The Love Continues: Callaway Sues Acushnet Regarding the Converted 2007 Pro V1’s and the New 2009 Pro V1x Golf Balls; Acushnet Sues Callaway Regarding the Tour i and Tour ix Golf Balls
As most golfers know, Callaway Golf and Acushnet (aka Titleist) have been keeping patent litigation attorneys fed and nicely clothed for years. In fact, their golf ball patent dispute has been one of the most widely covered patent litigation cases in recent history. If this is news to you then check out my POST from December 2007 summarizing the jury verdict (and yes the case is still ongoing today).
Today, the love continues with two new golf ball patent infringement lawsuits. Callaway sued Acushnet over the converted 2007 Pro V1’s and the new 2009 Pro V1x golf balls, and Acushnet sued Callaway over the Tour i and Tour ix golf balls. Callaway alleges infringement of USPN’s 6495633 and 6623381, while Acushnet alleges infringement of USPN’s 6913547, 7255656, 7226369, 6945880, 7473195, 7491137, 6905426, 7455601, and 6180040.
You can review the Callaway Complaint /files/22847-21779/20090303_Acushnet_v_Callaway_Golf_Ball_Patent_Lawsuit_Complaint___this_one.pdf”>HERE, but for your convenience I have reproduced some of the more interesting points from the Callaway Complaint below.
In the interest of fairness, the Acushnet Complaint is just as good as the Callaway Complaint, it is just more of a boilerplate patent infringement complaint so it is not quite as interesting.
The Callaway Complaint contains a nice summary of the prior litigation, but keep in mind that it might be a tad bit biased.
34. In prior litigation, Titleist admitted in this Court that all of its Pro V1 golf balls sold from 2000 to September 2008 infringed the technology claimed in the Sullivan I patents.
35. The prior litigation began after an extensive mediation process required by a settlement agreement between the parties. On February 9, 2006 Callaway Golf filed the prior suit here in the District of Delaware, Callaway Golf Company v. Acushnet Company, C.A. No. 06- 091 (SLR), accusing Acushnet’s line of Titleist Pro V1 golf balls of patent infringement.
36. Specifically, in the prior case, Callaway Golf asserted that Acushnet’s Pro V1 family of golf balls, including the Pro V1 and Pro V1x lines, infringed the Sullivan I patents.
37. On December 3, 2007, the eve of trial, Acushnet made the admission that its line of Pro V1 and Pro V1x golf balls infringed the asserted claims of the Sullivan I patents.
38. A jury trial then followed. On December 14, 2007, the jury found that eight of the nine asserted claims from the Sullivan I patents were valid, thereby making Acushnet liable for its patent infringement. The Court entered judgment against Acushnet on December 20, 2007.
39. Following the jury verdict in Callaway Golf’s favor, Callaway Golf filed a motion seeking a permanent injunction barring Acushnet from selling the infringing line of Pro V1 golf balls. Acushnet filed post-trial motions seeking a new trial and a ruling overturning the jury’s verdict. Acushnet also filed a motion seeking to stay any injunction that the Court might enter.
40. On November 10, 2008, the Court issued an Order granting Callaway Golf’s request that Acushnet’s line of infringing Pro V1 golf balls, including the Pro V1 and Pro V1x golf balls, be enjoined and denying Acushnet’s requests to overturn the jury’s verdict and stay the injunction.
41. Specifically the Court Ordered with respect to the injunction:
1. Pursuant to 35 U.S.C. § 283, Acushnet and its successors, assigns, officers, agents, servants, employees, attorneys, and persons in active concert or participation with them, including any affiliated entities, during the term of the patents-in-suit (U.S. Patent Nos. 6,210,293; 6,503,156; 6,506,130; and 6,595,873), are hereby ENJOINED and RESTRAINED from infringing and from inducing, contributing to, or otherwise causing the infringement of the Relevant Patent Claims by making, using, selling, or offering to sell in the United States, or importing into the United States, or by inducing, contributing to, or otherwise causing the performance of any such actiV1ties by third parties with regard to, any of the Pro V1® line of golf balls including the Pro V1®, Pro V1x®, Pro V1*®, or any variations thereof not more than colorably different (collectively “the Pro V1 ® products”).
