Sidewinder Marine, Inc. v. Starbuck Kustom Boats and Products, Inc.

• Decision Date: 09 April 1979
• Docket Number: No. 76-2006,76-2006
• Citation: 597 F.2d 201,202 U.S.P.Q. 356
• Parties: SIDEWINDER MARINE, INC., Plaintiff-Appellant, v. STARBUCK KUSTOM BOATS AND PRODUCTS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Tenth Circuit

Page 201

597 F.2d 201

202 U.S.P.Q. 356

SIDEWINDER MARINE, INC., Plaintiff-Appellant, v. STARBUCK KUSTOM BOATS AND PRODUCTS, INC., Defendant-Appellee.

No. 76-2006.

United States Court of Appeals,Tenth Circuit.

Argued March 13, 1978.

Decided April 9, 1979.

George C. Limbach, San Francisco, Cal. (Philip M. Shaw, Jr., of Limbach, Limbach & Sutton, San Francisco, Cal., and Richard L. Schrepferman and Stephen E. Snyder of Holme, Roberts & Owen, Denver, Colo., on the brief), for plaintiff-appellant. ^*

Before SETH, Chief Judge, and HOLLOWAY and McKAY, Circuit Judges.

HOLLOWAY, Circuit Judge.

This is a patent infringement action in which the question of infringement has been mooted by a holding in the trial court that the subject patent was invalid and therefore incapable of being infringed. The court's opinion is reported at 418 F.Supp. 224 (D.Col.). Plaintiff Sidewinder Marine, Inc. ("Sidewinder"), seeks reversal of the holding of invalidity and remand for trial on the issue of infringement.

The center of the controversy is Sidewinder's U.S. Design Patent No. 219,118, covering the "ornamental design for a boat, as shown" in Appendix A. Although we believe that, in the design patent area, a picture is truly worth a thousand words, the cases in this area often attempt to capture the essence of their respective designs with a string of words. Since much of the evidence below was in the form of words rather than pictures, we too find it expedient to make such an attempt with the boat design before us keeping in mind that the patent drawings themselves are contained in Appendix A. Plaintiff's brief (p. 5) thus describes the Sidewinder patent:

Significant features of the patented design include a sharply pointed bow, a wide inclined peripheral deck portion, a slight raising forward deck portion extending from the bow past the windshield with the deck at each side of the windshield extending rearwardly in an upwardly curved narrowing surface terminating in a raised coaming (or gunwale) extending rearwardly and downwardly toward the aft end of the boat, and a low profile, swept back, continuously arcuate, circular wraparound windshield on the deck forward of the dashboard with the top element of the windshield extending rearward at each side of the boat to merge smoothly with the raised coaming.

The patent was issued on November 3, 1970, for a term of fourteen years to Ken R. Baker and Ronald Plecia. Baker was then president of Sidewinder, a boat sales company incorporated in California; Plecia was an industrial designer who had worked with Baker for some time in the development of racing and sport boats. At the time they applied for the patent, on October 17, 1969, both men had assigned their entire interest in the patent application to Sidewinder, which thereby gained the right to license the manufacture of the patented design and to sue for its infringement. ¹

The evidence shows that the design grew from a concept the desire to merge the high-performance speed boat technology already produced by Sidewinder with certain safety aspects of family pleasure boats (I R. 47-49) through a drafting stage when "various suggested sketches and ideas were put forth, (and) gradually (were) drawn together in a comprehensive whole" (Id. 50) to the final product. ² It was estimated at trial that this design process lasted from January until September of 1969. (Id. 61). In September, the design was introduced at the Chicago Boat Show in the form of a prototype for Sidewinder's new "Super Sidewinder" speed boat.

The Super Sidewinder met with immediate acclaim at the Chicago show, and indeed proved to be a far greater success there than had been anticipated. In the aftermath of the show, 80% Of the company's sales were for the new model, as opposed to the 20% That had been projected. (Id. 52). At the show, however, Ken Baker was approached by Robert R. Hammond, president of Glastron Boat Company of Austin, Texas, and was told of the strong similarity between the Super Sidewinder and a boat which Glastron had been developing for several months. Hammond sent Baker a letter several days later reminding him of their conversation, enclosing four photographs of a full-sized mock-up of the boat which he had mentioned, and closing with the words: "Now don't go say we've been copying!" (Def.Ex. N).

