TaylorMade Responds to Callaway’s Texas and California Lawsuits

As you may recall from a prior post, in early August Callaway filed two patent infringement lawsuits against TaylorMade. Callaway filed one patent infringement complaint in the “rocket docket” Eastern District of Texas alleging that TaylorMade has willfully infringed USPN 5704849 titled “Golf Club Head with Audible Vibration Attenuation.” While Callaway filed the second patent infringement suit in the Southern District of California alleging that TaylorMade has willfully infringed a couple of Callaway’s golf ball patents (USPN’s 6638185 and 7160207), and also alleging that four of TaylorMade’s patents (USPN’s 6547678, 6991558, 7197575, and 6719644) are invalid.

On Tuesday TaylorMade filed their responses in the two cases (reproduced below for your reading enjoyment).

It should be no surprise that TaylorMade responded with counterclaims alleging that Callaway has indeed infringed USPN’s 6547678, 6719644, 6991558, and 7197575, and alleging the unenforceability, invalidity, and/or noninfringement of Callaway’s USPN’s  5704849, 6638185, and 7160207.

OK, we already knew that all those patents would be at issue, but TaylorMade took an additional stab at Callaway and has alleged unenforceability, invalidity, and noninfringement of two additional Callaway patents; namely USPNs 5409229 and 5605511 both titled “Golf Club Head with Audible Vibration Attenuation.”  

Looks like this may turn into a huge battle.

 

PS – Learn more about other Callaway patent infringement lawsuits here, and here.

PPS – The following is the body of the TaylorMade’s responses. Please bear in mind that an automated program was used to convert a PDF into editable text, so there may be errors.

 

 

 

In response to the COMPLAINT FOR PATENT INFRINGEMENT AND DECLARATORY JUDGMENT dated August 3, 2007 (“Complaint”), filed by Plaintiff Callaway Golf Company (“Callaway”), Defendant Taylor Made Golf Company, Inc. (“Taylor Made”) admits, denies, and avers as follows:

Parties
 
1. Taylor Made admits the averments of paragraph 1 of the Complaint.
2. Taylor Made admits the averments of paragraph 2 of the Complaint.

Jurisdiction And Venue

3. In response to paragraph 3 of the Complaint, Taylor Made admits that the Complaint purports to state a civil action for patent infringement arising under the laws of the United States relating to patents, 35 U.S.C. § 101 et seq. and under the Declaratory Judgment Act 28 U.S.C. § 2201 et seq., over which the Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338, 2201 and 2202, but denies that Taylor Made has any liability for alleged patent infringement or that Callaway is entitled to any declaratory relief as averred.
4. Taylor Made admits the averments of paragraph 4 of the Complaint.
5. Taylor Made admits the averments of paragraph 5 of the Complaint.
6. In response to paragraph 6 of the Complaint, Taylor Made admits that U.S. Patent No. 6,638,185 (“the ‘185 patent”) is entitled MULTI-LAYER GOLF BALL, admits that the ‘185 patent was issued by the United States Patent and Trademark Office on October 28, 2003, and admits that a copy of the ‘185 patent is attached as Exhibit A to the Complaint, but denies that the ‘185 patent was duly and legally issued.
7. In response to paragraph 7 of the Complaint, Taylor Made admits that U.S. Patent No. 7,160,207 (“the ‘207 patent”) is entitled MULTI-LAYER GOLF BALL, admits that the ‘207 patent was issued by the United States Patent and Trademark Office on January 9, 2007, and admits that a copy of the ‘207 patent is attached as Exhibit B to the Complaint, but denies that the ‘207 patent was duly and legally issued.
8. In response to paragraph 8 of the Complaint, Taylor Made admits that it is engaged in the business of manufacturing, using, importing, offering for sale, and selling golf balls, some of which activities occur in this judicial district, but denies the remaining averments of paragraph 8.
9. Taylor Made admits the averments of paragraph 9 of the Complaint.
10. Taylor Made admits the averments of paragraph 10 of the Complaint.
11. Taylor Made admits the averments of paragraph 11 of the Complaint.
12. Taylor Made admits the averments of paragraph 12 of the Complaint.
13. In response to paragraph 13 of the Complaint, Taylor Made admits that it has charged Callaway with infringement of the ‘678, ‘558, ‘575, and ‘644 patents, but denies the remaining averments of paragraph 13.
14. Taylor Made admits the averments of paragraph 14 of the Complaint.
15. Taylor Made admits the averments of paragraph 15 of the Complaint.

