Nassau Precision Casting Co. v. Acushnet Co.
2015 U.S. Dist. LEXIS 44666, 95 F. Supp. 3d 332, 2015 WL 1514257 (2015)
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Rule of Law:
A product does not literally infringe a patent claim if it incorporates a feature that the patent's specification explicitly teaches away from or identifies as an adverse consequence. Failure to meet even a single limitation of a patent claim is sufficient to find non-infringement.
Facts:
- Robert Chome was issued United States Patent No. 5,486,000 ('000 Patent), titled 'Weighted Golf Iron Club Head,' which was later assigned to Nassau Precision Casting Co., Inc.
- Claim 1 of the patent describes a design method of improving weight distribution by removing material from the club head's top surface and relocating it to the bottom ends.
- A key limitation of Claim 1 is that this removal and relocation must result in 'no adverse consequence.'
- The patent specification provides an example of an 'adverse consequence,' stating that removing a portion of the club head's 'toe' would 'certainly adversely affect' the club's use.
- The specification also states that removing construction material from the 'rear area' (center back base) is 'counterproductive' and 'should not have been removed for weight distribution purposes.'
- Acushnet Company and its affiliates manufactured and sold four models of golf clubs: the Cobra S9, Cobra S9 Second Generation, King Cobra UFi, and Cobra S2 (the 'Accused Clubs').
- The Cobra S9 Second Generation and Cobra S2 clubs were designed by removing material from the toe of the club head and replacing it with a lighter-weight insert.
- The King Cobra UFi and Cobra S9 clubs were designed by removing material from the center back base of the club head and replacing it with a lighter-weight insert.
Procedural Posture:
- Nassau Precision Casting Co., Inc. sued Acushnet Company, Inc. and its affiliates in the U.S. District Court for the Eastern District of New York for patent infringement.
- Defendants moved for summary judgment of non-infringement and invalidity.
- The District Court granted summary judgment to Defendants, finding the Accused Clubs did not infringe Claims 1 or 2 of the '000 Patent.
- Plaintiff, Nassau Precision, appealed the District Court's decision to the U.S. Court of Appeals for the Federal Circuit.
- The Federal Circuit affirmed the summary judgment of non-infringement on Claim 2, but vacated and remanded the summary judgment on Claim 1.
- The Federal Circuit directed the District Court to determine, among other things, whether the Accused Clubs infringe the 'no adverse consequence' limitation of Claim 1.
- On remand, both parties filed cross-motions for summary judgment before the District Court.
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Issue:
Do the accused golf clubs literally infringe Claim 1 of the '000 Patent when their designs involve removing material from the toe or center back base, features the patent's specification identifies as adverse consequences or counterproductive practices?
Opinions:
Majority - Judge William F. Kuntz, II
No. The accused golf clubs do not literally infringe Claim 1 of the '000 Patent because they engage in actions that the patent's own specification explicitly disclaims or describes as adverse. To infringe, an accused device must embody every limitation of a patent claim. The court first construed the term 'no adverse consequences' based on the patent's intrinsic evidence. The specification clearly identifies removing material from the toe of the club as an 'adverse consequence.' Since two of the Accused Clubs (Cobra S9 Second Generation and Cobra S2) remove material from the toe, they fail to meet this limitation. The other two Accused Clubs (King Cobra UFi and Cobra S9) remove material from the center back base. The patent specification explicitly teaches away from this practice, stating it is 'counterproductive' and that this area 'should not have been removed.' Therefore, these clubs also fall outside the scope of the patent's claims. Because none of the Accused Clubs meet the 'no adverse consequences' limitation as construed from the patent's own text, there is no infringement.
Analysis:
This decision underscores the dispositive power of a patent's specification in both claim construction and infringement analysis. It establishes that language in the specification that 'teaches away' from a particular design or identifies it as having 'adverse consequences' can create a clear boundary that accused products may fall outside of. This provides a potent defensive strategy for alleged infringers, who can defeat an infringement claim by showing their product practices what the patentee specifically disclaimed. For patent holders, it serves as a crucial reminder that statements made in the specification to distinguish prior art or explain the invention can later be used to narrow the enforceable scope of their claims.
