Malibu wins patent suit against GSA

[IDBoating]

You're welcome and I hope folks start helping to correct Malibu's false claims to inventing "delayed convergence". For those who have not actually downloaded and looked at the Walden vs. Malibu patents, here are just two pages from them. A picture is worth a thousand words, right?

First, let's look at Malibu's illustration of "delayed convergence" first filed in July 2012:

SurfGatePg20.jpg

See how Malibu illustrates the "flow of water" being "disrupted" (their text says "diverted") behind the transom? They use those nice lines to indicate water flow.

Now, take a look at the Walden patent from 1965 (red arrows are mine):

WaldenPg3.jpg
Figures 10 and 11 (at the bottom right) show what the water does when Walden's water diverters are not in use. Note that figures 10 and 11 are listed as "Prior Art". But Figure 12 (top right) shows the effect of Walden's water diverters: The water flow is diverted, and result in - ahem - "delayed convergence". Walden created, described, illustrated, and patented delayed convergence over FORTY YEARS before Malibu even filed for their first SurfGate patent.

All of this is public record. All of it is readily available from the US Patent Office website and several other publicly accessible patent repositories. It is not legal to patent something that is already widely known, and something that has already been patented is the definition of "widely known" to the US Patent Office.

Now you are enabled to set the record straight the next time someone claims that Malibu "invented" delayed convergence.

[IDBoating]

Hmm... not sure why there's a couple extra copies of Walden's illustration in my last message. And for some reason the system won't let me edit the message to fix it.

Also, to be clear, I think Malibu using vertically hinged plates at the sides of the transom to divert water and manipulate a surf wave was actually quite clever. That was certainly worthy of a patent, and had they stopped there and limited their litigation to actual infringements of SurfGate duplicates there'd be no problem. SurfGate has been enormously successful for them and no one would fault them for protecting their actual invention: Using vertically hinged water diverters to manipulate a surf wave. But they didn't stop there, and that eviscerates their legitimacy and their honor.

[IDBoating]

I suppose I should also repeat here that I Am Not An Attorney, these are my own opinions, standard disclaimers apply, etc. etc. But the data is freely available and easily understood for anyone who wishes to do their own research. The numbers of the patents, and sources for them, are listed above. No one needs to take my word for any of this, you can read it yourself and draw your own conclusions.

[Stingreye]

Hmm... not sure why there's a couple extra copies of Walden's illustration in my last message. And for some reason the system won't let me edit the message to fix it.

Also, to be clear, I think Malibu using vertically hinged plates at the sides of the transom to divert water and manipulate a surf wave was actually quite clever. That was certainly worthy of a patent, and had they stopped there and limited their litigation to actual infringements of SurfGate duplicates there'd be no problem. SurfGate has been enormously successful for them and no one would fault them for protecting their actual invention: Using vertically hinged water diverters to manipulate a surf wave. But they didn't stop there, and that eviscerates their legitimacy and their honor.

IDboating, unless we know how much GSA is actually paying in royalties we really don't know anything do we? Isn't it a time honored tradition in IP disputes when its sketchy for both sides to realize they can both benefit from making it appear legitimate with a really small royalty? Then both IP holder and person paying royalty get the benefit of the weak patent that never really was tested in the court of law.

[sandm]

id,
great stuff and interesting to see. thx for posting up.....
I read the patent when this was first posted- well at least skimmed it, and I cannot understand how surfgate is anything like gsa. gsa is really 2 tabs on the back that have some channels to divert water. surfgate is completely different from what I see. and gsa in concept feels to me like same concept as the large trim tabs on the back of go fasts to keep them moving level in the water. should be payments there as well? but not since it looks like 'bu's patent lists ballast systems as well so only applies to wakeboats with ballast installed?

I can't understand how anyone would not see this BUT from what has been posted, sounds like it's just easier to roll over and pay a small fee than risk big $$ in court knowing gsa has to pay lawyers and 'bu likely has them on staff. no one wants to be the silver bullet to get the patent challenged knowing everyone else gets a free ride?

[IDBoating]

@Stingreye: The royalty numbers I've informally heard are not what I would consider "small". Over the course of the remaining life of the SurfGate patents it could add up to many millions of dollars from each "licensee". A revenue stream which, as mentioned above, is at risk if Malibu loses in court.

sanborn dm: No royalties would be owed on horizontally hinged plates since those have been known and in the public record since the early 1900's. Note that Walden recites such plates (40+ years ago), and I have copies of patents for such plates going back ~70 years. All of that is in the public domain now. New innovations to such plates could certainly be patentably distinct from the known art, but plain old hinged tabs are free and open for anyone on any kind of boat.

