Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC

Darren Bach, the owner of Pacific Coast Marine Windshields Limited (Pacific) (plaintiff), obtained a patent (the ‘070 design patent) that claimed an ornamental design for a marine windshield and named Bach as the sole inventor. The patented design incorporated a tapered corner post, a hidden top rail, and four vent holes. In 2010, Pacific asserted the ‘070 design patent in an infringement action against Malibu Boats LLC (Malibu LLC) and certain other named defendants (all defendants, collectively, Malibu) (defendants). Previously, Pacific had served as a windshield supplier to Malibu LLC. Bach introduced drawings comprising sketches dated between February and September 2005 and computer-aided design (CAD) drawings dated September 2005. Bach also introduced testimony that he had shown his design concepts to Dan Gasper, Malibu LLC’s research-and-development manager, and that Gasper had reacted favorably to them, indicating that Malibu LLC would use them as a basis for a new windshield and that Malibu LLC would determine whether the vent holes would remain in the design. Gasper, however, testified that he conceived of the idea of the corner posts after seeing them used in a windshield of a concept car appearing in a November 2004 auto show. Additionally, Gasper produced documents related to his alleged conception, including: (1) a picture of the concept car, (2) an email to Bach attaching CAD drawings of a windshield design substantially similar to the windshield illustrated in the ‘070 design patent, and (3) a January 2006 email from Bach to Gasper stating that both of them would “probably have to appear as inventors.” By August 2007, however, the business relationship between Pacific and Malibu LLC had deteriorated to the point that Malibu LLC started using a different windshield supplier. Responsive to Pacific’s lawsuit, Malibu raised an invalidity defense on the ground that, by omitting Gasper as a coinventor, the ‘070 design patent was invalid for reciting improper inventorship. Malibu cited 35 U.S.C. §§ 102(f) and 116(a) as the statutory basis of invalidity for improper inventorship. The parties filed cross-motions for summary judgment, including on the inventorship issue.