Kirkland & Ellis has swum Brunswick Corp. to safety.

The recreational products company got hit with an $8 million judgment in 2017 for infringing the patent on a retractable swim step used on a competitor's boats.

Cobalt Boats won a sweeping victory before U.S. District Judge Henry Coke Morgan Jr., getting enhanced damages, attorneys fees and an ongoing royalty of $2,500 per swim step. But it was all washed out May 31 by the U.S. Court of Appeals for the Federal Circuit.

On appeal, Brunswick and Kirkland argued that Brunswick never should have faced trial in the Eastern District of Virginia following the Supreme Court's TC Heartland ruling on patent venue, even though a Brunswick subsidiary does business there. Brunswick also argued that the damages were way out of line. Morgan had let Cobalt use the sale price of a boat as the starting point, and at one point referred to the entire market value rule as “the whole something rule.”

But the issue that ultimately got traction was Stewart's decision that a convoluted claim term— “configured to permit rotation of said step 180 degrees from a stored position above the water surface”—had a plain and ordinary meaning that could be construed by jurors.

B. Scott Eidson of Stinson Leonard Street argued to the Federal Circuit last month that the 180 degrees wasn't a hard-and-fast limitation, but instead simply a way of explaining that the top side of the step turns over to become the underside. “In the context of the invention, it flips over,” he told the Federal Circuit.

Kirkland partner John O'Quinn said the claim requires that the step rotate at least a full 180 degrees, and it was undisputed that Brunswick's step is deliberately designed not to rotate quite that far, to minimize the risk of swimmers slipping into the water. “The claims here don't say 'about 180 degrees,'” O'Quinn told the court. “The use of ordinary numbers does not suggest an approximation.”

The Federal Circuit agreed with O'Quinn and Brunswick in Cobalt Boats v. Brunswick. “Where a precise value is included in the claim without a term such as 'about,' we interpret the claim language as imposing a strict numerical boundary, absent evidence that such a construction would be inconsistent with the intrinsic evidence,” Judge Timothy Dyk wrote for a unanimous panel. Judges Jimmie Reyna and Evan Wallach concurred.

The court reserved judgment on venue and damages, though Dyk wrote that the court had “substantial reservations about the district court's damages rulings, which permitted Cobalt to present a damages calculation to the jury that used the profit of entire boats as its starting point—even though Cobalt concedes “that the swim step is not 'the basis' of demand” for Brunswick's boats.

The TC Heartland issue had almost led to a pretrial intervention, and much of the judges' questioning had focused on that issue. But the court ultimately left it for another day.

Quinn was joined on the briefs by Kirkland partner Nathan Mammen and Morgan, Lewis & Bockius partners Jason White and Michael Abernathy. Cobalt Boats was also represented by Troutman Sanders.