This last point reinforces what I said earlier. In my entirely non-lawyer opinion Malibu was quite clever using vertically hinged tabs at the sides of the transom. Despite Walden describing them 40+ years ago, it was totally possible and honorable and legal to patent the actual innovations Malibu brought to the table there. They cannot patent what Walden had already described, but there's no problem patenting further improvements to vertically hinged water diverters (as illustrated and described in detail in the SurfGate patents) and, once such a patent has been secured, legally enforcing their rights to such inventions. The problem arises when they seek to enforce something they clearly illustrated and described to things which are obviously different. Vertical hinges are obviously different from horizontal hinges. Plates extending to the sides are obviously different from plates extending downward. That's what will trip them up in the end: The differences ARE obvious, even to a judge and/or jury.

[Germaine Marine]

@Stingreye: The royalty numbers I've informally heard are not what I would consider "small". Over the course of the remaining life of the SurfGate patents it could add up to many millions of dollars from each "licensee". A revenue stream which, as mentioned above, is at risk if Malibu loses in court.

sanborn dm: No royalties would be owed on horizontally hinged plates since those have been known and in the public record since the early 1900's. Note that Walden recites such plates (40+ years ago), and I have copies of patents for such plates going back ~70 years. All of that is in the public domain now. New innovations to such plates could certainly be patentably distinct from the known art, but plain old hinged tabs are free and open for anyone on any kind of boat.

This last point reinforces what I said earlier. In my entirely non-lawyer opinion Malibu was quite clever using vertically hinged tabs at the sides of the transom. Despite Walden describing them 40+ years ago, it was totally possible and honorable and legal to patent the actual innovations Malibu brought to the table there. They cannot patent what Walden had already described, but there's no problem patenting further improvements to vertically hinged water diverters (as illustrated and described in detail in the SurfGate patents) and, once such a patent has been secured, legally enforcing their rights to such inventions. The problem arises when they seek to enforce something they clearly illustrated and described to things which are obviously different. Vertical hinges are obviously different from horizontal hinges. Plates extending to the sides are obviously different from plates extending downward. That's what will trip them up in the end: The differences ARE obvious, even to a judge and/or jury.

I cant wait to see them crumble here shortly. Looking forward to seeing how this plays out toward the end of the year.

[BrentB]

Perhaps it’s irrelevant (or maybe I missed something), but what was the purpose of Walden’s “water diverters?” It was NOT to produce a “surf-style” wake, correct? And it looks as though the drawings show both diverters being deployed simultaneously.

Will Malibu simply try to claim that Walden’s patent says nothing about using delayed convergence (one side deployed at a time) for the purpose of creating a surf-style wake?

I’m not a lawyer either and I didn’t read Walden’s entire patent, but that was just my initial thought after looking at the drawings above.

[talltigeguy]

id,
great stuff and interesting to see. thx for posting up.....
I read the patent when this was first posted- well at least skimmed it, and I cannot understand how surfgate is anything like gsa. gsa is really 2 tabs on the back that have some channels to divert water. surfgate is completely different from what I see. and gsa in concept feels to me like same concept as the large trim tabs on the back of go fasts to keep them moving level in the water. should be payments there as well? but not since it looks like 'bu's patent lists ballast systems as well so only applies to wakeboats with ballast installed?

I can't understand how anyone would not see this BUT from what has been posted, sounds like it's just easier to roll over and pay a small fee than risk big $$ in court knowing gsa has to pay lawyers and 'bu likely has them on staff. no one wants to be the silver bullet to get the patent challenged knowing everyone else gets a free ride?

I think that GSA works because there are vertically oriented channels in the horizontally mounted trim tabs that essentially do the same thing as a vertically oriented gate. It appears that the lawyers for GSA agreed.

I think there is merit to the purpose of the system, and obviously Walden was not thinking about surfing behind a boat.

I have a suspicion that the lawyers for GSA and Nautique knew about Walden and didn't think it was worth the fight. If they didn't know about it, then it sure was not 'widely known', which makes it irrelevant as well.

[D&P Powell]

I’m not a lawyer either...

But did you stay at a Holiday Inn Express last night? Sorry, couldn't resist.

