The IP Golf Guy - The Golf Patent Lawyer (Golf Inventions, Patents, Litigation, Trademarks)

Scotty’s Latest Design Patent

2010-03-17T05:00:00Z

Over the years I have covered a few of Scotty Cameron’s inventions (HERE, HERE, and HERE). Well, last week he had an interesting design patent issued titled “Front Face of a Putter” (USPN D611,553). Check out this putter face patent!

Pretty cool, but I am still not sure I am ready to shell out the premium required to have a Cameron putter.

Dave Dawsey - Keeping an Eye on Golf Putter Patents

PS – check out golf grip patent related posts here

The Erector Set of Drivers; Has Nike Gone Too Far?

2010-03-16T05:00:00Z

Boy, in the past six months Nike has given me a lot of material to write about; just see these posts HERE, HERE, HERE, and HERE. Well, here is another patent application that published last week. Check out this design:

The drawings come from a patent application that published as US Pub. No. 20100062872 titled “Golf Club Head and Golf Club Assembly with Fastener,” which explains:

A golf club head includes a face plate and a body member positioned rearwardly of the face plate and having at least two body components. Each of a plurality of apertures is formed in one of the face plate and the body components. At least one fastener extends through at least two of the apertures, the fasteners being configured to removably secure the face plate and the body components together upon being turned a portion of a revolution.

[0007] The principles of the invention may be used to advantage to provide a golf club and golf club head with a fastener for securing body components together. In accordance with a first aspect, a golf club head includes a face plate and a body member positioned rearwardly of the face plate and having at least two body components. Each of a plurality of apertures is formed in one of the face plate and the body components. Included is at least one fastener, with each fastener extending through at least two of the apertures, and being configured to removably secure the face plate and the body components together upon being turned a portion of a revolution.

[0008] In accordance with another aspect, a golf club head includes a crown portion having at least one first aperture and a first recess formed therein. A sole portion is positioned beneath the crown and has at least one second aperture and a second recess formed therein. A face plate is received in the first and second recesses. Included is at least one fastener, with each fastener extending through a first aperture and a second aperture, and being configured to secure the face plate, the crown portion, and the sole portion together upon being turned a portion of a revolution.

[0009] In accordance with a further aspect, a golf club assembly includes a shaft and a club head secured to the first end of the shaft. The club head includes a face plate; a body member positioned rearwardly of the face plate and having at least two body components; and a plurality of apertures, with each aperture being formed in one of the face plate and the body components. Included is at least one fastener, with each fastener extending through at least two of the apertures and configured to removably secure the face plate and the body components together upon being turned a portion of a revolution.

[0010] Substantial advantage is achieved by providing a golf club and golf club head with a fastener for securing body components together. In particular, certain embodiments allow a user or other individual to quickly and reliably secure the components of a club head together, along with providing the ability to disassemble the club head at a later time to replace or change one or more components of the club head.

So, are they taking the adjustability band wagon too far?

Dave Dawsey - Monitoring Adjustable Golf Club Patent Applications

Nike is Definitely Thinking Outside the Box With This Design

2010-03-15T05:00:00Z

If you frequent this site then you know that in the past six months I have authored several posts (HERE, HERE, and HERE) regarding some pretty cool, albeit unconventional, designs by Nike. Well, this week another Nike patent application became publicly available and it gives us a look at another interesting design that they have come up with. The patent application published as US Pub. No. 20100062874 titled “Golf Club Head and Golf Club with Tension Element and Tensioning Member,” and explains:

SUMMARY

[0006] The principles of the invention may be used to provide a golf club and golf club head with a tension element and tensioning member for securing club head components together. In accordance with a first aspect, a golf club head includes a club head having a plurality of components and a plurality of retaining members, with each retaining member positioned on one of the components. A tensioning assembly for releasably securing the components of the club head together includes a tension element coupled to the club head components by way of the retaining members, and a tensioning member for introducing tension into the tension element.

[0007] In accordance with another aspect, a golf club head includes a face plate including at least one face plate retaining member, a body member having at least one body retaining member; and a tensioning assembly having a tension element and a tensioning member connected to the tension element. The tension element engages the face plate and body member retaining members to releasably secure the face plate to the body member.

[0008] In accordance with a further aspect, a golf club assembly includes a shaft having a first end and a second end; and a club head secured to the first end of the shaft. The club head includes a plurality of components and a plurality of retaining members, each retaining member being positioned on one of the components. A tensioning assembly releasably secures the components of the club head together and includes a tension element slidably attached to at least some of the club head components by way of the retaining members, and a tensioning member for introducing tension into the tension element.

[0009] Substantial advantage is achieved by providing a golf club and golf club head with a tension element and tensioning member for securing club head components together. In particular, certain embodiments allow a user or other individual to quickly and reliably secure the components of a club head together, along with the ability to disassemble the club head at a later time to replace or change one or more components of the club head.

[0010] These and additional features and advantages disclosed here will be further understood from the following detailed disclosure of certain embodiments.
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[0026] Club head 14 includes a plurality of components. As illustrated, this example golf club head 14 includes a face plate 18 and a body member 20 positioned behind face plate 18. In the illustrated embodiment, body member 20 includes a crown portion 22, a sole portion 24, and a skirt 26 positioned (e.g., extending) rearwardly from crown portion 22 and sole portion 24. It is to be appreciated that club head 14 may include any number of components.
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[0028] The component elements of club head 14 are releasably secured to one another with a tensioning assembly 27 that includes a tension element 28 and a tensioning member 30. The use of tensioning assembly 27 allows a user or other individual to quickly and easily assemble the component parts of golf club head 14. Thus, for example, a user could be fitted in a shop for a golf club head that is optimized for their swing, and have that club assembled while in the shop. Once the user's swing has been evaluated and the desired components of the club head have been selected, the use of tensioning assembly 27 allows the components of club head 14 to be quickly assembled and releasably secured together.

