In a closely watched patent dispute over electric hydrofoil watercraft technology, MHL Custom, Inc. secured a favorable jury verdict against Waydoo USA, Inc. and its Chinese parent entity, Shenzhen Waydoo Intelligence Technology Co., Ltd., before Judge Richard G. Andrews in the Delaware District Court. The case, filed January 27, 2021, and closed July 1, 2024, centered on two patents — US9586659B2 and US9359044B2 — covering MHL’s Lift eFoil personal hydrofoil watercraft technology. Although the court denied a permanent injunction, it granted supplemental and ongoing damages, ultimately resulting in a stipulated ongoing royalty agreement.

This case carries significant strategic weight for IP professionals and R&D teams operating in the rapidly expanding personal watercraft and electric mobility sectors. The outcome illustrates that even when permanent injunctions are denied, patent holders can secure durable revenue streams through court-ordered ongoing royalties — a litigation posture increasingly favored in hardware-intensive consumer product markets. In-house IP teams and product engineers working on electric propulsion or hydrofoil technology should treat this case as a critical FTO and competitive intelligence benchmark.

Case Overview

The Parties

The Patents at Issue

US9586659B2 and US9359044B2 collectively cover the core architecture of an electric-powered personal hydrofoil watercraft — commonly known as an eFoil — including the structural integration of a hydrofoil mast, underwater propulsion motor, and control systems that allow the rider to glide above the water surface at speed. The claims encompass key design and mechanical elements that distinguish battery-powered hydrofoil boards from conventional watercraft. These patents protect the commercially successful Lift eFoil product, which pioneered the consumer eFoil market and has been widely adopted in recreational and competitive watersports.

• • US9586659B2
• • US9359044B2

Legal Representation

Plaintiff Counsel: Cooch & Taylor; Lewis Brisbois Bisgaard & Smith LLP (lead: Andrew Ralli)
Defendant Counsel: Morgan Lewis & Bockius LLP; Richards, Layton & Finger, PA (lead: Amy Michele Dudash)

Litigation Timeline & Procedural History

The case was filed on January 27, 2021, in the District of Delaware — a jurisdiction routinely selected by patent holders for its experienced patent bench, streamlined case management, and plaintiff-favorable procedural history. Judge Richard G. Andrews, an experienced patent jurist, presided over this first-instance district court proceeding, which encompassed the full lifecycle from complaint through post-trial motions. Delaware’s selection reflects both the sophistication of MHL’s litigation counsel and the strategic advantages the venue offers for technology patent enforcement against consumer product companies.

The case ran for 1,251 days — approximately 3.4 years — reflecting the complexity typical of hardware patent disputes involving foreign defendants. The matter proceeded through trial to a jury verdict finding infringement, followed by contested post-trial motions on injunctive relief and damages. The court’s denial of a permanent injunction was notable, but the grant of ongoing damages compelled a royalty negotiation that eventually stalled due to Waydoo’s unresponsiveness to its own counsel. Following substitution of defense counsel in February 2024, negotiations resumed and a stipulated ongoing royalty rate was agreed upon by June 2024, allowing the court to dismiss the remaining permanent injunction motion as moot. The case formally closed July 1, 2024.

The Verdict & Legal Analysis

Outcome

The jury returned a verdict finding that Waydoo USA and Shenzhen Waydoo Intelligence Technology Co., Ltd. infringed MHL Custom’s patents US9586659B2 and US9359044B2. The court denied MHL’s motion for a permanent injunction but granted supplemental and ongoing damages, directing the parties to negotiate an ongoing royalty rate. After a period of non-cooperation by defendants — including unresponsiveness to their own legal counsel — new defense counsel was substituted and negotiations concluded in a court-approved stipulation on ongoing royalties entered June 17, 2024. No permanent injunction was entered, and the final resolution was a compensatory ongoing royalty rather than exclusionary relief.

Verdict Cause Analysis

The infringement action resolved through a combination of jury verdict and post-trial judicial management, with the following legal grounds and findings shaping the outcome:

• The jury found direct infringement of both asserted patents — US9586659B2 and US9359044B2 — by Waydoo’s Flyer ONE and Flyer watercraft products against MHL’s Lift eFoil claims.
• The court declined to grant a permanent injunction under the four-factor eBay test, finding that monetary relief in the form of ongoing royalties was a sufficient and adequate remedy.
• The court granted supplemental and ongoing damages, establishing a framework for continued royalty payments that would compensate MHL for post-verdict infringement without halting Waydoo’s commercial operations.
• Defendants’ failure to engage in court-ordered royalty negotiations — including unresponsiveness to their own retained counsel — prompted MHL to seek a renewed injunction, which ultimately became moot when new counsel facilitated a stipulated royalty agreement approved by the court on June 17, 2024.

Legal Significance

1. 1. This case reinforces the post-eBay landscape in hardware patent disputes where courts increasingly substitute ongoing royalty regimes for permanent injunctions, effectively licensing infringing products rather than removing them from market — a significant consideration for patent holders evaluating litigation strategy in the consumer products sector.
2. 2. The court’s management of defendant non-cooperation — including treating unresponsiveness to counsel as a potential basis for renewed injunction consideration — signals that Delaware courts will actively supervise post-verdict royalty negotiations and may revisit injunctive relief where defendants act in bad faith.
3. 3. The dual-defendant structure naming both the U.S. distributor (Waydoo USA) and the Chinese manufacturer (Shenzhen Waydoo Intelligence Technology) demonstrates an effective enforcement model for reaching foreign OEMs through their domestic commercial subsidiaries, particularly relevant for IP holders in the consumer electronics and recreational product industries.

Strategic Takeaways

For Patent Attorneys:

• When permanent injunction is at risk under the eBay four-factor test, build an evidentiary record at trial specifically addressing irreparable harm and inadequacy of monetary relief — particularly documenting market share loss and direct competition between patentee’s product and the accused product.
• Structure post-trial royalty negotiation orders with explicit deadlines and compliance milestones; this case demonstrates that open-ended royalty negotiation directives can stall for months, delaying final resolution and increasing client costs.
• In cross-border consumer product disputes, name both the foreign manufacturer and U.S. distributor as co-defendants from the outset to preserve leverage over the full supply and distribution chain, particularly when the domestic entity may lack assets to satisfy a judgment.
• Monitor defendant counsel responsiveness post-verdict; documented unresponsiveness to their own counsel can form an independent basis for renewed injunctive relief motions, as demonstrated by MHL’s January 2024 renewed motion strategy.

For IP Professionals:

• Portfolio managers in the personal watercraft and electric mobility sectors should audit claims of US9586659B2 and US9359044B2 to identify overlap with current or planned product lines, and ensure FTO clearance is obtained before entering the eFoil or electric hydrofoil market.
• In-house teams should model litigation outcomes that include ongoing royalty scenarios — not just injunction or lump-sum damages — as Delaware courts in hardware disputes are increasingly inclined to license rather than exclude, which affects both litigation budgeting and licensing negotiation leverage.

For R&D Teams:

• Engineering teams developing electric propulsion, hydrofoil mast integration, or underwater motor control systems should conduct targeted FTO analysis against US9586659B2 and US9359044B2 before finalizing mechanical architectures, as these patents cover core structural and propulsion claim elements broadly applicable across eFoil-type designs.
• Consider design-around strategies that differentiate propulsion mounting, foil attachment mechanisms, or control interfaces from the specific claim constructions upheld in this case — patentability of incremental improvements may also provide defensive IP value in this rapidly evolving product category.