2. Acushnet’s professional golfers currently under contract are permitted to play Pro V1® products through the end of the 2008 calendar year.
42. On November 19, 2008 Acushnet filed a Notice of Appeal and also filed a motion with the United States Court of Appeals for the Federal Circuit seeking to stay the permanent injunction pending appeal.
43. On December 23, 2008 the Federal Circuit issued an order denying Acushnet’s request that the permanent injunction be stayed pending appeal. The Federal Circuit further noted as one of its reasons for denying the stay that “… Acushnet has not demonstrated a strong likelihood of success [for its forthcoming appeal] in its motion papers.”
44. Despite admitting that its line of Pro V1 golf balls made prior to September 2008 infringe Callaway Golf’s patents, Acushnet has repeatedly made misleading statements concerning the nature of its golf balls, including the following:
a. “The [Callaway Golf] patents at issue are directed to multi-layer, solid construction golf balls with urethane covers. Acushnet received its first patent covering this technology on March 3, 1999. The oldest of the Callaway patents being asserted was not filed until December 12, 1999 and issued on March 15, 2001. The other three patents were all filed in 2001, well after the Titleist Pro V1 was introduced at the Invensys Classic on October 12, 2000.” This statement falsely implies that Acushnet was the first to patent the “Holy Grail” of golf ball technology that has made the Titleist Pro V1 “the best selling golf balls of all time.” In truth, Acushnet knows that Sullivan conceived of his inventions years before Acushnet developed the Pro V1 golf ball, and Acushnet itself conceded that the priority filing date for all of the four Sullivan I patents was no later than 1995.
b. “One [Acushnet] patent directly related to the Pro V1 was issued in 1999, before Spalding’s 1999 application that led to a patent in 2001.” Again, this statement falsely implies that Acushnet was the first to patent the “Holy Grail” of golf ball technology that has made the Titleist Pro V1 “the best selling golf balls of all time.” The relevant Acushnet patent application was not filed until 1997, years after the 1995 patent applications which led directly to the Sullivan I patents.
c. The litigation between Callaway Golf and Acushnet “relates to patents that were issued by the U.S. Patent and Trademark Office after the Pro V1 came into the market and became the best-selling ball in golf.” This statement falsely implies that the Sullivan I patents came after Acushnet’s Pro V1, yet Acushnet itself knows and has conceded in Court filings that the Sullivan I patents were filed years before the Pro V1 came into the market.
d. “With the Pro V1 and Pro V1x, players no longer have to trade-off distance and durability for spin, feel and control around the green.” This statement falsely implies that Acushnet was the first to invent the “Holy Grail” golf ball with great distance and great control, and that the Titleist Pro V1 is that very ball. Yet, Acushnet knows and has admitte
d that Mr. Sullivan conceived of his patented golf ball long before the release of the Pro V1, and that Callaway Golf’s own Rule 35 golf balls embodying that invention were in fact commercially introduced before the Titleist Pro V1 products.45. Further, Acushnet’s parent company, Fortune Brands, Inc., told industry analysts in an earnings conference call on January 28, 2008—a month after the jury found that the Sullivan patents infringed by Acushnet are not invalid—that Acushnet had a “very strong case” in part because “the golf ball [i.e., the Pro V1 line of golf balls] actually was out being sold before these [Sullivan] patents were issued.” This statement, by Acushnet’s parent, again falsely implied that Acushnet was the first to invent the “Holy Grail” golf ball with great distance and great control and that the Titleist Pro V1 is that ball, when Acushnet knows otherwise.
46. Moreover, since the injunction order against the Titleist Pro V1 line of golf balls was issued in November 2008, Acushnet has made additional misleading statements, including but not limited to its statement that “Titleist Pro V1 ® golf balls are the product of technology developed and accumulated by Acushnet over the past 20 years, and over 65 Acushnet Company patents are related to the Pro V1® family.” This ignored Acushnet’s continued and willful infringement of Callaway Golf’s Sullivan I patents, and that it was those Callaway Golf patents that were key to Acushnet’s ability to manufacture and sell a ball that performed as well as competitive offerings from Callaway Golf and others.
