# Petition for Writ of Certiorari — Acushnet Co. v. Callaway Golf Co.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_1355%3A1

## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2010
- **Citation:** 559 U.S. 939

## Text

No. 09-___ 99-702 DEC 11 2009

seen

OFFICE OF THE CLen«
Hn the Supreme Court of the Anited States

ACUSHNET COMPANY,
Petitioner,

Vv.

CALLAWAY GOLF COMPANY,
Respondent.

ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

RICHARD L. STANLEY
Counsel of Record

HOWREY LLP

1111 Louisiana St.,
25% Floor

Houston, TX 77002

(713) 787-1400

HENRY C. BUNSOW

HowreEY LLP JOSEPH P. LAVELLE
525 Market Street, Howrey LLP

Suite 3600 1299 Pennsylvania Ave., NW
San Francisco, CA 94105 Washington D.C. 20004
(415) 848-4900 (202) 783-0800
December 11, 2009 Attorneys for Petitioner

WiLSON-EPeS PRINTING CO., INC. — (202) 789-0096 -— WAasHINGTON, D.C. 20002

QUESTIONS PRESENTED

This case epitomizes how the Federal Circuit
incorrectly reviews jury verdicts on the ultimate
legal issue of patent validity under 35 U.S.C.
§ 103(a). The district court treated the jury’s § 103
verdicts as factual findings, holding only “that
substantial evidence supports the jury’s verdict of
nonobviousness.” The Federal Circuit upheld the
jurys §103 verdicts solely because “substantial
evidence” supported an implicit finding that one
claim limitation was not in the prior art. The legal
issue, however, was whether the asserted claims
would have been obvious to one of ordinary skill
despite that one difference with the prior art. By
reviewing the verdicts only for substantial evidence,
no court ever independently addressed or decided the
ultimate legal question.

Thus, the following questions are presented:

1. Whether this Court should make clear that
no single finding on any of its underlying Graham
factors is dispositive of the ultimate legal conclusion
on invalidity, such that a court reviewing a jury's
§ 103 verdicts must always independently render its
own legal conclusion regardless of whether one or all
of the jury’s underlying findings are accepted as
adequately supported by the evidence?

2. Whether this Court should instruct that a
jury’s § 103 verdict necessarily identifies the jury’s
implicit findings on the disputed underlying factual
issues litigated at trial, but is entirely advisory as to
the ultimate legal conclusion on invalidity?

i

PARTIES TO THE PROCEEDING

Pursuant to Rule 14.1(b), the parties here and
in the proceeding in the U.S. Court of Appeals for the
Federal Circuit are listed.

Petitioner here and Defendant-Appellant
below is Acushnet Company.

Respondent here and Plaintiff-Appellee below
is Callaway Golf Company.

RULE 29.6 CORPORATE DISCLOSURE
STATEMENT

Acushnet Company is a_ wholly-owned
subsidiary of its parent, Fortune Brands, Inc., which
is a publicly held company.

il

TABLE OF CONTENTS

QUE LIN © UREN E TEE? ce cececcccsevovcsewvsenccssseounscoseees i
PARTIES TO THE PROCEEDING...................::s000008 li
RULE 29.6 CORPORATE DISCLOSURE
ENDER EEE SER A RISE AREF Oee ii
SURFER, BAP AAR Fe EU vases evevecesecesovsnsienssssnetecceveness Vv
SAE Ee FARE CRP RE ees esiiscnsnecsncseresivccereiscesssonas vi
PETITION FOR A WRIT OF CERTIORARI ............. 1
TT iis cicpincripitnncenccabenssccnadeiinestachinteinniies 2
FIT vcincssnastnacncnadsbeusctneninapsavascisebeutaneneyennie 2
STATUTORY PROVISION INVOLVED..................... 2
STATEMENT OF THE CASE .................::cccccesssresseees 2
A. Introductory Statement.................cccceeeeeeeeeeeees 2
B. The Relevant Golf Ball Technology ................. 7
) The Accused Golf Balls .................ceeeee 7
2. The Asserted Patent Claims.................. 8
3. eR BE Bi issincisnsentinnncianinveninnpetinhuste 10
C. The District Court Proceedinggs...................... 13
1. Pe Biter cnsecioncatihacatinsecihiiaiiatemmenaninaga 13
2 The Denial Of JMOL Post-Trial.......... 15

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ie

IT.

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IV.

CONCLUSION

THIS COURT SHOULD REVIEW AND
CORRECT THE FEDERAL CIRCUITS
METHODOLOGY FOR REVIEWING

JURY OBVIOUSNESS HOLDINGS ..........