Count I (Infringement of the ‘185 and ‘207 Patents)

16. In response to paragraph 16 of the Complaint, Taylor Made incorporates by reference the responses contained in paragraphs 1-15 above as though fully set forth herein.
17. Taylor Made is without knowledge or information sufficient to form a belief as to the truth of the averments in paragraph 17 of the Complaint and, therefore, denies such averments.
18.  Taylor Made is without knowledge or information sufficient to form a belief as to the truth of the averments in paragraph 18 of the Complaint and, therefore, denies such averments.
19. Taylor Made is without knowledge or information sufficient to form a belief as to the truth of the averments in paragraph 19 of the Complaint and, therefore, denies such averments.
20. Taylor Made admits the averments of paragraph 20 of the Complaint.  
21. Taylor Made denies the averments of paragraph 21 of the Complaint.  
22. Taylor Made denies the averments of paragraph 22 of the Complaint.  
23. Taylor Made admits the averments of paragraph 23 of the Complaint.  
24. Taylor Made denies the averments of paragraph 24 of the Complaint.
25. Taylor Made denies the averments of paragraph 25 of the Complaint.
26. Taylor Made denies the averments of paragraph 26 of the Complaint.  

Count II (Declaratory Judgment that Callaway Golf has a License to Practice One or More Claims of the ‘575 and/or ‘558 Patents)

27. In response to paragraph 27 of the Complaint, Taylor Made incorporates by reference the responses contained in paragraphs 1-26 above as though fully set forth herein.
28. In response to paragraph 28 of the Complaint, Taylor Made admits that Callaway and Taylor Made entered into a license agreement in or around January 2005. Except as so admitted, Taylor Made denies the averments of paragraph 28 of the Complaint.
29. In response to paragraph 29 of the Complaint, Taylor Made admits that the Complaint includes a claim for declaratory judgment that Callaway has a license to practice one or more claims of the ‘575 and/or ‘558 patents, but denies that Callaway has any such license rights to, or is entitled to a covenant not to be sued for infringement of, any claims the ‘575 and/or ‘558 patents.
30. In response to paragraph 30 of the Complaint, Taylor Made admits that there is an actual controversy between Callaway and Taylor Made as to infringement and validity of certain claims of the ‘558 and/or ‘575 patents, but denies the remaining averments of paragraph 30 and specifically denies that Callaway is entitled to any relief as averred.
31.  Taylor Made denies the averments of paragraph 31 of the Complaint.

Count III (Declaratory Judgment that Callaway Golf has an Implied License to Practice One or More Claims of the ‘558 and/or ‘575 Patents)

32. In response to paragraph 32 of the Complaint, Taylor Made incorporates by reference the responses contained in paragraphs 1-31 above as though fully set forth herein.
33. In response to paragraph 33 of the Complaint, Taylor Made admits that Callaway and Taylor Made entered into a License Agreement in or around January 2005, but denies the remaining averments of paragraph 33.
34. In response to paragraph 34 of the Complaint, Taylor Made admits that the Complaint includes a claim for declaratory judgment that Callaway has an implied license to practice one or more claims of the ‘575 and/or ‘558 patents, but denies that Callaway has any such license rights to, or is entitled to a covenant not to be sued for infringement of, any claims of the ‘575 and/or ‘558 patents.
35. In response to paragraph 35 of the Complaint, Taylor Made admits that there is an actual controversy between Callaway and Taylor Made as to infringement and validity of certain claims of the ‘558 and/or ‘575 patents, but denies the remaining averments of paragraph 35 and specifically denies that Callaway is entitled to any relief as averred.
36.  Taylor Made denies the averments of paragraph 36 of the Complaint.

Count IV (Declaratory Judgment of Estoppel)

37. In response to paragraph 37 of the Complaint, Taylor Made incorporates by reference the responses contained in paragraphs 1-36 above as though fully set forth herein.
38. In response to paragraph 38 of the Complaint, Taylor Made admits that Callaway and Taylor Made entered into a license agreement in or around January 2005, but denies the remaining averments of paragraph 38.
39. Taylor Made denies the averments of paragraph 39 of the Complaint.
40. In response to paragraph 40 of the Complaint, Taylor Made admits that the Complaint includes a claim for declaratory judgment that that Taylor Made is estopped from enforcing one or more claims of the ‘575 and/or ‘558 patents, but denies that Callaway is entitled to any such relief as to any claims of the ‘575 and/or ‘558 patents.
41. In response to paragraph 41 of the Complaint, Taylor Made admits that there is an actual controversy between Callaway and Taylor Made as to infringement and validity of certain claims of the ‘558 and/or ‘575 patents, but denies the remaining averments of paragraph 41 and specifically denies that Callaway is entitled to any relief as averred.
42. Taylor Made denies the averments of paragraph 42 of the Complaint.

