Callaway Sues Taylor Made Twice In The Past 5 Days!
Readers of the Golf-Patents blog know that Callaway is not afraid of a knockdown drag-out patent infringement lawsuit. In the past few days they have once again demonstrated this… and appear to be making the statement “don’t mess with Callaway… no matter who you are!”
First, on Saturday Callaway filed a patent infringement complaint in the “rocket docket” Eastern District of Texas alleging that Taylor Made has willfully infringed USPN 5704849 titled “Golf Club Head with Audible Vibration Attenuation.”
Then, on Monday Callaway filed a patent infringement complaint in the Southern District of California alleging that Taylor Made has willfully infringed a couple of Callaway’s golf ball patents (USPN’s 6638185 and 7160207), and alleging that four of Taylor Made’s patents (USPN’s 6547678, 6991558, 7197575, and 6719644) are invalid, among other more complex legal claims. The “meat” of the complaint filed in California is reproduced below for your reading enjoyment.
It should be interesting to see how these cases play out.
David Dawsey – Monitoring Golf Patent Infringement
PPS – The following is the body of the California Complaint. Please bear in mind that an automated program was used to convert a manually scanned PDF of the Complaint into editable text, so there may be errors.
THE CALIFORNIA COMPLAINT
1. Plaintiff Callaway Golf Company (“Callaway Golf’) is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business in Carlsbad, California.
2. Defendant Taylor Made Golf Company, Inc. (“Taylor Made”) is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business in Carlsbad, California.
2. Defendant Taylor Made Golf Company, Inc. (“Taylor Made”) is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business in Carlsbad, California.
JURISDICTION AND VENUE
3. This Court has subject matter jurisdiction under the patent laws of the United
States, 35 U.S.C. § 1 et seq. and under the Declaratory Judgment Act 28 U.S.C. § 2201 et seq. The Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338, 2201 and 2202.
4. This Court has personal jurisdiction over Taylor Made by virtue of, inter alia, its principal place of business in California.
5. Venue is proper under 28 U.S.C. §§ 1391 and 1400.
6. On October 28, 2003, United States Patent No. 6,638,185 (“the ‘185 Patent”), on an invention entitled “Multi-layer Golf Ball” was duly and legally issued by the United States Patent and Trademark Office. A true and correct copy of the ‘185 Patent is attached as Exhibit A of this Complaint.
7. On January 9, 2007, United States Patent No. 7,160,207 (“the ‘207 Patent”), on an invention entitled “Multi-layer Golf Ball” was duly and legally issued by the United States Patent and Trademark Office. A true and correct copy of the ‘207 Patent is attached as Exhibit B of this Complaint.
8. On information and belief, Defendant Taylor Made is engaged in the business of manufacturing, using, importing, offering for sale, and/or selling in the district golf balls that infringe Callaway Golfs intellectual property rights.
9. Defendant Taylor Made asserts that it is the owner of U.S. Patent No. 6,547,678 (“the ‘678 patent”), entitled “Golf Ball Dimple Structures With Vortex Generators,” which issued on April 15, 2003. A true and correct copy of the ‘678 Patent is attached as Exhibit C of this Complaint.
10. Defendant Taylor Made asserts that it is the owner by assignment of U.S. Patent No. 6,991,558 (“the ‘558 patent”), entitled “Golf Club Head,” which issued on January 31, 2006. A true and correct copy of the ‘558 Patent is attached as Exhibit D of this Complaint.
11. Defendant Taylor Made asserts that it is the owner by assignment of U.S. Patent No. 7,198,575 (the “‘575 patent”), entitled “Golf Club Head,” which issued on April 3, 2007. A true and correct copy of the ‘575 Patent is attached as Exhibit E of this Complaint.
12. Defendant Taylor Made asserts that it is the owner by assignment of U.S. Patent
No. 6,719,644 (“the ‘644 patent”), entitled “Golf Club Head. and Face,” which issued on April 13, 2004. A true and correct copy of the ‘644 Patent is attached as Exhibit F of this Complaint.
13. Taylor Made has repeatedly alleged that Callaway Golfs products infringe the ‘678, ‘558, ‘575, and ‘644 patents.
14. As a result of Taylor Made’s allegations, Callaway Golf has an objectively reasonable apprehension that Taylor Made will sue Callaway Golf for alleged infringement of the ‘678, ‘558, ‘575, and ‘644 patents.
