Citations
- 29 F. Supp. 3d 753
Full opinion text
RULING AND ORDER
BRIAN A. JACKSON, Chief Judge.
I. INTRODUCTION
In this consolidated patent infringement action, Plaintiff Gator Tail, LLC alleges that certain boat motors produced by Defendants Go-Devil Manufacturing Co. of La., Inc. and Mud Buddy, LLC infringe the asserted claims of the patents-in-suit. (08-cv-00124 Doc. 20; 08-cv-00125 Doc. 1). On January 27 through January 31, 2014 the court held a three-day bench trial limited to the issue of patent validity. (See 08-cv-00124 Doc. 95 at p. 2; see also Docs. 121, 123). Presently before the Court are the parties’ post-trial proposed findings of fact and conclusions of law concerning the validity of the patents-in-suit. (08-cv-00124 Doc. 124, 125, 130, 131; 08-cv-00125 Docs. 139, 140, 144, 145).
Pursuant to Federal Rule of Civil Procedure (“Rule”) 52(a), and after having considered the entire record in this case and the applicable law, the Court concludes: (1) all asserted claims of the patents-in-suit are invalid due to obviousness; (2) United States Patent Number 7,052,340 is invalid due to lack of written description; and (3) Claims 1, 8, and 14 of United States Patent Number 7,052,340, and Claim 1 of United States Patent Number 7,297,035 are each invalid due to lack of definiteness. These findings of fact and conclusions of law are set forth in further detail below.
II.FINDINGS OF FACT
A. The parties
1. Plaintiff and Counter Defendant Kyle Broussard (“Mr. Broussard”) is a Louisiana resident residing at 2402 Terre Ruelle, New Iberia, Louisiana 70563. (08-cv-00125 Doc. 1 at ¶ 4).
2. Plaintiff and Counter Defendant Gator Tail, LLC (“Gator Tail”) is a Louisiana limited liability company with its principal place of business at 306 Broussard Road, Loreauville, Louisiana 70552. (08-cv-00124 Doc. 96-1 at ¶ 1).
3. Mr. Broussard founded Gator Tail while completing his degree in mechanical engineering at the University of Louisiana. (Id. at ¶ 15).'
4. Gator Tail designs, builds, and sells outboard boat motors usable in shallow water, and is the owner of certain patents related to such motors. (Id. at ¶ 2, 7, 14).
5. Where appropriate, Mr. Broussard and Gator Tail will be collectively referred to as “Plaintiffs.”
6. Defendant and Counter Claimant Go-Devil Manufacturing Co. of Louisiana, LLC (“Go-Devil”) is the successor to Go-Devil Manufacturing Co. of Louisiana, Inc., and is a Louisiana limited liability company with its principal place of business at 18649 Womack Road, Baton Rouge, Louisiana 70817. (Id. at ¶¶ 9-10).
7. Go-Devil manufactures and sells outboard boat motors usable in shallow waters, as well as blinds, custom boats, and boating accessories. (Id. at ¶ 13).
8. At all times material hereto, Go-Devil has done, and continues to do business in the Middle District of Louisiana. (Id. at ¶ 14).
9. Defendant and Counter Claimant Mud Buddy, LLC d/b/a Mud Buddy Manufacturing (“Mud Buddy”) is a Utah corporation with its principal place of business at 7956 South, 1530 West, West Jordan, Utah 84088. (Id. at ¶ 8).
10. Mud Buddy manufactures and sells outboard boat motors usable in shallow waters, as well as blinds, custom boats, and boating accessories. (Id. at ¶ 11).
11. At all times material hereto, Mud Buddy has done, and continues to do business in the Middle District of Louisiana. (Id. at ¶ 12).
12. Where appropriate, Go-Devil and Mud Buddy will be collectively referred to as “Defendants.”
13. The Court has subject matter jurisdiction, as well as personal jurisdiction over all parties.
B. Background
14. Plaintiff Gator Tail and Defendants Go-Devil and Mud Buddy are each manufacturers of “mud motors,” (see Trial Transcript, Vol. I, Jan. 27, 2014 (hereinafter “Transcript Vol. I”) at p. 99) — ie., “outboard air-cooled motors, apparatuses, and assemblies for use on boats in shallow water and muddy environments,” (Doc. 82 at p. 3; see also Doc. 96-1 at ¶¶ 11,13, 15). Such motors are used primarily for hunting and fishing.
15. Prior to the early 2000s, the mud motor market was dominated by “long-tail” mud motors, (see Trial Transcript, Vol. Ill, Jan. 31, 2014 (hereinafter “Transcript Vol. Ill”) at p. 130), so-named because the drive shaft connecting the motor’s engine to its propeller was upwards of six feet long, causing the propeller to extend a considerable distance behind the transom of the boat on which the motor is mounted. (See Transcript Vol. I at pp. 121-22).
16. Long-tail mud motors continue to be manufactured and sold. (Transcript Vol. Ill at p. 145).
17. However, in the last decade, consumers have increasingly switched to “surface-drive” (or “short-tail”) mud motors, which achieve certain advantages over the traditional long-tail motor, such as greater horsepower, speed, and maneuverability. (See Transcript Vol. Ill at pp. 144-46). 18. Plaintiffs are the owners of certain patents related to surface-drive/short-tail mud motors. (See Gator Tail Ex. 1; Gator Tail Ex. 2).
C. The patents-in-suit
1. United States Patent Number 7,052,340
19. United States Patent Number 7,052,-340 (“the '340 Patent”), entitled “Method and Apparatus for Air Cooled Outboad [sic] Motor for Small Marine Craft,” naming Kyle Broussard as inventor, was issued on May 30, 2006, based on an application filed on September 15, 2003. (Gator Tail Ex. 1 at 0652).
20. The '340 Patent arises out of a provisional application filed September 17, 2002. (Id.).
2. United States Patent Number 7,297,035
21. United States Patent Number 7,297,-035 (“the '035 Patent”), entitled “Marine Craft Adapted for Shallow Water Operation,” naming Kyle Broussard as inventor, was issued on November 20, 2007, based on an application filed on May 22, 2006. (Gator Tail Ex. 2 at p. 01838).
22. The '035 Patent is a continuation-in-part of the '340 Patent. (Id.).
23. Plaintiff Gator Tail is the assignee of the '340 and '035 Patents. (Doc. 96-1 at ¶ 2).
24. The '340 and '035 Patents each describe substantially the same invention, specifically:
A relatively high horsepower air-cooled engine in one embodiment of this invention is adapted to an efficient belt drive assembly capable of being transom mounted to small flat bottom boats in much the same manner as conventional outboard engines. The drive is equipped with a lower drive shaft that does not extend below the bottom of the boat but extends a sufficient distance behind the boat to insure contact with the water for conventional propulsion. A unique pivotal arrangement allows the engine and drive assembly to be positioned for proper angle of attack when the propeller is in contact with mud and vegetation below the bottom of the boat. This arrangement allows for a much shorter turning radius than can be achieved by the related prior art transom mounted mud motor systems. The engine mount includes incremental tilt positioning capability and a pivotal horizontal steering handle. The propeller is capable of providing propulsion when in contact with’ solids such as mud and vegetation, and provides relatively fast hull speed in deep water. A clutch is provided to disengage the engine from the drive and an electric drive motor is provided in contact with the belt drive for turning the drive in a reverse direction.