A JURY'S § 103 VERDICT
IDENTIFIES THE JURY’S IMPLICIT
FINDINGS ON ANY UNDERLYING
DISPUTED FACTUAL ISSUES, BUT
IS MERELY ADVISORY AS TO THE
JURY'S STATED LEGAL

EES ee a

AFFIRMANCE OF EVEN ALL OF A
JURY'S UNDERLYING FINDINGS
DOES NOT MANDATE THAT THE
REVIEWING COURT AFFIRM THE
JURY’S ULTIMATE LEGAL

i ccpaenen

THIS CASE PROVIDES AN
EXCELLENT VEHICLE FOR
DECIDING THE IMPORTANT ISSUES

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SOOO EEE EEE EEE EEE EEE EEE EEE EEEEEEEE EEE

INDEX TO APPENDICES

APPENDIX A: Opinion of the United States
Court of Appeals for the Federal Circuit,
reported at 576 F.3d 1331 (Fed. Cir. 2009).............. la

APPENDIX B: Order of the United States
District Court for the District of Delaware,
filed Nov. 10, 2008 (unreported) ..................0.00eceeees 37a

APPENDIX C: Judgment of the United
States District Court for the District of
Delaware, filed Dec. 19, 2007 (unreported)............ 40a

APPENDIX D: Order of the United States
District Court for the District of Delaware,
filed Nov. 10, 2008 (unreported) ...................s0cceeeees 44a

APPENDIX E: Memorandum Opinion of the

United States District Court for the District

of Delaware, filed Nov. 10, 2008, reported at

§23 F. Supp. 2d 388 (D. Del. 2008)......................... 9la

APPENDIX F: Text of 35 U.S.C. § 103(a) ............. 94a

TABLE OF AUTHORITIES

Page(s)

Cases
Anderson’s-Black Rock, Inc. v. Pavement

Salvage Co.,

I EE oon sc pnannwncunensnscnseunts 26
Cardiac Pacemakers, Inc. v. St. Jude

Medical, Inc.,

381 F.3d 1371 (Fed. Cir. 2004)...............c0cse00 25
Cordis Corp. v. Boston Scientific Corp.,

561 F.3d 1319 (Fed. Cir. 2009)................s0se00 25
Dann v. Johnson,

IG na nse sencerancncnnsoosnoenasenenen 26
Dennison Mfg. Co. v. Panduit Corp.,

Ee 3
Fresenius USA, Inc. v. Baxter Int'l, Inc.,

582 F.3d 1288 (Fed. Cir. 2009)........... 26, 32, 36
Graham v. John Deere Co.,

TG Pe BIE cutcnncsececccccnosencscenesccesone passim
Great Atlantic & Pacific Tea Co. v.

Supermarket Equipment Corp.,

I a. ssunenatnbononeners 26
Hewlett-Packard Co. v. Mustek Systems, Inc.,

340 F.2d 1314 (Fed. Cir. 20038)....................... 31

vi

Honeywell Int'l Inc. v. Hamilton
Sundstrand Corp.,
370 F.3d 1131 (Fed. Cir. 2004)....................... 24

In re GPAC, Inc.,
57 F.3d 1573 (Fed. Cir. 1995).............ccccccsssees 37

In re Lockwood,
50 F.3d 966 (Fed. Cir.),
vacated, 515 U.S. 1182 (1995)................ 5, 6, 25

In re Peterson,
315 F.3d 1325 (Fed. Cir. 2003)....................... 37

In re Technology Licensing Corp.,
423 F.3d 1286 (Fed. Cir. 2005)....................0066 5

Kemin Foods, L.C. v. Pigmentos Vegetales Del
Centro S.A.,
464 F.3d 1339 (Fed. Cir. 2006)....................0.. 25

Kinetic Concepts, Inc. v. Blue Sky Med.
Group, Inc.,
554 F.3d 1010 (Fed. Cir. 2009)........... 26, 32, 36

LNP Engineering Plastics, Inc. v. Miller Waste
Mills, Inc.,
275 F.3d 1347 (Fed. Cir. 2001).............cccsseseee 25

MuniAuction, Inc. v. Thomson Corp.,
532 F.3d 1318 (Fed. Cir. 2008)....................... 35

Newell Companies, Inc. v. Kenney Mfg. Co.,
864 F.2d 757 (Fed. Cir. 1988)......................... 30