Count V (Declaratory Judgment of Non-infringement of any Valid Claim of the ‘678, ‘558, ‘575, and ‘644 Patents)

43. In response to paragraph 43 of the Complaint, Taylor Made incorporates by reference the responses contained in paragraphs 1-42 above as though fully set forth herein.
44. In response to paragraph 44 of the Complaint, Taylor Made admits that Callaway has asserted a claim for declaratory judgment of non-infringement of any valid claim of the ‘678, ‘558, ‘575, and ‘644 patents, but denies that there is an actual controversy between Callaway and Taylor Made as to each and every claim of these patents and specifically denies that Callaway is entitled to any relief as averred.
45. In response to paragraph 45 of the Complaint, Taylor Made admits that there is an actual controversy between Callaway and Taylor Made as to infringement of certain claims of the ‘678, ‘558, ‘575 and ‘644 patents, but denies the remaining averments of paragraph 45 and specifically denies that Callaway is entitled to any relief as averred.
46. Taylor Made denies the averments of paragraph 46 of the Complaint.
47.  Taylor Made denies the averments of paragraph 47 of the Complaint.

Count VI (Declaratory Judgment of Invalidity of the ‘678, ‘558,’575, and ‘644 Patents)

48. In response to paragraph 48 of the Complaint, Taylor Made incorporates by reference the responses contained in paragraphs 1-47 above as though fully set forth herein.
49. In response to paragraph 49 of the Complaint, Taylor Made admits that Callaway has asserted a claim for declaratory judgment of invalidity of the ‘678, ‘558, ‘575, and ‘644 patents, but denies that there is an actual controversy between Callaway and Taylor Made as to each and every claim of these patents and specifically denies that Callaway is entitled to any relief as averred.
50. In response to paragraph 50 of the Complaint, Taylor Made admits that there is an actual controversy between Callaway and Taylor Made as to the validity of certain claims of the ‘678, ‘558, ‘575 and ‘644 patents, but denies the remaining averments of paragraph 45 and specifically denies that Callaway is entitled to any relief as averred.
51. Taylor Made denies the averments of paragraph 51 of the Complaint.
52.  Taylor Made denies the averments of paragraph 52 of the Complaint.
 
Prayer For Relief

53. Taylor Made denies that Callaway is entitled to judgment or to any of the relief requested in paragraphs ”A” through “Q” of the prayer for relief in the Complaint.

AFFIRMATIVE DEFENSES

First Affirmative Defense

54. Taylor Made has not infringed any valid claim of the ‘185 and/or ‘207 patents, either literally or under the doctrine of equivalents, has not induced infringement of any valid claim of the ‘185 and/or ‘207 patents, and has not committed acts constituting contributory infringement of any valid claim of the ‘185 and/or ‘207 patents.

Second Affirmative Defense

55. Each and every claim of the ‘185 and/or ‘207 patents averred by Callaway as infringed is invalid and/or unenforceable under one or more provisions of the Patent Laws of the United States, including, without limitation, 35 U.S.C. §§ 102, 103, and 112.

Counter-Claimant Taylor Made, for its counterclaims against Counter-Defendant Callaway, avers as follows:

The Parties

56. Taylor Made Golf Company, Inc. (“Taylor Made”) is a corporation organized under the laws of Delaware, with a place of business in Carlsbad, California.
57. Callaway Golf Company (“Callaway”) is a corporation organized under the laws of Delaware, with a place of business in Carlsbad, California, and is doing business in this judicial district.

Jurisdiction

58. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a), and 2201.
59. Callaway is subject to personal jurisdiction in this judicial district.
60. Venue for this action is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and 1400 because Callaway filed this action in this judicial district and/or because Callaway resides in this judicial district. Also, the Fourth, Fifth, Sixth, and Seventh Counterclaims involve issues arising under a License Agreement entered into between Taylor Made and Callaway in or around January 2005. The License Agreement has a forum selection clause, providing that any court proceeding relating to any such controversy shall be commenced and decided only in the state or federal courts located in San Diego County, California.

