Callaway’s Final Bite at the Apple Regarding the Request for a Mulligan in the ProV1 Infringement Litigation
This post is following up on yesterday’s post titled “Acushnet Responds to Callaway’s Request for a New Trial ” (which was following up on the original post titled “Callaway’s Request for a Mulligan Regarding the ProV1 Litigation ”) and details the Callaway “Reply in Support of its Motion for a New Trial and Judgment as a Matter of Law” (click Acushnet’s trial theatrics warranted an instruction reminding the jury that issued patents are presumed valid. Acushnet never defends its closing argument that the examiner only spent two minutes evaluating each reference, (Tr. at 1473:20-24), nor explains how such a claim was permissible under the Court’s in limine order. (D.I. 595 at 14.) It also stays mum about Mr. Morgan’s claim he was “astounded” at the patents Mr. Sullivan could obtain from the PTO and Acushnet’s suggestion that Spalding should have suggested specific obviousness combinations to the PTO. (D.I. 619 at 33.) Instead, Acushnet cites Chiron and model jury instructions for the proposition that courts are not required to instruct on the presumption. (D.I. 624 at 33-35 & n.16.) But Callaway Golf’s point is not that courts must always instruct on the presumption. It is that such an instruction was necessary under the unusual circumstances in this case, in which Acushnet repeatedly “grandstanded” regarding the PTO’s competence. (Tr. at 1089:6-8.) Neither Chiron nor the model instruction envision such tactics.
Acushnet also says the lack of instruction on the presumption was not prejudicial because the jury was instructed on the clear and convincing burden of proof. (D.I. 624 at 3 3-34 & nn. 14- 15.) But the problem was that Acushnet repeatedly speculated on the PTO’s competency. An instruction on the presumption was necessary because it would have reinforced the legal principle that the PTO is presumed to do its job correctly, especially where the relevant prior art was before it. Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984). The burden of proof instruction was insufficient because the jury would not have understood that the burden flows from the presumption of validity, which in turn flows from the presumption of PTO competency. Acushnet again argues waiver on this issue to avoid the merits, but Callaway Golf preserved its request for the instruction. (Tr. at 957:11-14.)
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D. The Obviousness Verdict Was Against the Great Weight of the Evidence.
Acushnet ignores almost all the evidence of non-obviousness. Its analysis is also tainted by the mistaken premises that (1) a new trial must be denied if the jury was “permitted to credit” its evidence, and (2) the Federal Circuit’s discussion of JMOL forecloses a new trial on obviousness based on the weight of the evidence. But, when deciding on a new trial, the court does not view the evidence in the light most favorable to the verdict, and a new trial may be granted even if the evidence permits inferences supporting the verdict and IMOL would be impossible. Fineman v. Armstrong World Indus., 980 F.2d 171, 211 (3d Cir. 1992). Callaway Golf respectfully submits the obviousness verdict was against the great weight of the evidence.
1. The Anticipation Verdict Infected the Obviousness Verdict. Anticipation is the “epitome of obviousness.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Because the jury, without evidentiary support, found anticipation by the Nesbitt patent and its incorporation of a portion of Molitor ‘637, its obviousness verdict was logically dictated by the combination of Nesbitt and all of Molitor ‘637. Thus, the obviousness verdict was tainted by the flawed anticipation determination and should be set aside.
2. There Was No Reason to Combine Acushnet’s References. The great weight of the evidence demonstrated that a person of ordinary skill would have avoided using polyurethane for the outer cover of a three-piece ball—especially when seeking a ball with both playability and long distance. Polyurethane was thought to be undesirable at the time because (1) the commercial embodiment of Molitor ‘751 had performance and manufacturing problems due to its polyurethane cover, (2) thermoplastic urethanes were viewed as “generally dead materials,” and (3) Dr. Statz and his colleagues at DuPont addressed the problems with the Molitor ‘751 ball by discarding its polyurethane cover and switching to an ionomer. (D.I. 619 at 52-53.) Acushnet never mentions this evidence. It also never identifies a reason why the skilled artisan seeking a ball with long distance would pick a soft outer cover with a Shore D less than 64, even if there were a reason to use polyurethane. Callaway Golf is not claiming “every different golf ball design” is patentable, (D.I. 624 at 52), it is saying the claimed design, which used a material fraught with problems, is patentable.
