Nassau Precision Casting v. Acushnet Company, Inc.

Majority - Taranto, Circuit Judge

1. No, a patent claim describing a 'method' for improving golf club head weight distribution is not properly construed as referring to a physical manufacturing process; it refers to a process of design. The Federal Circuit affirmed the district court's construction of 'method' in claims 1 and 2 as describing steps taken in designing a golf club head rather than a physical manufacturing process. The court reasoned that 'method' is a fundamental patent-law term referring to a set of actions taken over time. Nothing in the patent's specification describes a physical construct-remove-relocate club-head-making process, and such a construction would be 'unreasonable' and 'surprising in context' because a skilled artisan would typically use molds. The claim uses action words like 'removing' and 'relocating' and implies a temporal comparison to a 'pre-existing golf club,' reinforcing the steps-over-time meaning of 'method.' The court noted that Acushnet, in its own patents, distinguished between product and method claims, underscoring the need for precision. The court concluded that interpreting a 'method' claim as merely defining structural features would do 'unacceptable violence' to its established meaning. 2. No, a patent claim requiring 'said removed construction material having said determined weight' to be 'embodied as part of selected bottom areas' is not infringed if only the net weight difference, rather than the entire determined weight of the removed material, is relocated to the bottom areas due to an insert. The Federal Circuit affirmed summary judgment of non-infringement for claim 2. Claim 2 requires that 'all of the construction material or weight removed from the top of the club be embodied in the selected bottom areas' while maintaining the overall club weight. It was undisputed that Acushnet's clubs maintained the same weight, but this was achieved by filling the top channel with a lightweight polymer insert and then adding metal/graphite to the bottom areas only to compensate for the difference in weight between the removed construction material and the polymer insert. Therefore, not all of the original construction material's 'determined weight' was relocated to the bottom areas, as some weight was accounted for by the polymer insert. Nassau's argument about 'determined weight' was not preserved, and the claim meaning was clear in requiring all removed material to be embodied in the bottom areas. Regarding claim 1, the Federal Circuit vacated the district court's summary judgment of non-infringement. The district court had found claim 1 not infringed based on its construction that 'removed construction material from a location not used during ball-striking service' prohibited removal from any area of the club head face. However, it was undisputed that in the accused clubs, material was removed only from the top surface (behind the face). The Federal Circuit found that under either the district court's construction (material from areas other than the face) or Nassau's broader construction (from areas other than the face or the upper portion of the face not normally used), the accused clubs met this limitation because material was removed from behind the club face. The court remanded for further proceedings on other claim-construction and invalidity issues related to claim 1, including whether Acushnet performed the claimed design process.