CASE OF THE WEEK

Volvo Penta of the Americas, LLC v. Brunswick Corp., Appeal No. 2022-1765 (Fed. Cir. Aug. 24, 2023)

In its only precedential patent case of the week, the Federal Circuit held the Patent Trial and Appeal Board erred in finding a boat propeller system patent invalid as obvious. The Federal Circuit’s decision is an unusual opinion that found error in the PTAB’s consideration of objective indicia in the obviousness analysis. It is an example of the type of case where there may be a prima facie case of obviousness, with all factors satisfied, but with such strong real-world evidence of nonobviousness that those factors may inform the proper disposition of the case.

The patent concerns boat motors. Boat motors are characterized as outboard (i.e., an external engine on the stern of the boat), inboard (i.e., the engine and transmission are mounted in the hull, and a propeller shaft extends through the bottom of the hull), and “inboard/outboard,” wherein the engine is in the hull, but the drive unit is mounted outside the hull, typically on the stern. Such a configuration is also called a “stern drive” configuration.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder