I.    INTRODUCTION

Callaway's claim that the verdict represents manifest injustice is simply not well founded. In the course of this case, Callaway successfully excluded Acushnet's test ball evidence showing the properties of golf balls made according to the prior art. Callaway successfully excluded evidence that the PTO has reexamined the patents-in-suit and found them invalid. Callaway successfully excluded evidence that the Board of Patent Appeals has consistently found virtually identical claims unpatentable. Despite the exclusion of all of this evidence, Acushnet presented substantial evidence to convince the jury that the patents-in-suit were both anticipated and obvious.

Callaway's brief incorrectly paints the first trial in this case as a Callaway victory from which Acushnet escaped only because of a technicality. In reality, as the Federal Circuit recognized, the first trial was just as much a victory for Acushnet: "Although it is true that the jury found 'without reservation' that eight claims were not invalid, it is equally true that the jury found claim 5 invalid without reservation." Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1334 (Fed. Cir. 2009). Given the second jury's clear and consistent verdict that the claims were anticipated and obvious, a third trial is not warranted.

While Callaway asks for judgment as a matter of law, Callaway's stated preference is not for such a judgment, but instead for a third trial. As such, Callaway's brief barely mentions its motion for judgment as a matter of law, and does not even address the standards required to prevail on such a motion. Callaway avoids its JMOL motion for good reason; the Federal Circuit has already held in this case on a very similar record that "the evidence at trial was such that the jury could have rationally reached either verdict with regard to the asserted claims; neither party was entitled to judgment as a matter of law." Id. (emphasis added). Thus, the short shrift Callaway gives to its JMOL is warranted; there is no basis to grant Callaway's motion for judgment as a matter of law.

Callaway argues that a new trial should be granted for two reasons: (1) the Court committed evidentiary and legal errors that were so prejudicial that denial of a new trial would be inconsistent with "substantial justice;" and (2) the verdict is against the clear weight of evidence and it would be a "miscarriage of justice" for Callaway to lose. Callaway identifies five evidentiary issues allegedly "triggered and exploited by Acushnet" that it says warrant a new trial. Callaway fails to prove error or prejudice that would warrant a third trial.

First, the Hebert patents were properly excluded. Callaway demonstrated in the first trial that its intended use of those patents was to improperly convince the jury that Acushnet received a patent on the "same invention" as that of the patents-in-suit, despite the fact that the claims are substantially different. Indeed, each of Callaway's arguments for the admission of the Hebert patents is based on the faulty premise that the Hebert patents are the same invention as the Sullivan patents. The Court's exclusion of the Hebert patents properly prevented Callaway from so misleading the jury in the second trial. At the same time, the Court allowed substantial evidence on related issues, including the invention record and testimony of Acushnet personnel that they thought the veneer concept was new and novel. Whatever probative value the Hebert patents might have had was already obtained through those other evidentiary sources.

Second, the admission of Acushnet's reliance on opinions of counsel to proceed with its business was done as a remedy for Callaway's improper questioning of Acushnet's damages expert on the last day of trial. Even though privilege was waived on this topic, Acushnet had no intention of mentioning the opinions of counsel until Callaway brought Acushnet's state of mind squarely into question by implying that Acushnet had no good reason to continue to knowingly use an infringing design. The Court corrected this willful implication by allowing a very limited reference to the opinions of counsel. Acushnet did not take unfair advantage of that ruling, and did not seek to introduce the reexaminations that likewise supported its conclusion that the Sullivan patents are invalid. Acushnet asked a few limited questions about the opinions, did not mention that the opinions relied on the same art before the jury (Nesbitt and Molitor '637), and did not offer the opinions into evidence. Moreover, Acushnet intentionally avoided mentioning the opinions of counsel in closing to avoid any argument that it took unfair advantage of the ruling.