Vii

Ormco Corp. v. Align Tech., Inc.,

463 F.3d 1299 (Fed. Cir. 2006)....................... 37
Perkin-Elmer Corp. v. Computervision Corp.,

732 F.2d 888 (Fed. Cir. 1984)................... 28, 29
Pro-Mold and Tool Co. v. Great Lakes Plastics,

Inc.,

75 F.3d 1568 (Fed. Cir. 1996)......................... 38
Railroad Dynamics, Inc. v. A. Stucki Co.,

727 F.2d 1506 (Fed. Cir. 1984)...................000 30
Richardson- Vicks Inc. v. Upjohn Co.,

122 F.3d 1476 (Fed. Cir. 1997)................. 25, 30
Sakraida v. Ag Pro, Inc.,

I Ts ccssinnacensncosennecoeee 26
Sarkisian v. Winn-Proof Corp.,

688 F.2d 647 (9 Cir. 1982)................ 28, 29, 31
United States v. Adams,

a csstaduaebunn 26
Statutes
canna eabnbeee passim
Rules
Sa a apianenbiotalis 28, 29
TI I ss asapupecenneten 3, 29

No. 09-

Jn the Supreme Court of the United States

ACUSHNET COMPANY,
Petitioner,

Vv.

CALLAWAY GOLF COMPANY,
Respondent.

ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

Petitioner Acushnet Company (“Petitioner” or
“Acushnet”) respectfully petitions for a writ of
certiorari to review the decision of the United States
Court of Appeals for the Federal Circuit holding that
Acushnet was not entitled to judgment as a matter of
law (“JMOL”) that eight asserted claims of four
related patents-in-suit were invalid for obviousness
under 35 U.S.C. § 103(a). After upholding those jury
verdicts, the Federal Circuit separately remanded
the case for a new trial due to irreconcilable jury
verdicts, which would have been avoided by a proper
grant of JMOL. Only the issues concerning the
proper judicial review of a jury’s § 103 verdicts are
implicated by this petition.

OPINIONS BELOW

The Federal Circuit’s opinion (App. la-36a) is
reported at 576 F.3d 1331. The Federal Circuit's
order denying Petitioners’ petition for rehearing and
rehearing en banc (App. 91a-93a) is unreported. The
district court’s order resolving the post-trial motions
is at App. 37a-38a, its judgment is at App. 39a, and
its injunction order is at App. 40a-43a. The district
court’s memorandum opinion (App. 44a-90a) is
reported at 523 F. Supp. 2d 388.

JURISDICTION

The Federal Circuit’s judgment was entered
on August 14, 2009. App. 3a. A timely combined
petition for rehearing and for rehearing en banc was
denied on October 6, 2009. App. 57a-59a. This
Court has jurisdiction pursuant to 28 U.S.C.
§ 1254(1).

STATUTORY PROVISION INVOLVED

This case concerns the proper methodology for
judicial review in a patent case where a jury returns
verdicts on the legal issue of patentability set forth
in 35 U.S.C. § 103(a), as reproduced at App. 94a.

STATEMENT OF THE CASE
A. Introductory Statement

In Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966), this Court held that “the ultimate question
of patent validity is one of law” while recognizing

that “the § 103 condition ... lends itself to several
basic factual inquiries.”

Under § 103, the scope and content of the prior
art are to be determined; differences between
the prior art and the claims at issue.are to be
ascertained; and the level of ordinary skill in
the pertinent art resolved. Against this
background the obviousness or
nonobviousness of the subject matter is
determined. Such secondary considerations as
commercial success, long felt but unsolved
needs, failure of others, etc., might be utilized
to give light to the circumstances surrounding
the origin of the subject matter sought to be
patented.

383 U.S. at 17-18. In KSR Int7 Co. v. Teleflex Inc.,
550 U.S. 398, 407 (2007), this Court reiterated the
Graham “framework” and emphasized that its
factors “continue to define the inquiry that controls.”

About 20 years after Graham, this Court
reminded the Federal Circuit to honor the
delineation under § 103 between the ultimate legal
issue and the underlying factual determinations. In
Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809,
811 (1986), this Court vacated a Federal Circuit
decision that had reversed a holding of obviousness
after a bench trial, noting that a district court’s
subsidiary factual determinations “at the least,
ought to be subject to [Fed. R. Civ. P. 52(a)]” and
expressly requesting “the Federal] Circuit’s informed
opinion on the complex issue of the degree to which
the obviousness determination is one of fact.”

