Callaway Golf Co. v. Acushnet Co. (Fed. Cir. Aug. 14, 2009)
In this case, the district court (District of Delaware) granted summary judgment of no anticipation and entered final judgment after a jury verdict that all but one of the asserted claims of the patent at issue were not obvious. The Federal Circuit, in an opinion by Judge Dyk, reversed the summary judgment order and also vacated the obviousness judgment and remanded for a new trial.
The disputed claims related to multi-layer polyurethane-covered golf balls. As stated by the Federal Circuit, "[a]ccording to the specification, a major advantage of the patented invention is that it presents a 'dual personality' golf ball that is capable of travelling great distances, yet does not exhibit diminished playability or durability." The accused products at issue were the Titleist Pro V1, Pro V1*, and Pro V1x golf balls.
The claim term at issue on appeal was "cover layer having a Shore D hardness." The term "Shore D hardness" refers to a durometer measurement of a material's hardness rated on the Shore D hardness scale, which is described in the ASTM D-2240 standard. The issue between the parties was whether the hardness of the cover layer was to be measured while the cover layer was on or off the golf ball. The district court noted that "on-the-ball" hardness measurements can differ from "off-the-ball" measurements. Ultimately, the district court construed the term such that the hardness measurement of the cover layer was to be taken on the ball.
On appeal, Acushnet argued that the district court's claim construction was erroneous because the patent specification noted in several places that the hardness values are "measure in accordance with the ASTM method D-2240", which states that hardness should not be tested on a rounded or curved surface (i.e. the surface of a golf ball). The Federal Circuit disagreed, stating that the claims focused on "[a] golf ball" with a "cover layer" having a certain hardness, "rather than focusing on the hardness of the material used to create the cover layer." Further, the Court found that the patent specification pointed to "the hardness of the assembled ball (rather than of the cover materials in isolation) as the relevant characteristic." The Federal Circuit also agreed with the district court's finding that "there is no 'cover layer' to measure until a golf ball is produced." Finally, the Court pointed out that Acushnet's own witnesses testified at trial that that persons having ordinary skill in the art typically took Shore D hardness measurements "on the ball." The Federal Circuit therefore affirmed the district court's claim construction.
As a side note, the jury found that dependent claim 5 of the patent at issue invalid as obvious, while finding at the same time that all other asserted claims, including the independent claim from which claim 5 depends, not invalid. This was truly a strange result as an independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness. While this issue was initially raised to the district court judge by the patentee, not the accused infringer, after the jury was polled, the judge indicated she would not send the jury back for additional deliberations. In light of this, Acushnet asked the Federal Circuit for, and was subsequently granted, a new trial on obviousness as the jury verdict contained a "irreconcilable inconsistency."
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