I.    INTRODUCTION

Acushnet does not deny that it strategically delayed its objection to the inconsistent verdict after the first trial, then retooled its approach to encourage this jury to decide the case on something other than the relevant evidence. The anticipation verdict demonstrates this jury took Acushnet up on that invitation. There is no evidence that Nesbitt/Molitor '637 discloses a polyurethane outer cover layer with a Shore D less than 64, so it cannot anticipate the asserted claims. Abandoning the key passage in Nesbitt that Dr. Statz relied upon at trial, Acushnet now argues that the patent's statements about a ball with the "playing characteristics" of a balata-covered ball teach that polyurethane covered three-piece balls should have the same hardness as a balata-covered ball. But, at summary judgment, the Court correctly noted that "no evidence (let alone Nesbitt)" supports such a leap. Nothing has changed.

The jury's unsupported anticipation verdict logically required it to find the claims obvious as well. Acushnet never suggests otherwise. In addition, the exclusion of the Hebert patents left the jury with the mistaken impressions that (1) other "patented Titleist technologies" were responsible for the ProV1 's performance and (2) no one at Acushnet thought the Sullivan concept was patentable. Capitalizing on this revisionist history, Acushnet's closing encouraged the jury to invalidate the Sullivan claims because the ProV1 was "our invention, and we ought to be able to use it." But Acushnet thought the Hebert patents were its invention too, yet hid this key fact and spent the entire trial exploiting its absence. Acushnet says nary a word about this or many of Callaway Golf's other key points. Instead, it rehashes arguments it made and lost in connection with the first trial, arguments that are even less persuasive now, having seen how Acushnet took unfair advantage of the patents' exclusion. Callaway Golf thus respectfully requests a new trial, which, although undeniably a burden, is far better than letting this unjust verdict stand. Callaway Golf also requests JMOL of at least no anticipation.

II. ARGUMENT

A.    No Reasonable Jury Could Have Found Anticipation; at a Minimum, the Verdict Was Against the Great Weight of the Evidence.

1.    Nesbitt/Molitor '637 Does Not Disclose a Relatively Soft Polyurethane
Outer Cover Layer with a Shore D Hardness of 64 or Less.

When denying Acushnet summary judgment of anticipation, the Court recognized NesbittlMolitor '637 does not expressly disclose a polyurethane outer cover layer with a Shore D less than 64. (D.I. 595 at 6-7.) Acushnet ignores the Court's prior opinion, and it cites no new evidence supporting a different result. It also never argues inherency. Instead, Acushnet repeats an argument the Court previously rejected. It cobbles together (1) passages from the Nesbitt patent saying its ball has the same "playing characteristics" as a balata covered ball, and (2) testimony that some balata covered balls have a Shore D less than 64. Then, it argues that if a polyurethane outer cover layer were used, it would invariably have the same Shore D hardness as those balata covers. (D.I. 624 at 39-40; c~~ D.I. 572 at 16-17.) But, as the Court has said before, "[a]side from attorney argument, no evidence (let alone Nesbitt) cited by Acushnet makes that causative leap, to wit, that if A equals B, and A equals C, then C equals B." (D.I. 595 at 7.)

Acushnet's opposition abandons the main part of Nesbitt that Dr. Statz relied upon, which links the hardness of a three-piece ball with an ionomer outer cover to a balata covered ball. (DX-9 at 3:40-44; Tr. 569:5-571:17.) Unable to respond to Callaway Golf's point that the passage does not teach anything about the hardness of a polyurethane outer cover, (D.I. 619 at 38), Acushnet relies instead on other references to balata covered balls. (D.I. 624 at 39.) But these passages only say the ball simulates the "playing characteristics" or "advantages" of a "softer balata covered ball," not that the outer cover should have the same hardness as balata:

The first layer or ply is provided with a second or cover layer of a comparatively soft, low flexural modulus resinous material or of cellular or foam composition molded over the first layer and core or center assembly. Such golf ball has the "feel" and playing characteristics simulating those of a softer balata covered ball.