On remand, then-Chief Judge Markey recited
his court’s understanding of how to differentiate
between the legal and factual aspects of the § 103
inquiry. Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561 (Fed. Cir. 1987). The Federal Circuit
explained that “[a] § 103 determination involves fact
and law” but held that the ultimate “obviousness-
nonobvious” question is one of law:

With the involved facts determined, the
decision-maker confronts a ghost, ie., “a
person of ordinary skill in the art.” ... In light
of all the evidence, the decisionmaker must
then determine whether the patent challenger
has convincingly established ... that the
claimed invention would have been obvious at
that time to that person. ... The answer to
that question partakes more of the nature of
law than of fact, for it is an ultimate
conclusion based on a foundation formed of all
the probative facts. If itself a fact, it would be
part of its own foundation.

810 F.2d at 1566. Moreover, the Federal Circuit
agreed that this Court’s holding in Graham that “the
ultimate question of patent validity is one of law”
was rightly interpreted as meaning “that one
answering the § 103 question is drawing a legal
conclusion.” 810 F.2d at 1567.

Like all legal conclusions, that under § 103
rests on a factual evidentiary foundation. As
said in Graham, 383 U.S. at 17, the question is
determined “against” the “background” of
answers to factual inquiries—a description of

5

how legal questions are normally determined.
One effect of considering the § 103 question
one of law in this court is to facilitate a
consistent application of that statute in the
courts anc in the Patent and Trademark
Office (PTO).

Id. at 1567. Nevertheless, the Federal Circuit’s later
decisions have increasingly failed to adhere to the
proper division between “factual issues” and “legal
conclusions” when reviewing §103 judgments,
particularly in jury cases.

In 1995, the Federal Circuit upheld a right to
a jury in a declaratory judgment action to determine
patent validity. In re Lockwood, 50 F.3d 966 (Fed.
Cir.), vacated, 515 U.S. 1182 (1995). Dissenting from
the denial of rehearing en banc, Judge Nies
questioned the jury’s role after this Court’s holding
in Graham that obviousness is an issue of law.

[En] banc efforts to clarify the issue have been
unsuccessful, as this case itself illustrates. ...
Thus, this court invokes the standard of
review applicable to the ultimate issue of fact
or an ultimate issue of fact mixed with law
and applies it to an ultimate issue of law.

See 50 F.3d at 988-89 (Nies, J., dissenting) (footnote
omitted). Although this Court granted certiorari in
Lockwood, the petition was dismissed after
Lockwood withdrew his jury demand. See In re
Technology Licensing Corp., 423 F.3d 1286, 1288 &
n.1 (Fed. Cir. 2005).

6

Unlike the “right to a jury” issue in Lockwood,
this petition challenges how the Federal Circuit (or a
district court) reviews jury verdicts that decide only
the ultimate § 103 issue. However, Judge Nies’
dissent in Lockwood remains pertinent because she
had already recognized that the Federal Circuit’s
approach to reviewing such verdicts was in disarray:

Some panel opinions speak of de novo review
after accepting the presumed findings of fact.
Others reject the de novo standard. Still
others conflate the standard to whether a
“reasonable” jury could reach the verdict it
rendered.

50 F.3d at 989 (citations omitted). Since then, the
Federal Circuit has not resolved that fundamental
conflict on its own, and the confusion and
inconsistency within its § 103 precedent has become
even more pronounced and irreconcilable.

Now, over 20 years after Dennison, the
Federal Circuit needs more than a reminder to follow
Graham, it needs explicit guidance on how to do so in
jury cases. As the Federal Circuit stated in Panduit,
“(tlhe decisional process en route to a §1063
conclusion involves more than the fact inquiries in
Graham.” 810 F.2d at 1567. Yet, the Federal
Circuit’s recent § 103 decisions erroneously conflate
the jury's implicit findings on the Graham inquiries
into the ultimate legal conclusion. If the court holds
that substantial evidence supports the jury’s implicit
finding on a disputed factual issue, then the jury’s
verdict on the ultimate legal conclusion is simply
affirmed. Regardless of how the jury decided the

§ 103 issue, that truncated review cannot be the
extent of the proper judicial inquiry.

Unlike in KSR, where the Federal Circuit had
unduly raised the bar for proving invalidity under
§ 103, see 550 U.S. ‘at 419, the questions here apply
to every patent jury case involving § 103, no matter
which outcome is reached. Today, more patent cases
are being tried to juries, and virtually every such
case involves an assertion of invalidity under § 103.
Moreover, these issues apply equally to reviews of
jury verdicts by district courts and by the Federal
Circuit.