(Gator Tail Ex. 2 at p. 01852 ('035 Patent, “Summary of Invention”); see also Gator Tail Ex. 1 at p. 0657 ('340 Patent, “Summary of Invention”)).
25. Selected renderings of the '340 Patent. (Gator Tail Ex. 1 at p. 0654)
26. Rendering of the '035 Patent. (Gator Tail Ex. 2 at p. 01840).
D. The asserted claims
27. Plaintiffs assert that Defendants’ products “infringe[ ] claims 1, 3-9, and 11-13 of the '340 patent.” (08-cv-00124 Doc. 54 at p. 1 n. 1; 08-cv-00125 Doc. 45 at p. 1 n. 1 (same)).
28. Further, Plaintiffs assert that Defendants’ products “infringe[] claims 1, 3-7, and 9-13 of the '035 patent.” (08-cv-00124 Doc. 54 at p. 1 n. 2; 08-cv-00125 Doc. 45 at p. 1 n. 2 (same)).
1. The asserted claims of the '340 Patent
i. Claim 1
29. Claim 1 of the '340 Patent reads:
A portable drive assembly having means for temporary attachment to the transom of a shallow draft watercraft said portable drive assembly comprising an elongated drive housing enclosing an upper drive assembly a lower driven assembly and a timing belt connecting said upper drive assembly to said lower driven assembly, an engine mounting plate attached externally to said drive housing located adjacent said upper drive assembly perpendicular to said drive housing said lower driven assembly further comprising a propeller shaft partially enclosed within a shaft housing attached to said drive housing adjacent said driven assembly extending at .least 12 inches beyond said drive housing and a propeller attached to said propeller shaft.
(Gator Tail Ex. 1 at p. 0658).
ii. Claim 3
30. Claim 3 of the '340 Patent reads: “The portable drive assembly according to claim 1 wherein said drive system further comprises steering and throttle controls.” (Id.).
iii. Claim 4
31. Claim 4 of the '340 Patent reads:
The portable drive assembly according to claim 1 wherein said propeller shaft assembly further comprises a shaft housing having a vertical triangular fin located below said shaft housing, a shaft supported adjacent each end by thrust bearings in a manner whereby said shaft extends beyond each of said thrust bearings and a plurality of internal seals located along said shaft outboard of said thrust bearings.
(Id.).
iv. Claim 5
32. Claim 5 of the '340 Patent reads: “The portable drive assembly according to claim 1 wherein said upper drive assembly and said lower driven' assembly further include timing pulleys compatible with said timing belt said belt being rotationally unobstructed or acted upon by other bodies.” (Id.).
v. Claim 6
33. Claim 6 of the '340 Patent reads: “The portable drive assembly according to claim 1 further comprising a self contained air cooled utility engine having a horizontal output shaft attached to said engine mounting plate said output shaft coupled to said upper drive assembly.” (Id.).
vi. Claim 7
34. Claim 7 of the '340 Patent reads: “The portable drive assembly according to claim 6 wherein said drive housing is water sealed.” (Id.).
vii. Claim 8
35. Claim 8 of the '340 Patent reads:
A portable outboard engine and drive assembly having means for temporary attachment to the transom of a shallow draft watercraft comprising:
a) a sealed housing containing a timing belt drive assembly comprising an upper drive pulley assembly and a lower driven pulley assembly;
b) an engine mounting plate attached externally to said sealed housing located adjacent said upper drive pulley assembly perpendicular to said sealed housing;
c) a propeller shaft partially enclosed within a shaft housing attached to said sealed housing extending from said driven pulley assembly at least 12 inches beyond said sealed housing;
d) a propeller attached to said propeller shaft;
e) a pivotal means for temporarily attaching said sealed drive housing to a boat transom; and
f) an air cooled engine mounted to said engine-mounting plate and coupled externally to said upper drive pulley assembly.
(Id.).
viii. Claim 9
36. Claim 9 of the '340 Patent reads: “The portable drive assembly according to claim 8 wherein said pivotal means comprises both horizontal and vertical pivoting means.” (Id.).
ix. Claim 11
37. Claim 11 of the '340 Patent reads: “The portable drive assembly according to claim 8 wherein said propeller shaft assembly further comprises a plurality of thrust bearings and seals at each end of said shaft housing.” (Id.).
x. Claim 12
38. Claim 12 of the '340 Patent reads: “The portable drive assembly according to claim 11 wherein said propeller shaft assembly further comprises a rudder fin extending below said shaft housing.” (Id.).
xi. Claim 13
39. Claim 13 of the '340 Patent reads: “The portable drive assembly according to claim 8 wherein said propeller shaft assembly is in excess of 18 inches in length.” (Id. at p. 0659).
2. The asserted claims of the '035 Patent
i. Claim 1
40. Claim 1 of the '035 Patent reads:
A marine craft comprising a hull comprising a transom; and a portable drive assembly temporarily attached to the transom, the portable drive assembly comprising an elongated drive housing enclosing an upper drive assembly and a lower driven assembly and a timing belt connecting the upper drive assembly to the lower driven assembly; and an engine mounting plate attached externally to the drive housing adjacent the upper drive assembly perpendicular to the drive housing; wherein the lower driven assembly comprises a propeller shaft at least a portion of which is enclosed with-. in a shaft housing attached to the drive housing adjacent the driven assembly, the shaft housing extending in excess of 18 inches beyond the drive housing, and a propeller attached to the propeller shaft.