General Averments

61. Taylor Made has led the golf industry’s technological revolution since it was founded in 1979.
62. For over 25 years, Taylor Made has created superior golf equipment. Taylor Made introduced and popularized the world’s most revolutionary golf club, the metalwood. Since its start, Taylor Made has linked product innovation with tour validation, making the best performing driver for the world’s greatest players, making TaylorMade® the #1 driver and #1 metalwood brand on the PGA Tour. That history of innovation has led to several breakthroughs in golf club design, many of which have resulted in the award of U.S. and foreign patents. Such innovation and tour validation has led to tremendous consumer acceptance, making TaylorMade® drivers the best-selling metalwoods in the U.S.
63. Taylor Made continued its golf industry leadership and innovation by developing revolutionary golf balls, beginning research and development in the early 1990s. It accelerated those efforts when it acquired the Maxfli® brand, a brand with a deep history of technological development, as well as a decades-old tradition of winning at the professional level. In doing so, Taylor Made acquired Maxfli technology and a significant patent portfolio, which has since led to further technological breakthroughs. Such innovative designs have resulted in significant use of TaylorMade® TP REDTM and TP BLACKTM balls on the world’s professional tours.
64. On April 15, 2003, U.S. Patent No. 6,547,678 (“the ‘678 patent”), on an invention entitled GOLF BALL DIMPLE STRUCTURES WITH VORTEX GENERATORS, was duly and legally issued by the United States Patent and Trademark Office. A true and correct copy of the ‘678 patent is attached hereto as Exhibit A.
65. On April 13, 2004, U.S. Patent No. 6,719,644 (“the ‘644 patent”), on an invention entitled GOLF CLUB HEAD AND FACE, was duly and legally issued by the United States Patent and Trademark Office. A true and correct copy of the ‘644 patent is attached hereto as Exhibit B.
66. On January 31, 2006, U.S. Patent No. 6,991,558 (“the ‘558 patent”), on an invention entitled GOLF CLUB HEAD, was duly and legally issued by the United States Patent and Trademark Office. A true and correct copy of the ‘558 patent is attached hereto as Exhibit C.
67. On April 3, 2007, U.S. Patent No. 7,198,575 (“the ‘575 patent”), on an invention entitled GOLF CLUB HEAD, was duly and legally issued by the United States Patent and Trademark Office. A true and correct copy of the ‘575 patent is attached hereto as Exhibit D.
68. Taylor Made is the owner by assignment of all right, title and interest in and to each of the ‘678, ‘644, ‘558, and ‘575 patents, including the right to sue for past infringements thereof.
69. Callaway manufactures and sells golf equipment, including golf clubs and golf balls, in direct competition with Taylor Made. Certain Callaway golf clubs and golf balls are covered, literally or under the doctrine of equivalents, by one or more claims of the ‘678, ‘644, ‘558 and/or ‘575 patents.
70. Callaway has been on notice of each of the ‘678, ‘644, ‘558 and ‘575 patents.
71. Callaway asserts that it is the owner by assignment of U.S. Patent No. 5,409,229 (“the ‘229 patent”), entitled GOLF CLUB HEAD WITH AUDIBLE VIBRATION ATTENUATION, which issued on April 25, 1995. A true and correct copy of the ‘229 patent is attached hereto as Exhibit E.
72. Callaway asserts that it is the owner by assignment of U.S. Patent No. 5,605,511 (“the ‘511 patent”), entitled GOLF CLUB HEAD WITH AUDIBLE VIBRATION ATTENUATION, which issued on February 25, 1997. A true and correct copy of the ‘511 patent is attached hereto as Exhibit F.
73. Callaway asserts that it is the owner by assignment of U.S. Patent No. 5,704,849 (“the ‘849 patent”), entitled GOLF CLUB HEAD WITH AUDIBLE VIBRATION ATTENUATION, which issued on January 6, 1998. A true and correct copy of the ‘849 patent is attached hereto as Exhibit G.
74. The ‘229, ‘511, and ‘849 patents are all members of the same patent family, in that they all derive from a common application, Serial No. 07/921,857, filed August 5, 1992. The specifications of the ‘229, ‘511, and ‘849 patents are virtually identical to one another and describe the same subject matter as the alleged invention. As such, the ‘229, ‘511, and ‘849 patents have similar claims to substantially the same alleged invention.
75. In or around January 2005, Taylor Made and Callaway entered into a License Agreement, pursuant to which the parties agreed that no current Taylor Made product was covered by any claims of the ‘229, ‘511, or ‘849 patents.
76. In reliance, Taylor Made based its design of certain products that it has introduced since entering into the License Agreement, in part, on the design of the Taylor Made products that Callaway agreed in the License Agreement did not infringe the ‘229, ‘511, or ‘849 patents.
77.  Callaway has alleged that Taylor Made is infringing the ‘849 patent, and Callaway has filed a lawsuit against Taylor Made identified as Case No. 2:07-cv-329 in the U.S. District Court for the Eastern District of Texas alleging infringement of the ‘849 patent.
78. Upon information and belief, the Taylor Made products that Callaway is now accusing of infringing the ‘849 patent include products that Taylor Made designed based, in part, on products that Callaway agreed in the License Agreement did not infringe the ‘229, ‘511, or ‘849 patents.
79. Callaway’ s allegations of infringement of the ‘849 patent against Taylor Made necessarily implicate alleged infringement of one or more claims of the ‘229 and ‘511 patents, given the relatedness of the ‘229, ‘511, and ‘849 patents and the fact that those patents have similar claims directed to substantially the same alleged invention.
80. Taylor Made denies that its activities and products have resulted in infringement of any valid claim of the ‘229, ‘511, or ‘849 patents.
81. As a result of Callaway’ s allegations of infringement of the ‘849 patent, the relatedness of the ‘229, ‘511, and ‘849 patents and the similarity of their claims, and Taylor Made’s reliance on the License Agreement, an actual and justiciable controversy exists concerning Taylor Made’s rights with regard to the products that Callaway accuses of infringing the ‘229, ‘511, and ‘849 patents.
82. Callaway asserts that it is the owner by assignment of U.S. Patent No. 6,638,185 (“the ‘185 patent”), entitled MULTI-LAYER GOLF BALL, which issued on October 28, 2003. A true and correct copy of the ‘185 patent is attached hereto as Exhibit H.
83. Callaway asserts that it is the owner by assignment of U.S. Patent No. 7,160,207 (“the ‘207 patent”), entitled MULTI-LAYER GOLF BALL, which issued on January 9, 2007. A true and correct copy of the ‘207 patent is attached hereto as Exhibit I.
84. Callaway has alleged that certain Taylor Made products including golf balls infringe the ‘185 and ‘207 patents, and Callaway has filed the Complaint alleging infringement of both patents.
85. Taylor Made denies that its activities and products have resulted in infringement of any valid claim of the ‘185 or ‘207 patents.
86. As a result of Callaway’s allegations of infringement of the ‘185 and ‘207 patents, an actual and justiciable controversy exists concerning Taylor Made’s rights with regard to the products that Callaway accuses of infringing the ‘185 and ‘207 patents.