(DX-9 at 1:55-56.) This passages suggests only two things about the outer cover's hardness: that (1) it is "comparatively soft" in relation to the inner cover and (2) it has a higher Shore D than a "softer balata covered ball." (D.I. 619 at 3 9-40.) Acushnet claims the phrase "softer balata covered ball" just means balata covered balls are softer than a two-piece ionomer covered ball. (D.I. 624 at 40 n.17.) Even if that were true, it does not show the passage discloses that a polyurethane outer cover should have a Shore D hardness similar to a balata covered ball. Acushnet quotes another passage, which again says the outer cover is "comparatively soft," but does not say that it should have the same softness as balata. (Id. at 40; DX-9 at 3:65-68.)

Acushnet string cites conclusory portions of Dr. Statz' s testimony where he insists Nesbitt/Molitor '637 discloses that a polyurethane outer cover should have a hardness similar to balata. (D.I. 624 at 3 9-40). But Dr. Statz's testimony cannot supply the express disclosure that is missing from Nesbitt/Molitor '637 itself. The only part of his testimony Acushnet actually quotes and discusses suffers from the same deficiency discussed above. It just says that Nesbitt teaches that a "soft outer cover" yields the "playing characteristics. . . of a Balata covered ball," (D.I. 624 at 40; Tr. at 561:4-13), not that it has the hardness of a balata-covered ball. So neither Nesbitt/Molitor '637 itself nor Dr. Statz' s testimony demonstrates anticipation.

2.    Nesbitt/Molitor '637 at Most Discloses an Overbroad Genus, Which No Reasonable Jury Could Find Sufficient for Anticipation.

The disclosure in Nesbitt/Molitor '637 of a broad genus of three-piece golf balls that includes thousands of possible combinations does not anticipate the asserted claims. Acushnet never disputes the size of the genus. Instead, it says this is not a genus/species case because NesbittlMolitor '637 "discloses the claimed limitations themselves." (D.I. 624 at 41-42.) But the genus/species line of cases applies equally when the disclosed genus relates to the type of item claimed (e.g., a golf ball) rather than just a part of the claimed item (e.g., a cover material). Here, the relevant genus is the genus of multi-layer golf balls, not of cover materials alone. Thus, contrary to Acushnet's suggestion, (D.I. 624 at 44), this case is controlled by Impax and Ruschig because Nesbitt/Molitor '637 does not disclose a specific example of the claimed multi-layer ball, just as the references in those cases did not specifically disclose the claimed compound. (D.I. 619 at 41-42.) Acushnet's reliance on Perricone, Petering, and Wrigley, (D.I. 624 at 41-43), is misplaced because the references in those cases each disclosed a specific example of precisely what was claimed. (D.I. 619 at 44-45.) Here, no embodiment in Nesbitt/Molitor '637 discloses any multi-layer golf ball with all the claim limitations.

Because this is a genus/species case, Nesbitt/Molitor '637 cannot anticipate unless its disclosure would guide one of ordinary skill to the claimed species. (D.I. 619 at 43-44.) Acushnet relies on Dr. Statz's testimony to concoct such preferences. (D.I. 624 at 43.) But it never responds to Callaway Golf's points that (1) his testimony is inconsistent with Molitor '637's decision to list all the materials it discusses as potential cover materials and (2) the Nesbitt patent teaches the outer cover is preferably an ionomer, not polyurethane. (D.I. 619 at 43.) Nor does Acushnet explain why the Federal Circuit's statement that there is "no basis to differentiate between" the listed materials applies only to incorporation by reference, as opposed to meaning what it says. (D.I. 624 at 43 n. 18.) Nothing justifies parsing that statement as Acushnet does.

