Callaway Golf Co. v. Acushnet Co.

• Decision Date: 21 April 2011
• Docket Number: Civ. No. 06–091–SLR.
• Citation: 778 F.Supp.2d 487
• Parties: CALLAWAY GOLF COMPANY, Plaintiff,v.ACUSHNET COMPANY, Defendant.
• Court: U.S. District Court — District of Delaware

778 F.Supp.2d 487

CALLAWAY GOLF COMPANY, Plaintiff,

v.ACUSHNET COMPANY, Defendant.

Civ. No. 06–091–SLR.

United States District Court, D. Delaware.

April 21, 2011.

Thomas L. Halkowski, Esquire of Fish & Richardson P.C., Wilmington, DE, Of Counsel: Frank E. Scherkenbach, Esquire of Fish and Richardson P.C., Boston, MA; Roger A. Denning, Esquire of Fish and Richardson P.C., San Diego, CA, for Plaintiff.Richard L. Horwitz, Esquire and David E. Moore, Esquire of Potter Anderson & Corroon LLP, Wilmington, DE, Of Counsel: Brian A. Rosenthal, Esquire, Alan M. Grimaldi, Esquire and Clinton H. Brannon, Esquire of Mayer Brown, Washington, D.C., for Defendant.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.I. INTRODUCTION

Plaintiff Callaway Golf Company (“plaintiff”) brought suit against defendant Acushnet Company (“defendant”), alleging that Acushnet has infringed various claims of four golf ball patents owned by plaintiff (known as the “Sullivan patents”): U.S. Patent Nos. 6,210,293 (“the '293 patent”), 6,503,156 (“the '156 patent”), 6,506,130 (“the '130 patent”), and 6,595,873 (“the '873 patent”). At the conclusion of the claim construction exercise, defendant stipulated that its golf balls infringed but maintained that the asserted claims were invalid for anticipation and obviousness. The case was remanded from the Federal Circuit for re-trial on these validity issues, which retrial occurred in March 2010. Currently before the court are plaintiff's motion for JMOL of no anticipation and no obviousness or for a new trial (D.I. 616) and defendant's motion to amend the judgment (D.I. 617).

II. BACKGROUNDA. Technology Overview

The court presumes familiarity with the golf ball technology at issue in this case, as detailed in its prior opinions, as well as the Federal Circuit's decision. See Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1335 (Fed.Cir.2009). By way of brief summary, golf balls are typically identified as two-piece or three-piece balls. Two-piece balls have a core, which is either solid or “wound,” and an outer layer. A core that is considered solid is made of rubber and can be one solid piece or multiple layers. A wound core is made of elastic windings wrapped around either a solid or liquid-filled center. Three-piece balls have an additional layer covering the core, so that the ball is characterized as having a core, an inner cover layer and an outer cover layer.

The Sullivan patents claim a multi-layer golf ball comprising a core, an inner cover layer made of a low acid ionomer, and an outer cover layer made of polyurethane.¹ The claims differentiate between the hardness and thickness of these layers. Claim 1 of the ' 293 patent claims:

1. A golf ball comprising: a core; an inner cover layer having a Shore D hardness of 60 or more molded on said core, said inner cover layer having a thickness of 0.100 to 0.010 inches, said inner cover layer comprising a blend of two or more low acid ionomer resins containing no more than 16% by weight of an alpha, beta-unsaturated carboxylic acid; and an outer cover layer having a Shore D hardness of 64 or less molded on said inner cover layer, said outer cover layer having a thickness of 0.010 to 0.070 inches, and said outer cover layer comprising a relatively soft polyurethane material.Figure 2 of the '293 patent is exemplary of the patented golf ball, which contains a core 10, a multi-layer cover having an inner layer 14 (made preferably from a blend of low-acid ionomer resins) and outer layer 16 (made of a relatively soft polyurethane material), as reproduced below.

Image 1 (2.22" X 1.93") Available for Offline Print

Plaintiffs other asserted claims vary slightly from claim 1 of the '293 patent, but each claims a golf ball having a core, an ionomer resin (or blend) inner cover layer with a Shore D hardness of 60 or more, and a polyurethane outer cover layer with a Shore D hardness of 64 or less. See Callaway, 576 F.3d at 1335. “Shore D hardness” refers to a standard published by the American Society for Testing and Materials (ASTM D–2240). Id. at 1335 & n. 2. Prior to trial, the court construed the claim limitation “[c]over layer having a Shore D hardness” as requiring that the Shore D hardness measurement of the cover layer be taken on-the-ball, as compared to off-the-ball, as defendant suggested. Based on the court's on-the-ball construction, defendant stipulated that its Pro V1® ball infringed all of the asserted claims, and that its Pro V1*® and Pro V1x® balls infringed all claims except claim 1 of the ' 293 patent.² This claim construction was affirmed on appeal. Id. at 1338. B. Procedural Posture

