As I reported earlier this
week (read post HERE),
a recent letter from Acushnet’s attorney to the Court provided a nice status
report regarding the reexamination progress. Well, Callaway did not let any
grass grow under their feet before filing their own letter to the Court
providing a different view of the situation. Enjoy.
I write on behalf of
Plaintiff Callaway Golf Company in response to Mr. Moore’s letter of June 26th
on behalf of Defendant Acushnet.
Undeterred by the fact
that its reexaminations were commenced in breach of contract, Acushnet
continues to distract this Court with Patent Office activities that are
irrelevant to these proceedings because they are based upon: (i) an entirely
different claim construction (i.e., broadly including all prior art concerning
off-the-ball hardness measurements, contrary to the claim construction arrived
at by this Court); and (ii) other legal assessments directly at odds with
determinations made by this Court. FN1 The latest installment regarding
Acushnet’s unlawful reexaminations proceedings can be summed up as simply more
of the same. However, to the extent the Court is inclined to give any
consideration to Acushnet’ s remarks or to the multitude of Patent Office
materials attached to its latest letter, Callaway Golf respectfully provides
the following brief response.
As Callaway Golf has
previously noted, the PTO must use the “broadest reasonable interpretation” of
the claim language rather than the legally correct one used in district court
litigation. See also Manual of Patent Examiner’s Procedures (MPEP) § 2111
(“During patent examination, the pending claims must be ‘given their broadest
reasonable interpretation consistent with the specification.’”). The latest PTO
decisions touted by Acushnet continue to adopt the same unduly broad
off-the-ball view of the claims – despite being apprised of this Court’s claim
construction rulings.
Indeed, to simplify the
prosecution and remove any doubt that the PTO’ s differing claim construction
explained its mistaken conclusions on validity, Callaway Golf sought to add
claims to the ‘130 patent that expressly require that the hardness measurements
to be made on-the-ball. The examiner, however, refused to consider those claims.
Importantly, he said that requiring hardness to be measured on-the-ball would
raise new issues not addressed in his analysis:
The Examiner does not
'object' to the claims for not disclosing hardness measured 'on the ball' but
only argues that the claims (1 through 6) do not require hardness to be
measured on the ball. Hence, the issues are not simplified because the new
claims raise a new issue – requiring a search and possible rejection of the new
claims because of their new limitation of hardness measured ’on the ball.’
D.I. 469, Ex. 1 at 194
(emphasis added). Thus, contrary to Acushnet’s repeated arguments to this
Court, the Patent Office itself recognizes that viewing the claims as
encompassing off-the-ball hardness measurements is critical to the Patent
Office’s analysis. If the Patent Office would have to prepare a new analysis
using the proper claim construction – which this Court and the jury already
have done – it follows that the Patent Office analysis using the wrong claim
construction has no bearing here.
Next, in the secondary
considerations portion of its letter, Acushnet implies that the Patent Office
fully considered all the evidence and concluded the claims were still obvious.
In reality, Callaway Golf was unable to provide the Patent Office with all the
secondary considerations evidence considered by the jury, and this Court,
because confidential information cannot be used in the Patent Office
proceedings. Nor was the Patent Office in any position to weigh the credibility
of pertinent witnesses regarding the extensive evidence of non-obviousness
presented at trial. Of course, whether or not any secondary considerations
could ever alter the Patent Office’s obviousness assessment is immaterial,
given the mistakenly broad claim interpretation it has chosen to apply.
Lastly, Acushnet suggests
that the four reexamination proceedings are close to being wrapped-up –
implying that the proceedings in this Court may soon be moot as a result. In
reality, while the proceedings relating to the '130 patent are the furthest
along, they are far from over. The next step is an appeal to the Board of
Patent Appeals and Interferences (BPAI). Given the applicable rules governing
the timing of such an appeal, the BPAI will likely not render a decision for at
least another year.
Even then, the BPAI has
the option of remanding the case to the Examiner for further proceedings, which
would re-start the examination process. See MPEP 2681. Here, the BPAI could
very well remand the case to the Examiner with instructions to enter Callaway
Golf’s proposed additional claims that explicitly require measuring Shore D
hardness on the ball. As noted above, the Examiner himself has admitted that
these claims would raise new issues and require additional consideration, and
thus more time. Even if the BPAI rendered a decision on the merits (as opposed
to remanding the case), the case would not be ripe for appeal to the Federal
Circuit until all motions for reconsideration of the BPAI decision were
considered and decided. Therefore, the reexamination proceeding involving the
’130 patent – the one proceeding that is furthest along – realistically would
not be ready for the Federal Circuit until at least the end of 2009. The
proceedings involving the other 3 patents ('293, '156, and '873 patents) are at
earlier stages in the examination process, and thus will take even longer to
reach the stage at which they can first be appealed to the Federal Circuit.
To the extent, however,
that the Court accepts Acushnet’s argument that the end of reexamination proceedings
for the ‘130 patent is indeed approaching, that would only underscore the
prejudice to Callaway Golf of Acushnet reaping the benefit of its unlawful
behavior. As Callaway Golf has explained, only a final resolution of this
matter will moot the unlawful reexaminations, because the PTO will be estopped
from further consideration of claims upheld at trial. See MPEP 2686.04(IV).
Callaway Golf therefore respectfully reiterates that the most direct, and
proper, approach to resolving the validity dispute between the parties
continues to be a prompt resolution of this suit.
FN1: For example, contrary
to this Court’s assessments, the Patent Office continues to conclude that: (i)
Nesbitt incorporates by reference the Molitor ‘637 patent; and (ii) commercial
golf balls can be used as proxies for the disclosures of the Proudfit and Wu
patents – rather than properly considering them as separate references. Indeed,
Callaway Golf submitted this Court’s decision regarding the summary judgment
motions to the Patent Office, suggesting that the Court’s well-reasoned
decision warranted careful consideration. The Examiner felt otherwise:
[T]he Examiner has
reviewed the holdings of the District Court but is not bound by them.
D.I. 469, Ex. 1 at 179.
Click HERE to read the
actual letter.
Oh, if we only knew how much money has been spent on this lawsuit!
David Dawsey
– The Golf Patent Lawyer
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