Third, the Court correctly excluded certain testimony of Messrs. Proudfit and Nesbitt. Mr. Proudfit's statements that he did not think of using polyurethane on a three piece ball are simply not probative of any issue in the case since there was no evidence presented that Mr. Proudfit knew anything about polyurethane covers. Mr. Nesbitt's testimony that his patent's reference to Molitor was not a reference to polyurethane was in direct conflict with the Federal Circuit's ruling and was thus properly excluded. Callaway's arguments that Dr. Statz improperly capitalized on the exclusion of this testimony are not well taken. Indeed, Callaway did not object to Dr. Statz's testimony, nor did Callaway try to offer the Nesbitt or Proudfit testimony after Dr. Statz testified.

Fourth, Callaway's complaint that evidence of Acushnet's 2001 high-acid Pro V1 alternatives was undisclosed in discovery is not well taken. Mr. Dalton testified in a deposition specifically conducted to address the 2001 high-acid Pro V1 alternative. Callaway chose not to ask Mr. Dalton at that time whether those alternatives were ever sold. Moreover, even if Callaway felt that somehow the testimony was inconsistent with disclosures in discovery, Callaway should have objected during trial. Callaway made no such objection, and has waived any right to seek a new trial on that basis. Moreover, evidence of the 2001 high acid Pro V1 alternative was presented as part of Acushnet's damages case, not for invalidity. Hence the admission of that evidence cannot serve as the basis for a third trial on invalidity.

Fifth, Callaway's argument that the exclusion of Mr. Mickelson's testimony should lead to a new trial is misplaced. Callaway made abundantly clear during trial that Mr. Mickelson's testimony was being offered principally to rebut Acushnet's damages theory. Now Callaway argues that the exclusion of his testimony warrants a new trial on validity. Callaway's convenient change of tune aside, Mr. Mickelson's testimony had extremely limited probative value (if any), and the Court correctly ruled (as it did in the first trial) that the prejudice caused by his celebrity status would outweigh any probative value of his testimony. Moreover, Callaway agreed on the record that as long as Acushnet did not argue that players would switch back to a wound ball after playing the Pro V1, Mickelson's testimony was not necessary.

The alleged "legal errors" Callaway identifies relate to two jury instruction issues regarding the presumption of validity and obviousness. With respect to the presumption of validity, the Federal Circuit has explicitly approved omitting that instruction, and it appears in none of the current leading model patent instructions. In addition, the language Callaway objects to in the obviousness instruction comes directly from the Supreme Court's opinion in KSR, and was balanced (at Callaway's request) by a clarifying instruction. As such, the Court's instructions in no way constitute legal error warranting a new trial.

As to its motion for a new trial based upon the weight of the evidence, as discussed below, Callaway does not provide any credible argument that the verdict was against the great weight of evidence. Indeed, the Federal Circuit has already stated on a very similar record that substantial evidence would support either an obviousness or non-obviousness verdict. Thus, Callaway's motion should be denied.

II. NATURE AND STAGE OF THE PROCEEDINGS

Callaway filed this lawsuit on February 9, 2006. On November 20, 2007, the Court granted Callaway's motion for summary judgment of no anticipation, and denied Acushnet's summary judgment motion of invalidity based on anticipation and obviousness. D.I. 347 & 348. Among Acushnet's bases for its invalidity motion was that the asserted claims were anticipated by Nesbitt, incorporating Molitor '637 by reference. The Court rejected that argument on the basis that Nesbitt did not incorporate Molitor '637 by reference. D.I. 347 at 6-13.

The remaining issue of obviousness was tried to a jury beginning on December 7, 2007. On December 14, the jury returned a verdict holding dependent claim 5 of the '293 patent invalid as obvious, but holding the other eight asserted claims, including independent claim 4 of the '293 patent, not invalid. Acushnet filed a motion for JMOL on obviousness, or in the alternative a new trial in view of the jury's inconsistent verdicts. D.I. 409 & 417. Acushnet's motion was denied and judgment was entered on the verdict. D.I. 492 & 493.

Acushnet appealed to the Federal Circuit. The Federal Circuit issued its decision on August 14, 2009. In its opinion, the Federal Circuit reversed the Court's finding of no incorporation by reference, remanded for a determination of anticipation, and ordered a new trial on obviousness due to the inconsistencies in the verdicts. Callaway, 576 F.3d at 1348.