An overview of the present litigation provides useful context for the court's opinions herein. Plaintiff filed this patent infringement action on February 9, 2006, alleging infringement of the Sullivan patents by defendant's Pro V1®-branded golf balls. The parties filed motions for summary judgment on infringement and validity. Additionally, the parties filed cross-motions for summary judgment on plaintiff's breach of contract claim, which claim arose from defendant's filing a reexamination of the Sullivan patents with the U.S. Patent and Trademark Office (“PTO”), as compared to litigation challenging the validity of the patents in this court, as per the parties' prior settlement agreement (hereinafter, “the Agreement”). Defendant filed inter partes reexamination requests on each Sullivan patent on January 17, 2006—less than a month prior to plaintiff's filing the present lawsuit on February 9, 2006. The reexaminations have proceeded concurrently with this litigation since that time.

On November 20, 2007, the court issued its claim construction decision (D.I. 345) and issued its memorandum opinion on the summary judgment motions (D.I. 347), in which it granted plaintiff's motions for summary judgment of no anticipation and for breach of contract and denied defendant's motions for summary judgment of invalidity and no breach of contract. The court also denied a motion for partial summary judgment that U.S. Patent No. 4,274,637 to Molitor (“Molitor '637”) was incorporated by reference into a particular piece of prior art—U.S. Patent No. 4,431,193 (“Nesbitt”).³ Following claim construction, as discussed above, defendant stipulated that its Pro V1® golf balls infringe claims 1, 4 and 5 of the ' 293 patent, claims 1–3 of the ' 156 patent, claim 5 of the ' 130 patent, and claims 1 and 3 of the ' 873 patent, and that its Pro V1x® and Pro V1*® golf balls infringe all of the foregoing claims, with the exception of claim 1 of the ' 293 patent. (D.I. 367) A jury trial was held between December 5 and 14, 2007 on the issue of validity of each of the asserted claims due to obviousness. The jury returned a verdict that each asserted claim was valid but one-claim 5 of the ' 293 patent—which it found invalid. (D.I. 399)

After trial, defendant moved to dismiss plaintiff's breach of contract claim and to vacate the court's November 20, 2007 opinion and order based on lack of subject matter jurisdiction. More specifically, defendant (belatedly) argued that the court, in dismissing the parties' prior litigation, did not manifest an intent to retain jurisdiction over the enforcement of the Agreement. The court agreed and, on November 10, 2008, granted defendant's motion to dismiss and vacated its grant of summary judgment on the breach of contract claim. (D.I. 490) The same day, the court; (1) denied defendant's motion for judgment as a matter of law (“JMOL”) or, in the alternative, for a new trial; (2) granted plaintiffs motion for a permanent injunction; and (3) denied defendant's motion to stay the injunction pending appeal. (D.I. 492) Judgment was entered against defendant; defendant appealed.

On August 14, 2009, the Federal Circuit reversed the court's grant of summary judgment of no anticipation, found that the jury verdict on obviousness was irreconcilably inconsistent, vacated the judgment of the court and remanded for a new trial. See Callaway, 576 F.3d at 1335. On March 3, 2010, the court denied defendant's renewed motion for summary judgment on anticipation. (D.I. 595) A (second) jury trial on validity commenced on March 12, 2010. The jury held each of the Sullivan patents invalid as anticipated and, additionally, as obvious. (D.I. 608) Judgment was entered in favor of defendant. (D.I. 611)

In addition to the above proceedings, plaintiff pursued concurrent litigation in the Delaware Court of Chancery by which it sought to reform the Agreement. In March 2009, Vice Chancellor Leo E. Strine, Jr. recommended that the parties file joint motions in the 1996 cases to modify the stipulations of dismissal and file a joint motion in this litigation to reinstate the original summary judgment ruling. The parties filed a motion in June 2009 to reopen the 1996 cases, and the court subsequently entered modified stipulations of dismissal. (C.A. No. 96–73, D.I. 83; C.A. No. 96–78, D.I. 40) Following defendant's successful Federal Circuit appeal, defendant refused to join in the second joint motion. Plaintiff thereafter filed an opposed motion to vacate the court's order dismissing its breach of contract claim and to reinstate the court's November 20, 2007 decision. The court granted plaintiff's motion on January 13, 2011. (D.I. 636)

On March 9, 2011, the PTO denied plaintiff's petition requesting that the PTO recognize this court's ruling on plaintiff's breach of contract claim and to cease reexaminations of the Sullivan patents.⁴ (D.I. 638, ex. A) That same day, the PTO Board of Patent Appeals and Interferences (“BPAI”) affirmed the examiner's decisions to reject claims 4 and 5 of the ' 130 patent, claims 1–6 of the ' 293 patent, claims 1–22 of the ' 156 patent and claims 1–6 of the ' 873 patent as obvious over Nesbitt in view of Molitor '637. ( Id., ex. B at 18–26) Although the asserted patents have now been found invalid by the BPAI, plaintiff has not requested...