MHL Custom v. Foil Boarding Co.: Hydrofoil Patent Dispute Dismissed Without Prejudice
MHL Custom, Inc. filed suit against Foil Boarding Company, Inc. in the Northern District of Florida, asserting two patents covering powered hydrofoil boards and weight-shift controlled personal hydrofoil watercraft. After 886 days of litigation, both parties jointly stipulated to dismiss all claims and counterclaims without prejudice, each bearing its own costs.
Two hydrofoil patents, one contested market, no merits ruling
On 21 October 2022, MHL Custom, Inc. filed an infringement action against Foil Boarding Company, Inc. in the Northern District of Florida (Case No. 3:22-cv-21258), asserting US9586659B2 and US9359044B2 — patents covering a powered hydrofoil board and a weight-shift controlled personal hydrofoil watercraft respectively. The dispute targeted what MHL Custom alleged was Foil Boarding Company’s unauthorised use of its patented hydrofoil propulsion and control technologies.
The case closed on 25 March 2025 via a joint stipulation of voluntary dismissal without prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(ii). All claims and counterclaims were dismissed simultaneously, with each party bearing its own attorneys’ fees and costs. Because the dismissal was without prejudice, MHL Custom retains the right to refile substantially identical claims subject to applicable statutes of limitations and any tolling considerations.
The 886-day duration before dismissal is notable — it suggests the parties engaged in significant pre-trial activity, potentially including claim construction and discovery, before reaching this resolution. The public record does not disclose whether a settlement agreement underlies the stipulation, and the without-prejudice designation leaves the competitive dynamic between these parties unresolved on the merits. Whether this reflects a commercial arrangement or simply a strategic pause in enforcement remains unknown.
Filing to Voluntary dismissal in 886 days
886 days — nearly two and a half years of active litigation before voluntary dismissal
Voluntarily dismissed without prejudice: what the stipulation means for both parties
Rule 41(a)(1)(A)(ii) — a joint exit with no court merits finding
A stipulated dismissal under FRCP 41(a)(1)(A)(ii) requires agreement from all parties who have appeared. Because the order specifies ‘without prejudice,’ the dismissal does not adjudicate the underlying patent claims. No claim construction ruling, validity finding, or infringement determination was entered. The court made no ruling on the merits of either US9586659B2 or US9359044B2.
No merits adjudicationWithout prejudice: the distinction matters for future enforcement
A ‘without prejudice’ dismissal means MHL Custom preserves the right to refile claims on the same patents against Foil Boarding Company or other parties, subject to the applicable six-year patent infringement statute of limitations. A ‘with prejudice’ dismissal would have permanently barred refiling. The stipulation here is expressly without prejudice, meaning the enforcement threat is suspended, not extinguished. Whether a confidential settlement governs the parties’ conduct going forward is not disclosed in the public record.
Refiling rights preservedFoil Boarding Co. escapes a merits ruling — but risk remains
Foil Boarding Company, Inc. avoids an adverse infringement or validity finding, which would have been binding in subsequent proceedings. However, because the dismissal is without prejudice, it receives no declaratory judgment of non-infringement or invalidity. The patents remain in force and the threat of re-assertion persists. Each party bearing its own costs suggests neither side extracted a clear financial concession at this stage.
No declaratory judgment wonHydrofoil IP landscape stays contested after 886 days
The without-prejudice resolution leaves US9586659B2 and US9359044B2 as active enforcement assets. Competitors and new entrants in the powered hydrofoil and personal watercraft segment should treat these patents as live risks. The length of pre-dismissal litigation suggests both parties invested substantially in the dispute, consistent with a negotiated resolution or strategic recalibration rather than a simple abandonment of claims.
Patents remain enforceableFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | MHL Custom, Inc. | Company | Hydrofoil watercraft IP holder — asserting US9586659B2 and US9359044B2Search in Eureka ↗ |
| Defendant | Foil Boarding Company, Inc. | Company | Foil Boarding Company, Inc. — manufacturer and seller of hydrofoil watercraft productsSearch in Eureka ↗ |
| Plaintiff counsel | BRIAN PATRICK MCGRAW | Attorney | Counsel for MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff counsel | DENNIS DAVID MURRELL | Attorney | Counsel for MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff counsel | John R. Zoesch , III | Attorney | Counsel for MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff counsel | MEGAN ELIZABETH GIBSON | Attorney | Counsel for MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff counsel | ROBERT J THEUERKAUF | Attorney | Counsel for MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Stephen Douglas Wilson | Attorney | Counsel for MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Beggs & Lane RLLP (Pensacola FL) | Law Firm | Representing MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff law firm | GRAY ICE HIGDON – LOUISVILLE KY | Law Firm | Representing MHL Custom, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Gray Ice Higdon PLLC | Law Firm | Representing MHL Custom, Inc.Search in Eureka ↗ |
| Defendant counsel | JAMES HUNTER ADAMS | Attorney | Counsel for Foil Boarding Company, Inc.Search in Eureka ↗ |
| Defendant counsel | KRISTOPHER O ANDERSON | Attorney | Counsel for Foil Boarding Company, Inc.Search in Eureka ↗ |
| Defendant counsel | MATTHEW MCDONNELL COUCH | Attorney | Counsel for Foil Boarding Company, Inc.Search in Eureka ↗ |
| Defendant counsel | ROBERT JAMES POWELL | Attorney | Counsel for Foil Boarding Company, Inc.Search in Eureka ↗ |
| Defendant law firm | ADAMS IP LLC – MOBILE AL | Law Firm | Representing Foil Boarding Company, Inc.Search in Eureka ↗ |
| Defendant law firm | MOORHEAD LAW PLLC – PENSACOLA FL | Law Firm | Representing Foil Boarding Company, Inc.Search in Eureka ↗ |
| Defendant law firm | YATES ANDERSON LLC – ORANGE BEACH AL | Law Firm | Representing Foil Boarding Company, Inc.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Florida Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulation adopts the precise language of FRCP 41(a)(1)(A)(ii), signalling a consensual and procedurally clean exit. The explicit ‘without prejudice’ qualifier and the symmetric cost allocation — each party bearing its own fees — are the two legally operative terms. Neither favours one party financially on the face of the record. The inclusion of counterclaims in the dismissal scope confirms that any defensive invalidity or non-infringement claims Foil Boarding Company had asserted are equally extinguished at this stage, without resolution.