[0029] Advantageously, the use of tensioning assembly 27 allows club head 14 to be disassembled at some future time, which allows for additional components to be added to club head 14, such as weights, for example, or for select components of club head 14 to be replaced with other components. Thus, it is possible to perform routine maintenance on a club head 14; as components of club head 14 experience fatigue or other performance degradation they can be quickly and easily replaced with other components.

[0030] As seen more clearly in FIG. 2, tension element 28 connects face plate 18 to body member 20. Tension element 28 has the ability to provide tension, which allows the components of club head 14 to be releasably and securely fastened to one another. Tension element 28 may take many forms including, but not limited to, a cable, cord, rope, wire, fiber, ribbon, chain, filament, and the like.

[0031] Tension element 28 engages (e.g., extends through, or is laced through) retaining members provided on the various components of club head 14. In the illustrated element, the face plate retaining members on face plate 18 are a pair of hooks 32, which are provided on a rear surface of face plate 18, as seen more clearly in FIG. 3. As illustrated here, hooks 32 are curved or arcuate members extending outwardly from the rear surface of face plate 18. Hooks 32 may be of unitary, that is, one-piece construction with face plate 18, or they may be separate elements secured to face plate 18 with any suitable fastening means such as welding, adhesive or the like.

[0032] It is to be appreciated that the retaining members need not be hooks, and can take any desired shape or form. For example, the retaining members could be L-shaped projections or J-shaped projections extending from face plate 18 or any other component of club head 14. The retaining members serve to slidably attach tension element 28 to club head 14. That is, the retaining members allow tension element 28 and the components of club head 14 to slide with respect to one another. At the same time the tension element 28 serves to releasably secure the components of club head 14 to one another.

[0033] Body member 20 may also include body retaining members to receive tension element 28. The body retaining members need not be the same shape as those found on face plate 18. A body retaining member provided on skirt 26 takes on another shape, namely a channel 34. Tension element 28 extends across sole portion 24 of body member 20 and then passes through channel 34 formed in an upper surface of skirt 26. Thus, it is to be appreciated that the retaining members that contact and retain tension element 28 with respect to the various components of club head 14 can take any desired shape or form that allows tension element 28 to connect and secure the various components of club head 14 to one another.

[0034] In this illustrative embodiment, tension element is not directly connected to crown portion 22 or sole portion 24 of body member 20; crown portion 22 and sole portion 24 are sandwiched between face plate 18 and skirt 26. It is to be appreciated that in other embodiments, tension member may be in direct contact with crown portion 22 and sole portion 24. For example, as seen in FIG. 4, crown portion 22 and sole portion 24 of body member 20 may include retaining members such as hooks 36 or any other retaining member. Thus, it is to be appreciated that tension element 28 need not contact each and every element of club head 14 directly in order to releasably secure all of the components of club head 14 together.

[0035] In the embodiment illustrated in FIG. 2, tension element is not directly retained by any element on sole portion 24, as noted above. In such an embodiment, crown portion 22 and sole portion 24 are connected to one another as a unit, which unit is then sandwiched between face plate 18 and skirt 26. Sole portion 24 and crown portion 22 may be connected to one another in any desired manner. For example, as illustrated in FIG. 5, a projection 38 may be formed about a peripheral edge of sole portion 24, and a mating recess 40 may be formed in a peripheral edge of crown portion 22, with projection 38 being received in recess 40. Thus, sole portion 24 and crown portion 22 are releasably connected or secured to one another in interlocking fashion. It is to be appreciated that in other embodiments a projection could be formed about the peripheral edge of crown portion 22 with the mating recess being formed about the peripheral edge of sole portion 24.

[0036] As noted above, tensioning member 30 serves to provide tension in tension element 28, thereby reliably and securely fastening the components of club head 14 to one another. In the illustrated embodiment, tensioning member 30, as seen in FIG. 6 in an engaged condition, is a ratcheting assembly 42 which operates in known fashion to tighten tension element 28, thereby firmly securing the components of club head 14 to one another.

[0037] Ratcheting assembly 42 includes a base portion 44 within which a spool 45 and ratcheting mechanism (not shown) is positioned. In the engaged condition of ratcheting assembly 42 shown in FIG. 6, the ends of tension element 28 are wrapped about spool 45 in known fashion as knob 46 is rotated by the user (clockwise in the direction of arrow A in the illustrated embodiment). As knob 46 rotates, the ends of tension element 28 move in the direction of arrows B into ratcheting assembly 42 and the opposed ends of tension element 28 are wound about spool 45, thereby shortening the portion of tension element 28 outside ratcheting assembly 42 and, consequently, increasing the tension in tension element 28 and securing the elements of club head 14 to one another.

[0038] To release the tension in ratcheting assembly 42, as illustrated in FIG. 7, knob 46 is lifted upwardly in the direction of arrow C to the disengaged condition, which releases the engagement of the ratcheting mechanism in ratcheting assembly 42, allowing the ends of tension element 28 to spin off of spool 45 and move outwardly from ratcheting assembly 42 in the direction of arrows D, thereby releasing the tension in tension element 28 and allowing club head 14 to be disassembled. A more detailed discussion of the internal operation of exemplary ratcheting assemblies is found in U.S. Pat. Nos. 5,934,599; 6,202,953; and 6,289,558, the entire disclosures of which are incorporated herein by reference in their entireties.
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[0043] In certain embodiments, additional components can be added to club head 14. For example, as illustrated in FIG. 10, an additional weight 60 can be releasably secured to the other components of club head 14 by way of tension element 28. In the illustrated embodiment, club head 14 is shown without skirt 16 and with weight 60 positioned along the rear surface of body member 20, with tension element 28 engaged by retaining members 62 on weight 60. It is to be appreciated that weight 60 can be positioned at any location on club head 14, including being positioned within the interior of body member 20.

[0044] It is also to be appreciated that more than one weight 60 can be secured to club head 14. For example, as illustrated in FIG. 11, three weights 60 are positioned along the rear surface of club head 14. Any number of weights 60 can be included in club head 14, and each weight 60 can be positioned at any desired location within club head 14.

