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Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent

October 19, 2009
Post by Blog Staff

In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness. The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness: the jury held a dependent claim obvious but the independent claim from which it depends not obvious. The court stated that such a result reflects an "irreconcilable inconsistency" and thus a new trial on obviousness must be granted.The court also addressed the question of incorporation by reference. The defendant argued the claims were anticipated based on a prior art patent that made reference to another patent for one of the relevant limitations. The district court held the incorporation by reference was ineffective and excluded expert testimony regarding the "combined" prior art. The Federal Circuit reversed, holding the incorporation by reference was sufficiently specific to be successful, and remanded the issue of anticipation to the district court for redetermination.More on Callaway Golf Co. v. Acushnet Co. after the jump.The plaintiff, Callaway Golf Company, brought suit against Acushnet Company alleging that Acushnet had infringed various claims of four patents owned by Callaway. Specifically, Callaway asserted several of Acushnet's Pro V1 golf balls infringed claims of these patents. After claim construction, Acushnet stipulated its golf balls infringed, but contended that the asserted claims were invalid for anticipation and obviousness. Figure 2 of the parent patent provides a helpful of illustration of three-piece ball claimed by Callaway in the various patents:

Figure 2
Claim 1 of the '293 is representative of the asserted claims (emphases added):
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.

Subsequent to claim construction, Acushnet stipulated that its accused balls infringed under the district court's construction. The district court also granted summary judgment of no anticipation, holding the asserted prior art reference did not incorporate another patent by reference. Following a trial on obviousness, the jury determined that—with the exception of dependent claim 5 of the '293 patent—none of the asserted claims was invalid. What this meant, though, was that dependent claim 5 of the '293 patent was invalid for obviousness, but that independent claim 4 from which it depended, as well as the other seven asserted claims, were not invalid for obviousness. Acushnet appealed.The Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded. The court first addressed the district court's claim construction of the phrase "cover layer having a Shore D hardness." Acushnet contended that the meaning of this phase to one of ordinary skill in the art would mean hardness of the cover layer as tested off the ball. Callaway countered, and the court agreed, that the Sullivan patents clearly do not require to hardness to be tested off the ball. Rather, the golf ball industry commonly conducts hardness tests on the ball. This was supported by the testimony of Acushnet's witnesses, who noted the standard practice in the industry is to conduct such tests on the ball, even though the ASTM D-2240 standard prohibits such testing on a rounded or curved surface (such as a golf ball). The court therefore affirmed the district court's claim construction.The court next moved on to the district court's entry of the jury verdict that dependent claim 5 was invalid for obviousness while the remaining claims, including independent claim 4 from which claim 5 depends, were not invalid. Callaway argued Acushnet had waived any its objection to the allegedly inconsistent jury verdicts by failing to object before the jury was released. The court noted that the Third Circuit has not determined directly the question of whether an objection is required to preserve error in the face of inconsistent general verdicts. Here, the court determined, that Acushnet had not waived its claim but rather had been "beaten to the punch" by Callaway's counsel. After the jury was polled at the conclusion of the trial, counsel for Callaway (not Acushnet) called for a sidebar:

[Callaway]: Your Honor, the issue is the one claim which they did find invalid is a dependent claim.
THE COURT: [A]ll right. Do you want to send them back?
[Callaway]: I'm not sure that they understand—
THE COURT: I'm not going to do this. All right?
[Callaway]: I just wanted to raise it.

Acushnet contended that court rendered a final decision in response to Callaway's objection and it would have served no purpose in repeating the point. The district court was sensitive to this position and noted so in its order on the various post-trial motions. The Federal Circuit, accordingly, found no basis for disturbing this determination that a waiver did not occur.With respect to the inconsistency, the court held the verdicts were, in fact, inconsistent. Simply put, the court stated a "broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is obviousness." Because it was impossible to resolve the inconsistency, the court vacated the district court determination and remanded for a new trial on obviousness.Finally, the court ruled that the district court erroneously excluded evidence regarding test balls that Acushnet created based on a prior art reference and used in its anticipation argument. The district court ruled that the test ball design was not fully described within a single prior art reference because of a failed incorporation by reference. However, the court found that the needed disclosures may have been properly incorporated-by-reference within the prior art. The rule, according to the court, is that the incorporation-by-reference must clearly identify the material being incorporated. Here, the relevant language from the prior art patent read:

The inner, intermediate, or first layer or ply 14 and the outer cover, second layer or ply 16 or either of the layers may be cellular when formed of a foamed natural or synthetic polymeric material. Polymeric materials are preferably such as ionomer resins which are foamable. Reference is made to the application Ser. No. 155,658, of Robert P. Molitor issued into U.S. Pat. No. 4,274,637 which describes a number of foamable compositions of a character which may be employed for one or both layers 14 and 16 for the golf ball of this invention.

The court held this clearly identified the material being incorporated (foamable compositions suitable for golf ball cover layers) and where that material may be found in the incorporated reference. As such, the incorporation by reference was effective, and it was error for the district court to exclude evidence of the test balls.Interestingly, evidence regarding these same test balls were excluded in the context of obviousness under

  • Anticipation
  • Claim construction
  • Federal Circuit cases
  • Obviousness

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