(Gator Tail Ex. 2 at p. 01854).
ii. Claim 3
41. Claim 3 of the '035 Patent reads: “The marine craft according to claim 1, wherein the portable drive assembly further comprises steering and throttle controls.” (Id.).
iii. Claim 4
42. Claim 4 of the '035 Patent reads: “The marine craft according to claim 1, wherein the shaft housing comprises a rudder fin.” (Id.).
iv. Claim 5
43. Claim 5 of the '035 Patent reads: “The marine craft according to claim 1, wherein the upper drive assembly and the lower driven assembly further include respective timing pulleys compatible with the timing belt, the timing belt being unobstructed or acted upon by other bodies.” (Id.).
v. Claim 6
44. Claim 6 of the '035 Patent reads: “The marine craft according to claim 1, further comprising a mounting bracket assembly for temporarily attaching the portable drive assembly to the transom, the mounting bracket assembly comprising a mounting bracket and a pivotal assembly for positioning the portable drive assembly in the horizontal plane.” (Id.).
vi. Claim 7
45. Claim 7 of the '035 Patent reads: “The marine craft according to claim 1 further comprising a utility engine mounted on the engine mounting plate and coupled to the upper drive assembly.” (Id. at p. 01855).
vii. Claim 9
46. Claim 9 of the '035 Patent reads: “The marine craft according to claim 7, wherein the portable drive assembly further comprises steering and throttle controls.” (Id.).
viii. Claim 10
47. Claim 10 of the '035 Patent reads: “The marine craft according to claim 7, wherein the shaft housing comprises a rudder fin.” (Id.).
ix. Claim 11
48. Claim 11 of the '035 Patent reads: “The marine craft according to claim 7, wherein the upper drive assembly and the lower driven assembly further include respective timing pulleys compatible with the timing belt, the timing belt being unobstructed or acted upon by other bodies.” (Id.).
x. Claim 12
49. Claim 12 of the '035 Patent reads: “The marine craft • according to claim 7, further comprising a mounting bracket assembly for temporarily attaching the portable drive assembly to the transom, the mounting bracket assembly comprising a mounting bracket and a pivotal assembly for positioning the portable drive assembly in the horizontal plane.” (Id.).
xi. Claim 13
50. Claim 13 of the '035 Patent reads: “The marine craft according to claim 12, further comprising a first pivoting assembly for positively positioning the elongated drive housing beyond vertical relative to the mounting bracket in the vertical plane.” (Id.).
E. The accused products
51. Plaintiffs’ Amended Complaint against Go-Devil alleges that Go-Devil’s “Surface Drive models” — i.e. “air-cooled outboard motors[,] alone and in combination with boat hulls” — “infringe ... at least claim 1” of the '340 and '035 Patents. (Doc. 20 at ¶¶ 7, llr14). Such Go-Devil motors include the following models: (a) “18hp Vanguard SD”; (b) “23hp Delta Waterfowl Vanguard SD”; (c) “35hp Vanguard SD”; (d) “23hp Vanguard SD”; (e) “25hp Kohler SD”; and (f) “27hp Kohler SD.” (Id. at ¶ 7).
52. Plaintiffs’ Complaint against Mud Buddy alleges that Mud Buddy’s “Hyper-drive and [¶] series engines” — ie. “outboard air-cooled motors, apparatuses, and assemblies” — “infringe at least one claim in at least one of the patents.” (Id. at ¶ 12).
F. Procedural history
53. On February 28, 2008, Plaintiffs filed their Complaint for patent infringement against against Go-Devil in this District, in what was labeled 08-ev00124.
54. In a separately captioned action, also filed in this District on February 28, 2008, Plaintiffs sued for patent infringement against Mud Buddy, 08-cv-00125.
55. On May 2, 2008, Mud Buddy filed counterclaims for declaratory judgment of noninfringement and invalidity of the '340 and '035 Patents. (08-cv-00125 Doc. 9 at ¶¶ 24-32).
56. On July 23, 2008 Plaintiffs filed an Amended Complaint against Go-Devil. (08-cv-00124 Doc. 20).
57. On August 1, 2008, Go-Devil filed counterclaims for declaratory judgment of noninfringement and invalidity of the '340 and '035 Patents. (08-cv-00124 Doc. 22 at ¶¶ 38-43, 47-53).
58. The two actions proceeded independently. On February 25, 2010 the Mud Buddy action, 08-ev-00125, was transferred to the U.S. District Court for the Eastern District of Louisiana. (08-cv-00125 Doc. 25).
59. At various times during the pendency of these proceedings, Mud Buddy requested and received ex parte reexaminations of the '340 and '035 Patents by the. U.S. Patent and Trademark Office (“PTO”). (See Doc. 96-1 at ¶¶ 18-20).
60. Because the PTO reexamination proceedings were ex parte, neither Mud Buddy nor Go-Devil were permitted to comment on the evidence or arguments submitted by Gator Tail in support of its claims of patentability. (08-cv-00124 Doc. 96-1 at ¶¶ 19-20).
61. Upon reexamination, the PTO initially rejected all of the claims in the '340 Patent. (Gator Tail Ex. 16 at p. 01332). 62. Likewise, upon reexamination, the PTO initially rejected all of the claims in the '035 Patent. (Gator Tail Ex. 17 at p. 01722).
63. Ultimately, however, the PTO confirmed the validity of each Patent. (08— cv00124 Doc. 96-1 at ¶¶ 19-20).
64. On April 26, 2011 the Mud Buddy action, 08-cv-00125, was returned to this Court. (08-cv-00125 Doc. 89). In its Order of Transfer, the District Court for the Eastern District of Louisiana noted that the Mud Buddy action “involves subject matter that comprises a material part of the subject matter of Broussard et al. v. Go-Devin [sic] Manufacturing Co. of LA, Inc., Civil Action No. 08-0124.” (Id. at p. 1; see also 08-cv-00124 Doc. 69).
65. On July 5, 2011, this Court consolidated the Go-Devil action, 08-cv-00124, and the Mud Buddy action, 08-cv-00125, for purposes of a claim construction hearing on the '340 and '035 Patents, pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). (See 08-cv-00124 Doc. 73; see also Doc. 82 at p. 1 n. 1).
66. On October 3, and December 5, 2011, the Court held a claim construction hearing on the '340 and '035 Patents. (08-cv-00124 Doc. 77; see also Doc. 82 at p. 1).
67. Following the claim construction hearing, the Court allowed the parties to submit post-hearing briefs. (08-ev-00124 Doc. 77).
68. On September 26, 2012, the parties submitted their final briefs on claim construction. (See Doc. 81).
69. On June 25, 2013, 2013 WL 3233328, this Court issued its Ruling on Construction of Disputed Terms (hereinafter “Markman Hearing Ruling”). (08-cv-00124 Doc. 82).
70. On October 31, 2013, upon stipulation of the parties, the Court set dates for a consolidated bench trial on the issue of the validity of the '340 and '035 Patents. (08-cv-00124 Doc. 95).
71. On January 27 through January 31, 2014, the court held a three-day bench trial on patent validity. (See Transcript Vols. I-III).
72. At the close of evidence, the Court directed the parties to submit post-hearing briefs on the issue of patent validity. (Transcript Vol. Ill at p. 313).
73. On February 21, 2014, the parties submitted their initial post-trial briefs on the validity of the '340 and '035 Patents. (08-cv-00124 Doc. 124, 125; 08-cv-00125 Doc. 139,140).
74. Oh June 13, 2014, the parties submitted supplemental briefs limited to the issue of definiteness in light of the U.S. Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. —, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014).
75. For reasons fully explained below, the Court now determines that each of the asserted claims of the '340 and '035 Patents is invalid.