[0045] Since club head 14 can be quickly and easily assembled and disassembled through the use of tensioning assembly 27, the component parts of club head 14 can be quickly and easily interchanged or replaced with other components. Accordingly, a user can have a variety of different club head components that can be substituted for one another for a variety of reasons.

[0046] For example, a club component can be selected based on playing conditions expected to be encountered (e.g., different course conditions, different weather conditions, different wind conditions, etc.), the type of golf ball being used, and the skill or ability of the golfer. As a user improves, they may adapt a different playing style, and being able to replace the club head component allows them to modify their club without purchasing an entirely new club. It is to be appreciated that all aspects of the geometry or mass properties of club head 14 can be modified through the use of the interchangeable club head components including, but not limited to, the club head's shape, weight, weight distribution, bounce angle, center of gravity, moment of inertia, material of which it is formed, and appearance, which can alter the center of gravity, moment of inertia, and/or other "feel" characteristics of club head 14.

[0047] As noted above, tensioning member 30 can be positioned at any location within golf club 10. In certain embodiments, as illustrated in FIG. 12, tensioning member 30 is positioned at a second end of shaft 12, remote from club head 14. In this embodiment, tension element 28 engages (e.g., is wound or laced through) the components of club head 14 and then extends upwardly through shaft 12 to tensioning member 30 at the end of shaft 12.

The following drawings tell the rest of the story.

Interesting concept, but this is design that I would have to see to believe.

Dave Dawsey - Monitoring Golf Patent Applications

Everyone Wants to Know How Much is at Risk in the Titleist ProV1 Patent Litigation Case, Well Here You Have It

2010-03-13T05:00:00Z

The following is a statement of what Acushnet intends to prove during the ProV1 trial. The most interesting portion contains a statement regarding how much Callaway feels they are entitled to as a result of the alleged infringement. It should be no surprise that Acushnet disagrees. Enjoy.

DEFENDANT ACUSHNET’S STATEMENT OF INTENDED PROOF

Defendant Acushnet Company (“Acushnet”) hereby submits its statement of what it intends to prove at trial. In the following summary, Acushnet sets forth the main themes and points it intends to prove at trial. However, the list is not exhaustive and, in addition to what is set out, Acushnet reserves the right to prove any matters identified in its Answer to Callaway’ s Amended Complaint, in its interrogatory responses, and in the expert reports and rebuttal reports of its expert witnesses. Acushnet also intends to offer proof on the issues of fact and issues of law identified by the parties in this Joint Pre-Trial Order. Acushnet will also seek to disprove certain matters raised in Callaway’s summary of issues.

I.   INTRODUCTION

A.   Acushnet Company

For over 50 years, Acushnet Company has been the leading manufacturer of golf balls in the United States and the world. For over 40 years, Acushnet’ s Titleist brand of golf balls have been the “No. 1 Ball in Golf,” which means that more professionals play the Titleist brand than any other brand of ball on professional tour events.

Acushnet’ s current product offering in the tour played ball category is a family of balls called the Titleist Pro V1. The balls at issue are known as the Pro V1 and the Pro V1x (a dual core version of the Pro V1). The Court may also hear reference to a “Pro V1*,” pronounced “Pro V1 STAR” which was an earlier version of a ball similar in construction to the Pro V1x.

The accused Pro V1 family of balls, like the other Titleist balls before it, has garnered great success among professional players, highly-skilled amateurs, and other golfers who have an interest in playing the ball that the pros play. The evidence will show that the reasons for this are many, including the fact that it is a high quality product and that it benefits from the Titleist brand name and associated cache of quality, as well as the fact that Titleist products are marketed well, have excellent quality control, and are accepted in the market as top quality products.

Acushnet designed and developed the Pro V1 balls itself. It developed the urethane cover used on the balls as early as 1993, and used it on the prior art Professional ball. Acushnet began applying urethane to multi-layer, solid construction balls in 1995. Acushnet also uses a proprietary plasma treatment and corona discharge method to ensure that the polyurethane outer cover adheres to the inner cover. Other golf balls using polyurethane covers over ionomer covers have experienced poor adhesion. Acushnet has over 50 patents of its own that cover one or more of the Pro V1 balls or the methods of making them. The Pro V1 was not copied from the patents in suit, none of which even issued until after Acushnet had released the Pro V1.

In 2009, Acushnet introduced new versions of the Pro V1 and Pro V1x, both of which undisputedly do not infringe the patents-in-suit. Those balls were even more successful than the accused Pro V1 and Pro V1x balls. This fact disproves that the success of the accused Pro V1 and Pro V1x balls was due to the patents-in-suit.

B.   The Asserted Claims

The claims at issue in the patents in suit are as follows:

•   claims 1, 4, and 5, of United States Patent No. 6,210,293
•   claims 1-3 of United States Patent No. 6,503,156
•   claims 1 and 3 of United States Patent No. 6,595,873; and
•   claim 5 of United States Patent No. 6,506,130.

These claims are hereafter referred to as the “asserted claims.”

II.   INVALIDITY OF CALLAWAY’S PATENTS-IN-SUIT

A.   Obviousness

1. Acushnet will prove that the claims at issue are invalid under 35 U.S.C. § 103. Acushnet may rely on some or all of the following combinations of prior art references:

