ProV1 Litigation Update – Acushnet Updates the Court Regarding the USPTO’s Views of the Callaway Patents

As you should know by now, the Callaway v. Titleist (Acushnet) golf ball battle has been pending for a couple of years, so a quick refresher is in order. Back in December a jury found that 8 of the 9 claims in the 4 patents-in-suit were VALID, and therefore infringed by Acushnet (click HERE to read the post on the verdict). Then, in mid-January Callaway filed a Motion for Permanent Injunction (click HERE to read the related post) seeking to bring a halt to the production and sale of ProV1’s. Next, Acushnet responded to Callaway’s motion at the end of February (click HERE to read the related post). Lastly, Callaway has filed their “reply” in support of the motion for permanent injunction leaving the motion “fully briefed” and ready for action by the court (click HERE for the post).

You may recall that all four of the patents-in-suit are currently being re-examined by the USPTO, and things were not going well for the validity of the patents.

Now, for the update… Yesterday, Acushnet’s attorneys filed a letter to the Court informing the Court that the US Patent & Trademark Office (USPTO) has issued rulings closing the prosecution off ALL the reexaminations, with ALL claims having been rejected as INVALID in ALL four reexaminations. I have reproduced some of the highlights from the letter below, however you may review the complete letter HERE.

Defendant, Acushnet Company ("Acushnet"), writes to advise you of developments in the reexamination proceedings related to the four patents in suit. The PTO has consistently rejected all claims in all patents throughout the reexaminations. Now the PTO has issued rulings closing prosecution of all the reexaminations, with all claims having been rejected as invalid in all four reexaminations.

We previously advised you that the PTO closed prosecution on the '130 and '873 patents, finding all claims in both patents invalid. See D.I. 469. Callaway has appealed the final determination in the '130 patent to the PTO Board of Patent Appeals and Interferences. We expect it to appeal the rejection of the '873 patent as well once the right of appeal notice (the final procedural step in examination) issues in the near future.

On the enclosed CD, you will find recent lengthy decisions of the PTO rejecting all claims and closing prosecution on the '293 and '156 patents (Exs. 1 and 2, respectively). The PTO has continued to find the claims invalid under 35 U.S.C. § 102 as anticipated by Nesbitt incorporating Molitor '637. The PTO has also found all the claims invalid as obvious under § 103, making scores of rejections over the same prior art in the litigation, including Nesbitt, Proudfit, Wu, Molitor '637, and Molitor '751. The PTO has thus repeatedly found all the claims in these patents to be invalid on many grounds.
In sum, the PTO has determined that Callaway's claims-in-suit are invalid and should never have issued. The PTO has closed prosecution on all reexaminations, and rejected claims both under the "broadest reasonable construction" applied in reexamination and under the "on the ball" construction applied by this Court. We anticipate that the PTO will issue shortly to Callaway "Right to Appeal Notices," which will formally conclude all proceedings before the examiners in all four of these patents.

Mercy, this case just keeps getting more interesting! I am sure that Callaway will soon file a letter to the Court responding to the Acushnet letter. I will keep you posted.

David Dawsey  – The IP Golf Guy

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