At best, the Federal Circuit’s inconsistent
approaches have created confusion and uncertainty
for litigants, district courts, and its own panels in
discerning how jury verdicts under § 103 are to be
reviewed. At worst, as in this case, the Federal
Circuit’s abbreviated review of § 103 verdicts only for
“substantial evidence” eliminates the independent
judicial determination of the ultimate question of
validity under §103 required by this Court’s
precedent. The time is overdue for this Court to
review this fundamentally incorrect approach.

B. The Relevant Golf Ball Technology
1. The Accused Golf Balls

Petitioner Acushnet is a Massachusetts-based
golf equipment manufacturer that has designed and
sold professional quality golf balls since 1932. For
decades, Acushnet’s Titleist® brand golf balls have
been known as “The No. 1 Ball in Golf.” Acushnet’s

8

accused products are its Pro V1, Pro V1*, and Pro
V1x golf balls (collectively, “the Pro V1 ball”) which
were its latest offerings in the Titleist® line of high-
quality golf balls.

First introduced in 2000, Acushnet’s Pro V1
balls have a “three-piece” construction, consisting of
a solid core and two cover layers. The inner cover is
a relatively hard blend of ionomers, while the outer
cover is a soft, castable polyurethane independently
developed and patented by Acushnet. See infra.
Since being introduced, Acushnet’s Pro V1 balls have
achieved an unprecedented combination of great
distance off the tee and soft “feel” around the greens.
See App. 46a-47a.

2. The Asserted Patent Claims

Respondent Callaway is a California-based
golf equipment manufacturer. In 2000, Callaway
introduced its first golf ball, called the “Rule 35” ball.
In 2003, Callaway acquired the “Sullivan” patents-
in-suit! by purchasing the assets of Spalding Sports
Worldwide, Inc., a bankrupt golf company that was
the original assignee. Before purchasing the patents,
Callaway had refused to take a license under them,
asserting that the ‘293 patent was invalid.

| The four related patents-in-suit and the asserted claims are
identified at App. 3a n.1. Because the Federal Circuit held that
a new trial was required on all asserted claims due to
irreconcilable jury verdicts, those claims are patentably
indistinct for purposes of this petition. See App. 24a-29a.

9

The four patents-in-suit have essentially the
same specifications and relate to multi-layer golf
balls that use polyurethane as the outer cover. The
earliest patent, the ‘293 patent, did not issue until
after Acushnet’s Pro V1 ball was introduced, so
Acushnet independently developed its products
without knowledge of the patents-in-suit. The other
three patents-in-suit were not even filed until after
the Pro V1’s introduction. All of the patents-in-suit
issued from continuation applications based on a
1995 Sullivan application, which was itself a
continuation-in-part of an earlier 1993 application.
However, Sullivan’s 1993 application did not disclose
a low-acid ionomer inner cover or a_ cast
polyurethane outer cover.

All of the asserted claims have limitations
directed to a three-piece golf ball having a core, an
inner cover made of a low-acid ionomer or ionomer
blend with a Shore D hardness of 60 or more, and a
polyurethane outer cover with a Shore D hardness of
64 or less. App. 4a-6a & n.2. “Shore D hardness”
refers to a hardness standard published by the
American Society for Testing and Materials. App.
6a. Claim 1 of the ‘293 patent is representative, and
is reproduced at App. 5a. See also App. 47a-51a.

While Callaway repeatedly mischaracterized
the patents-in-suit throughout trial as disclosing the
particular features that enabled the success of
Acushnet’s Pro V1 ball, the patents and their claims
contain no such teachings. Instead, the asserted
claims cover virtually every conceivable combination
of prior art cores, cover thicknesses, and
polyurethane outer covers that could fit within a

10

regulation-sized golf ball. On their face, therefore,
nothing in the asserted claims reveals whether or
how any particular combination within the claimed
ranges of golf ball components might achieve

unexpected results or be a commercially acceptable
ball.

3. The Prior Art

Three-piece golf balls (i.e., a core and two
cover layers) had been known in the art since the
1980’s. For example, the Nesbitt patent describes a
ball having a core, a hard inner cover of a low-acid
ionomer, and a soft outer cover made of a soft
ionomer. See App. 29a-30a. Similarly, the Proudfit
patent taught a three-piece ball with a core, an
ionomer-blend inner cover, and a relatively soft
balata outer cover. App. 9a n.3. Proudfit’s assignee
sold an Ultra Tour Balata (“UTB”) ball which
embodied the patent. Both the Proudfit patent and
the UTB ball met every limitation of the asserted
claims except the polyurethane cover. In that
regard, the Molitor ‘751 patent taught using a
polyurethane cover on either two-piece or three-piece
golf balls like Nesbitt or Proudfit. Id.