First Counterclaim for Infringement of U.S. Patent No. 6,547,678

87. Taylor Made incorporates by reference the averments contained in paragraphs 56-64 and 68-70 above as though fully set forth herein.
88.  Upon information and belief, Callaway within the last six years past has infringed, and continues to infringe, one or more claims of the ‘678 patent by importing into this country, and/or by making, importing, using, offering for sale, and selling in this country, and by inducing others in this country to make, use, offer for sale, and sell, without authorization, products including golf balls covered by the ‘678 patent.
89. By reason of Callaway’ s infringement, Taylor Made has suffered and is suffering damages, including impairment of the value of the ‘678 patent, in an amount yet to be determined.
90. Callaway’ s acts of infringement are causing irreparable harm to Taylor Made and will continue to cause irreparable harm unless enjoined by this Court.
91. Callaway’ s acts of infringement have been committed with knowledge of Taylor Made’s patent rights and, upon information and belief, Callaway’s infringement has been willful.

Second Counterclaim for Infringement of U.S. Patent No. 6,719,644
 
92. Taylor Made incorporates by reference the averments contained in paragraphs 56-63, 65, and 68-70 above as though fully set forth herein.
93. Upon information and belief, Callaway within the last six years past has infringed, and continues to infringe, one or more claims of the ‘644 patent by importing into this country, and/or by making, importing, using, offering for sale, and selling in this country, and by inducing others in this country to make, use, offer for sale, and sell, without authorization, products including golf club heads covered by the ‘644 patent.
94. By reason of Callaway’ s infringement, Taylor Made has suffered and is suffering damages, including impairment of the value of the ‘644 patent, in an amount yet to be determined.
95. Callaway’ s acts of infringement are causing irreparable harm to Taylor Made and will continue to cause irreparable harm unless enjoined by this Court.
96. Callaway’ s acts of infringement have been committed with knowledge of Taylor Made’s patent rights and,
upon information and belief, Callaway’s infringement has been willful.

Third Counterclaim for Infringement of Published U.S. Application No. 2003-0032498A1

97. Taylor Made incorporates by reference the averments contained in paragraphs 56-63, 65, 68-70, and 93-96 above as though fully set forth herein.
98. The application for the ‘644 patent, U.S. Application No. 10/167,764, was published on February 13, 2003, as U.S. Publication No. 2003- 0032498A1. The ‘644 patent includes claims which are substantially identical to claims published in U.S. Publication No. 2003-0032498A1.
99. Following its publication, Taylor Made provided Callaway with actual notice of U.S. Publication No. 2003-0032498A1.
100. Upon information and belief, Callaway thereafter imported into this country, and/or made, used, offered for sale, and sold in this country, without authorization, golf clubs that are covered by the invention(s) as claimed in U.S. Publication No. 2003-0032498A1, which is substantially identical to the invention(s) as claimed in the ‘644 patent.
101. By reason of Callaway’s infringement of U.S. Publication No. 2003-0032498A1, Taylor Made has a right to obtain a reasonable royalty, in an amount yet to be determined.

