A Look Inside the Callaway versus Acushnet Golf CLUB Patent Infringement Litigation
Most non-lawyers are blown away by the costs of patent litigation. Ever wonder why litigation is so expensive? Aside from the filing of motion, after motion, after motion….. the real costs of patent litigation are associated with the “discovery” efforts of the parties.
What is “discovery?” Good question. Discovery is the period in which both the plaintiff and defendant are allowed, generally though their attorneys, to conduct sworn interviews, called depositions, as well as to inspect records and documents that are in the hands of the other party. This includes interrogatories, requests for production, and requests for admissions; and inevitably fighting over what is privileged and accusing the other side of stonewalling.
The period of discovery can last as much as a year or more, depending on the complexity of the case. The purpose of discovery is to allow both sides to unearth as many facts as possible before trial. Based on discovery, some issues may be resolved, or dismissed, before trial. In cases involving a lot of money, the parties often dig in their heels and take a scorched earth approach to discovery.
OK, so why would a golfer care about all this? Well, I thought the readers of the Golf-Patents blog would find it interesting to see the type of information that parties involved in a big golf club patent infringement battle would like to learn from the other side; namely, the type of information that Acushnet wants to learn from Callaway.
To set the stage, a little background is in order…..
As you may recall from a prior post, on June 8, 2007 Callaway filed a golf club patent infringement lawsuit alleging that Acushnet has willfully infringed 5 Callaway patents. Then, as discussed in a subsequent post, on July 12, 2007 Acushnet filed their Answer to the Complaint thereby stating (i) that Acushnet does not infringe the Callaway patents and alleging that the Callaway patents are invalid, and (ii) returned the favor and accusing Callaway of infringing two of Acushnet’s patents. Callaway responded at the end of August (post here) stating that they do not infringe the Acushnet patents and allege that the Acushnet patents (7041003 and 6960142) are invalid!
Then, another post reported that Acushnet has filed their Second Amended Answer to the Callaway Complaint. As you may recall, the original Complaint alleges that King Cobra 454 Comp, King Cobra F Speed, King Cobra HS9 F Speed, King Cobra HS9 M Speed, King Cobra LD F Speed, Titleist 905R, Titleist 905S, and Titleist 905T clubs infringe one, or more, of the Callaway patents. The Answer alleges that the Callaway FT-i, FT-5, X-460, X-460 Tour, Big Bertha Fusion FT-3, and Big Bertha 460 clubs infringe one, or more, of the Acushnet patents. Now, the Second Amended Answer adds Callaway’s Hyper X and Hyper X Tour clubs to the list of allegedly infringing products and adds USPN 7140975 to the other two Acushnet patents that they accuse Callaway of infringing.
So now with the understanding that the case is deep in the discovery period, check out this list of information that Acushnet wants to learn from Callaway (and think about the costs associated with gathering and digesting all this information).
1. Callaway’s document retention policy from 1998 to the present, including the
retention of documents requested in this case.
2. Callaway’s retention of golf club heads that it has tested from 1998 to the present, including the clubs requested in this case.
3. Callaway’s search for and production of electronic and paper documents and golf clubs in response to Acushnet’s requests.
4. The development and introduction of thin-faced, titanium wood-type golf club heads into the marketplace in the 1990s, including Callaway’s development and introduction of thin-faced titanium wood-type golf clubs through 2000.
5. Callaway’s knowledge of and/or study of the construction of wood-type golf club heads prior to the issuance of the last of the Callaway Patents.
6. Callaway’s knowledge of and/or study of attempts to achieve a “spring-like” effect on the face of golf club heads prior to March 14, 2000, including Callaway’s knowledge of and/or study of impedance matching between golf club heads and golf balls.
7. Callaway’s knowledge of and/or study of the prior art golf clubs cited by Acushnet in its supplemental invalidity contentions prior to the issuance of the last of the Callaway Patents.
8. Callaway’s knowledge of and involvement in the process that led to the decision of the United States Golf Association (“USGA”) to add Rule 4-1(e) to the Rules of Golf and to implement a test for “spring-like” effect, including communications between Callaway and the USGA and Callaway’s knowledge of USGA testing.
9. Callaway’s communications with the Royal & Ancient (“R&A”) regarding the “spring-like” effect of golf club heads.
10. Callaway’s testing for “spring-like” effect, including testing of the natural frequency, the coefficient of restitution (“COR”) and/or contact time measurements of golf club heads, prior to the issuance of the last of the Callaway Patents.