III. DISCUSSION AND CONCLUSIONS OF LAW
The Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331, 1338, and 2201. Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b).
“The public interest ... favors the maintenance of a well-functioning patent system,” Medtronic, Inc. v. Mirowski Family Ventures, LLC, — U.S. —, 134 S.Ct. 843, 851, 187 L.Ed.2d 703 (2014), and, once issued, “[a] patent shall be presumed valid,” 35 U.S.C. § 282. See Microsoft Corp. v. i4i Ltd. P’ship, — U.S. —, 131 S.Ct. 2238, 2245, 180 L.Ed.2d 131 (2011) (“[B]y its express terms, § 282 establishes a presumption of patent validity, and it provides that a challenger must overcome that presumption to prevail on an invalidity defense.”)- However, “the public also has a paramount interest in seeing that patent monopolies are kept within their legitimate scope.” Medtronic, 134 S.Ct. at 851 (quotation marks and alterations omitted). For this reason, various statutory provisions exist for challenging the validity of a claimed invention, even after a patent has been issued. Cf., Microsoft Corp., 131 S.Ct. at 2242 (“To receive patent protection a claimed invention must, among other things, fall within one of the express categories of patentable subject matter, § 101, and be novel, § 102, and nonobvious, § 103.”). Defendants argue that Gator Tail’s patents are invalid under various statutory provisions.
Having considered the entire record in this case, the substantial evidence in the record, the parties’ post-trial submissions, and the applicable law, the Court concludes: (1) all asserted claims of the patents-in-suit are invalid due to obviousness; (2) the '340 Patent is invalid due to lack of written description; and (3) Claims 1, 8, and 14 of and '340 Patent, and Claim 1 of the '035 Patent are each invalid due to lack of definiteness. The Court’s reasoning follows.
A. Obviousness
Go-Devil and Mud Buddy each challenge the validity of the asserted claims as obvious in light of the prior art. (See 08-cv-00124 Doc. 124 at pp. 7-29; 08-cv-00125 Doc. 1-33). For the reasons that follow, the Court determines that Defendants have established by clear and convincing evidence that each asserted claim of the patents-in-suit is, indeed, obvious.
1. The legal standard
Title 35, United States Code, Section 103(a) provides that a patent may not be obtained “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 to a person having ordinary skill in the art.” 35 U.S.C. § 103(a). A party seeking to challenge the validity of a patent based on obviousness must demonstrate by “clear and convincing evidence” that the invention described in the patent would have been obvious to a person of ordinary skill in the art at the time the invention was made. See Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 810, 106 S.Ct. 1578, 89 L.Ed.2d 817 (1986) (per curiam). “The ‘clear and convincing’ standard of proof of facts is an intermediate standard which lies somewhere between ‘beyond a reasonable doubt’ and a ‘preponderance of the evidence.’ ” Buildex Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed.Cir.1988) (citations omitted). “Although not susceptible to precise definition, ‘clear and convincing’ evidence has been described as evidence which produces in the mind of the trier of fact an abiding conviction that the truth of the factual contentions are highly probable.” Id. (quotation marks and alterations omitted).
Obviousness is a question of law that is predicated on several factual inquires. See Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1479 (Fed.Cir.1997). Specifically, the trier of fact is directed to assess four considerations: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed subject matter and the prior art; and (4) secondary considerations of non-obviousness, such as commercial success, long felt but unsolved need, failure of others, acquiescence of others in the industry that the patent is valid, and unexpected results. See Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). “While the sequence of these questions 'might be reordered in any particular case, the factors continue to define the inquiry that controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). “If a court ... conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103.” Id.
Gator Tail concedes that the '340 and '035 Patents are combination patents — ie., “patent[s] based on the combination of elements found in the prior art,” KSR Int’l Co., 550 U.S. at 415, 127 S.Ct. 1727. (See 08-cv-00124 Doc. 125 at p. 10 (“Gator Tail does not contend that every individual nut, bolt, and component, taken individually, is unique to Mr. Broussard’s invention. Instead, Mr. Broussard’s invention combines these elements in a way that was never done before and achieved great success.”)). For such situations — specifically, “when the question is whether a patent claiming the combination of elements of prior art is obvious” — the Supreme Court has distilled certain “principles” as “instructive.” Id. at 417,127 S.Ct. 1727.
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.... [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
Id. at 417, 127 S.Ct. 1727. The Supreme Court has further instructed that when conducting this inquiry,
[ojften, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
Id. at 418, 127- S.Ct. 1727. “To facilitate review, this analysis should be made explicit.” Id.
A few additional guideposts channel the Court’s obviousness inquiry. Importantly, in determining what would have been obvious to one of ordinary skill in the art, the use of hindsight is not permitted. See id. at 421, 127 S.Ct. 1727 (cautioning the trier of fact against “the distortion caused by hindsight bias” and “arguments reliant upon ex post reasoning” in determining obviousness). Further, the Supreme Court has instructed that while a Court may take into account whether “some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art,” id. at 398, 127 S.Ct. 1727, a court errs when it “transforms [this] general principle into a rigid rule that limits the obviousness inquiry,” id. at 419, 127 S.Ct. 1727; see also Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356-57 (Fed.Cir.2007) (“While the KSR Court rejected a rigid application of the teaching, suggestion, or motivation ... test in an obviousness inquiry, the Court acknowledged the importance of identifying a reason' that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does in an obviousness determination.” (quotation marks omitted)).
Additionally, “[o]bviousness does not require absolute predictability of success,” but rather, requires “a reasonable expectation of success.” See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.Cir.2006) (quoting In re O’Farrell, 853 F.2d 894, 903-04 (Fed.Cir.1988)). To this end, obviousness “cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed.Cir.2007). Finally, evidence of a “finite number of identified, predictable solutions” or alternatives “might support an inference of obviousness.” See Eisai Co. Ltd. v. Dr. Reddy’s Labs. Ltd., 533 F.3d 1353, 1359 (Fed.Cir.2008) (quoting KSR, 550 U.S. at 421, 127 S.Ct. 1727).
2. The scope and content of the prior art
Under the first element of the Graham test for obviousness, the Court must determine the scope and content of the prior art. The scope of prior art is only that art which is analogous. See In re Clay, 966 F.2d 656, 658-59 (Fed.Cir.1992). Analogous art is art that is not “too remote to be treated as prior art.” Id. at 657. In addition, “[a] prior art reference is analogous if it is from the same' ‘field of endeavor,’ even if it addresses a different problem, or, if not within the same field, if the reference is ‘reasonably pertinent to the particular problem with which the inventor is involved.’ ” In re Conte, 36 Fed.Appx. 446, 450 (Fed.Cir.2002) (unpublished but persuasive) (citing In re Clay, 966 F.2d at 658-59). The determination of relevant prior art is a question of fact. In re Clay, 966 F.2d at 658.