By the mid-1990’s, golf ball covers were
primarily balata, balata blends, ionomers, or
polyurethane. Skilled golfers preferred balata covers
for its desirable “spin” and “feel” properties, but
balata was not durable and cut easily. lonomer
resins were a synthetic substitute for balata and had
better cut resistance, but ionomers lacked balata’s
“spin” and “feel” characteristics. Polyurethane was a
soft, flexible material used on golf ball covers since

11

the mid-1970’s, but had difficulties in manufacturing
and durability.

That changed in 1994, when Acushnet
introduced the Titleist® Professional ball, which
used a new cast polyurethane cover instead of balata.
In August 1994, a patent issued to an Acushnet
research chemist, Dr. Wu, disclosing the castable
polyurethane material used on the Professional ball
and teaching that this improved polyurethane could
replace both balata and ionomer covers on golf balls.
Wu’s polyurethane material, made from a slow-
reacting curative, was significantly more durable
than prior polyurethanes and could be cast (as
opposed to injection or compression molded) into a
very thin cover layer.

Using Wu’s castable polyurethane cover, the
Titleist® Professional ball quickly became the most
favored ball on the PGA Tour. ‘Today, Acushnet’s Pro
V1 balls still use Wu’s castable polyurethane for its
outer cover. After Sullivan read Wu’s patent, he
experimented with castable polyurethane covers. In
November 1995, Spalding (ffiled Sullivan’s
continuation-in-part application adding castable
polyurethane as new matter. Spalding’s application
recognized, as taught by Wu, that polyurethane was
a useful substitute for ionomer and balata covers.

Indeed, after the Wu patent issued, four
different golf ball manufacturers—Acushnet,
Spalding, Callaway, and _ Nike/Bridgestone—
independently took the obvious step of trying such
castable polyurethane as a cover for multi-layer balls
like Proudfit and Nesbitt. Acushnet’s Pro V1 ball

12

succeeded. Callaway’s Rule 35 ball, although
accused of infringing the patents-in-suit, was
discontinued by 2003. Spalding, Sullivan’s employer,
never achieved a successful ball and eventually went
bankrupt. However, while Sullivan never made a
successful ball, he realized that golf ball designs
would change after Acushnet’s introduction of
castable polyurethane.

While Acushnet was independently developing
its Pro V1 ball using Wu’s polyurethane material,
Sullivan amended his pending patent application to
incorporate castable polyurethane covers’ to
encompass whatever future polyurethane-covered
ball might eventually be achieved. The resulting
claims covered virtually every combination of
standard golf ball components together with
polyurethane outer covers that were possible within
a regulation golf ball without disclosing which
combination might be successful. Such overbreadth
and failure to distinguish the prior art should have
been fatal to validity.

Sullivan’s invention notebook revealed that
his purpose had been to design a ball “generally
equivalent to [Nesbitt]” but using newer materials
unavailable to Nesbitt. In essence, Sullivan claimed
what he hoped to do but never achieved. Even if he
had, however, the substitution of newer, previously-
unavailable, and improved materials into existing
designs (such as using the polyurethane disclosed by
Wu as the outer cover of Nesbitt’s prior art ball) is
the type of routine and predictable development that
this Court specifically instructed in KSR is not
patentable. See 550 U.S. at 421.

13

C. The District Court Proceedings

Callaway filed this suit on February 9, 2006.
App. 45a. On November 20, 2007, the district court
issued its claim construction ruling, granted
Callaway’s summary judgment motion of no
anticipation, and denied Acushnet’s summary
judgment motion of invalidity for anticipation and
obviousness. App. 45a. Due to the breadth of the
asserted claims, which effectively covered any three-
piece golf ball with a polyurethane outer cover,
Acushnet stipulated to infringement. App. 45a. The
district court then bifurcated damages from liability.
App. 10a.

1. The Trial

Obviousness was tried to a jury starting on
December 3, 2007. Under Graham, the four factual
inquiries underlying the obviousness question are
the level of ordinary skill in the art, the scope and
content of the prior art, the differences between the
claimed invention and the prior art, and any relevant
secondary considerations. See 383 U.S. at 17. Here,
most of those factual issues were not disputed.

The level of ordinary skill in the art was
undisputed. Acushnet’s expert testified that such
person had experience in golf ball and/or cover
design, generally understood ball materials and
construction, and knew the relevant prior art.
Callaway offered no contrary definition, and neither
party raised that issue post-trial.