•   U.S. Patent No. 5,314,187 to Proudfit in view of U.S. Patent No. 4,674,751 to Molitor
•   U.S. Patent No. 5,314,187 to Proudfit in view of U.S. Patent No. 5,334,673 to Wu
•   U.S. Patent No. 5,314,187 to Proudfit in view of U.S. Patent No. 4,274,637 to Molitor
•   U.S. Patent No. 5,314,187 to Proudfit in view of the Titleist Professional Golf Ball
•   U.S. Patent No. 5,314,187 to Proudfit in view of the Titleist Professional 2P Golf Ball
•   U.S. Patent No. 4,431,193 to Nesbitt in view of U.S. Patent No. 4,674,751 to Molitor
•   U.S. Patent No. 4,431,193 to Nesbitt in view of U.S. Patent No. 5,334,673 to Wu
•   U.S. Patent No. 4,431,193 to Nesbitt in view of U.S. Patent No. 4,274,637 to Molitor
•   U.S. Patent No. 4,431,193 to Nesbitt in view of the Titleist Professional Golf Ball
•   U.S. Patent No. 4,431,193 to Nesbitt in view of the Titleist Professional 2P Golf Ball
•   The Wilson Ultra Tour Balata Golf Ball in view of in view of U.S. Patent No. 4,674,751 to Molitor
•   The Wilson Ultra Tour Balata Golf Ball in view of in view of U.S. Patent No. 5,334,673 to Wu
•   The Wilson Ultra Tour Balata Golf Ball in view of the Titleist Professional Golf Ball
•   The Wilson Ultra Tour Balata Golf Ball in view of the Titleist Professional 2P Golf Ball
•   Other art identified by Acushnet in its discovery responses

2.   Acushnet will establish the scope and content of the prior art and the differences, if any, between the prior art and the asserted claims.

3.   Acushnet will demonstrate that it was well within the ordinary skill in the art to make a three-piece construction golf ball with a urethane outer layer by 1995. Acushnet will show that the use of polyurethane as a cover material on golf balls was notoriously well-known for decades, and that the use and benefits of a three-piece construction golf ball were also well-known by 1995. Acushnet will show that at this time a person of ordinary skill in the art would have been motivated to combine the teachings of the prior art in the manner claimed by the patents-in-suit. For example, Acushnet will show that the Molitor ‘751 patent contains an express teaching to put a urethane cover onto a three-piece solid construction ball, such as the balls disclosed in the Nesbitt or Proudfit patents or the Wilson Ultra Tour Balata ball. Many other examples of such motivations to combine the use of polyurethane on a three-piece construction golf ball (such as, for example, the teaching in the Wu patent to use polyurethane as a cover material for solid balls) also existed in the art by 1995.

4.   Acushnet will also rebut Callaway’ s attempt to save the patents in suit from invalidity by relying on the commercial success of the Pro V1. Acushnet will show that the Pro V1 is covered by scores of its own patents and other technology, which makes the process of ascribing commercial success to any one or more of the patents in suit highly speculative. Acushnet will also show that many factors unrelated to the patents in suit are responsible for the success of the Pro V1, a showing Callaway will be unable to dispute or rebut. Acushnet will also show that when Acushnet introduced the 2009 Pro V1 and Pro V1x balls that do not use the patents-in-suit, those balls were even more successful than the accused Pro V1 and Pro V1x balls, defeating Callaway’s claim that there is a nexus between the patents-in-suit and the commercial success of the accused products.

B.   Anticipation

1.   Acushnet will prove that the asserted claims are invalid because they are anticipated under 35 U.S.C. § 102 by U.S. Patent No. 4,431,193 to Nesbitt, which incorporates by reference the Molitor `637 patent.

C.   Lack of Enablement

1.   Acushnet will prove that the asserted claims are invalid under 35 U.S.C. §112 for lack of enablement.

III. DAMAGES

1.   Even if Callaway could prove that Acushnet has infringed any valid claim of the patents in suit, the most likely result of the hypothetical negotiation between Callaway and Acushnet with respect to the patents in suit would have been a non-exclusive license involving a lump-sum royalty payment by Acushnet of $10,000,000 at or about the time leading up to April 2001. This is proven by the fact that both Callaway and Spalding testified that this is the amount they would have taken for a license at the time the infringement began. Acushnet will therefore prove that if Callaway is entitled to any damages on its patent infringement counts, that damages award should be no more than $10,000,000.

2.   Also, Callaway’s damages claim of $115,157,629 in allegedly lost profits it would have made had Acushnet not been selling the Pro V1 golf balls from September 16, 2003 through December 31, 2006 (which, when combined with an alleged residual reasonable royalty added to its lost profit claim, totals $189,637,504 in claimed damages through December 31, 2006) is speculative, grossly inflated and unsupported. Callaway’ s alternative damages claim based on an alleged reasonable royalty of $111,814,638, as well as its alleged claim to reasonable royalties not subject to its lost profits analysis, both of which are generated by applying an 8% reasonable royalty to Acushnet’s worldwide dollar sales of allegedly infringing balls, is also grossly inflated and unsupported. Thus, Callaway cannot prove by a preponderance of the evidence that it is entitled to its alleged lost profits damages or to its damages based on an alleged reasonable royalty. In particular, Mr. Napper’s opinions are speculative, unreliable, not economically sound, do not properly reconstruct the golf ball market absent alleged infringement, apply the wrong analysis for this industry and are otherwise pure guesswork.

Acushnet understands that Callaway will be serving a supplemental expert report on damages in the near future, and reserves its right to supplement this section or any other section of its Pretrial Order submissions in light of that report.

I actually expected the number to be even higher!

David J. Dawsey - Monitoring Golf Patent Litigation

PS – you can view a full PDF of document filed with the court HERE

The Real Issues to be Litigated in the Titleist ProV1 Patent Dispute

2010-03-12T05:00:00Z

So far this week we have looked at the facts that Callaway and Acushnet agree upon and we have seen the facts that they intend to litigate; let's now look at the legal issues that will be litigated. The following is taken from Acushnet's Statement Of Issues of Law That Remain To Be Litigated; it is long, but I guarantee you will will learn a lot if you read it (and I have highlighted the most interesting portions).