Relevant prior art is further defined by 35 U.S.C. § 102(a), which limits the time frame within which prior art can be found. In pertinent part, Section 102(a) provides: “A person shall be entitled to a patent unless ... the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention....” 35 U.S.C. § 102(a)(1).
The parties agree that the '340 Patent application was filed on September 15, 2003. (08-cv-00124 Doc. 96-1 at ¶ 5). The parties further agree that the '035 Patent application was filed on May 22, 2006, and that the '035 Patent is a “continuation-in-part of the '340 patent.” (Id. at ¶¶ 4, 6). Thus, under section 102(a)(1), the prior art of the '340 and '035 Patents includes any analogous patents, printed publications, or products issued prior to September 15, 2003. It is undisputed that the prior art alleged by Defendants conform to the time limitations of 35 U.S.C. §§ 102(a).
As stated, Gator Tail concedes that the '340 and '035 Patents are combination patents. (See 08-cv-00124 Doc. 125 at p. 10). Further, the parties agree that the content of the prior art includes outboard marine motors&emdash;including long-tail mud motors&emdash; as well as patents and publications relating to outboard marine motors. (See Gator Tail Ex. 1 at p. 0656 (Fig. 11 of the '340 Patent, representing a long-tail mud motor identified as “Prior Art”); see also id. at p. 0652 (listing certain U.S. Patents as “References Cited,” including long-tail motors Foreman and Trouche); Gator Tail Ex. 2 at pp. 01838-39 ('035 Patent listing certain U.S. Patents as “References Cited,” including long-tail mud motor Torrey)).
At the trial on validity, the following-prior art was admitted without objection:
United States Patent 6,227,920 (Alby);
United States Patent 4,544,362 (Arne-son);
United States Patent 4,408,994 (Blanchard);
United States.Patent 3,951,096 (Dunlap); United States Patent 6,361,388 (Foreman);
United States Patent 5,188,548 (Ferguson);
United States Patent 4,836,811 (Grif-fiths);
United States Patent 4,354,848 (Hall);
United States Patent 6,468,120 (Hasl);
European Patent 0902174 (Ikuma);
United States Patent 3,629,885 (Jackson);
United States Patent 5,469,931 (Kawa-ta);
United States Patent 5,336,119 (Lais);
United States Patent 6,494,431 (McCoy);
United States Patent 4,869,692 (Newman);
United States Patent 5,435,763 (Pigna-ta);
United States Patent 2,513,050 (Pugh);
United States Patent 4,726,796 (Rivette);
United States Patent 6,234,854 (Rydzew-ski);
Japanese Patent H9-202298 (Saito);
United States Patent 5,741,165 (Saito);
United States Patent 5,178,566 (Sto-jkov);
United States Patent 4,367,860 (Strang);
United States Patent 2,996,035 (Torrey);
United States Patent 941,827 (Trouche);
United States Patent 4,992,066 (Watson);
United States Patent 2,928,630 (Wis-man).
(See Doc. 122 at pp. 6-7, 10 (listing prior art admitted without objection at the validity phase trial)). Accordingly, the Court finds that the scope of the prior art for determining obviousness includes at least these Patents.
Further, Plaintiffs acknowledge in their post-trial briefing that the prior art for determining obviousness includes “the Scavenger motor and the 1960’s Honda motor,” as well as “Pro-Drive, and Mud Buddy’s gear drive motor.” (Doc. 125 at pp. 8-9; see Doc. 122 at p. 5 (admitting without objection “[t]he webpages at www. scavengerbackwater.com and all subordinate pages, including all photographs, videos, drawings, and other information contained therein”)). Thus, the Court determines that the. scope of the prior art includes these motors as well.
The Court will now briefly describe the characteristics of certain prior art most relevant to the issue of obviousness.
i. United States Patent 2,996,035 (Torrey)
United States Patent 2,996,035 (“the Torrey Patent”), issued August 15, 1961, discloses a traditional long-tail motor, comprising an air-cooled, belt-driven, horizontal shaft motor and drive assembly. (Go-Devil Ex. 43 at Fig. 1). The Torrey Patent’s stated purpose is to power “a row boat or lighter, or the like, and particularly for the operation of such boats in shallow or weedy waters.” (Id. Col. 1, Ins. 15-17). Torrey accomplished this goal by, among other things, describing:
a relatively long propeller shaft housing ... so carried by the mounting bracket that the propeller may be operatively disposed partly in or fully beneath the surface of the supporting water, or may be raised clear of the water and be swung inboard to provide access to the propeller by an occupant of the boat.
(Id. at Ins. 25-33).
Rendering of the Torrey Patent. (Go-Devil Ex. 43 at p. 001278).
ii. The Scavenger Backwater Motor
The Scavenger Backwater motor is an air-cooled, belt-driven, horizontal shaft motor and drive assembly that has been in production since the early 2000s. (Gator Tail Ex. 23 at ¶ 8 (Don Kueny Supplemental Report); see also Transcript Vol. I at p. 386 (Testimony of Ray Kliebert); Transcript Vol. II at p. 32 (Testimony of Glenn Foreman)). Although unpatented, (Gator Tail Ex. 23 at ¶ 8 (Don Kueny Supplemental Report)), it is agreed among the parties that the Scavenger Backwater is “simply the Torrey patent in practice.” (08-00124 Doc. 125 at p. 8; see Transcript Vol. I at p. 286 (Testimony of Ray Kliebert (“The Scavenger Backwater motor is basically a derivative of the Torrey Patent.”)); see also Doc. 103 at p. 19 (“As is readily apparent, Scavenger is very similar to Torrey....”)).
iii. United States Patent 5,741,165 (Saito)
United States Patent 5,741,165 (“the Sai-to Patent”), issued April 21, 1998, discloses an air-cooled, gear-driven, vertical shaft motor and drive assembly for powering a shallow draft vessel in “shallow water.” (See Go-Devil Ex. 40 at Abstract; col. 1, Ins. 60-65). The Saito Patent’s stated purpose is to maintain certain- advantages associated with long-tail motors — specifically, the ability to navigate shallow waters by providing for a “propulsion device [that] can be easily lifted out of the body of water to clear underwater objects” — while “overcoming] the disadvantages” associated with traditional long-tails — including (1) “somewhat limited” “range of movement” (i.e. turning radius); and (2) “signifi-cante intrusion] into the hull of the watercraft.” (See id. at col. 1, Ins. 35-55). Saito accomplished this goal by “shortening ... the overall length” of its motor, which “permits the watercraft to be maneuvered in very narrow waterways without the propeller 125 striking the shore or the bowel of the watercraft striking the shore.” (Id. at col. 7, Ins. 50-60). Go-Devil’s expert witness, Dr. Charles Garris (“Dr. Garris”), testified that, in his opinion, “the main teaching of Saito, and the very important teaching, was the idea that a short-tail design would give you a better steering and maneuverability and better control.” (Transcript Vol. II at p. 256).