14

The scope and content of the prior art was also
undisputed. The jury was instructed that the
relevant art included: (1) the Nesbitt patent, (2) the
Molitor “751 patent, (3) the Molitor ‘637 patent, (4)
the Proudfit patent, (5) the Wu patent, (6) the
Professional ball, and (7) the UTB bali. Acushnet’s
invalidity position was that the asserted claims
would have been obvious in view of the three-piece
balata ball of the Proudfit patent or the UTB ball
together with polyurethane cover taught by Molitor
“751 and/or Wu.

The only disputed factual issues concerned an
alleged difference between the claimed invention and
the prior art, and whether there was a motivation to
combine the cited references. To have some
difference to advance before the jury, Callaway
argued that no prior art disclosed a polyurethane
outer cover on a golf ball that was below Shore D 64
hardness. App. 16a-20a. However, Callaway most
heavily relied on alleged “secondary considerations”
based on Acushnet’s own commercial success and
unexpected results achieved by the specific design
that Acushnet developed and introduced in the
accused Pro V1 ball.

Because Acushnet had conceded infringement,
Callaway’s strategy was to equate Acushnet’s Pro V1
balls to the claimed invention, insisting before the
jury that the asserted claims taught the “right
combination” from amid the infinite “unpredictable”
claimed combinations. On their face, however, the
asserted claims did no such thing; they contain no
limitations to any unique, unexpected, or critical
performance criteria that could possibly distinguish

15

the prior art. The misleading nature of Callaway’s
trial presentation made it even more critical that the
reviewing courts independently reviewed the § 103
question as one of law.

2. The Denial Of JMOL Post-Trial

On December 14, 2007, the jury returned
interrogatories holding dependent claim 5 of the ‘293
patent invalid as obvious, but holding that the other
eight asserted claims were not proven invalid. App.
10a. The district court recognized that the verdicts
were inconsistent, but declined to order further
deliberations. App. 25a-26a. The court then entered
judgment for Callaway that facially adopted the
jury’s inconsistent verdicts. App. 39a.

Acushnet renewed its JMOL motion of
obviousness on the eight claims that had not been
invalidated and alternatively moved for a new trial.
Callaway did not seek JMOL of nonobviousness on
the one claim that the jury held was invalid. On
November 10, 2008, the district court denied
Acushnet’s post-trial motions (App. 44a-90a) and
permanently enjoined Acushnet from making and
selling the Pro V1 balls at issue during trial. App.
40a-43a.

The district court’s post-trial opinion
highlights the analytical errors that are rampant
under the Federal Circuit’s obviousness precedent.
According to the district court, it was Acushnet’s
burden “to prove obviousness at trial by clear and
convincing evidence” and it was Acushnet’s burden
on JMOL to “demonstrate that the verdict of

16

nonobviousness was not supported by substantial
evidence.” App. 56a. The district court was incorrect
on both counts.

A defendant's burden applies to the facts
underlying its invalidity defense, not the ultimate
legal conclusion. Once the facts are established by
whatever quantum of proof may be required, the
appropriate legal conclusion is drawn from those
facts. Simply put, a legal conclusion is not proven by
clear and convincing evidence, and the “substantial
evidence” standard of review should not apply when
reviewing that conclusion. Instead, only the
underlying factual findings are reviewed for
substantial evidence to establish the factual
background upon which the court's legal conclusion
is independently drawn.

Nevertheless, in denying JMOL, the district
court reviewed the jury’s nonobviousness verdicts
only for “substantial evidence.”

[Acushnet] must show the absence of facts
necessary to support a_ verdict of
nonobviousness, such that no reasonable jury
could conclude that defendant failed to meet
its high burden of proof. Such showing is
nearly unattainable in view of the fact that
[Callaway] presented its own rebuttal expert,
Dr. Risen, who testified regarding both the
scope and content of the prior art and the lack
of a motivation to combine, a question of fact.

17

App. 56a-57a. The district court identified and
upheld three disputed facts that the jury implicitly
resolved in Callaway’s favor.

First, the district court held that the jury
could have found that Acushnet’s evidence showing
the claimed Shore D hardness limitation in the prior
art fell short of clear and convincing. App. 57a-60a.
In other words, a reasonable jury could have found
that the claimed Shore D hardness limitation
constituted a difference with the prior art for
purposes of Graham.

Second, the district court held that a jury
could have reasonably “concluded” that a person of
ordinary skill would not have been motivated to put
a polyurethane cover on the Proudfit ball with any
expectation of success. App. 60a-62a. The court also
upheld an implicit finding that the golf ball art was
“unpredictable’ in that a designer would not know in
advance what performance would result from any
particular combination of ball materials, cover
hardnesses, and layer thicknesses. App. 62a-64a.
Ignoring that the patents-in-suit provided no such
guidance, the court credited Callaway’s expert's
testimony that there would have been no motivation
to combine Proudfit with either Molitor or Wu. App.
64a-65a.