ACUSHNET’S STATEMENT OF ISSUES OF LAW
THAT REMAIN TO BE LITIGATED
Acushnet contends that the following legal issues remain to be litigated. To the extent that any issues of fact set forth in Exhibit 2 may be considered issues of law, Acushnet incorporates these portions of Exhibit 2 by reference. To the extent any of the issues of law set forth below may be considered issues of fact, Acushnet incorporates those issues into Exhibit 2. Acushnet also incorporates Exhibit 12 (Brief Statement of Intended Proofs) herein by reference. These issues of law may change based on the Court’s decisions on the pending summary judgment motion and any motions in limine filed with the Court.
I.           INVALIDITY OF CALLAWAY’S PATENTS-IN-SUIT
A.         Obviousness
Issue of law: Whether the asserted claims of the patents-in-suit are invalid as obvious under 35 U.S.C. § 103. Acushnet may rely on some or all of the following combinations of prior art references:
·       U.S. Patent No. 5,314,187 to Proudfit in view of U.S. Patent No. 4,674,751 to Molitor

·       U.S.Patent No. 5,314,187 to Proudfit in view of U.S. Patent No. 5,334,673 to Wu
·       U.S. Patent No. 5,314,187 to Proudfit in view of U.S. Patent No. 4,274,637 to Molitor
·       U.S. Patent No.5,314,187 to Proudfit in view of the Titleist Professional Golf Ball
·       U.S. Patent No. 5,314,187 to Proudfit in view of the Titleist Professional 2P Golf Ball
·       U.S. Patent No. 4,431,193 to Nesbitt in view of U.S. Patent No. 4,674,751 to Molitor
·       U.S.Patent No. 4,431,193 to Nesbitt in view of U.S. Patent No. 5,334,673 to Wu
·       U.S. Patent No. 4,431,193 to Nesbitt in view of U.S. Patent No. 4,274,637 to Molitor
·       U.S. Patent No.4,431,193 to Nesbitt in view of the Titleist Professional Golf Ball
·       U.S. Patent No. 4,431,193 to Nesbitt in view of the Titleist Professional 2P Golf Ball
·       The Wilson Ultra Tour Balata Golf Ball in view of in view of U.S. Patent No. 4,674,751 to Molitor
·       The Wilson Ultra Tour Balata Golf Ball in view of in view of U.S. Patent No. 5,334,673 to Wu
·       The Wilson Ultra Tour Balata Golf Ball in view of the Titleist Professional Golf Ball
·       The Wilson Ultra Tour Balata Golf Ball in view of the Titleist Professional 2P Golf Ball
·       Other art identified by Acushnet in its discovery responses 35 U.S.C. §103 (a) states:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this titled, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Thus, a claim is obvious when the differences between the subject matter of the claim and the prior art are such that the subject matter as a whole would have been obvious at the time theinvention was made to a person of ordinary skill in the art. KSR Int’l Co.v. Teleflex, Inc., 127 S. Ct. 1727, 1734 (2007); see also AlzaCorp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006); In re Kahn, 441 F.3d 997, 985 (Fed. Cir.2006) (citing Graham v. John DeereCo., 383 U.S. 1, 13, 14 (1966); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.1989)).
Obviousness is a question of law based upon underlying factual questions, which are (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; and (3) the differences between the claimed invention and the prior art. KSR, 127 S. Ct. at1734. In addition, objective evidence of non-obviousness might also be utilized to give light to the circumstances surrounding the origin of the claimed subject matter. Id.; Graham v. John Deere Co., 383 U.S. at 18; see also AlzaCorp., 464 F.3d at 1289-90; Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343(Fed. Cir. 2007); Pfizer v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir.2007); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,1162 (Fed. Cir. 2007); In re Translogic Tech., Inc., 2007 U.S. App. LEXIS 23969, *26 (Fed. Cir. Oct. 12,2007).
If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. Likewise, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious. KSR, 127 S. Ct. at 1740. “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue the known options within his

or her technical grasp. If this leads to the anticipated success, it is likely the product not[sic] of innovation but of ordinary skill and common sense.” Id. at 1742. In conducting an obviousness analysis, the court need not seek out precise teachings directed to the specific subject matter of the challenged claim, but rather a court can take into account the inferences and creative steps that a person of ordinary skill would employ. Id. at 1741.
1.            Secondary Considerations
Once presented with a prima facie case of invalidity based on obviousness, a patentee must come forward with rebuttal evidence if the patent is to be saved from a finding of invalidity. See Mas-HamiltonGroup v. LaGard, Inc., 156 F.3d 1206, 1216 (Fed. Cir.1998); Pfizer Inc. v.Apotex, 480 F.3d 1348, 1360 (Fed. Cir. 2007). For this, the patentee may present evidence of alleged objective indicia of non-obviousness, i.e. secondary considerations, such as commercial success, unexpectedly better results, failure of others, commercial acquiescence to the validity of the patent, and copying. See Graham v.John Deere Co., 383 U.S. 1, 17 (1966).
As part of this evidence, however, a “nexus must be established between the merits of the claimed invention and evidence of commercial success [, or other secondary considerations,] before that evidence may become relevant to the issue of obviousness.” Iron Grip BarbellCo., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004)(quoting SolderRemoval Co. v. USITC, 582 F.2d 628, 637 (1978)).
“[E]vidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006); seealso Stratoflex ,

