This case is about a claim made by Ronald Plecia and Ken R. Baker for a claimed infringement of United Stated Design Patent 219, 118, issued for a period of fourteen years to the above mentioned on November 3, 1970.
Baker and Placia put all their efforts into developing this boat design patent for their company Sidewinder Marine Inc. They first applied on October 16, 1969. The company’s interest was in high-performance boats for racing and water skiing. They were not engaged in the production or sale of family pleasure boats before 1970.
In October 1969 they sent a prototype of the boat to a Chicago Boat Show where most boat companies were present, including Schuster Boats Inc. which purchased Super Sidewinder 16 and proceeded to make a prototype by physically copying it.
The same was done by Glastron which developed a boat similar to Super Sidewinder especially producing the kind of deep V hull used in the Super Sidewinder. It must be noted that this hull design was in the public domain for several years before 1969.
Prior to the receiving of the patent, in October 1970, Sidewinder Marine, Inc. sent notices to Glastron and others to inform them that the design patent would issue in November 1970, that their boats were considered to infringe, and to offer license agreements. After the patent was received an infringement was filed against the Cheetah Boats Inc. in the District of Central California.
The first problem here found by the court was that because the line drawings in the patent claim are very simplified it is difficult to compare them with the photographs of the boats brought for evidence. Being so it seems that even the Super Sidewinder boats are not made accordingly to these drawings. And if the photos are compared carefully it can be found that they do not comply fully with the Patent Office’s rules related to design patent applications. Therefore the court found that the line drawings do not comply with the overall boat design met the nonobviousness condition of patentability.
Section 102 of U.S.C 35 states that:
“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.”
In order to have a violation we ought to have a prior single claim that fully discloses the patent claims and is virtually identical to plaintiff’s design. In this case the court found that such a finding does not apply. Therefore plaintiff’s design must be deemed to satisfy the Section 102 novelty conditions for patentability. Seeing that there is no adequate basis for determining that Baker and Plecia did not develop the subject design, and plaintiff has never abandoned the patent, none of the conditions in Section 102 present a bar to the patentability of plaintiff’s design.
From the above mentioned the court held that the plaintiff’s patent was invalid and therefore the patent infringement is invalid since it comes on no basis.