Callaway Golf Co. v. Acushnet Co.
2009 U.S. App. LEXIS 18142, 91 U.S.P.Q. 2d (BNA) 1705, 576 F.3d 1331 (2009)
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Rule of Law:
A jury verdict that finds a dependent patent claim invalid for obviousness while finding its parent independent claim not invalid is irreconcilably inconsistent and requires a new trial. Furthermore, a patent document incorporates another document by reference for an anticipation analysis when it clearly identifies the subject matter and location of the incorporated material, even if the host document expresses a preference for only a subset of that material.
Facts:
- Callaway Golf Company owned four patents (the 'Sullivan patents') for a multi-layer golf ball with a 'dual personality' designed for both distance and playability.
- The patented golf ball design consisted of a core, a hard inner cover layer made of an ionomer resin blend, and a soft outer cover layer made of a polyurethane material.
- The patents specified Shore D hardness values for the inner cover layer (60 or more) and the outer cover layer (64 or less).
- Acushnet Company manufactured and sold the Titleist Pro V1, Pro V1 (discontinued), and Pro V1x golf balls.
- Acushnet's golf balls also featured a multi-layer construction, including an ionomer-blend inner cover and a polyurethane outer cover.
- A prior art patent, Nesbitt, disclosed a three-piece golf ball and stated, 'Reference is made to...U.S. Pat. No. 4,274,637 [Molitor '637] which describes a number of foamable compositions...which may be employed for one or both layers'.
- The referenced Molitor '637 patent disclosed both polyurethane and ionomer resin blends as potential materials for golf ball covers.
Procedural Posture:
- Callaway Golf Company sued Acushnet Company in the U.S. District Court for the District of Delaware for patent infringement.
- The district court construed the claim term 'cover layer having a Shore D hardness' to require the measurement to be taken on the assembled golf ball.
- Following claim construction, Acushnet stipulated that its golf balls infringed the asserted patent claims.
- Acushnet moved for summary judgment that Callaway's patents were invalid due to anticipation by the Nesbitt patent.
- The district court denied Acushnet's motion and granted Callaway's cross-motion for summary judgment of no anticipation, holding that Nesbitt did not incorporate the Molitor '637 patent by reference.
- A jury trial was held on the issue of obviousness.
- The jury returned a verdict finding dependent claim 5 of one patent invalid for obviousness, but finding the other eight asserted claims, including the independent claim from which claim 5 depended, not invalid.
- The district court entered judgment consistent with the jury's verdict and denied Acushnet's post-trial motion for a new trial based on the inconsistent verdict.
- Acushnet, the defendant, appealed the judgment to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
1. Does a jury verdict finding a dependent patent claim invalid for obviousness, while finding the independent claim from which it depends not invalid, constitute an irreconcilably inconsistent verdict requiring a new trial? 2. For the purpose of an anticipation analysis, does a patent document incorporate another by reference when it states 'Reference is made to [the second patent] which describes a number of foamable compositions...' even if the first patent expresses a preference for only some of those compositions?
Opinions:
Majority - Judge Dyk
1. Yes, such a verdict is irreconcilably inconsistent and requires a new trial. A dependent claim, by definition, includes all the limitations of the independent claim from which it depends plus at least one additional limitation. Therefore, it is a legal and logical impossibility for a broader independent claim to be nonobvious if a narrower dependent claim is obvious. Where the evidence could rationally support either verdict and the jury returns an irreconcilably inconsistent one, the proper remedy is not to accept one finding and reject the other, but to order a new trial on the issue. 2. Yes, a patent document incorporates another by reference under these circumstances. To incorporate material by reference, the host document must clearly identify the subject matter being incorporated and where that subject matter can be found. The Nesbitt patent's language referring to the Molitor '637 patent for 'a number of foamable compositions' was sufficiently specific. Nesbitt's stated preference for ionomer resins did not limit the incorporation to only those resins; rather, it incorporated the entire list of suitable materials from Molitor '637, including polyurethane and ionomer blends. Therefore, the two patents should be read as a single reference for the purpose of an anticipation analysis.
Analysis:
This decision reinforces two key principles in patent litigation. First, it underscores the requirement for logical consistency in jury verdicts concerning patent validity, particularly between independent and dependent claims, establishing that an irreconcilable conflict must be resolved with a new trial. Second, it clarifies the standard for incorporation by reference in an anticipation analysis, confirming that broad referencing language can bring a wide range of disclosures from a second document into a primary prior art reference. This impacts how invalidity defenses are structured, as it broadens the scope of what can be considered a 'single' prior art reference and cautions patentees against making broad references to other documents.