On March 3, 2010, the Court denied Acushnet's renewed motion for summary judgment on anticipation. D.I. 595 & 596. The basis for Acushnet' motion was again that the asserted claims were anticipated by Nesbitt, incorporating Molitor '637 by reference. The Court denied that motion and held that the test golf balls that Acushnet created to demonstrate inherent disclosure of the Shore D hardness limitations were inadmissible. D.I. 595 at 7-10.

The issues of anticipation and obviousness were tried to a jury beginning on March 22, 2010. On March 29, 2010, the jury returned a verdict finding all of the asserted claims invalid as anticipated and obvious. D.I. 608. Callaway filed its present motion for a new trial or judgment as a matter of law on April 28, 2010. D.I. 616.

III. FACTUAL BACKGROUND

A.    The Patents-in-Suit

The patents-in-suit relate to solid construction multi-layer balls that use polyurethane as the outer cover material. Callaway has stipulated that the effective priority date of the '293, `156, and '873 patent is November 9, 1995, and that the effective priority date of the '130 patent is October 13, 1995. D.I. 334, Exhibit 1 In 16-17.

The patents-in-suit have virtually identical specifications, and all claim essentially the same basic subject matter: a multi-layer golf ball having a hard ionomer inner cover layer and a soft polyurethane outer cover layer. The inner cover layer is either a low acid ionomer or a blend of low-acid ionomers, having a Shore D hardness of 60 or greater. DX-1 at 3:49-53. The outer cover layer is made from a polyurethane and has a Shore D hardness of 64 or less. Id., claim 1. The Court construed these "Shore D hardness" limitations to refer to measurements taken on the surface of the ball. D.I. 345 at 1-3. The claims also include broad limitations directed to certain material properties of the cover layers, such as their thickness or flexural modulus.

B.    The Prior Art

Solid-core, multi-layer golf balls, such as those claimed by the patents-in-suit have been described by the patent literature since the 1980s. For example, U.S. Patent No. 4,431,193 ("Nesbitt"), DX-9, discloses a multi-layer golf ball with a core, an inner cover layer made of a hard Surlyn material, and an outer cover layer made of a soft Surlyn material. See, e.g., id., Fig. 2 at 3:16-25. Similarly, U.S. Patent No. 5,314,187 ("Proudfit") (DX-10) discloses a multi-layer golf ball with a core, an inner cover layer consisting of a blend of low acid Surlyns and an outer cover layer consisting of a synthetic balata blend. Cover layers made from blends of low acid ionomers, as claimed in the patents-in suit is also shown in U.S. Patent Nos. 4,274,637 ("Molitor `637"), DX-12 at 14:55-65.

Polyurethane covers have been known for decades to golf ball designers, as the inventor of the patents in suit admitted. T. Tr.3 at 469:7-471:4; 265:16-268-:18. Polyurethanes were discussed extensively as golf ball covers in prior Spalding and Acushnet patents and publications many years before the patents-in-suit were filed. See, e.g, DX-12 (Molitor '637); DX-13 (Wu); DX-11. These patents and publications taught skilled artisans that polyurethane was a suitable cover material for all types of golf ball constructions. By the mid 1990s, polyurethane had been proven as a commercially viable cover material on both solid and wound balls. T. Tr. at 47-1:5- 15. By 1994, the polyurethane disclosed in the Wu patent was used on the most popular ball on the PGA Tour, the Titleist Professional. T. Tr. at 377:21-378:2; 379:3-6.

The Wu patent explicitly suggested that its polyurethane cover material was an excellent replacement for balata or Surlyn covers. DX-13 at 1:40-46. The Molitor '751 patent explicitly stated that the polyurethane cover disclosed therein could be used in place of the Surlyn cover of a solid-core, multi-layered ball such as the Nesbitt ball. DX-11 at 3:7-12; Callaway Golf; 576 F.3d at 1337 n.3.