Inc. v. AeroquipCorp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Where the patentee cannot establish such an exus, the alleged evidence of secondary considerations is given little or no weight. For example, the commercial success of a product sponsored by the preexisting market leader is of limited probative value. Pentec, Inc. v.Graphic Controls, Corp., 776 F.2d 309, 316 (Fed. Cir. 1985) (Because GC was clearly the market leader well before the introduction of the [patented product], its sales figures cannot be given controlling weight in this case on the question of obviousness.”). See also Schwinn Bicycle Co. v. Goodyear Tire &Rubber Co., 444 F.2d 295, 300 (9^thCir. 1970) (finding patent obvious despite commercial success where patented product was sold by market leader). This is especially true when the commercial success of a market leader’s new product replaces sales of the market leader’s previous products. SeeMcNeil-PPC v. Perrigo Co., No. 05 Civ. 1321 (WHP), 2007 U.S. Dist. LEXIS50255 at **33-34 (S.D.N.Y. July 3, 2007). Also, when a commercially successful product is covered by multiple patents, it makes it very difficult to attributecommercial success to any one of those patents. See id. at *34 (finding no nexus between commercial success and asserted patent where patented product was covered by three different patents).
B.           Anticipation
35 U.S.C. §102 (b) states:
A person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the Untied States.
Anticipation requires that a single prior art reference disclose each and every limitation of the claimed invention. ScheringCorp. v. Geneva Pharmaceuticals, 339 F.3d 1373, 1379-80 (Fed. Cir. 2003). There is no requirement that each claim limitation be found in a single example of the single prior art reference. See Glaxo Group Ltd. v. Apotex, Inc., 376F.3d 1339, 1349 (Fed. Cir. 2004) (“[A]nticipation requires that all limitations of the claimed invention are described in a single reference, rather than a single example in the reference.”).
A reference that discloses multiple options for a particular feature will anticipate a later application that uses one of the disclosed options. “Theanticipation analysis asks solely whether the prior art reference discloses and enables the claimed invention, and not how the prior art characterizes that disclosure or whether alternatives are also disclosed.” Perriconev. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (quoting HewlettPackard Co. v. Mustek Sys., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003); see also Leggett & Platt, Inc. v. Vutek, Inc., 537 F.3d 1349, 1356(Fed. Cir. 2008) (rejecting “the erroneous assumption that the disclosure of multiple examples renders one example less anticipatory”); In re Gleave, 560 F.3d 1331, 1336-37 (Fed. Cir. 2009) (rejecting the argument that a prior art reference cannot anticipate by listing an element in a long list of possibilities); In re Petering, 301F.2d 676, 681 (C.C.P.A. 1962). Thus, when a list of options or permutations is disclosed in the prior art, anticipation does not turn on the number of elements in the list, but rather on whether the claimed subject matter is enabled by the prior art reference. Perricone, 432F.3d at 1377-78.
“[A] prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331,1343 (Fed. Cir. 2005); ContinentalCan Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). As such, “anticipation does not require actual performance of suggestions in a disclosure. Rather, [it] only requires that those suggestions be enabling to one of skill in the art.” Bristol-MyersSquibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1378 -1381 (Fed.Cir. 2001). Furthermore, there is no requirement that a person of ordinary skill in the art recognize that the inherent property would be present in the prior art reference. ScheringCorp., 339 F.3d at 1378. “Where... the result is a necessary consequence of what was deliberately intended, it is of no import that the article’s authors did not appreciate the results.” MEHL/BiophileInt’l
Corp. v.Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999); Atlas Powder Co. v. Ireco,Inc., 190 F.3d 1342, 1348-49 (Fed. Cir. 1999). In some cases, the inherent property corresponds to a claimed new benefit or characteristic of an invention otherwise in the prior art. In those cases, the new realization alone does not render the old invention patentable. See Atlas Powder, 190 F.3d at 1347; Johnson& Johnson v. W.L. Gore & Assocs., 436 F. Supp. 704, 725 (D. Del. 1977) (“Recognition of the inherent properties of a material does not constitute invention.”).
Material incorporated by reference into a document may be considered in an anticipation determination. Advanced Display Systems,Inc. v. Kent State University, 212 F.3d 1272, 1282 (Fed. Cir. 2000).“Incorporation by reference provides a method for integrating material from various documents into a host document - a patent or printed publication in an anticipation determination - by citing such material in a manner that makes clear that the material is effectively part of the host document as it is were explicitly contained therein.” Id. In this case, as a matter of law, Nesbitt (U.S. Patent No. 4,431,193) incorporates by reference the entire list of foamable compounds disclosed by Molitor ‘637 (U.S. Patent No. 4,274,637) as appropriate materials for use in golf ball cover layers, including polyurethane and mixtures of ionomer resins. Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331 (Fed. Cir. 2009). When a patent incorporates another patent by reference, as Nesbitt does Molitor, “that material incorporated by reference ‘is effectively part of the host document as if it were explicitly