[Aspidaso]

Well...chalk it up as another reason not to own a Malibu......petty I know but I hate broad sweeping stuff like this. Had nothing to do with Malibu protecting their ingenuity it was just lawyers looking to increase share prices.... I think this is going to stifle innovation in the sport because nobody will push for new tech in fear of Malibu suing them unless someone can come up with a design that does not utilize delayed convergence (any fluid dynamic engineers on here?)

I am with you on this, that is just general principle for me... and now i know the patent is for delayed convergence???? id like to slap whomever signed off on that patent in the head, that is just to broad.....

[scottspray]

Like SONIC said earlier, being a publicity held co , Malibu may have had a legal responsibility to shoot first and ask questions later.
GSA must be doing something right.
All I need is a Convex V, taps2 and a boat full of ballast...and I’m fine.

[SONIC]

All of this, and MUCH more, is going to surface in an actual court case which is coming up in the next few months. Only then, when Malibu has been forced to defend their patents in an actual court of law, will we know whether their SurfGate patents survive. I can tell you that the evidence is NOT on their side, starting with Walden that goes back over four decades and continuing with their own words and illustrations in their own patent filings. Add to that some contemporaneously gathered data from surf boats which predate SurfGate and I wouldn't be investing in Malibu stock just now.

Who is in the actual court case?
As I said earlier "Patents are only useful if you can afford to enforce them" and that works both ways, once Malibu was awarded the patent it's certainly possible to get it thrown out on the grounds you stated earlier, but it's not an easy (read cheap) process.

Faced with the prospect of half a million at minimum (more likely into the millions) fighting a company the size of Malibu with the hope of winning, or settling for a small percentage of sales most any reasonable company would choose to settle, unless they also have the money to keep throwing at lawyers. This is a major part of the problem with patents as I see them, they only protect those with large amounts of money to litigate. At this point IMO it's simply a system that keeps patent attorneys rich.

The problem as you stated boils down to the USPTO being morons and awarding patents without doing research. My company was in a similar fight with a company that was awarded a bogus patent by some lazy idiots at the patent office. It cost us a pretty penny to clear it up.

[IDBoating]

Perhaps it’s irrelevant (or maybe I missed something), but what was the purpose of Walden’s “water diverters?” It was NOT to produce a “surf-style” wake, correct? And it looks as though the drawings show both diverters being deployed simultaneously. Will Malibu simply try to claim that Walden’s patent says nothing about using delayed convergence (one side deployed at a time) for the purpose of creating a surf-style wake?

Bingo - you understand the situation perfectly! "Water diverters" changing the convergence of the wake is already known thanks to Walden. Malibu's innovation - which in my non-lawyer opinion deserved a patent - was using them asymmetrically as a novel way to manipulate a surf wave behind a wakeboat. If they'd stopped there, and only sought to enforce infringement of vertically hinged side mounted tabs on the sides of the transom (which is what they describe and illustrate in their patents), they would be on solid ground and I'd back their efforts 100%. Instead, they accidentally got improperly broad claim language and are now seeking to (mis)use that accidental, and unsupported, language.

The legal term of art is "the claim language lacks enablement in the specification". You may only claim that which your patent application actually describes. Since their text and illustrations only describe vertically hinged plates which deploy to the sides of the transom, that is all they can legally claim and enforce. The Examiner made a mistake and gave them overbroad language. That simple error should have been fixed by the ex parte reviews asked for by CC and MC but their attorneys are idiots and did a terrible job. The result is that it appears that Malibu's claims have been "validated", when in fact they have not been.

[IDBoating]

[quote]I have a suspicion that the lawyers for GSA and Nautique knew about Walden and didn't think it was worth the fight. If they didn't know about it, then it sure was not 'widely known', which makes it irrelevant as well.[quote]
If something can be found published or produced anywhere, it's "known". Once you expose any member of the public to your idea (unless they are covered by a nondisclosure agreement), you have 12 more months to file for a patent. After that it's in the public domain. If you DO get a patent, then by definition it's "known"... especially to the Patent Office. The very best prior art is an issued patent, which is why I brought up Walden instead of the countless offhand examples of people surfing behind wakeboats prior to Malibu's 2012 filing date.

At various times, Malibu tries to fool people into believing that they 1) invented surfing, 2) invented surf systems, 3) invented "delayed convergence", 4) have claim to anything related to surfing on wakeboats, etc. Little of that is true but every time someone repeats one of those statements they help Malibu and hurt the rest of the industry (and boat owners too, who are being forced to pay more for improper patent "licenses"). The only thing that Malibu invented was asymmetric use of Walden's vertical tabs. They deserve credit and patent protection for that - and nothing more.