Wilson Sporting Goods Co. v. David Geoffrey & Associates
| Decision Date | 23 May 1990 |
| Docket Number | 89-1555,Nos. 89-1554,s. 89-1554 |
| Citation | 904 F.2d 677,14 USPQ2d 1942 |
| Parties | WILSON SPORTING GOODS CO., Plaintiff-Appellee, v. DAVID GEOFFREY & ASSOCIATES d/b/a Slazenger, and Dunlop Slazenger Corporation aka Dunlop Sports Corporation, Defendants-Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
John W. Chestnut, Tilton, Fallon, Lungmus and Chestnut, Chicago, Ill., argued, for plaintiff-appellee. With him on the brief, was Vasilios D. Dossas.
David B. Tulchin, Sullivan and Cromwell, New York City, argued, for defendants-appellants. With him on the brief, were James H. Carter, John L. Hardiman and Michael J. Farrell. Also on the brief, was Anthony M. Lorusso, Lorusso and Loud, Boston, Mass., of counsel.
Before MARKEY, Chief Judge, RICH, Circuit Judge, and COWEN, Senior Circuit Judge.
These appeals, consolidated by agreement, are from judgments of the United States District Court for the District of South Carolina in two actions brought by Wilson Sporting Goods Co. (Wilson) for infringement of United States Patent 4,560,168 ('168), entitled "Golf Ball." Trial was before a United States Magistrate by consent. In the first action, the magistrate entered judgment of liability against Dunlop Slazenger Corporation (Dunlop) upon jury verdicts of patent validity and willful infringement. In the second action, the magistrate entered summary judgment of liability against David Geoffrey & Associates (DGA) under the doctrine of collateral estoppel, holding that DGA had been effectively represented by Dunlop in the first action. Our jurisdiction is under 28 U.S.C. Secs. 1292(c)(2) (1982) and 1295(a)(1) (1982). We reverse in part and vacate in part each judgment.
Wilson is a full-line sporting goods company and is one of about six major competitors in the golf ball business. Among its well-known balls are the ProStaff and Ultra. Dunlop is also a major player in the golf ball business. It competes head-to-head with Wilson by selling the Maxfli Tour Limited and Slazenger balls. It sells the Maxfli Tour Limited ball to numerous distributors, but sells the Slazenger ball only to DGA, which distributes the ball to U.S. customers.
On August 2, 1988, Wilson separately sued Dunlop and DGA for patent infringement in the United States District Court for the District of South Carolina. Wilson accused Dunlop of infringing claims 1, 7, 15-16, and 19-22 of its '168 patent, and made a general accusation of infringement against DGA.
The Dunlop case went to trial in late February, 1989. After a five day jury trial on the issue of liability, the jury returned special interrogatories finding the asserted claims "valid" (i.e., not proved invalid) and willfully infringed. Judgment was entered upon the verdict, Dunlop's motion for JNOV was denied, and Dunlop appealed. Wilson then moved for summary judgment of liability in the DGA case. It argued that DGA's interests in the second action had been effectively represented by Dunlop in the jury trial, and that Wilson was therefore entitled to summary judgment on the basis of collateral estoppel. The magistrate agreed, Order of May 15, 1989, and entered judgment. DGA appealed.
For more than a century, golfers have been searching for a "longer" ball. As one of the parties put it, "distance sells." Inventors have experimented with numerous aspects of ball design over the years, but as United States Golf Association (U.S.G.A.) rules began to strictly control ball size, weight, and other parameters, inventors focused their efforts on the "dimples" in the ball's surface. According to one witness, new dimple designs provide the only real opportunity for increasing distance within the confines of U.S.G.A. rules.
Dimples create surface turbulence around a flying ball, lessening drag and increasing lift. In lay terms, they make the ball fly higher and farther. While this much is clear, "dimple science" is otherwise quite complicated and inexact: dimples can be numerous or few, and can vary as to shape, width, depth, location, and more.
Wilson's '168 patent claims a certain configuration of dimples on a golf ball cover. The shape and width of the dimples in the '168 patent is for the most part immaterial. What is critical is their location on the ball. The goal is to create a more symmetrical distribution of dimples.