The Super Sidewinder continued to be a critical success in the months following its Chicago debut. It was called "(p)robably the most futuristic boat in the entire New York boat show," and a "big attraction to the younger set" there as well (Pl.Ex. 20). In Atlanta, the new boat was noted as being "several years ahead of the market in design." (Pl.Ex. 21). The speed boat was featured in 1970-72 by various trade magazines which stressed its attractive styling (Pl.Ex. 24-26, 76-77), and it was used by the Mercury Division of Brunswick Corporation as a "model" for its outboard motor brochures in 1970-71. (Pl.Ex. 22-23). In addition, the Super Sidewinder was included by the United States Information Agency in a travelling exhibit featuring "what (the Agency) felt to be . . . typical of the best of American product design in a number of categories"; the boat was assertedly "one of the focal points" in the tour which lasted three years and encompassed sixty-one countries. (I R. 63).

During this same time period, the Super Sidewinder was also a commercial success. Frederick Ide, the present president of Sidewinder, testified that the new-model speed boat took over a large share of the company's total sales after its introduction "and from that aspect simply replaced the older lines that we had." (Id. 71). Moreover, the public bought more of the Super Sidewinders than it had of the older models which they replaced, even though the dealer price for the new model was "considerably higher in all cases than the boats that they replace(d)." (Id.).

Sidewinder's troubles with copying of its popular new boat by competitors began shortly after its unveiling in September 1969. A few days after the Chicago Boat Show, Richard Schuster of Schuster Boats, Inc., purchased the 16-foot Super Sidewinder prototype displayed at that show and made a "splash" (direct) copy of it for his "Tahiti" line of boats. (Id. 92). Other manufacturers followed Schuster's lead and either marketed splash copies of their own or brought out slightly modified versions of the Sidewinder design. Altogether there were five or six copies put out in the first year, with an eventual total of at least eighteen. ³ (Id. 53). Testimony at trial lends some support to the allegation that the defendant in this action, Starbuck Kustom Boats and Products, Inc. ("Starbuck"), engaged in direct or indirect copying of the Sidewinder design for its own 16' and 17'8 boats. (IV R. 9-14 passim).

Because of this sudden, extensive copying activity, Sidewinder which had filed for patent protection through Baker and Plecia only After the Chicago show sought to expedite consideration of its application in the Patent Office by means of a "petition to make special." The company thus took on the burden of submitting a copy of all references "deemed most clearly related to the subject matter" of the claim. Manual of Patent Examining Procedure, § 708.02 (VII)(d) (3d ed. 1961). As noted, the subject patent was granted under this procedure on November 3, 1970. The six references cited by the Patent Examiner bore no close resemblance to plaintiff's design, and only a boat called the Nova "somewhat resembled" the Super Sidewinder in side-view, as pointed out by the court below. 418 F.Supp. at 226.

Once the patent had issued, Sidewinder proceeded to sue or negotiate to settlement with a number of alleged infringers. Most of the settlements involved signing a license agreement allowing the copier to continue marketing the patented design, with payment of royalties to Sidewinder. Sidewinder's notable courtroom success was against Robert Burns and his Cheetah Boat Mfg. Co. The District Court for the Central District of California there upheld the validity of the Super Sidewinder patent, found it to be infringed, and awarded damages to the patent-holder. Sidewinder Marine, Inc. v. Burns, 176 U.S.P.Q. 499. By contrast, the District Court for the District of Colorado here held the patent to be invalid, primarily on the ground that the subject design was obvious in light of the prior art at the time of its creation. See 35 U.S.C. § 103. ⁴

It is helpful first to outline the findings and conclusions of the trial court which led to its determination that the patent was invalid.

I

The findings and conclusions of the trial court

After detailing the general background of the controversy, the trial court stated its findings and conclusions as follows. It was found that there is a significant unity of design in automobiles and pleasure boats and that the wraparound windshield was used in automobile design long before the subject patent application. The drawings in Sidewinder's patent application did not contain dotted lines and the design patent must therefore be considered for the overall appearance of the entire boat, the combined appearance of the assertedly new deck with the old deep V hull, acknowledged to have been in the public domain before 1969. The claim itself was for "the ornamental design for a boat, as shown," making no separate reference to the deck or hull.

The court found and concluded that the line drawings claimed to constitute an overall boat design subject to patent protection failed to meet the constitutional requirement of invention reflected in the nonobviousness condition for patentability of 35 U.S.C. § 103. The court pointed out that 35 U.S.C. § 171 applies all the requirements of Title 35 for patentability to design patents, absent explicit exception therefrom. There is no statutory exception from the § 103 nonobviousness requirement for design patents, and the court concentrated heavily on the 1952 am...