15. Therefore, there is an actual and justiciable controversy between Callaway Golf and Taylor Made concerning the validity, enforceability, and alleged infringement of the ‘678, ‘558, ‘575, and ‘644 patents.
COUNT 1 (Infringement of the ‘185 and ‘207 Patents)
16. Callaway Golf incorporates by reference the allegations in paragraphs 1 through 15 above.
17. Callaway Golf has been engaged in the business of manufacturing and distributing golf equipment since 1982.
18. Callaway Golf was assigned all right, title, and interest in and to the ‘185 Patent and at all times relevant hereto has been the lawful owner of all rights, title, and interest in the ‘185 patent. Callaway Golf is the sole owner of the ‘185 patent.
19. Callaway Golf was assigned all right, title, and interest in and to the ‘207 Patent and at all times relevant hereto has been the lawful owner of all rights, title, and interest in the ‘207 Patent. Callaway Golf is the sole owner of the ‘207 patent.
20. Taylor Made markets and sells golf balls in direct competition with Callaway Golf.
21. Taylor Made has used, manufactured, offered for sale, sold and/or caused to be imported into the United States products which literally and under the doctrine of equivalents infringe one or more claims of the ‘185 and ‘207 Patents in violation of 35 U.S.C. Section 271.
22. Taylor Made is actively inducing others to infringe, and/or committing acts of contributory infringement, of one or more claims of the ‘185 and ‘207 Patents through its activities related to making, using, importing, offering for sale, and/or selling their infringing products or causing infringing products to be made, used, imported, offered for sale, and/or sold in the United States, all in violation of 35 U.S.C. § 271.
23. Taylor Made has been on notice of the ‘185 and ‘207 Patents.
24. Callaway Golf has been damaged and has suffered irreparable injury due to acts of infringement by Taylor Made and will continue to suffer irreparable injury unless Taylor Made’s activities are enjoined.
25. Callaway Golf has suffered and will continue to suffer substantial damages by reason of Taylor Made’s act of patent infringement as alleged above and Callaway Golf is entitled to recover from Taylor Made the damages sustained as a result of Taylor Made’s acts.
26. Taylor Made has willfully and deliberately infringed the ‘185 and ‘207 Patents in disregard of Callaway Golfs rights.
17. Callaway Golf has been engaged in the business of manufacturing and distributing golf equipment since 1982.
18. Callaway Golf was assigned all right, title, and interest in and to the ‘185 Patent and at all times relevant hereto has been the lawful owner of all rights, title, and interest in the ‘185 patent. Callaway Golf is the sole owner of the ‘185 patent.
19. Callaway Golf was assigned all right, title, and interest in and to the ‘207 Patent and at all times relevant hereto has been the lawful owner of all rights, title, and interest in the ‘207 Patent. Callaway Golf is the sole owner of the ‘207 patent.
20. Taylor Made markets and sells golf balls in direct competition with Callaway Golf.
21. Taylor Made has used, manufactured, offered for sale, sold and/or caused to be imported into the United States products which literally and under the doctrine of equivalents infringe one or more claims of the ‘185 and ‘207 Patents in violation of 35 U.S.C. Section 271.
22. Taylor Made is actively inducing others to infringe, and/or committing acts of contributory infringement, of one or more claims of the ‘185 and ‘207 Patents through its activities related to making, using, importing, offering for sale, and/or selling their infringing products or causing infringing products to be made, used, imported, offered for sale, and/or sold in the United States, all in violation of 35 U.S.C. § 271.
23. Taylor Made has been on notice of the ‘185 and ‘207 Patents.
24. Callaway Golf has been damaged and has suffered irreparable injury due to acts of infringement by Taylor Made and will continue to suffer irreparable injury unless Taylor Made’s activities are enjoined.
25. Callaway Golf has suffered and will continue to suffer substantial damages by reason of Taylor Made’s act of patent infringement as alleged above and Callaway Golf is entitled to recover from Taylor Made the damages sustained as a result of Taylor Made’s acts.
26. Taylor Made has willfully and deliberately infringed the ‘185 and ‘207 Patents in disregard of Callaway Golfs rights.
COUNT II (Declaratory Judgment that Callaway Golf Has a License to Practice One or More Claims of the ‘575 and/or ‘558 Patents)
27. Callaway Golf incorporates by reference the allegations in paragraphs 1 through 26 above.
28. On January 5, 2005, Callaway Golf and Taylor Made entered into a License
Agreement, pursuant to which Callaway Golf has a license to practice one of more claims of the ‘575 and/or ‘558 patents.
