Bonito Boats Notes

BONITO BOATS VS. THUNDER CRAFT, 489 U.S. 141 (1989)

Situation:

•Bonito Boats Develops a hull (bottom of the boat) design for a fiberglass recreational boat – Bonito Boat Model 5VBR

•Manufacturing process involves creating a mold which is then used to produce final product for sale

•No patent for either utility/design of the hull or manufacturing process

•After 6 years on the market Florida legislature enacts statute that “prohibits the use of a direct molding process to duplicate unpatented boat hulls, and forbids the knowing sale of hulls so duplicated.”

Accusation:

Bonito Boats sues Thunder Craft Boats for using the molding process to duplicate the 5VBR hull, and knowingly selling the duplicate

Outcome:

Court rules against Bonito Boats, stating that the statute conflicted with federal patent laws and was thus, invalid (Supremacy Clause of Federal Constitution).

Ruling held in Florida Court of Appeals, Florida Supreme Court, and finally the U.S. Supreme Court

Reasoning:

“…federal patent system depends upon substantially free trade in publicly known, unpatented design and utilitarian conceptions. A state law that interferes with the enjoyment of such a conception contravenes the ultimate goal of public disclosure and use that is the centerpiece of federal patent policy. Moreover, through the creation of patent-like rights, the States could essentially redirect inventive efforts away from the careful criteria of patentability developed by Congress over the last 200 years.”

•Unpatented designs/utility must be available for free trade- Florida interfered with this basic principle, undermining the “ultimate goal of public disclosure and use” Also, the statue undercuts the criteria for patentability developed by Congress over the past 200 years

•If there is no patent – free trade must be allowed!

State issued patent-like laws “contravene the congressional intent to create a uniform system for determining the boundaries of public and private right in utilitarian and design ideas”

•The Florida statue, gives Bonito Boats the right to prohibit reverse engineering of the 5VBR in circulation  this is a similar right provided by a U.S. patent; thus represents a contradiction to the uniform system

Patents must be filed before the novelty becomes open to public use; at that point the inventor forfeits his rights; patent law “exclude[s] from consideration for patent protection knowledge that is already available to the public”

•Bonito Boats had been manufacturing and selling the 5VBR for nearly six years before the statute came into effect - under federal law the hull and manufacturing process are unpatentable because they had been in public use

Precedent:

•Sears, Roebuck & Co. v. Stiffel Co

o“Publically known design and utilitarian ideas which were unprotected by patent occupied much the same position as the subject matter of an expired patent” – similarly, Bonito Boats hull can be considered an “expired” patent-like

oIllinois unfair competition law upheld – states have the right to protect businesses in use of trademarks/labels/distinctive dress so as to prevent others from confusing consumers by pretending to be a different company

--This is not what is going on in the Bonito Boats case – the Florida statute is trying to prevent reverse engineering of a publicly traded product; reverse engineering is a right covered by federal patent law; thus, the conflict

•Kewanee

oStates have the right to protect a business’s trade secrets, but trade secrets are not the dame as reverse engineering (publically traded products are no longer a secret)