US9586659B2 & US9359044B2 — Powered Hydrofoil Watercraft Technology
US9586659B2 (App. No. 15/064521) covers a powered hydrofoil board — a watercraft category in which an underwater foil lifts the hull above the water surface using hydrodynamic lift, with onboard propulsion. US9359044B2 (App. No. 14/509289) protects a weight-shift controlled personal hydrofoil watercraft, addressing the rider-input control architecture that governs directional stability and manoeuvrability. Together, these patents cover both the propulsion and control layers of what is now a rapidly commercialising personal watercraft segment.
The hydrofoil watercraft sector has attracted significant investment from established marine manufacturers and electric mobility startups alike. Patents covering propulsion integration and rider-control mechanisms — as these two do — sit at the intersection of most competitive product architectures. Any company developing electric foilboards, eFoils, or weight-shift hydrofoil craft should treat MHL Custom’s portfolio as a potential blocking position, particularly given the without-prejudice outcome of this litigation leaves both patents fully enforceable and their scope uncontested by any court ruling.
Should your team run an FTO against US9586659B2 and US9359044B2?
If your organisation designs, manufactures, imports, or sells powered hydrofoil boards or weight-shift controlled personal watercraft in the United States, both patents warrant direct FTO analysis. The Northern District of Florida litigation confirms MHL Custom is prepared to enforce these assets, and the without-prejudice dismissal provides no safe harbour for third parties. Product teams working on eFoil platforms, electric foilboards, or hydrofoil surfboards should assess claim coverage before launch or market entry.
PatSnap Eureka’s FTO Search Agent can map the independent and dependent claims of US9586659B2 and US9359044B2 against your product architecture, identify prior art that may bear on validity, and surface related continuation or family members that could extend coverage. Eureka’s litigation monitoring layer also tracks MHL Custom’s broader enforcement history, so your IP counsel can assess pattern and risk before committing to a product roadmap in the hydrofoil watercraft space.
Run a freedom-to-operate analysis on US9586659B2 to assess your product’s exposure
Run FTO in Eureka →Similar hydrofoil watercraft patent cases in U.S. district courts
Cases involving powered hydrofoil and personal watercraft patents in U.S. district courts, including comparable voluntary dismissal and infringement action outcomes.
What this case signals for the hydrofoil watercraft IP landscape
A without-prejudice exit after nearly three years suggests these patents carry real enforcement weight — and the dispute is not necessarily over.
Without-prejudice dismissals preserve optionality — monitor for refiling
MHL Custom retains full rights to refile against Foil Boarding Company or assert the same patents against other hydrofoil manufacturers. IP teams in the personal watercraft and electric hydrofoil space should monitor MHL Custom’s enforcement activity and track any continuation or divisional filings stemming from US9586659B2 and US9359044B2.
No validity ruling means competitor risk is unchanged
Neither patent was adjudicated as valid, invalid, infringed, or not infringed. Any competitor currently designing or selling powered hydrofoil or weight-shift controlled watercraft cannot rely on this outcome as prior art to invalidity or as a clearance signal. An independent FTO analysis against both patents remains necessary.
MHL v Foil — key questions answered
MHL Custom, Inc. asserted two patents: US9586659B2, covering a powered hydrofoil board, and US9359044B2, covering a weight-shift controlled personal hydrofoil watercraft. Both patents relate to the propulsion and rider-control architecture of hydrofoil watercraft products.
The dismissal without prejudice under FRCP 41(a)(1)(A)(ii) means the court made no ruling on the merits of infringement or validity. MHL Custom retains the right to refile the same claims against Foil Boarding Company or other parties within the applicable statute of limitations. No declaratory judgment of non-infringement or invalidity was entered in favour of Foil Boarding Company.
The stipulation expressly states that each party is to bear its own costs and fees. No fee award was entered against either party. This symmetric cost allocation is common in stipulated dismissals and does not indicate which party, if any, held the stronger legal position.
Yes. Because the dismissal was without prejudice, MHL Custom may refile substantially the same infringement claims against Foil Boarding Company or new defendants, subject to the six-year statute of limitations under 35 U.S.C. § 286 measured from the date of any subsequent alleged infringement. The patents themselves remain in force.
No. The without-prejudice voluntary dismissal carries no preclusive effect on patent validity or enforceability. Neither patent was adjudicated as valid or invalid. Competitors cannot rely on this outcome as a clearance signal and should conduct independent freedom-to-operate and validity analyses before commercialising potentially overlapping hydrofoil watercraft technology.
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