contained therein.’” Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1382(Fed. Cir. 2007).
Prior art that supplies a specific example contained within the range(s) given by a patent claim will invalidate that claim as anticipated. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). A single example is sufficient to invalidate the entire claim. See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999). When a patent claims a limitation “in terms of ranges,” a single prior art reference that falls within each of the ranges anticipates the claim. Id. The example can include specific values mentioned in the prior art or it can be a point derived from a graph in the prior art. See Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985). Once a specific example has been found that is contained within the range(s) of the patent claim, the claim will be invalidated without regard to other considerations. See id.
C.      Enablement
Issue of law: Whether the asserted claims of the patents-in-suit are invalid under 35 U.S.C. § 112 for lack of enablement.
35 U.S.C. §112, ¶1states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise,and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The specification must describe the manner and process of making and using the invention so as to enable a person of skill in the art to make and use the full scope of the invention without undue experimentation. See Automotive Techs. Int’l, Inc. v. BMW ofN. Am., 2007 U.S. App. LEXIS 21271, **27-28 (Fed. Cir., Sept. 6, 2007); Liebel-FlarsheimCo. v. Medrad, Inc., 481 F.3d 1371, 1378-79 (Fed. Cir. 2007); Lizardtech,Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 1345 (Fed. Cir. 2005); AKSteel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). In particular, “there must be sufficient disclosure, either through illustrative examples or terminology, to teach those of ordinary skill how to make and how to use the invention as broadly as it is claimed.” In re Vaeck,947 F.2d 488, 496 (Fed. Cir. 1991); see also Plant Genetic Systems, N.V. v. DeKalb Genetics Corporation, 315F.3d 1335 (Fed. Cir. 2003) (“the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in theart.”) (citations omitted); National Recovery Technologies, Inc. v.Magnetic Separation Systems, Inc., 166 F.3d 1190. 1195-1196 (Fed. Cir. 1999) (“The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.) (citations omitted).
The Federal Circuit has stated that “[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimation of general ideas that may or may not be workable.” GenentechInc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365-66 (Fed. Cir. 1997). Where the claimed invention is the application of an unpredictable technology an enabling description in the specification must provide those skilled in the art with a specific and useful teaching. 108 F.3dat 1367-68; see also In re Fisher, 427 F.2d 833, 839 (C.C.P.A. 1970) (in cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of the enablement obviously varies inversely with the degree of unpredictability of the factors involved.”).
A patent is not enabled nor adequately described merely by describing one embodiment of the claims, if the claims are construed to have a scope broader than that embodiment. AutomotiveTechs. Int’l., 2007 U.S. App. LEXIS 21271, **27-28; Liebel-FlarsheimCo., 481 F.3d at 1378-79. Similarly, a patent specification does not provide an enabling disclosure where it does not disclose in its specification embodiments of the invention covering points throughout the broad range claimed by the applicants. AK Steel, 344F.3d at 1244; see also, e.g., In re Cook, 439 F.2d 730,735-36 (C.C.P.A. 1971) (claims properly rejected when applicants failed to establish support for range limitations in claims; although applicants disclosed six examples, they failed to disclose embodiments at “various points throughout the broader claimed range.”); Inre Fisher, 427 F.2d at 839 (claims properly rejected where claim required potency of “at least 1” but specification disclosed products having potencies from only 1.1 1 to 2.30); SyngentaSeeds, Inc. v. Monsanto Co., 404 F.Supp.2d 594, 603-04 (D.Del. 2005) (affirming jury verdict that claims having “at least about 60%” limitation were invalid for lack of written description where the specification disclosed only one working gene in the claimed range).
The patent must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed. Lizardtech, 424 F.3d at 1345. In other words, the court must decide whether the invention applicants seek to protect by their claims is part of the invention that is described in the specification. In re Wertheim, 541 F.2d 257,263 (C.C.P.A. 1976)
Where the claims of the patent are broader than the invention applicants described in the patent specification, the patent does not satisfy the written description requirement. Id. at 263 (claim properly rejected where it recites a solids content range of “at least 35%,” which is broader than the25-65% range described in the patent); see also In re Cook, 439 F.2d730, 735- 36 (C.C.P.A. 1971) (claims properly rejected when applicants failed to establish support for range limitations in claims; although applicants disclosed six examples, they failed to disclose embodiments at “various points throughout the broader claimed range.”); In re Fisher, 427 F.2d at 839 (claims properly rejected where claim required potency of “at least 1” but specification disclosed products having potencies from only 1.11 to 2.30); Syngenta Seeds, Inc. v.Monsanto Co., 404 F.Supp.2d 594, 603-04 (D.Del. 2005) (affirming jury verdict that claims having “at least about 60%” limitation were invalid for lack of written description where the specification disclosed only one working gene in the claimed range).
The enablement and written description requirements of 35 U.S.C. §112, ¶1 usually rise and fall together. “A recitation of how to make and use the invention across the full breadth of the claim is ordinarily sufficient to demonstrate that the inventor possesses the full scope of the invention, and vice versa.” Lizardtech, 424 F.3d at 1345.
D.            Presumption of Validity
35 U.S.C. § 282 states inpertinent part:

A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

A patent is presumed valid; however, the presumption is in no way dispositive. Instead, “The courts are the final arbiter of patent validity and, although courts may take cognizance of, and benefit from, the proceedings before the patent examiner, the question is ultimately for the courts to decide, without deference to the rulings of the patent examiner.” Quad Envtl. Techs. Corp.v. Union Sanitary Dist., 496 F.2d 870, 876 (Fed. Cir. 1991). Furthermore, the presumption of validity seems diminished when the PTO has issued a patent without acting on full information.KSR, 127 S. Ct. at 1745. Moreover, the presumption of validity seems diminished where, as here, the PTO has reviewed the initial grant of patentability and determined that the claims of the patent at issue are not valid.
II.REMEDIES
A.         Reasonable Royalty
35 U.S.C. § 284 states:
Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

In determining a reasonable royalty, courts often apply the fifteen factors first enunciated in Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.1970), modified and aff’d, 446 F.2d 295 (2d Cir.), cert. denied, 404U.S. 870 (1971).See Unisplay, S.A. v. American Elec. Sign Co., 69 F.3d 512, 517, n.7 (Fed. Cir. 1995)(citing to Georgia-Pacific factors). These factors are:
1.                    The royalties received by the patentee for the licensing of the patent in suit, proving or tending to prove an established royalty.
2.                    The rates paid by the licensee for the use of other patents comparable to the patent in suit.
3.                    The nature and scope of the license, as exclusive or non-exclusive; or as restricted or nonrestricted in terms of territory or with respect to whom the manufactured product may be sold.
4.                    The licensor’s established policy and marketing program to maintain his patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly.
5.                    The commercial relationship between the licensor and licensee, such as, whether they are competitors in the same territory in the same line of business; or whether they are inventor and promotor [sic].
6.                    The effect of selling the patented specialty in promoting sales of other products of the licensee; the existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales.

7.                    The duration of the patent and the term of the license.
8.                    The established profitability of the product made under the patent; its commercial success; and its current popularity.
9.                    The utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results.
10.                The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention.
11.                The extent to which the infringer has made use of the invention; and any evidence probative of the value of that use.
12.                The portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions.
13.                The portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer.
14.                The opinion testimony of qualified experts.