47. Acushnet has also made multiple public statements questioning the validity of the Sullivan I patents and the revolutionary technology taught therein. Acushnet’s public statements about the Sullivan I patents’ validity stand in contrast to the sworn testimony of its own witness that the idea of a 3-piece ball with a thin polyurethane cover was truly novel and inventive at the relevant time.
48. At the December, 2007 trial, William Morgan, Acushnet’s Senior Vice President for Research and Development for golf balls, testified about his involvement in the Veneer project, Acushnet’s effort to create a 3-piece ball with a polyurethane cover. At the time of Acushnet’s Veneer project, Mr. Morgan had known of the use of thin polyurethane covers, such as cast thermoset polyurethane and was also aware of solid multi-layered balls. Yet, Mr. Morgan said that as of the Veneer project—which began after Mr. Sullivan’s work—Mr. Morgan had never heard of anyone making a solid multilayer ball with a thin polyurethane cover, and he agreed that such a ball was a new idea at the time.
49. In fact, Mr. Morgan thought a 3-piece ball with a thin polyurethane cover was such a novel development that he submitted an invention record for the idea in April of 1996, along with fellow golf ball designers Dean Snell and Ed Hebert. Acushnet believed so strongly that this idea was inventive that the company filed a patent application based on that invention disclosure, eventually resulting in U.S. Patent No. 5,885,172.
50. Acushnet only changed its tune years later, when it learned that Mr. Sullivan, and not Acushnet’s developers, was the first and true inventor of this revolutionary approach to golf ball design. Acushnet now issues frequent public statements attacking the validity of the technology that previously Acushnet swore was new and patentable.
51. Acushnet has intentionally and willfully misled golf professionals, golf shops, golf consumers and the public at large regarding the origin of the technology responsible for the success of its Pro V1. It has willfully made statements that fail to disclose that the most significant performance improvement of its Titleist Pro V1 golf balls—the combination of great distance and durability combined with great control which is enabled by the breakthrough construction of a thin, soft polyurethane cover used as part of a solid-core multi-layer ball—is claimed and covered by valid Callaway Golf patents. Instead, Acushnet has continued to state that it is the “industry leader” in golf ball design, despite its deliberate infringement of Callaway Golf patents, including the Sullivan I patents.
52. On information and belief, Acushnet’s ability to retain the golf professionals as users and promoters of its Titleist branded golf balls, through the release of the infringing Titleist Pro V1, has supported the sales and success of Titleist’s golf products generally, including its other golf ball products, as a result of the “pyramid of influence.”
THE “CONVERTED” 2007 AND NEW 2009 PRO V1 LINE OF GOLF BALLS
53. Even before the Court issued its permanent injunction, Acushnet modified the composition of its commercially successful Pro V1 and Pro V1x lines of golf balls to prepare for issuance of an injunction by the Court. Specifically, Acushnet modified the 2007 Pro V1 line of golf balls. Acushnet refers to these modified golf balls as “converted” golf balls.
54. Although it changed the composition of its 2007 Pro V1 line of golf balls, Acushnet continued to make and sell golf balls under the Titleist Pro V1 and Pro V1x model names without changing the side stamp identification of the golf balls, calling them the best selling golf balls of all time and “The #1 Ball in Golf.” Yet, the changed formulation was different from what had been historically sold as a Pro V1 golf ball. It was the prior, infringing, versions of Pro V1 golf balls that had achieved success historically, not the “converted” Pro V1 golf balls.
55. Acushnet has represented, to the public and this Court, that its converted 2007 and new 2009 lines of Pro V1 golf balls do not infringe Callaway Golf’s patents.
56. Like its launch of the original infringing Pro V1 in 2000, Acushnet has persuaded professional golfers to adopt the 2009 version of the Pro V1 and Pro V1x golf balls, proclaiming that Titleist is again “#1 from the start” based on use of its Pro V1 golf balls on the PGA Tour in 2009. Callaway Golf, however, has determined that both the “converted” 2007 line of Pro V1 golf balls and the new 2009 golf balls infringe the Sullivan II patents.
57. Acushnet has sold converted 2007 Titleist Pro V1 and Pro V1x balls and is currently marketing, making, and selling 2009 versions of the Titleist Pro V1 and Pro V1x balls.
Looks like another interesting golf ball patent infringement case to watch!
David Dawsey – The IP Golf Guy
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