29. This is an action for declaratory judgment that Callaway Golf has a license to practice one of more claims of the ‘575 and/or ‘558 patents.
30. An actual controversy exists between Callaway Golf and Taylor Made concerning whether Callaway Golfs accused products directly or indirectly infringe or have infringed any valid claim of the ‘575 and ‘558 patents, and whether Callaway Golf is liable for the purported infringement of any such claim. An actual controversy also exists between Callaway Golf and Taylor Made concerning whether the ‘575 and ‘558 patents are invalid for failing to meet one or more of the requirements for patentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112.
31. A judicial declaration that Callaway Golf has a license to practice one of more claims of the ‘575 and/or ‘558 patents is necessary and appropriate, so that Callaway Golf can ascertain its rights and duties with respect to designing, developing, marketing, and selling its products.
28. On January 5, 2005, Callaway Golf and Taylor Made entered into a License
Agreement, pursuant to which Callaway Golf has a license to practice one of more claims of the ‘575 and/or ‘558 patents.
29. This is an action for declaratory judgment that Callaway Golf has a license to practice one of more claims of the ‘575 and/or ‘558 patents.
30. An actual controversy exists between Callaway Golf and Taylor Made concerning whether Callaway Golfs accused products directly or indirectly infringe or have infringed any valid claim of the ‘575 and ‘558 patents, and whether Callaway Golf is liable for the purported infringement of any such claim. An actual controversy also exists between Callaway Golf and Taylor Made concerning whether the ‘575 and ‘558 patents are invalid for failing to meet one or more of the requirements for patentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112.
31. A judicial declaration that Callaway Golf has a license to practice one of more claims of the ‘575 and/or ‘558 patents is necessary and appropriate, so that Callaway Golf can ascertain its rights and duties with respect to designing, developing, marketing, and selling its products.
COUNT III (Declaratory Judgment That Callaway Golf Has an Implied License to Practice One or More Claims of the ‘575 and/or ‘558 Patents)
32. Callaway Golf incorporates by reference the allegations in paragraphs 1 through 31 above.
33. On January 5, 2005, Callaway Golf and Taylor Made entered into a License Agreement, pursuant to which Callaway Golf has an implied license to practice one of more claims of the ‘575 and/or ‘558 patents.
34. This is an action for declaratory judgment that Callaway Golf has an implied license to practice one of more claims of the ‘575 and/or ‘558 patents.
35. An actual controversy exists between Callaway Golf and Taylor Made concerning whether Callaway Golfs accused products directly or indirectly infringe or have infringed any valid claim of the ‘575 and/or ‘558 patents, and whether Callaway Golf is liable for the purported infringement of any such claim. An actual controversy also exists between Callaway Golf and Taylor Made concerning whether the ‘575 and/or ‘558 patents are invalid for failing to meet one or more of the requirements for patentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112.
36. A judicial declaration that Callaway Golf has an implied license to practice one of more claims of the ‘575 and/or ‘558 patents is necessary and appropriate, so that Callaway Golf can ascertain its rights and duties with respect to designing, developing, marketing, and selling its products.
COUNT IV (Declaratory Judgment of Estoppel)
37. Callaway Golf incorporates by reference the allegations in paragraphs 1 through 36 above.
38. On January 5, 2005, Callaway Golf and Taylor Made entered into a License Agreement, pursuant to which Callaway Golf has a license to practice one of more claims of the ‘575 and/or ‘558 patents.
39. If Taylor Made were to enforce one or more claims of the ‘575 and/or ‘558 patents against Callaway Golf, that would derogate from the rights Taylor Made granted Callaway Golf in the License Agreement. Taylor Made is therefore estopped from enforcing one or more claims of the ‘575 and/or ‘558 patents.
40. This is an action for declaratory judgment that Taylor Made is estopped from enforcing one of more claims of the ‘575 and/or ‘558 patents.
41. An actual controversy exists between Callaway Golf and Taylor Made concerning whether Callaway Golfs accused products directly or indirectly infringe or have infringed any valid claim of the ‘575 and/or ‘558 patents, and whether Callaway Golf is liable for the purported infringement of any such claim. An actual controversy also exists between Callaway Golf and Taylor Made concerning whether the ‘575 and/or ‘558 patents are invalid for failing to meet one or more of the requirements for patentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112.