11. Callaway and/or Dr. Kosmatka’s decision and efforts to investigate the natural frequency of the face of golf club heads at any time, including Callaway’s and/or Dr. Kosmatka’s testing for natural frequency, Callaway’s and/or Dr. Kosmatka’ s development of a “frequency COR” test, and the equipment available to Callaway and/or Dr. Kosmatka to test for COR and/or natural frequency.
12. Callaway’ s testing for “spring-like” effect, including non-privileged testing of the natural frequency, the COR and/or contact time measurements of the Accused Callaway Products and Accused Acushnet Products.
13. Callaway’s relationship with Dr. Kosmatka, including Callaway’s decision to hire Dr. Kosmatka as a consultant, Callaway’s consulting agreements with Dr. Kosmatka, and Callaway’s decision to endow a chair at the University of California, San Diego.
14. The prosecution of the applications that issued as the Callaway Patents and any foreign counterparts.
15. The practices and procedures of Callaway’s patent review committee and the review of the Callaway Patents by that committee.
16. “Project K,” including the design, development and/or testing of any prototype golf club heads developed by Callaway and/or Dr. Kosmatka and the retention and location of those club heads.
17. Callaway’s efforts to incorporate the alleged invention described in the Callaway Patents int
o its golf club heads, and Callaway clubs that embody the alleged invention.
18. Callaway’s compliance with the marking provision of 35 U.S.C. 287, including its efforts to mark its golf clubs with the patent numbers of the Callaway Patents.
19. Callaway’s licensing and/or enforcement of the Callaway Patents and any communications relating to such licensing and/or enforcement, including Callaway’s communications with Taylor Made and its decision to license one or more of the Callaway Patents to Taylor Made.
20. Efforts made by Callaway to investigate potential infringers of any of the Callaway Patents.
21. Callaway’ s decision to bring this suit against Acushnet, including the individuals involved in that decision, the timing of the decision, and the non-privileged reasons why the decision was made at that time.
22. Callaway’s economic condition around the time it decided to bring this suit against Acushnet.
23. Callaway’s first knowledge of and first testing of the Accused Acushnet Products.
24. Any decision by Callaway to try to monetize its patent portfolio, including the individuals involved in that decision and when that decision was made.
25. Callaway’s investigation of the validity and/or enforceability of the Callaway Patents prior to bringing this suit against Acushnet and prior to submitting the applications that resulted in each of the Callaway Patents.
26. Callaway’s relationship with Alan Hocknell, including the decision to hire him as an employee.
27. Callaway’s relationship with Alastair Cochran, including the decision to hire Dr. Cochran as a consultant and Callaway’s consulting agreements with Dr. Cochran.
28. Callaway’s competitive testing involving the Accused Acushnet Products.
29. Callaway’s first knowledge of the Acushnet Patents, and all steps taken by Callaway after learning of the Acushnet Patents, including any review, analysis or summaries of any of the patents, any efforts to secure opinions of counsel for any of the patents and/or any efforts by Callaway to design around or to avoid infringement of the Acushnet Patents.
30. The design and development of the Accused Callaway Products, including Callaway’s decision to design and develop the Accused Callaway Products.
31. Callaway’s decision to use variable face thickness (“VFT”) technology in its products, including Callaway’s decision to use VFT in each of the Accused Callaway Products and the benefits that Callaway sought to achieve by incorporating such VFT technology.
32. Callaway’s knowledge of and/or study of the VFT technology used in Acushnet’s products.
33. The VFT technology used in the face of each of the Accused Callaway Products.
34. All design considerations embodied in each of the Accused Callaway Products, including but not limited to VFT technology, intended to influence the direction of the flight of the golf ball.
35. The natural frequency of the face of each of the Callaway products now offered for sale, including but not limited to the Accused Callaway Products.
36. The sales history of the Accused Callaway Products.
37. Callaway’s efforts to advertise and market the Accused Callaway Products, including any efforts to market natural frequency or its benefits, and/or VFT technology or its benefits.
38. Market factors that drive the sale of the Accused Callaway Products and/or the Accused Acushnet Products.
I love #38! I am sure Callaway is just going to cough-up the “market factors” that drive the sales of their products.
Click David Dawsey – Monitoring Golf Club Lawsuits
PS – click here to check out more golf litigation posts