Acushnet tries to fabricate an express teaching to combine from one passage in Molitor ‘751 and another from Wu. (D.I. 624 at 47-48, 51.) Neither gives a reason to combine a three-piece ball design with a polyurethane outer cover and all the other claimed hardness and thickness limitations. The passage from Molitor ‘751 never describes the Shore D value the polyurethane outer cover layer of a three-piece ball should have, so it is not an “express teaching” to combine the prior art to obtain all the claim limitations, as Acushnet claims. (D.I. 624 at 47, citing DX-1 1 at 2:58-64, 3:7-12.) All the Molitor ‘751 examples involve balls with a single cover layer, so the Shore C values that Acushnet relies upon, (id. at 50-5 1), do not apply t o the outer cover of a three-piece ball. Acushnet identifies nothing in Molitor ‘751 suggesting otherwise. Likewise, Wu discusses use of polyurethane as a cover material for wound balls and two-piece solid-core balls. It never mentions, either in the passage Acushnet quotes or elsewhere, use of a polyurethane cover on a three-piece golf ball. Thus, Dr. Statz’s conclusory testimony regarding Wu is also insufficient. Acushnet falls back on the argument that only ionomers, balata, and polyurethane were possible cover materials for golf balls. (D.I. 624 at 48- 49.) But this directly contradicts Molitor ‘637, which discloses a much longer “laundry list” of potential materials. (D.I. 619 at 41, 51.) Acushnet tries to circumvent Molitor ‘637 by saying “commercial” golf balls only used three materials, (D.I. 624 at 48 n.20), but it never explains why a designer would limit himself to commercial materials. Indeed, Mr. Kennedy testified, consistently with Molitor ‘637, that there were thousands of choices. (Tr. at 828:22-829:9.)
Acushnet next claims that “real world” evidence supports its case. (D.I. 624 at 49.) In fact, the Hebert patents are the most relevant real world evidence and show that Acushnet’s own engineers thought that combining and modifying the prior art to arrive at the Sullivan concept was still new and non-obvious two years after Sullivan’s filing date. But those patents were excluded, skewing the jury’s view of this issue. That aside, Acushnet’ s evidence does not support its position. The Nike and Bridgestone balls, and the Rule 35, were all developed well after 1995, so none shows what was obvious to one of ordinary skill in 1995. There was no evidence the Harris/Wu prototypes were ever made in 1995, nor is there evidence that, if they were made, they would have all the claim limitations, such as an outer cover layer Shore D of less than 64. Finally, Acushnet’s attempt to use Mr. Sullivan’s own decision to make prototypes embodying the asserted claims turns the obviousness inquiry on its head. That an inventor saw a solution that no one else did cannot be turned against him as evidence his invention was obvious.
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E. A Manifest Injustice Would Result if the Verdict Were Allowed to Stand.
Acushnet never responds to Callaway Golf’s argument that a manifest injustice would
result if the verdict were allowed to stand. (D.I. 619 at 59-60.) It does not dispute that it delayed its objection to the prior jury’s inconsistent verdict until the problem could no longer be fixed, and that it retooled its case and invited this jury to decide the case on something other than the merits. Acushnet’s claim that the inconsistent verdict was “just as much a victory for Acushnet,” (D.I. 624 at 1), is undermined by its refusal to join Callaway Golf’s request to send the first jury back. It knows that approach—jointly requesting the jury be sent back to resolve the inconsistency—would have likely been entertained by the Court and, ultimately, resulted in a win for Callaway Golf on all claims. Thus, a new trial is warranted.
Are you confused enough yet? I think I sense a little bad blood between these two!
Dave Dawsey – The Golf Patent Infringement Lawyer