Fourth Counterclaim for Infringement of U.S. Patent No. 6,991,558

102. Taylor Made incorporates by reference the averments contained in paragraphs 56-63, 66, and 68-70 above as though fully set forth herein.
103. Upon information and belief, Callaway within the last six years past has infringed, and continues to infringe, one or more claims of the ‘558 patent by importing into this country, and/or by making, importing, using, offering for sale, and selling in this country, and by inducing others in this country to make, use, offer for sale, and sell, without authorization, products including golf club heads covered by the ‘558 patent.
104. By reason of Callaway’ s infringement, Taylor Made has suffered and is suffering damages, including impairment of the value of the ‘558 patent, in an amount yet to be determined.
105. Callaway’ s acts of infringement are causing irreparable harm to Taylor Made and will continue to cause irreparable harm unless enjoined by this Court.
106. Callaway’ s acts of infringement have been committed with knowledge of Taylor Made’s patent rights and, upon information and belief, Callaway’s infringement has been willful.
 
Fifth Counterclaim for Infringement of U.S. Patent No. 7,198,575
 
107. Taylor Made incorporates by reference the averments contained in paragraphs 56-63 and 67-70 above as though fully set forth herein.
108. Upon information and belief, Callaway within the last six years past has infringed, and continues to infringe, one or more claims of the ‘575 patent by importing into this country, and/or by making, importing, using, offering for sale, and selling in this country, and by inducing others in this country to make, use, offer for sale, and sell, without authorization, products including golf club heads covered by the ‘575 patent.
109. By reason of Callaway’ s infringement, Taylor Made has suffered and is suffering damages, including impairment of the value of the ‘575 patent, in an amount yet to be determined.
110. Callaway’ s acts of infringement are causing irreparable harm to Taylor Made and will continue to cause irreparable harm unless enjoined by this Court.
111. Callaway’ s acts of infringement have been committed with knowledge of Taylor Made’s patent rights and, upon information and belief, Callaway’s infringement has been willful.

Sixth Counterclaim for Infringement of Published U.S. Application No. 2006-0035722A1
 
112. Taylor Made incorporates by reference the averments contained in paragraphs 56-63, 67-70, and 108-111 above as though fully set forth herein. -21-
113. The application for the ‘575 patent, U.S. Application No. 11/214,559, was published on February 16, 2006, as U.S. Publication No. 2006- 0035722A1. The ‘575 patent includes claims which are substantially identical to claims published in U.S. Publication No. 2006-0035722A1.
114. Following its publication, Taylor Made provided Callaway with actual notice of U.S. Publication No. 2006-0035722A1.
115. Upon information and belief, Callaway thereafter imported into this country, and/or made, used, offered for sale, and sold in this country, without authorization, golf clubs that are covered by the invention(s) as claimed in U.S. Publication No. 2006-0035722A1, which is substantially identical to the invention(s) as claimed in the ‘575 patent.
116. By reason of Callaway’s infringement of U.S. Publication No. 2006-0035722A1, Taylor Made has a right to obtain a reasonable royalty, in an amount yet to be determined.

Seventh Counterclaim for Declaration of Unenforceabiity of U.S. Patent Nos. 5409229, 5605511, and 5704849

117. Taylor Made incorporates by reference the averments contained in paragraphs 56-60 and 71-8 1 above as though fully set forth herein.
118. This counterclaim asserts an action for declaratory judgment that Callaway is estopped from enforcing any claims of the ‘229, ‘511, and ‘849 patents.
119.  Due to its reliance on the January 2005 License Agreement, pursuant to which Callaway agreed that no current Taylor Made product was covered by any claims of the ‘229, ‘511, or ‘849 patents, Taylor Made will be materially prejudiced if Callaway is allowed to assert that Taylor Made has infringed, and is infringing, the ‘229, ‘511 and/or ‘849 patents.
120. A judicial declaration that Taylor Made’s activities and products have not resulted in infringement of any valid claim of the ‘229, ‘511 or ‘849 patents is necessary and appropriate so that Taylor Made can ascertain its rights and duties with respect to designing, developing, manufacturing, importing, using, selling, and offering to sell its products.

Eighth Counterclaim for Declaration of Invalidity and NonInfringement of U.S. Patent Nos. 5409229, 5605511, and 5704849

121. Taylor Made incorporates by reference the averments contained in paragraphs 56-60 and 71-81 above as though fully set forth herein.
122. This counterclaim asserts an action for declaratory judgment of invalidity and non-infringement by Taylor Made of the ‘229, ‘511, and ‘849 patents.
123. Upon information and belief, each and every claim of the ‘849 patent asserted by Callaway to be infringed, and each and every claim of the ‘229 and ‘511 patents implicated by Callaway’ s infringement allegations under the ‘849 patent, are invalid under one or more provisions of the Patent Laws, including, without limitation, 35 U.S.C. §§ 101, 102, 103 and 112.
124.  Taylor Made’s activities and products have not and do not constitute direct, induced or contributory infringement of any valid claims of the ‘229, ‘511 or ‘849 patents.
125. A judicial declaration that Taylor Made’s activities and products have not resulted in infringement of any valid claim of the ‘229, ‘511 or ‘849 patents is necessary and appropriate so that Taylor Made can ascertain its rights and duties with respect to designing, developing, manufacturing, importing, using, selling, and offering to sell its products.

