Callaway’s Request for a Mulligan Regarding the ProV1 Litigation

Fourth, the importance of the Hebert patents was further increased after Acushnet’s damages expert volunteered on the last day of trial that Acushnet believed the patents were invalid due to its “lawyers’ opinions.” (Tr. at 1332:5-10.) Mr. Nauman subsequently testified that Acushnet believed the patents were invalid based on those opinions. (Tr. at 1374:23¬1377:13.) The propriety of permitting testimony on the opinions is discussed separately below. But when that testimony was coupled with the exclusion of the Hebert patents, it created the misleading impression that Acushnet never believed the Sullivan concept was patentable, when Acushnet’s own golf ball developers—including Messrs. Hebert and Morgan—obtained two patents on nearly the same thing after Mr. Sullivan. The opinion testimony would have looked quite different had the jury known that (1) Mr. Nauman’s own department reviewed and approved the Hebert/Morgan invention disclosure, (2) Acushnet sought and received patents based on it, while aware of the same prior art used in the opinions, and (3) Mr. Nauman extracted a license for those patents. Likewise, the exclusion of the Hebert patents permitted Mr. Dalton to claim he immediately thought the Sullivan patents were invalid when he saw them. (Tr. at 427:13-428:5.) This left the jury with the erroneous view that all Acushnet’s designers thought the Sullivan concept was unpatentable when, in fact, exactly the opposite was true.

Fifth, the Hebert patents were necessary to correct misimpressions regarding the ProV1 invention story. Acushnet led Mr. Morgan through the invention disclosure form that led to the Hebert patents, (Tr. at 282:23-283:6), but Callaway Golf could not cross-examine him regarding whether the invention disclosure led to a patent. (Tr. at 350:7-13.) As a result, the jury was left with the mistaken and unfairly prejudicial inference that Acushnet (or the PTO) concluded the idea was unpatentable and never followed through by filing a patent application. This would be a natural inference for this jury because it heard Acushnet tout its other “patented” technologies, while describing its invalidity opinions for the Sullivan patents.4 In addition, the Hebert patents would have undermined Acushnet’s argument that Dr. Wu and Mr. Harris invented the ProV1 in 1995, before Sullivan. (Tr. at 280:23-283:6 (Morgan); 176:14-21 (opening); 1406:17-25, 1472:8-15 (closing); DX-830; Halkowski Decl., Ex. B.) The Hebert patents establish the ProV1 concept was developed separately from any earlier alleged work because they do not name either Dr. Wu or Mr. Harris as inventors.

Sixth, because the PTO separately issued Acushnet patents on the very same concept, the Hebert patents would have rebutted Acushnet’s claim that an overworked or incompetent examiner granted the Sullivan patents by mistake.

Come on, give them a third trial; think of the poor attorneys that have gotten accustomed to a never ending stream of billable hours over the past three years! Do it for the economy (unless you happen to be a shareholder of either company; fortunately, I am not).