Monday, August 17, 2009

Acushnet gets new trial in Callaway infringement assertion

In a story on 17 August, AP brushed aside the impact of the 14 August CAFC decision in the Callaway case:

KeyBanc analyst Scott W. Hamann, who rates the stock "Buy," also said investors will find the ruling not as negative as initially thought. Hamann said the timing of a resolution has now been delayed, but that a trial will likely be expedited this time around.

"This litigation has little to no impact on our long-term fundamental investment thesis on Callaway," Hamann wrote in a client note.

The CAFC, in the decision of Friday, noted:

We conclude that Acushnet raised a genuine question of material fact concerning
anticipation, and we reverse the district court’s entry of summary judgment on that issue
and remand. As to obviousness, we affirm the district court’s determination that
Acushnet was not entitled to judgment as a matter of law that the asserted claims are
invalid for obviousness. But because the judgment on obviousness was based upon
irreconcilably inconsistent jury verdicts, we vacate the judgment of the district court and
remand for a new trial. Thus, for the reasons that follow, we affirm-in-part, reverse-in-
part, vacate-in-part, and remand for a new trial.

The products of Acushnet at issue:

Callaway sued Acushnet for patent infringement on February 9, 2006, in the
United States District Court for the District of Delaware. The accused products are the
Titleist Pro V1, Pro V1 , and Pro V1x golf balls, which Acushnet introduced to the
market in 2000, 2002, and 2003 respectively. The Pro V1 has a three-piece
construction consisting of a solid core, an ionomer-blend inner cover, and a
polyurethane outer cover. The Pro V1 (since discontinued) and Pro V1x balls are
“dual-core” balls having an inner core, an outer core, an ionomer inner cover, and a
polyurethane outer cover.

The concept of "incorporation by reference" is at issue:

Acushnet argued that Nesbitt [4,431,193] incorporates by
reference U.S. Patent No. 4,274,637 (“Molitor ’637”), which teaches both polyurethane
and ionomer blends as cover materials and, Acushnet maintains, inherently discloses
the necessary hardness limitations for those cover layers. Thus, according to Acushnet,
when properly viewed as a single reference, Nesbitt/Molitor anticipates the Sullivan
patents as a matter of law. In support of its anticipation argument, Acushnet also
prepared test golf balls combining the polyurethane outer cover described by Molitor
’637 with the core and ionomer-blend inner cover of Nesbitt and proffered
measurements of the resulting balls.


To incorporate matter by reference, a host document must contain language
“clearly identifying the subject matter which is incorporated and where it is to be found”;
a “mere reference to another application, or patent, or publication is not an incorporation
of anything therein . . . .” In re de Seversky, 474 F.2d 671, 674 (CCPA 1973). Put
differently, “the host document must identify with detailed particularity what specific
material it incorporates and clearly indicate where that material is found in the various
documents.” Adv. Display Sys., 212 F.3d at 1282. Nesbitt identifies with specificity
both what material is being incorporated by reference (foamable polymeric compositions
suitable for golf ball cover layers) and where it may be found (the Molitor patent).
Nesbitt col.3 ll.51–61. We have previously held that language nearly identical to that
used in Nesbitt (“[r]eference is made to”) can be sufficient to indicate to one of skill in
the art that the referenced material is fully incorporated in the host document. See In re
Voss, 557 F.2d 812, 815–16 (CCPA 1977); In re Hughes, 550 F.2d 1273, 1275–76
(CCPA 1977). Here, however, the district court held that Nesbitt satisfies the
requirements for incorporation only with regard to the ionomer resins disclosed in
Molitor, stating that “Molitor ’673 is mentioned in Nesbitt to identify examples of suitable
resins, preferably ionomer resins, and not to specifically incorporate polyurethane.”
Summary Judgment Order, 523 F. Supp. 2d at 396.


Accordingly, we hold that Nesbitt incorporates by reference the
potential cover layer materials described in Molitor ’637, including polyurethane and
ionomer resin blends.

The issue of inconsistent jury verdicts arose:

There is no dispute that the verdicts with respect to claim 5 of the ’293
patent (invalid) and claim 4 of that patent (not invalid) were inconsistent. A broader
independent claim cannot be nonobvious where a dependent claim stemming from that
independent claim is invalid for obviousness. See Ormco Corp. v. Align Tech., Inc., 498
F.3d 1307, 1319 (Fed. Cir. 2007).


Under Third Circuit law, in a case
where a reading of the verdicts that would solve the apparent inconsistency proves
impossible and the evidence might support either of the two inconsistent verdicts, “‘the
appropriate remedy is ordinarily, not simply to accept one verdict and dismiss the other,
but to order an entirely new trial.’” Mosely, 102 F.3d at 90

Callaway v. Acushnet

See also

Golf ball patent wars continue
[Zenon vs. US Filter]

On the DOWNSIDE of incorporation by reference, see the article
Incorporate with Care on the CAFC decision in
Cook Biotech v. Acell

As noted, the ’389 patent specification expressly incorporates by reference
the procedure for preparing intestinal submucosa from the ’508 patent.

“Incorporation by reference provides a method for integrating material from
various documents into a host document . . . by citing such material in a manner that
makes clear that the material is effectively part of the host document as if it were
explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
1272, 1282 (Fed. Cir. 2000) (citations omitted). “To incorporate material by reference,
incorporates and clearly indicate where that material is found in the various documents.”
Id. (citations omitted). Whether and to what extent material has been incorporated by
reference into a host document is a question of law. Id.

the host document must identify with detailed particularity what specific material it


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