Rendering of the Saito Patent. (Go-Devil Ex. 40 at p. 001222).
iv. The Pro-Drive motor
The Pro-Drive motor is an air-cooled, gear-driven, vertical shaft motor and drive assembly that has been in production since the early 2000s. See Transcript Vol. I at pp. 264-65 (Mr. Ray Kliebert) (stating that “the Pro-Drive unit was the first to come out .... [a]nd then Gator Tail came out,” shortly after the Louisiana Sportsman Show in March 2004); id. at pp. 265-66 (Mr. Kliebert) (“The Pro-Drive came out with ... a shorter, heavy duty outboard that was designed, air-cooled, which did not require water-cooled, you could run in the mud. So, what Pro-Drive did is ... they [created a motor similar to that created by Mr. Broussard, which] used a vertical shaft motor.”). It is agreed among the parties that the Pro-Drive motor is the Saito patent in practice. (See Transcript Vol. II at pp. 177-78 (Dr. Matthews) (indicating that Saito and Pro-Drive are each “vertical drive, shallow water engines”); see also Transcript Vol. I at p: 267 (Mr. Kliebert) (“Pro-Drive is kind of more towards ... a traditional outboard, where it’s shorter. It’s vertical shaft.”); see also id. at p. 268 (Mr. Kliebert) (“[T]he whole purpose of [Pro-Drive’s] short [drive] shaft is [to] allow it to be easier to steer.”); id. at p. 288 (Mr. Broussard) (agreeing that “the Pro-Drive has the same kind of advantages [as the] Gator Tail short-tail drive,” including maneuverability, ease of operation, and the ability to go in shallow- and open-water)).
3. The level of ordinary skill in the art
The second element in the Graham test for obviousness requires determining the level of ordinary skill in the pertinent art. See Graham, 383 U.S. at 17-18, 86 S.Ct. 684. Ascertaining the level of ordinary skill in the art is necessary for “maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed.Cir.1991). Factors to consider include the educational level of the inventor, the educational level of those who work in the relevant industry, and the sophistication of the technology involved. See id.
Here, the parties have stipulated that a person of ordinary skill in the art with respect to the patents-in-suit would have “an undergraduate education in mechanical engineering and some experience in marine propulsion systems.” (08-cv-00124 Doc. 96-1 at ¶ 17). The parties have further stipulated that “[t]he formal education may be substituted for at least five years of experience with marine motors.” (Id.).
4. Differences between the claimed subject matter and the prior art
The third element in the Graham analysis requires the determination of any differences between the teachings found in the prior art and the claimed invention, from the vantage point of a hypothetical person with ordinary skill in the art. See Graham, 383 U.S. at 17-18, 86 S.Ct. 684; Velander v. Garner, 348 F.3d 1359, 1380 (Fed.Cir.2003). The claims of the patent-in-suit must be considered “as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1547-48 (Fed.Cir.1983). It is “[t]he claims, not [the] particular embodiments [that] must be the focus of the obvious inquiry.” Jackson Jordan, Inc. v. Plasser American Corp., 747 F.2d 1567, 1578 (Fed.Cir.1984). The Federal Circuit has emphasized the significance of claims in defining an invention:
The claims of the patent provide the concise formal definition of the invention. They are the numbered paragraphs which particularly point out and distinctly claim the subject matter which the applicant regards as his invention. It is to these wordings that one must look to determine whether there has been infringement. Courts can neither broaden nor narrow the claims to give the patentee something different than what he has set forth. No matter how great the temptations of fairness or policy making, courts do not rework claims. They only interpret them.
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.1988) (quotations and alterations omitted). Thus, while it is entirely proper to use the specification of the patent to interpret what the patentee meant by a word or phrase in a claim, adding to the claim an extraneous limitation appearing in the specification is improper. See id. at 1433 (citations omitted).
Review of prior art, however, is not limited to claims asserted in the prior art. Differences between prior art and the claimed invention are “ascertained by interpretation of the teachings of the prior art and of the claims of the patent.” Chi-sum on Patents, § 5.03[5], 5-239 (2003). In other words, a prior art reference must be considered in its entirety in an obviousness inquiry and must include a “full appreciation of what such reference fairly suggests to one of ordinary skill in the art.” W.L. Gore, 721 F.2d at 1550.
The claims of the patent-in-suit are the starting point for determining any differences between the patent-in-suit and the prior art. Claim construction is a question of law for the Court to resolve. See Markman, 517 U.S. 370, 384, 116 S.Ct. 1384. Here, the parties vigorously “disputed meanings and technical scope” of the claims in question, and the Court held a Markman Hearing to clarify what is covered by the Gator Tail Patents. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.1997). And because the Court’s construction of the claims in dispute bears on the issue of obviousness, the Court'references its Markman deter-initiations in assessing whether the claims in dispute are obvious in light of prior art. See id. (“[C]laim construction may occasionally be necessary in obviousness determinations, when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution in order to determine obviousness.... ”).
i. Claim 1 of the '340 Patent
Claim 1 of the '340 Patent discloses:
A portable drive assembly having means for temporary attachment to the transom of a shallow draft watercraft said portable drive assembly comprising an elongated drive housing enclosing an upper drive assembly a lower driven assembly and a timing belt connecting said upper drive assembly to said lower driven assembly, an engine mounting plate attached externally to said drive housing located adjacent said upper drive assembly perpendicular to said drive housing said lower driven assembly further comprising a propeller shaft partially enclosed within a shaft housing attached to said drive housing adjacent said driven assembly extending at least 12 inches beyond said drive housing and a propeller attached to said propeller shaft.
(Gator Tail Ex. 1 at p. 0658 ('340 Patent)).
a. Claim 1 of the '310 Patent in light of Saito, Pro-Drive and other prior art
As described above, Claim 1 of the '340 Patent broadly discloses an easily portable drive assembly intended to be attached to the transom of a shallow draft boat. (Id.; see also Doc. 82). Claim 1 further discloses that’ the portable drive assembly consists of a drive housing that is greater in measurement in the vertical axis than in the other two axes, with the upper portion of said drive housing attached at a perpendicular angle to a plate to which an engine can be mounted. (Id.; see also Doc. 82). Claim 1 further discloses that the drive housing encloses an upper drive assembly and a lower driven assembly, and a timing belt connecting the two. (Id.; see also Doc. 82). Additionally, Claim 1 discloses that the lower driven assembly is comprised of a propeller shaft enclosed within a propeller shaft housing, and that the propeller shaft housing is attached to the elongated drive housing, near the lower driven assembly. (Id.; see also Doc. 82). Finally, Claim 1 discloses that the distal extent of the shaft housing is at least 12 inches from the drive housing, and that a propeller is attached at the end of the propeller shaft. (Id.; see also Doc. 82).
