgment as it
pertains to Count III of Plaintiffs Complaint.
D. ZUP Has Provided No Evidence That Nash Breached the Confidentiality
Count IV of ZUP's Complaint alleges that Nash breached the confidentiality
agreement entered between the two parties on February 5, 2015, by using the confidential
12 Moreover, there is substantial evidence that Nash would have had no need to misappropriate ZUP's
trade secrets. Nash has been in the water recreational device industry for over fifty years (Mem. in Supp.
of Mot. for Summ. J. 2), presumably has extensive knowledge of the manufacturing costs within the
industry, and has its own patent attorney. (Rebuttal Br. 20.) Therefore, the Court finds no compelling
justification to infer misappropriation in this case based on the paucity of evidence provided.
information 13 that it received from ZUP in bringing the Versa Board to market. ZUP
alleges that it provided Nash "with confidential and proprietary information, including,
but not limited to, information regarding: (a) ZUP's vendors; (b) component costs and
materials; (c) patent information; (d) marketing plans and strategies; (e) retailer
arrangements and contacts; (f) new design concepts and materials; (g) ZUP's intellectual
property development and enforcement strategies; and (h) ZUP's proprietary rota-molded
3D computer designed model." (Compl. ~ 57.)
In similar fashion to its allegation in Count III, ZUP has provided no evidence
that Nash used any of ZUP's confidential information in manufacturing and selling its
Versa Board. Rather, ZUP summarily concludes that there is "no doubt" that Nash used
this information. (Resp. to Mot. for Summ. J. 28.)
Like its approach to Count III, ZUP also failed to contest Nash's assertions
concerning Count IV at oral argument. With no evidence or argument presented to the
contrary, the Court will not infer a violation of the Confidentiality Agreement based on
Therefore, in view of the dearth of evidence that Nash has in any way breached its
contract with ZUP, the Court will grant Nash's Motion for Summary Judgment as to
Count IV of the Complaint.
For the preceding reasons the Court finds that Claims 1and9 of the '681 Patent
13 The confidentiality agreement provides that "'Confidential Information' does not include information
that ... is or becomes generally available to the public ... or was independently developed by Nash
Manufacturing, Inc. as a result of work carried out by Nash Manufacturing, Inc. without reference to the
Confidential Information." (Mem. in Supp. of Mot. for Summ. J. 39.)
are invalid due to obviousness. Assuming arguendo that the patent was valid, the Court
would have concluded that Nash did not infringe upon the '681 Patent, either
contributorily or by inducement. Further, because ZUP has failed to produce a scintilla
of evidence to the contrary, the Court determines that Nash has not misappropriated trade
secrets or breached the confidentiality agreement entered into between the two parties.
Therefore, Defendant's Motion for Summary Judgment (ECF No. 35) will be
GRANTED as to Defendant's Counterclaim II-rendering Counts I and II of Plaintiffs
Complaint and Defendant's Counterclaim I MOOT-and as to Counts III and IV of
Plaintiffs Complaint. This case will be DISMISSED WITH PREJUDICE.
An appropriate Order will accompany this Memorandum Opinion.
The Clerk is DIRECTED to send a copy of this Memorandum Opinion to all
counsel of record.
Henry E. Hudson
United States District Judge
Date: ~o.n..\.3 2.0 I?
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