Ninth Counterclaim for Declaration of Invalidity and NonInfringement of U.S. Patent Nos. 6638185 and 7160207

126. Taylor Made incorporates by reference the averments contained in paragraphs 56-60 and 82-86 above as though fully set forth herein.
127. This counterclaim asserts an action for declaratory judgment of invalidity and non-infringement by Taylor Made of the ‘185 and ‘207 patents.
128. Upon information and belief, each and every claim of the ‘185 and ‘207 patents asserted by Callaway to be infringed, is invalid under one or more provisions of the Patent Laws, including, without limitation, 35 U.S.C. §§ 101, 102, 103 and 112.
129. Taylor Made’s activities and products have not and do not constitute direct, induced or contributory infringement of any valid claims of the ‘185 or ‘207 patents.
130. A judicial declaration that Taylor Made’s activities and products have not resulted in infringement of any valid claim of the ‘185 or ‘207 patents is necessary and appropriate so that Taylor Made can ascertain its rights and duties with respect to designing, developing, manufacturing, importing, using, selling, and offering to sell its products.

Prayer For Relief

WHEREFORE, Taylor Made prays for the following:

A. Judgment that Callaway has infringed U.S. Patent Nos. 6,547,678, 6,719,644, 6,991,558, and 7,198,575;
B. Judgment that Callaway has induced infringement and/or contributorily infringed U.S. Patent Nos. 6,547,678, 6,719,644, 6,991,558, and 7,198,575;
C. Judgment that Callaway has willfully infringed U.S. Patent Nos. 6547678, 6719644, 6991558, and 7198575;
D. An award of damages for infringement of U.S. Patent Nos. 6,547,678, 6,719,644, 6,991,558, and 7,198,575 in an amount to be determined at trial that is adequate to compensate Taylor Made for Callaway’s infringement, but no less than a reasonable royalty, with interest, including prejudgment interest, and trebling of such damages due to Callaway’s willful and deliberate infringement;
E. Judgment that all infringing material be impounded or destroyed;
F. An injunction permanently enjoining and restraining Callaway and its officers, agents, subsidiaries, partners, servants, employees, and attorneys, and those persons in active concert or participation with them, from further infringement of U.S. Patent Nos. 6,547,678, 6,719,644, 6,991,558, and 7,198,575;
G. Judgment that Callaway has infringed U.S. Application Nos. 2003-0032498A1 and 2006-0035722A1;
H. An award of a reasonable royalty for Callaway’s infringement of U.S. Application Nos. 2003-0032498A1 and 2006-0035722A1;
I. Dismissal of Callaway’ s claims with prejudice and entry of judgment denying Callaway any relief in this action;
J. Entry of a declaratory judgment adjudging that Taylor Made does not infringe any valid claim of U.S. Patent Nos. 5,409,229, 5,605,511, 5,704,849, 6,638,185, or 7,160,207;
K. Entry of a declaratory judgment adjudging that any claim of U.S. Patent Nos. 5,409,229, 5,605,511, 5,704,849, 6,638,185, and 7,160,207 asserted by Callaway to be infringed is invalid and/or unenforceable;
L. An injunction permanently enjoining and restraining Callaway and its officers, agents, subsidiaries, partners, servants, employees, and attorneys, and those persons in active concert or participation with them from asserting, enforcing, or attempting to enforce U.S. Patent Nos. 5,409,229, 5,605,511, 5,704,849, 6,638,185, and 7,160,207 against Taylor Made and its distributors and customers;
M. A declaratory judgment adjudging that Callaway is estopped from enforcing U.S. Patent Nos. 5,409,229, 5,605,511, and 5,704,849 against Taylor Made;
N. A declaration that this action is an exceptional case and an award to Taylor Made of its attorneys’ fees and expenses pursuant to 35 U.S.C. § 285;
O. An award to Taylor Made of its costs of suit; and
P. A grant to Taylor Made of such other relief as the Court may deem just and proper.