The Court finds little meaningful difference between the teachings of the prior art, and Claim 1 of the '340 Patent. More specifically, the Court determines that the “improvement” achieved by Claim 1 of the '340 Patent is not “more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417, 127 S.Ct. 1727. For example, like Claim 1 of the '340 Patent, the Saito Patent discloses an easily portable drive assembly intended to be attached to the transom of a shallow draft boat, said drive assembly consisting of an upper “powering internal combustion engine” connected to a lower “propeller shaft that is driven by said engine and which extends generally horizontally rearwardly from the watercraft hull.” (Go-Devil Ex. 40 at 001226 (Saito Patent)). And although the Saito Patent does not claim a shaft housing in excess of 12 inches, it discloses that “the distance between [the] trim axis and the propulsion device [is] greater than the distance between the forward end of the tiller and [the] trim axis.” (Id.).
Among Saito’s stated goals is to create a mud motor with an improved turning radius compared to traditional long-tail mud motors. (See id. at p. 001223 (“It is, therefore, a principal object of the [sic] this invention to provide an improved marine propulsion system wherein the device may be kept relatively short and yet still can operate in shallow water and obtain the advantages of having the propulsion device positioned substantially to the rear of the hull.”); see also id. at p. 001226 (“This shortening of the overall length [of the propeller shaft] permits the watercraft to be maneuvered in very narrow waterways without the propeller ... striking the shore or the bowel of the watercraft striking the shore.”)). Saito accomplished this goal by disclosing “a short-tail design,” (Transcript Vol. II at p. 256), facilitated by employing bevel gears to connect an engine with a vertical drive shaft to a horizontally extending, driven propeller shaft. (Go-Devil Ex. 40 (the Saito Patent); see Transcript Vol. II at p. 256 (“The main teaching of Saito, and the very important teaching, was the idea that a short-tail design would give you ... better steering and maneuverability and better control.”)).
However, by solving one problem associated with traditional mud motors — specifically, poor maneuverability — Saito (and its various embodiments, including Pro-Drive) created another — diminished balance. (See Transcript Vol. II at pp. 251-55; see also Transcript Vol. Ill at p. 52 (Dr. Garris: “The Saito Patent as shown in the patent figure would most likely be very heavily back-weighted.”); id. at p. 205 (Question: “I think you would agree[ ] that it would be obvious for a person with ordinary skill, looking at the Saito design, that they would see a weight and balance issue caused by all of this weight hanging off the back of the boat in Saito?”; Dr. Matthews: “Yes, sir. There is weight off the back, like a long-tail.”); see also Transcript Vol. I at p. 166 (Warren Coco) (“The Pro-Drive is excessively tail heavy.”)). Saito’s balance problems were caused by its vertical drive shaft motor, which had to be positioned “very far aft of the ... transom,” mounted to a cumbersome “L-shaped bracket.” (Id. at p. 254 (Dr. Gar-ris); see also Transcript Vol. Ill at p. 198 (Dr. Matthews); Go-Devil Ex. 40 (the Sai-to Patent)). The testimony at trial was that Saito’s engine weight, combined with its propeller torque, creates an increased tendency for the propeller to “pivot ... downward” into the water behind the boat. (See Transcript Vol. II at p. 255). To countermand this tendency, the operator must continually apply force to the steering shaft, resulting in fatigue. (See id.).
In light of the balance problem associated with Saito’s short-tail, there was a compelling motivation for a person of ordinary skill in the field of marine motors “to combine the elements in the way [Gator Tail’s] invention does.” See Takeda Chem. Indus., Ltd., 492 F.3d at 1356-57. Additionally, there was only a “finite number of identified, predictable solutions” to the problem. See KSR, 550 U.S. at 421, 127 S.Ct. 1727. The evidence at trial convincingly demonstrated that to improve Saito’s balance while maintaining its maneuverability, one of ordinary skill in the art would relocate Saito’s engine — i.e. a significant portion of the motor’s mass — to a pivot point above the boat’s transom. (See Transcript Vol. II at pp. 256-57 (Dr. Gar-ris) (“[0]ne of ordinary skill in the art, particularly in the art of long-tail shallow-draft water craft would immediately pick up on [Saito’s] teaching [that a short-tail design would give you better steering, maneuverability, and control] .... [a]nd say, well, wait a minute .... in the case of ... long-tails ... we’ve been using horizontal shaft engines for years. And ... we really know how important balance is. So, why don’t we see how we can ... take the teaching of Saito, which is a very important teaching, and apply it to ... the same kind of technology that we’ve been using for years.”)); id. at pp. 248-49 (Dr. Garris) (explaining that it is “advantageous” to locate the motor’s center of gravity above the transom “because the transom just naturally takes the weight.”); cf. id. at pp. 145-46 (Mr. Kueny) (“[Saito] describes how to [achieve greater maneuverability] with a vertical engine. But there’s no ... necessity of using a vertical engine to get where he gets.”). Moreover, the expert witnesses tended to agree that in order to relocate the engine above the transom, one of ordinary skill in the art would necessarily substitute Saito’s vertical drive-shaft engine for a horizontal drive-shaft engine, comparable to those used in long-tails. (See id. at pp. 247-48 (Dr. Garris) (“The advantage to a horizontal drive engine is that ... the designer could design the ... horizontal position ... of the motor to any point that the designer finds convenient. In other words, you could bring ... the motor inside the ... boat or you could put it further aft of the boat. You could put the ... drive axis in the front of the motor, or you could put it in the back of the motor. In other words, by having a horizontal shaft, you have a lot more options than you do with the vertical shaft engine. With a vertical shaft engine, the shaft can only go downward. And if the motor has to be located outside the boat, the center of gravity of the motor has to be outside the boat.”); Transcript Vol. Ill at p. 201 (Dr. Matthews) (“If you didn’t want to have as much mass as that far away from the boat, then a horizontal output shaft engine would help.”); of. Transcript Vol. II at p. 149 (Mr. Kueny) (indicating that one of ordinary skill in the art “could certainly” adapt the Saito Patent’s improvements, such as “choke and steering geometry[,] .... propellor location and output shaft angle” to “a horizontal engine with the shaft parallel to the output pro-pellor shaft”); Transcript Vol. II at p. 130 (Mr. Kueny) (“Somebody who is familiar with engines, as I am, and has worked on all kinds of different crankshaft orientations [could] look at [Saito] and say, well, if I just used ... a permanent 90 degrees and used a horizontal crankshaft engine and put a belt or a chain or gears down to that parallel shaft, that’s a good idea. I could use that. The key there is getting the propellor back in the mound of water and you look for a way to do it.”)).