15.     The amount that a licensor (such as the patentee) and a licensee (such as the infringer) would have agreed upon (at the time the infringement began) if both had been reasonably and voluntarily trying to reachan agreement; that is, the amount which a prudent licensee – who desired, as a business proposition, to obtain a license to manufacture and sell a particular article embodying the patented invention – would have been willing to pay as a royalty and yet be able to make a reasonable profit and which amount would have been acceptable by a prudent patentee who was willing to grant a license. Georgia Pacific, 318 F. Supp. at1120.
Acushnet contends that Callaway’s expert, Mr. Napper, failed to consider the single most important piece of evidence probative of an appropriate reasonable royalty damages award. In particular, Mr. Napper failed to properly consider the testimony of Mr. Arturi, Spalding’s General Counsel, as to how much he would have accepted in 2001 to grant Acushnet a license to the patents-in-suit. Accordingly, Mr. Napper’s testimony regarding reasonable royalty damages should be excluded.
B.          Lost Profits
A patentee can recover lost profits as damages it if proves that “but for” the infringement it would have made the sales in question. Otherwise, a patentee normally recovers damages based on a “reasonable royalty” theory. PanduitCorp. v. Stahlin Bros Fibre Works, Inc., 575 F. 2d 1152, 1157 (6^thCir.1978). “To recover lost profits, the patent owner must show ‘causation in fact,’ establishing that the ‘but for’ the infringement, he would have made additional profits.” Id. at 1349. This analysis requires a detailed consideration of the market– it is necessary to determine what would have occurred had there never been any infringement.Id. at 1350. While such a market reconstruction is a hypothetical exercise, GrainProcessing teaches that it must not “laps[e] into pure speculation.” Id. Hence, a determination of lost profits “requires sound economic proof of the nature of the market and likely outcomes with infringement factored out of the economic picture.” Id.
Moreover, an alleged infringer cannot be considered to have simply stood still in the absence of infringement: “a fair and accurate reconstruction of the ‘but for’ market also must take into account, where relevant, alternative actions the infringer foreseeably would have taken had he not infringed.” Id. In particular, “[w]ithout the infringing product, a rational would-be infringer is likely to offer an acceptable noninfringing alternative.” Id.
Acushnet contends that Callaway’s expert, Mr. Napper, failed to properly construct the market “but for”Acushnet’s alleged infringement since he, among other flaws, ignored the period of alleged infringement between the time the first patent-in-suit issued (April2001) and the time from which he claims lost profits (September 2003).Accordingly, Mr. Napper’s testimony regarding lost profits damages should be excluded.
C.           Injunctions
35U.S.C. § 283 states in pertinent part:
The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

“[T]he decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity. . . .” eBay, Inc. v. MercExchange, L.L. C., 126 S.Ct. 1837, 1841 (2006).
According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. “A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.” Id. at 1839.
D.     Attorneys’Fees
Issue of law: Whether this is an exceptional case and that Acushnet should be awarded its attorneys’ fees pursuant to 35 U.S.C. § 285.
35 U.S.C. § 285 provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” Determining whether a case is exceptional and whether attorneys’ fees should be granted under 35 U.S.C. § 285 is a two-step process. Tate Access Floors, 222 F.3d at 964.The first step is a factual determination whether the case is exceptional, and in the second step, the Court exercises its discretion to determine whether attorneys’ fees should be awarded. Id.
Misconduct during litigation and vexatious litigation are types of conduct that can provide a basis for an award of attorneys’ under §285. Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). A finding that the plaintiff brought or continued a patent infringement suit in bad faith, for example when the patentee knows the patents are invalid, is a proper basis to award attorneys’ fees under §285. Hughes v. Novi American, Inc., 724 F.2d 122, 124-126 (Fed. Cir. 1984).

As you can see, patent law is complex and I am sure the jurors have no idea of what they will be in for!

David J. Dawsey - The IP Golf Guy

So What Facts Are Going To Be The Focus Of The ProV1 Patent Infringement Trial?

2010-03-10T05:00:00Z

Facts are facts, right? Well, not necessarily. The following are issues of fact that will be litigated in the ProV1 dispute.

JOINT STATEMENT OF ISSUES OF FACT THAT REMAIN TO BE LITIGATED

The following factual issues remain to be litigated at trial. To the extent that any issues of law set forth in Exhibits 3 or 4 of the Joint Pre-Trial Order may be considered or include issues of fact, the parties incorporate those portions of Exhibits 3 and 4 herein by reference. The parties incorporate Exhibits 11 and 12 (Brief Statement of Intended Proofs) herein.

I.   INVALIDITY
A.   Obviousness

While obviousness is a legal issue, Acushnet intends to offer evidence on at least the following underlying issues of fact:
1.   The scope and content of the prior art.
2.   The level of ordinary skill in the art of the patents-in-suit in 1995.
3.   The differences, if any, between the claimed inventions of the patents-in-suit and the prior art.
4.   If Callaway Golf offers evidence of alleged secondary considerations of non-obviousness, Acushnet will offer evidence to rebut such secondary consideration evidence and to demonstrate that there is no nexus between any such alleged secondary considerations and the claimed inventions of the patents-in-suit.

B.   Anticipation
1.   Whether the asserted claims of the ‘293 patent are anticipated under 35 U.S.C. § 102.
2.   Whether the asserted claims of the ‘156 patent are anticipated under 35 U.S.C. § 102.
3.   Whether the asserted claims of the ‘130 patent are anticipated under 35 U.S.C. § 102.
4.   Whether the asserted claims of the ‘873 patent are anticipated under 35 U.S.C. § 102.
C.   Other
1.   Callaway Golf reserves the right to address in rebuttal all issues
relating to the validity of the patents-in-suit, including:
(a)   That none of the asserted claims of the patents-in-suit are invalid as anticipated or obvious;
(b)   whether any suggestion or motivation existed to combine and/or alter prior art to arrive at the inventions set forth in the asserted claims; and
(c) the extent of objective indicia of nonobviousness of the inventions set forth in the asserted claims, including: (i) commercial success of products covered by any of the asserted patent claims; (ii) a long felt, unmet need in the art that was satisfied by the invention; (iii) the failure by others to make the invention; (iv) copying of the invention by others; (v) initial skepticism of the invention by others; (vi) praise of the invention by others. Callaway Golf will also show that there is a nexus between the secondary considerations and the claimed inventions of the patents-in-suit.
II. DAMAGES
1.   The amount of damages, if any, in the form of lost profits due to Callaway Golf as a result of Acushnet Company’s infringement.

2.   The amount of damages, if any, in the form of a royalty due to Callaway Golf as a result of Acushnet Company’s infringement.

Sounds like an interesting trial!

David J. Dawsey - The Golf Patent Attorney

PS – stay tuned, there will be many posts this week leading up to the trial

PPS – you can view a PDF of the facts to be litigated HERE