Dated: September 4, 2007

DEMAND FOR JURY TRIAL

Defendant and Counterclaimant Taylor Made Golf Company, Inc. hereby demands a jury trial on all issues triable of right by a jury.
Dated: September 4, 2007

 

 

 

 

ANSWER TO COMPLAINT

In response to the COMPLAINT FOR PATENT INFRINGEMENT dated August 4, 2007 (“Complaint”), filed by Plaintiff Callaway Golf Company (“Callaway”), Defendant Taylor Made Golf Company, Inc. (“Taylor Made”) admits, denies, and avers as follows:

1. Taylor Made admits the averments of paragraph 1 of the Complaint.
2. Taylor Made admits the averments of paragraph 2 of the Complaint. Jurisdiction
3. In response to paragraph 3 of the Complaint, Taylor Made admits that the Complaint purports to state a civil action for patent infringement arising under the laws of the United States relating to patents, 35 U.S.C. § 101 et seq., but denies that Taylor Made has any liability for alleged patent infringement.
4. Taylor Made admits the averments of paragraph 4 of the Complaint.
5. In response to paragraph 5 of the Complaint, Taylor Made admits that it is doing business in this judicial district. Except as so admitted, Taylor Made denies the averments of paragraph 5.
6. In response to paragraph 6 of the Complaint, Taylor Made admits that it has committed acts in this judicial district that Callaway alleges gives rise to its infringement claim and that it is subject to personal jurisdiction in this judicial district, but Taylor Made denies that venue is proper in this judicial district based on a forum selection clause in a License Agreement between the parties as set forth below.

General Averments

7. Taylor Made is without knowledge or information sufficient to form a belief as to the truth of the averments in paragraph 7 of the Complaint and, therefore, denies such averments.
8. In response to paragraph 8 of the Complaint, Taylor Made admits that U.S. Patent No. 5,704,849 (“the ‘849 patent”) is entitled “Golf Club Head with Audible Vibration Attenuation,” admits that the ‘849 patent was issued by the United States Patent and Trademark Office on January 6, 1998, and admits that a copy of the ‘849 patent is attached as Exhibit A to the Complaint, but denies that the ‘849 patent was duly and legally issued.
9. Taylor Made is without knowledge or information sufficient to form a belief as to the truth of the averments in paragraph 9 of the Complaint and, therefore, denies such averments.
10. Taylor Made is without knowledge or information sufficient to form a belief as to the truth of the averments in paragraph 10 of the Complaint and, therefore, denies such averments.
11. Taylor Made is without knowledge or information sufficient to form a belief as to the truth of the averments in paragraph 11 of the Complaint and, therefore, denies such averments.
12. In response to paragraph 12 of the Complaint, Taylor Made admits that the ‘849 patent is sometimes referred to in the Complaint as the “Patent-In-Suit.”
13. Taylor Made admits the averments of paragraph 13 of the Complaint.

Count I (Patent Infringement of the ‘849 patent)

14. In response to paragraph 14 of the Complaint, Taylor Made incorporates by reference each and every response contained in paragraphs 1-13 above as though fully set forth herein.
15. Taylor Made denies the averments of paragraph 15 of the Complaint.
16. Taylor Made denies the averments of paragraph 16 of the Complaint.
17. Taylor Made admits the averments of paragraph 17 of the Complaint.
18. Taylor Made denies the averments of paragraph 18 of the Complaint.
19. Taylor Made denies the averments of paragraph 19 of the Complaint.
20. Taylor Made denies the averments of paragraph 20 of the Complaint. Prayer For Relief
21. Taylor Made denies that Callaway is entitled to judgment or to any of the relief requested in paragraphs “a” through “k” of the prayer for relief in the Complaint.
 
AFFIRMATIVE DEFENSES

First Affirmative Defense

22. Venue is improper in this judicial district because Callaway’s infringement claim involves issues that arise under a License Agreement entered into between Taylor Made and Callaway in or around January 2005. The License Agreement provides that any court proceeding relating to any such controversy shall be commenced and decided only in the state or federal courts located in San Diego County, California.

Second Affirmative Defense

23. Taylor Made has not infringed any valid claim of the ‘849 patent, either literally or under the doctrine of equivalents, has not induced infringement of any valid claim of the ‘849 patent, and has not committed acts constituting contributory infringement of any valid claim of the ‘849 patent.

Third Affirmative Defense

24. Each and every claim of the ‘849 patent averred by Callaway as infringed is invalid and/or unenforceable under one or more provisions of the Patent Laws of the United States, including without limitation, 35 U.S.C. §§ 102, 103, and 112.

Fourth Affirmative Defense

25. Callaway’s claims against Taylor made are barred by the doctrine of estoppel.
26. In the aforesaid License Agreement, the parties agreed that no current Taylor Made product was covered by any claims of the ‘849 patent.
27. In reliance, Taylor Made based its design of the products that Callaway alleges infringe the ‘849 patent in part on the design of the then-current Taylor Made products that the parties agreed in the License Agreement did not infringe the ‘849 patent.
28. Due to its reliance, Taylor Made will be materially prejudiced if Callaway is allowed to assert that Taylor Made has infringed, and is infringing, the ‘849 patent.

Prayer

WHEREFORE, Taylor Made prays that the Court dismiss the Complaint with prejudice, deny all relief to Callaway, and award Taylor Made its reasonable attorneys’ fees and costs.

Dated: September 4, 2007