Finally, Acushnet runs from Mr. Sullivan's testimony that he was aware Nesbitt referred to Molitor '637 yet still thought the claims were patentable, even though Acushnet elicited part of the testimony. (D.I. 619 at 43-44.) His view was relevant because it shows what one of at least ordinary skill in the art believed at the relevant time. Vulcan Eng'g Co. v. Fata Aluminum, Inc., 278 F.3d 1366, 1373 (Fed. Cir. 2002); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143-44 (Fed. Cir. 1985). Acushnet ignores these cases, and its reliance on a case saying an inventor's view does not bear on claim construction is misplaced. (D.I. 624 at 44 n.19.) Simply put, Nesbitt/Molitor '637 contains no guidance to the claimed species and so cannot anticipate.

3.    There Was No Evidence that NesbittlMolitor '637 Discloses All Limitations Arranged as in the Asserted Claims.

Nesbitt/Molitor '637 fails to disclose all limitations "arranged as in the claims" because (1) it does not disclose an outer cover with a Shore D less than 64 that includes polyurethane; and (2) it never connects the disparate references to various claim limitations (i.e., materials, thicknesses, and hardnesses) or suggests they should be used together in the same three-piece golf ball. Thus, Net MoneylN, Ecolochem, Lindemann, and Arkley preclude a finding of anticipation here, as discussed in Callaway Golf's opening brief. (D.I. 619 at 45-46.) The Nesbitt patent's statement that the scores of Molitor '637 materials can be used in either cover layer is far too vague, (D.I. 624 at 45-46), and still fails to account for the thickness and hardness limitations. Also, there is no evidence its discussion of balata covered wound balls suggests a desired Shore D for the polyurethane outer cover of a three-piece ball with a hard inner cover.

Acushnet's brief ignores Ecolochem, Lindemann, and Arkley. It quotes language from Net MoneylN and Arthrocare stating that courts are not constrained to proceed example by example, (D.I. 624 at 46), but that is not what Callaway Golf seeks. The problem with Nesbitt/Molitor '637 is that, in addition to including no specific example of what is claimed, it does not teach picking the various claim limitations from different examples and putting them together into one golf ball. Thus, as in Net MoneylN, Nesbitt/Molitor '637 cannot anticipate.

B.    Exclusion of the Hebert Patents Allowed Acushnet to Paint a Misleading Picture of the Novelty and Technological Value of the Sullivan Patents.

Admission of the Hebert patents was necessary for at least six reasons: (1) to show Acushnet's own employees, including Messrs. Hebert, Morgan, and Snell, thought the Sullivan concept was novel and non-obvious in 1997; (2) to impeach the testimony of Messrs. Morgan and Dalton that they always thought the Sullivan patents were invalid; (3) to impeach Acushnet's assertion that the "patented" Wu polyurethane and other Acushnet technology is responsible for the ProV1 's performance; (4) to impeach Acushnet's suggestion that its opinions of counsel showed it consistently believed the Sullivan/Hebert concept was unpatentable; (5) to impeach Acushnet's story the ProV1 was invented in 1995 rather than 1996; and (6) to rebut Acushnet's suggestion the PTO only issued the Sullivan patents because it was overworked or incompetent. (D.I. 619 at 6-18.) The Court concluded the patents were admissible in connection with the first trial, (D.I. 424 at 422:18-423:10; D.I. 492 at 19 n.15), even after the remarks Acushnet cites. (D.I. 624 at 11-12.) Acushnet did not appeal that issue. Likewise, after carefully considering the issue before this trial, the Court again suggested the Hebert patents would be admitted, requiring only that Callaway Golf notify Acushnet beforehand. (D.I. 595 at 15.) Callaway Golf respectfully submits that those three prior rulings were correct, and that the subsequent exclusion of the Hebert patents warrants a new trial. The parties' disputes about the import of the Hebert patents should have been resolved by the jury. As it was, this jury did not hear the whole story.
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C.    The Other Problems Caused by Acushnet Were Magnified by the Exclusion of the Hebert Patents and Separately Warrant a New Trial.

1.    The Opinions Improperly Bolstered Acushnet's Invalidity Case.

Acushnet never identifies a legal issue to which its opinions of counsel were relevant nor challenges Callaway Golf's cases excluding opinions when willful infringement is not at issue. (D.I. 619 at 21.) Indeed, given the opinions' irrelevance, Acushnet had to carefully orchestrate their introduction by using Dr. Kerr's seemingly spontaneous statement to open the door to detailed testimony by Mr. Nauman. Acushnet feigns innocence, (D.I. 624 at 19, 21), but this is belied by the fact that (1) Acushnet's witnesses repeatedly volunteered information they were not supposed to, and (2) Dr. Kerr never mentioned invalidity or the opinions on direct examination, even when asked the same question about why Acushnet did not adopt its high-acid alternative. (D.I. 619 at 20.) It thus appears that Acushnet carefully timed the introduction of the opinions.

The Court recognized that Acushnet's request to have Mr. Nauman discuss the opinions was asking for "a lot," that it was "truly problematic" to "bolster]" Acushnet's invalidity case with the opinions, that there was no way to test the value of the opinions, that opinion-writing in general is "not an objective exercise," and that the opinions raised issues in a "complicated area of the law that we weren't prepared to address with the jury." (Tr. at 1340:11-19, 1341:18-21, 1345:7-15, 1346:5-7; D.I. 619 at 21-22.) Acushnet never acknowledges these concerns, much less explains why they did not warrant exclusion of Mr. Nauman's testimony about the opinions.

Instead, Acushnet simply blames Callaway Golf's "hard line of questioning" for Dr. Kerr's testimony and claims the opinion testimony was needed to cure the prejudice. (D.I. 624 at 19-22.) But Callaway Golf's questioning did not prejudice Acushnet or open the door to the opinions. It was simply an on-the-fly attempt to deal with Dr. Kerr's surprising insistence that Acushnet had sold a high-acid ProV1, contrary to his earlier deposition testimony and Acushnet's RFA responses. (D.I. 619 at 26-27.) Dr. Kerr's insistence that Acushnet sold its high-acid alternative made it appear far more commercially viable. Callaway Golf had to refute this misimpression by showing that Acushnet, despite knowing of the patents-in-suit and having no non-infringement defense, never adopted the supposedly equivalent high-acid alternative that cost less to manufacture than the existing Pro V1. Callaway Golf did not put Acushnet's "state of mind" at issue or imply willful infringement. It simply sought to use common-sense to refute Acushnet's insistence that a high-acid alternative was acceptable and easily implemented: if it were, Acushnet would not have risked significant damages to avoid adopting it.

Putting that aside, any prejudice to Acushnet from the questioning could have been cured by permitting Dr. Kerr or Mr. Nauman to reiterate the prior testimony that Acushnet had an internal belief the Sullivan patents were invalid, as Callaway Golf's opening brief explained. (D.I. 619 at 22.) Acushnet never responds to this argument. (D.I. 624 at 2 1-22) And, contrary to Acushnet' s claim, (id. at 21), it was Acushnet that initially introduced testimony about its internal belief regarding invalidity. (Tr. at 330:17-331:2, 427:5-12.) Callaway Golf was only seeking to confirm that testimony as a foundation for subsequent questioning of Dr. Kerr.

By contrast, Callaway Golf suffered enormous prejudice from the incomplete picture of the opinions that Mr. Nauman presented the jury—one in which the opinion writer was an unbiased individual who conducted an independent validity analysis. Acushnet portrays the fact that the substance of the opinions was not discussed as a benefit to Callaway Golf. (D.I. 624 at 22 & n.10.) But it was in fact a severe disadvantage because it left no way to challenge Acushnet's improper bolstering of its invalidity case. The exclusion of the Hebert patents exacerbated the prejudice to Callaway Golf because their specification includes statements that contradict the opinions. The patents also show Acushnet patented the very concept its opinions said was unpatentable, in view of the very art relied upon in those opinions. Acushnet dismisses this argument, claiming that the Hebert patent claims do not cover the accused ProVi golf balls, (D.I. 624 at 23 n.1 1). This is a non sequitur. And, in any event, the '324 patent claims do in fact cover the infringing ProVis, and Acushnet itself linked the '172 patent to the ProVi, as detailed above. That Acushnet did not take further advantage of the opinion testimony by discussing it during closing (id. at 23), did not undo the damage already done. And Mr. Nauman's testimony that there was no non-infringement opinion did not cure the problem because it left the opinion's assertion of invalidity—the very question the jury was to decide—unchallenged.

2.    Acushnet's Introduction of Previously Undisclosed Evidence that It Sold High Acid ProV1s Was Improper.

Acushnet's previously undisclosed revelation that it sold a high-acid ProVi was prejudicial to Callaway Golf's validity case. It implied that consumers who bought the high-acid ProVi noticed no difference between it and the infringing ProVi, suggesting there was no nexus between the infringing ProVi 's performance and the patents-in-suit. Had Acushnet disclosed these alleged sales during discovery, Callaway Golf could have taken discovery from Acushnet or the alleged customers to evaluate this assertion. But Acushnet did not disclose them, so Callaway Golf could not vet these issues during discovery, just like the issues related to the new high-acid ProV1s the Court formally excluded. (D.I. 595 at 13 n.14.) Acushnet's litigation by ambush should not be rewarded.

Acushnet stresses that it disclosed "evidence related to the high-acid alternative" during discovery. (D.I. 624 at 27-28.) But this is unresponsive to Callaway Golf's point that Acushnet did not disclose the alleged sale of the alternative. It was the alleged sale that Callaway Golf needed to vet. Acushnet blames Callaway Golf for not asking Mr. Dalton during his supplemental deposition whether the high-acid alternative was sold. (D.I. 624 at 28 n.12.) But Callaway Golf was relying on Acushnet's Request for Admission responses and Dr. Kerr's deposition testimony that a high-acid product had not been sold. (D.I. 619 at 26-27.) Acushnet explains away those responses by claiming the vast majority of ProV1s, "save the few thousand test units Dalton made in 2001-02," use low acid inner covers. (D.I. 624 at 28-29.) But those "few thousand" are what proved to be crucial at trial. The Requests define "Pro V1" to include "any and all golf balls manufactured by [Acushnet] bearing side stamps" with the Pro V1 mark. (Halkowski Decl., Ex. E.) If Acushnet believed that all but a few ProV1s were low acid, it was required to deny the request. "All" does not mean "all but a few thousand."

Recognizing it has no argument on the merits, Acushnet argues waiver. (D.I. 624 at 29.) That is ironic because Acushnet's ability to overcome its initial silence about the inconsistent verdict is what enabled it to inject this previously undisclosed testimony. That aside, the Court has broad discretion to rectify discovery abuses under Rule 37, including by granting a new trial, and Callaway Golf respectfully requests it do so here. Mar Corn v. F/VHickory Wind, 120 Fed. Appx. 74 (9th Cir. 2005); Jinks-Urnstead v. Winter, 279 Fed. Appx. 2 (D.C. Cir. 2008).

3.    The Nesbitt and Proudfit Testimony Demonstrated that Those Skilled in the Art Did Not Think the Asserted Claims Were Invalid.

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4.    Mr. Mickelson's Testimony Was Critical to Non-Obviousness.

Mr. Mickelson's testimony was relevant to objective criteria of non-obviousness. As Callaway Golf's opening brief explained, it (1) shows a nexus between the Pro V1's commercial success and the Sullivan technology, the use of which was common to the Pro V1 and the Rule 35 ball, (2) demonstrates both balls were vastly superior to Acushnet's prior products, and (3) illustrates Acushnet's initial skepticism about the merits of the Sullivan technology as compared to its prior wound balls. (D.I. 619 at 28-30.) The testimony was also necessary to balance Acushnet's repeated efforts to denigrate the Sullivan technology and attribute the Pro V1's performance instead of its "patented" Wu polyurethane and other technology. (Id. at 30.) And it was unavailable from any other witness because Acushnet insisted Callaway Golf depose Mr. Mickelson, rather than its CEO, (D.I. 184 at 8 & n.5), a point of fairness that Acushnet ignores.

Acushnet never addresses any of Callaway Golf's arguments about why the Mickelson testimony was relevant, and it even admits it had at least "limited probative value." (D.I. 624 at 32.) Instead, Acushnet claims that Callaway Golf never tried to admit the testimony for obviousness purposes at this trial and wanted to use it only for damages. (Id. at 30-31.) Not so. Callaway Golf sought to introduce the testimony for non-obviousness, then added that it was even more relevant in this trial than the last because it also related to damages. (Halkowski Decl., Ex. G at 33:20-34:2 (arguing that the reasons Mr. Mickelson's testimony was relevant to damages "in addition to what was already there from the last trial" outweigh any risk of unfair prejudice); D.I. 605 at 4.) Indeed, Acushnet crops a quote from Callaway Golf's motion, which stated that Mr. Mickelson's testimony was still relevant to non-obviousness in this trial:
 

During the first trial Mr. Mickelson was only being offered to address secondary considerations of non-obviousness - specifically the commercial success of the patented invention, the long-felt need in the golf industry, and praise of the invention by others. While Mr. Mickelson's testimony is still relevant to these secondary considerations of non-obviousness, the presence of damages adds a number of additional issues. . . .

(D.I. 605 at 4; c~~ D.I. 624 at 30-31 (Acushnet brief omitting first sentence).)

Acushnet next argues, in a similar vein, that Callaway Golf agreed to the exclusion of Mr. Mickelson's testimony if Acushnet did not argue the wound ball was an acceptable non-infringing alternative. (Tr. at 1374:2-9.) But that colloquy involved the admission of Mr. Mickelson's testimony for damages and did not deal with Callaway Golf's previous broader request to use it to show non-obviousness. Callaway Golf never proposed giving up the right to use any of his testimony for validity. Indeed, Acushnet was still arguing that its prior wound, polyurethane-covered Titleist Professional helped rendered the claims obvious, so Mr. Mickelson's testimony was needed to rebut that point. In any event, Acushnet never entered the formal stipulation concerning the damages issue that was discussed during trial, and it relied on the wound ball as an allegedly acceptable non-infringing alternative.

Finally, Acushnet downplays its reliance on Tiger Woods and Greg Norman because it never sought to present testimony directly from them. (D.I. 624 at 32; D.I. 619 at 3 1-32 (citing examples).) But Acushnet fails to explain why there was no risk of prejudice from "star power" when its witnesses described these golfers' preferences and achievements but there is allegedly a risk if one of Callaway Golf's lawyers were to read another golfer's deposition testimony into the record. That is because there is little, if any, difference—certainly not enough to tip the Rule 403 analysis in favor of exclusion. Finally, the trial testimony discussing Mr. Mickelson did not cure the prejudice because it did not discuss, among other things, (1) Mr. Mickelson's personal conversation with Bill Young, in which Young thanked him for causing Acushnet to bring the ProV1 to market, (2) his testimony that Acushnet's prior polyurethane-covered wound ball products hindered his performance, or (3) his threat not to re-sign with Acushnet if it did not release a ball that could match the Rule 35. (C~. D.I. 619 at 29 (describing Mr. Mickelson's proffered testimony); and D.I. 624 at 32 (citing trial testimony).) Thus, Mr. Mickelson's testimony was highly probative and not substantially outweighed by the risk of unfair prejudice.

5.    Acushnet's Grandstanding Warranted an Instruction on the Presumption of Validity.

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.