Additionally, the witnesses agreed that after swapping Saito’s aft-mounted vertical-shaft engine with a transom-mounted horizontal shaft engine, one of ordinary skill in marine motors would connect the engine’s horizontal drive shaft to the driven propeller shaft with a belt or a chain. (See Transcript Vol. I at p. 227 (Mr. Klie-bert) (“Belts are designed to transfer torque from parallel shafts that are relatively long distance apart.”); Transcript Vol. II at pp. 266-68 (Dr. Garris) (explaining that belt drive is more “economical,” more “flexible,” and requires “less maintenance” than a gear drive); Transcript Vol. Ill at p. 203 (Dr. Matthews) (agreeing that “a belt drive or a chain drive” is the “best way” to connect “a horizontal shaft engine [with] a horizontal propeller shaft”); see also id. at pp. 204-08; cf. Gator Tail Ex. 5 at pp. 00018, 00026-27 (Dr. Matthews’s Jan. 18, 2010 Rebuttal Report, discussing the relative, inefficiency that would result from “[cjombining a gear drive with a belt drive”)).
Finally, the experts agreed that one of ordinary skill in the art would likely employ a timing belt rather than a chain or a v-belt to connect the horizontal drive shaft with the horizontal driven shaft, considering factors such as efficiency, cost, ease of manufacture, and ability to handle higher torque loads. (See Transcript Vol. II at. pp. 102-08, 111 (Mr. Kueny); Transcript Vol. Ill at p. 209-10 (Dr. Matthews)).
Given this evidence, and the limited number of design choices available, the Court finds that “a [mud motor] designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading [Saito] with a [horizontal shaft engine placed above the transom].” See KSR, 550 U.S. at 424, 127 S.Ct. 1727. Gator Tail, of course, vigorously refutes this conclusion, emphasizing repeatedly that “Saito rejected and taught away from using a horizontal shaft engine.” (See Doc. 125 at pp. 11; see also id. at p. 13 (“The defendants improperly try to ignore Saito’s teaching away from the horizontal output engine and make that modification anyway.”)); id. (“The defendants also argued it would be obvious — despite Saito’s rejection of horizontal shaft engines — to use such an engine because it would solve a supposed inherent flaw in Saito’s rear weighted design.”). In short, the Court is not persuaded by Gator Tail’s arguments because they rely on the same “rigid” application of the “teaching, suggestion, or motivation” test rejected by the Supreme Court. KSR, 550 U.S. at 421-22,127 S.Ct. 1727. Accordingly, the Court finds that the material disclosed in Claim 1 of the '340 Patent is obvious in light of Saito and/or Pro-Drive.
b. Claim 1 of the '3^0 Patent in light of Torrey, Scavenger, and other prior art
The same conclusion is reached starting with the Torrey Patent and/or the Scavenger Backwater motor.” Like Claim 1 of the '340 Patent, Torrey and Scavenger each disclose an easily portable drive assembly intended to be attached to the transom of a shallow draft boat, where the drive assembly consists of an upper drive assembly and a lower driven assembly, and a Y-belt connecting the two. (Go-Devil Ex. 43 at pp. 001278 (Torrey Patent Fig. 1), 001281-82 (Torrey Patent Claims); see also Go-Devil Ex. 15 (“The webpages at www.scavengerbackwater.com and all subordinate pages, including all photographs, videos, drawings, and other information contained therein.”)). Torrey and Scavenger further disclose lower driven assemblies comprised of propeller shafts enclosed within propeller shaft housings extending at least 12 inches from the lower driven assemblies, and propellers attached at the end of the propeller shafts. (Id.). Finally, Torrey and Scavenger each disclose an engine mounting plate attached at a perpendicular angle near the upper drive assembly, to which an engine can be mounted. (Id.).
Missing from the Torrey Patent and the Scavenger Backwater motor is: (1) a timing belt (instead of a v-belt); and (2) an elongated drive housing. However, timing belts were known in the field of outboard marine motors before the '340 Patent. (E.g., Go-Devil Ex. 35 at pp. 001209-10 (United States Patent 5,435,763 (Pigna-ta))). Further, the testimony at trial established that it is well-within the grasp of a person of ordinary skill in mud motors to substitute a timing belt for a v-belt when the goal is to achieve greater torque. (Transcript Vol. II at pp. 202-203 (Dr. Garris: “A timing belt is the best for handling ... higher torque, because it has teeth.... A v-belt ... is used in a lot of wide-ranging applications and they’re very effective. But ... if you increase the torque beyond a certain amount or if the v-belt is not properly adjusted, it will begin to slip.”)). Indeed, Gator Tail’s own expert, Dr. Matthews, acknowledged that it would be “an obvious modification” to “use a timing belt” instead of a v-belt when “connect[ing] a high horsepower, high torque horizontal drive to a parallel propeller shaft,” “[bjecause a v-belt could slip.” (Transcript Vol. Ill at p. 231).
Elongated drive housings — such as that claimed in Claim 1 of the '340 Patent — ■ were also well-known in the field prior to the '340 Patent’s issue. On reexamination, the PTO noted multiple examples of prior art disclosing “an elongated drive housing that encloses an upper drive assembly, a lower driven assembly, and a timing chain or belt that connects said upper drive assembly to said lower driven assembly,” including United States Patent 4,869,692 (Newman), (Go-Devil Ex. 34), and United States Patent 4,992,066 (Watson), (Go-Devil Ex. 45). (Go-Devil Ex. 16 at 000176; see also id. (further identifying “Brindley (U.S. 2,722,193)” as disclosing an “elongated drive housing”)). The testimony at trial was that drive housings serve at least four functions on an outboard marine motor, including: (1) a “safety” function, (2) “an aesthetic function”; (3) “a sealing function ... protecting] the machinery from ... water ... and from other things”; and (4) “a structural [function] ... supporting]- the engine or other things.” (Transcript Vol. II at pp. 237-38 (Dr. Garris); see also id. at pp. 104-05 (Mr. Kueny)). The Court finds that a mechanical engineer with experience in marine motors would easily recognize a drive housing as an improvement to the Torrey Patent and/or Scavenger Backwater motor.
Again, Gator Tail disputes this conclusion, asserting that “Torrey does not render Mr. Broussard’s invention obvious” because the elongated drive housing claimed in Claim 1 of the '340 Patent is “structural,” — i.e., “the structure through which the thrust forces were ultimately transmitted to propel the boat.” (08-ev00124 Doc. 125 at p. 14). Although not stated in so many words, Gator Tail’s position seems to be that because “adding a mere safety guard to Torrey (as was done in Scavenger) [would] not serve any structural function,” whatever function a housing guard might serve in the Torrey design cannot be equivalent to the function that the elongated drive housing serves in the '340 Patent. (See id.).
The Court is not persuaded by Gator Tail’s argument because it implicitly misconstrues the nature of the obviousness inquiry where combination patents are involved. As indicated above, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550