Sidewinder Marine, Inc. v. STARBUCK KUSTOM BOATS & PROD., INC.

• Court: U.S. District Court — District of Colorado
• Writing for the Court: C. B. Messenger, Denver, Colo., for defendant
• Citation: Sidewinder Marine, Inc. v. STARBUCK KUSTOM BOATS & PROD., INC., 418 F. Supp. 224, 193 USPQ 777 (D. Colo. 1976)
• Decision Date: 18 August 1976
• Docket Number: Civ. A. No. C-4864.
• Parties: SIDEWINDER MARINE, INC., a California Corporation, Plaintiff, v. STARBUCK KUSTOM BOATS AND PRODUCTS, INC., a Colorado Corporation, Defendant.

418 F. Supp. 224

193 USPQ 777

SIDEWINDER MARINE, INC., a California Corporation, Plaintiff, v. STARBUCK KUSTOM BOATS AND PRODUCTS, INC., a Colorado Corporation, Defendant.

Civ. A. No. C-4864.

United States District Court, D. Colorado.

August 18, 1976.

Richard L. Schrepferman, Holme, Roberts & Owen, Denver, Colo., and George C. Limbach, Limbach, Limbach & Sutton, San Francisco, Cal., for plaintiff.

C. B. Messenger, Denver, Colo., for defendant.

FINDINGS OF FACT, CONCLUSIONS OF LAW AND ORDER

MATSCH, District Judge.

This is an action for claimed infringement of U.S. Design Patent 219,118, issued on November 3, 1970 for a term of fourteen years to Ken R. Baker and Ronald Plecia. The claim of the patent is for the ornamental design for a boat as shown in five line drawings from different perspectives, presenting the outline of the boat, without detail.

The application for this patent was filed on October 17, 1969. At that time, Mr. Baker was the president of Shasta Fiberglass Co., a boat manufacturer, and he was also president of Sidewinder Marine, Inc., a boat sales company. Mr. Plecia was an industrial designer who had worked with Mr. Baker for several years in the development of racing and sport boats. Baker and Plecia assigned their entire interest in the patent application to Sidewinder Marine, Inc., and that assignment was recorded with the Patent Office on October 17, 1969.

Mr. Baker's experience and the business of Sidewinder and Shasta concerned 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, Mr. Baker sent a prototype of a boat called "Super Sidewinder 16" to the Chicago Boat Show, where it was well received. The primary significance of the Super Sidewinder 16 was that it combined the readily apparent features of a high performance speed boat with such safety features as raised gunwales and a deep V hull.

Among those attending the Chicago Boat Show was Robert R. Hammond, president of Glastron Boat Company of Austin, Texas, one of the largest makers of pleasure power boats in the United States. Mr. Hammond commented to Mr. Baker upon the similarity of the Super Sidewinder with a boat which Glastron was preparing to market. Mr. Hammond followed this conversation with a letter, dated October 6, 1969, forwarding four photographs of a full sized mock-up which he said had been finished four or five months before, and Mr. Hammond ended his letter with these words: "Now don't go say we've been copying!"

A few days after the Chicago Boat Show, Richard Schuster of Schuster Boats, Inc. purchased a Super Sidewinder 16, and Schuster Boats proceeded to make a prototype by physically copying the Super Sidewinder boat. Other companies soon began to develop boats very similar to the Super Sidewinder.

Because of a concern for this copying, Sidewinder Marine, Inc. filed with the Patent Office a "petition to make special", seeking to expedite consideration of its patent application because of claimed infringement by these other companies. Under applicable regulations, that procedure required the applicant to submit copies of references deemed most clearly related to the subject matter of the claim. Patent and Trademark Office, Manual of Patent Examining Procedure, § 708.02, VII.(d) (3d ed. 1961), with revisions.

The prior art references submitted by Sidewinder Marine, Inc. are in evidence here as plaintiff's exhibit 28. They consist of three prior design patents for boats bearing no resemblance to the Super Sidewinder, a sales brochure with the Sidewinder and other boats, and another sales brochure for a boat called the Nova which somewhat resembled the Super Sidewinder.

Perhaps the most eye catching feature of the Super Sidewinder is a low windshield which curves into the raised gunwales and an extension of the same angle downward to the aft of the boat in a continuous line, pleasing to the sense of perspective. That particular feature appears to be the most discernible difference between this boat and those previously made by Sidewinder as well as many other manufacturers. The evidence in this case includes many pictures and illustrations in magazines and other publications showing boats with sleek pointed bows, decks which are quite comparable and an overall low profile.

It is clear from the evidence that Glastron developed the kind of deep V hull used in the Super Sidewinder and that this hull design was in the public domain for several years before 1969.

The evidence indicates that there is significant unity of design in automobiles and pleasure boats. The wraparound windshield was used in automobile design long before this subject patent application.

The lateral aspect of the subject design patent as shown in Figure 2 has a similarity to the lines used by a cabin cruiser manufacturer to identify it in advertising and boating publications as early as 1965.

Glastron did make and market its similar boat in 1970. In October, 1970, counsel for 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. Subsequently, Mr. Baker notified Mr. Hammond that Sidewinder did not claim the Glastron boat to be infringing.

An infringement suit was filed by Sidewinder Marine, Inc. in the Central District of California against Robert Burns, doing business as Cheetah Boat Manufacturing Co., and on October 31, 1972, that court entered its findings and conclusions determining the patent to be valid and infringed. Sidewinder Marine, Inc. v. Burns, 176 U.S. P.Q. 499 (D.C.C.D.Cal.1972).

The Cheetah boat and two of the defendant's boats are sufficiently similar that both would be subject to the same analysis on the question of infringement. However, the question of the validity of the patent must be examined in light of the evidence of prior art before me. There is no evidence in the record which would indicate that the prior art introduced as evidence in this action is coextensive with that which was before the California court. Indeed, in light of the vigorous defense and voluminous prior art introduced by defendant Starbuck, I must assume that some of the prior art before me was not before the California court. More importantly, it is well settled that a different defendant in a subsequent infringement action may raise the defense of patent invalidity anew; there is no res judicata or collateral estoppel effect to the previous finding of patent validity in the California action. Johns-Mansville Corp. v. Cement Asbestos Products Co., 428 F.2d 1381 (5th Cir. 1970), and cases cited therein; 7 Deller's Walker on Patents 11, § 469 (2d ed. 1964).

Because the line drawings in the patent claim are so simplified, it is somewhat difficult to compare those figures with the photographs of the boats in evidence. Indeed, it does not appear that the Super Sidewinder boats actually made are the same as these drawings. Particularly, there are substantial differences in the hull area and Figure 5 bears little resemblance to the posterior aspect reflected in plaintiff's exhibit 76.

The perspective drawings themselves contain such meager detail, particularly in the area of surface shading necessary to emphasize contour, that they barely seem to satisfy the Patent Office's rules relating to design patent applications.¹ Most of the design patents introduced as prior art references contain more detailed drawings. Furthermore, since the drawings do not contain any dotted lines, the design patent claim must be considered to be for the overall appearance of the entire boat, that is, the combined appearance of the assertedly new deck with the old deep V hull, acknowledged to have been in the public domain before 1969. If the hull had been intended as a merely environmental, functional structure, it should have been drawn in dotted lines.² The claim itself was of "the ornamental design for a boat, as shown," making no separate reference to the deck or hull.

The manufacture and marketing of pleasure boats in the United States is a business in which there is so much similarity in design and where copying is so common that one of the largest companies, Glastron Company, makes no effort to attempt to protect its designs through patents.

Sidewinder Marine, Inc. and Shasta Fiberglass experienced financial difficulties in 1972 and new capital was acquired through financing obtained from a group of investors led by Saul Davidson. These investors put new management into the company and the patent rights became a part of the collateral securing the investment. These companies became debtors in consolidated proceedings under Chapter XI of the Bankruptcy Act in the Northern District of California.

During the course of this patent litigation, all questions concerning title and claims of interest in the subject patent and cause of action for infringement were submitted to the bankruptcy court in appropriate pleadings and that court has entered orders authorizing the prosecution of this lawsuit by the debtor and its counsel for and on behalf of all claimants.

While the defendant has strenuously objected to jurisdiction here because of the complexity and confusion surrounding the chain of title in the subject patent, the effect of the orders entered in the bankruptcy proceedings in the Northern District of California is that the plaintiff here has acted for and on behalf of all who could conceivably have any right, title or interest in the patent, the claim and the cause of action. All such persons are, accordingly, bound by the result herein and this court does have jurisdiction to determine the questions of validity of the patent and the charge of infringement pursuant to statute.

The line drawings claimed to constitute an overall boat design subject to patent protection in this case failed to meet...