Generally speaking, the dimples in the patent are arranged by dividing the cover of a spherical golf ball into 80 imaginary spherical triangles and then placing the dimples (typically several hundred) into strategic locations in the triangles. The triangles are constructed as follows. First, the ball is divided into an imaginary "icosahedron," as shown in Figure 1. An icosahedral golf ball is completely covered by 20 imaginary equilateral triangles, 5 of which cover each pole of the ball and ten of which surround its equator. Second, the midpoints of each of the sides of each of the 20 icosahedral triangles are located, as shown in Figure 2. Third, the midpoints are joined, thus subdividing each icosahedral triangle into four smaller triangles. 1
The resulting 80 imaginary triangles are shown in Figure 3. Critically important are the light lines which join the midpoints. As can be seen from Figure 3, they form the arcs of circles which pass completely around the widest part of the ball. There are six such circles, referred to in the patent as "great circles."
All of the claims of the '168 patent require this basic golf ball having eighty sub-triangles and six great circles. Particular claims require variations on the placement of dimples in the triangles, with one common theme--the dimples must be arranged on the surface of the ball so that no dimple intersects any great circle. Equivalently stated, the dimples must be arranged on the surface of the ball so that no dimple intersects the side of any central triangle. See Figure 4, below. When the dimples are arranged in this manner, the ball has six axes of symmetry, compared to prior balls which had only one axis of symmetry. 2
Wilson employee Steven Aoyama filed his patent application on April 27, 1984. Twenty seven claims were presented. All were allowed on the first action without comment by the examiner. The patent issued on December 24, 1985, to Wilson as assignee of Aoyama.
Claim 1, the only independent claim, reads:
1. A golf ball having a spherical surface with a plurality of dimples formed therein and six great circle paths which do not intersect any di[m]ples, the dimples being arranged by dividing the spherical surface into twenty spherical triangles corresponding to the faces of a regular icosahedron, each of the twenty triangles being sub-divided into four smaller triangles consisting of a central triangle and three apical triangles by connecting the midpoints [of the sides] of each of said twenty triangles along great circle paths, said dimples being arranged so that the dimples do not intersect the sides of any of the central triangles. [Bracketed insertions ours.]
The remaining 26 claims are dependent upon claim 1. They contain further limitations as to the number and location of dimples in the sub-triangles. Claim 7, for example, requires that all "central triangles [have] the same number of dimples." Other dependent claims locate dimples on the perimeter of the apical triangles, so that dimples are shared by adjacent apical triangles. See Figure 5.
The most pertinent prior art is a 1932 British patent to Pugh, which was cited by the examiner. Pugh teaches that a golf ball can be divided into any regular polyhedron, including an icosahedron. Pugh also discloses sub-dividing each of the twenty icosahedral triangles into smaller triangles. As an example, shown in Figure 6, Pugh divides each icosahedral triangle into sixteen sub-triangles, in contrast to the four sub-triangles required by the '168 patent. (The dimples in Pugh are triangular.) Nonetheless, Figure 6 (which is Figure 3 of the Pugh patent) makes clear that Pugh's sixteen sub-triangles are merely further divisions of four larger sub-triangles. Claim 3 of Pugh explains his invention (our emphasis):
3. A method of distributing a pattern with substantial uniformity over the surface of a sphere, such as a golf ball, which consists in ... form[ing] equilateral triangles in the case of the ... icosahedron ..., dividing the sides of the triangles so found into the same number of equal or substantially equal parts and finally joining corresponding points in each pair of sides of each triangle by a series of arcs of great circles, substantially as described.
The prior art also includes several patents to Uniroyal and a Uniroyal golf ball sold in the 1970's. The Uniroyal ball is an icosahedral ball having six great circles with 30 or more dimples intersecting the great circles by about 12-15 thousandths of an inch. 3 We discuss it extensively below.
There are four accused products, all of which the jury found to infringe. The following table summarizes the characteristics of each accused ball:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The accused balls (collectively "Dunlop's balls") have dimples which are arranged in an icosahedral pattern having six great circles, but the six great circles are not dimple-free as the claims literally require. The number of dimples which intersect great circles and the extent of their intersection were disputed by the parties, but the evidence most favorable to appellee Wilson can be summarized as follows (units of last two columns are 0.001"):
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
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