42. A judicial declaration that Taylor Made is estopped from enforcing one of more claims of the ‘575 and/or ‘558 patents is necessary and appropriate, so that Callaway Golf can ascertain its rights and duties with respect to designing, developing, marketing, and selling its products.
COUNT V (Declaratory Judgment of Noninfringement of Any Valid Claim of the ‘678,’558, ‘575, and ‘644 patents)
43. Plaintiff Callaway Golf realleges and incorporates by reference paragraphs 1-42 above.
44. This is an action for declaratory judgment of noninfringement of any valid claim of the ‘678, ‘558, ‘575, and ‘644 patents.
45. An actual controversy exists between Callaway Golf and Taylor Made concerning whether Callaway Golfs accused products directly or indirectly infringe or have infringed any valid claim of the ‘678, ‘558, ‘575, and ‘644 patents and whether Callaway Golf is liable for the purported infringement of any such claim.
46. Callaway Golfs accused products do not infringe any valid claim of the ‘678, ‘558, ‘575, and ‘644 patents.
47. A judicial declaration that Callaway Golfs accused products do not infringe and have not infringed, either directly or indirectly, any valid claim of the ‘678, ‘558, ‘575, and ‘644 patents is necessary and appropriate, so that Callaway Golf can ascertain its rights and duties with respect to designing, developing, marketing, and selling its products.
COUNT VI (Declaratory Judgment of Invalidity of the ‘678, ‘558, ‘575, and ‘644 patents)
48. Callaway Golf incorporates by reference the allegations in paragraphs 1 through 47 above.
49. This is an action for declaratory judgment of invalidity of the ‘678, ‘558, ‘575, and ‘644 patents.
50. An actual controversy exists between Callaway Golf and Taylor Made concerning whether the ‘678, ‘558, ‘575, and ‘644 patents are invalid for failing to meet one or more of the requirements for patentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112.
51. One or more claims of the ‘678, ‘558, ‘575, and ‘644 patents are invalid for failing to meet one or more of the requirements for patentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112.
52. A judicial declaration that one or more claims of the ‘678, ‘558, ‘575, and ‘644
patents are invalid under one or more of the statutory provisions identified above is necessary and appropriate, so that Callaway Golf can ascertain its rights and duties with respect to designing, developing, marketing, and selling its products.
WHEREFORE, Callaway Golf prays for judgment:
A. That Taylor Made has infringed the ‘185 and ‘207 patents;
B. That Taylor Made has induced infringement and/or contributorily infringed the ‘185 and ‘207 patents;
C. Enjoining and restraining Taylor Made, its officers, agents, subsidiaries, servants,
partners, employees, attorneys and all others in active concert or participation with defendant from:
a. Making, using, selling, importing, or offering to sell any goods that in any way infringe, either literally or under the doctrine of equivalents, the ‘185 and ‘207 patents; and
b. Inducing or contributorily infringing the ‘185 and ‘207 patents.
D. That Taylor Made’s infringementof the ‘185 and ‘207 patents was willful;
E. For an award of damages adequate to compensate Callaway Golf for Taylor Made’s infringement of the Patent-In-Suit, but no less than a reasonable royalty, with interest, including pre judgment interest, and a trebling of such damages due to Taylor Made’s willful and deliberate infringement;
F. That all infringing material be impounded or destroyed;
G. For monetary damages in an amount according to proof;
H. For interest on said damages at the legal rate from and after the date such damages were incurred;
I. That this is an exceptional case and for an award for Callaway Golfs attorneys’ fees and costs; and
J. For such other relief as the Court may deem just and proper.
K. Declaring that Callaway Golf has an express and/or implied license to practice one or more claims of the ‘558 and ‘575 patents;
L. Declaring that Taylor Made is estopped from enforcing the ‘575 and ‘558 patents against Callaway Golf;
M. Declaring that no valid claims of the ‘678, ‘558, ‘575, and ‘644 patents are infringed by Callaway Golf;
N. Declaring that one or more claims of the ‘678, ‘558, ‘575, and ‘644 patents are
invalid;
O. Awarding Callaway Golf its attorneys’ fees and costs of this action.
P. Declaring this case exceptional under 35 U.S.C. § 285; and
Q. Awarding such other relief as this Court deems just and proper.
DEMAND FOR JURY TRIAL
Callaway Golf hereby demands a jury trial as to all issues triable to a jury.