Third, the district court cited Callaway’s
evidence of secondary considerations of
nonobviousness, which consisted primarily of
Acushnet’s own commercial success with its accused
Pro V1 balls. App. 65a-66a. According to the district
court, Acushnet’s infringement stipulation was

18

sufficient to establish a prima facie case that a nexus
existed between the commercial success and the
patented invention. App. 65a n.11.

In conclusion, the district court reiterated
“that substantial evidence supports the jury’s verdict
of non-obviousness.” App. 68a. Moreover, the court
declared that it did not need to consider Acushnet’s
evidence because the jury was free to resolve the
conflicting expert testimony in favor of Callaway.
App. 68a. Thus, the district court concluded that “a
reasonable jury could have found that defendant
failed to meet its clear and convincing burden on
invalidity.” App. 69a.

D. The Federal Circuit’s Decision

The Federal Circuit began by stating that
“{ajlthough the ultimate question of obviousness is a
legal issue reviewed de novo, the underlying findings
of fact (whether implicit or explicit within the jury’s
verdict) are reviewed from substantial evidence.”
App. 15a (citation omitted). However, the Federal
Circuit never reached the ultimate legal issue.

Instead, the Federal Circuit merely agreed
“that, when viewed in the light most favorable to the
verdict, the jury could have reasonably concluded
that Acushnet failed to prove invalidity due to
obviousness.” Jd. On its face, that approach of
reviewing “in a light most favorable to the verdict”
and deciding what “the jury could have reasonably
concluded” represents how courts review jury fact
findings, not how the courts draw legal conclusions
from established facts.

19

The Federal Circuit’s § 103 analysis consisted
of deciding only that “[t]he evidence before the jury
did not compel a finding that all claim limitations
were present in the prior art.” App. 16a. Under
Graham, that is just one of the underlying factual
inquiries, 1.e., identifying the differences between the
prior art and the claimed invention. See 383 U.S. at
17-18. Once any differences have been established
as a matter of fact, then the relevant legal conclusion
must be drawn by deciding whether overcoming the
identified differences would have been obvious to one
of ordinary skill in the art. However, the latter
inquiry was never conducted in this case.

The Federal Circuit seemingly accepted
Callaway’s argument that “the jury could have
rationally concluded that [the cited] combinations
did not in fact disclose or render obvious all
limitations of the asserted claims.” App. 16a.
However, that position completely blurs the critical
distinction between the factual and legal components
of the obviousness inquiry. Any question of whether
the jury could “rationally conclude” that the cited
prior art combinations did not “in fact” disclose all of
the claim limitations is the third factual inquiry
under Graham. However, the separate question of
whether the cited prior art combinations would have
rendered the claimed cor :bination obvious is neither
a question of fact nor something to be reviewed
merely for what a rational jury might have decided.

Here, the Federal Circuit only affirmed the
jury’s implicit finding that the prior art did not
disclose a polyurethane outer cover on a golf ball that
was below 64 on the Shore D hardness scale. App.

20

16a-20a. At most, that finding should have become
just one established fact upon which the ultimate
legal conclusion was drawn. Instead, after upholding
that one finding, the Federal Circuit’s obviousness
analysis simply stopped:

In summary, whether the prior art
disclosed the necessary hardness limitation
claimed in the Sullivan patents was an issue
of fact genuinely contested before the jury.
The district court did not err in concluding
that substantial evidence supports the jury’s
implicit resolution of that factual issue in
Callaway’s favor.

App. 20a. No other implicit findings were reviewed.
No other undisputed facts were mentioned. No
independent analysis of the appropriate legal
conclusion to be drawn from those established and
undisputed facts was ever made. As a matter of law,
that cannot be how federal courts are allowed to
apply this Court’s precedent requiring that the
ultimate invalidity determination be rendered as a
legal conclusion by the court.

21

REASONS FOR GRANTING THE PETITION

The Federal Circuit needs this Court’s
instruction on how to review a jury verdict on the
ultimate legal issue of obviousness under 35 U.S.C.
§ 103(a). As explained herein, the Federal Circuit
does not maintain the critical distinction between
reviewing a jury’s presumed but implicit underlying
factual findings and independently deciding the
ultimate legal conclusion based on the undisputed
facts and any jury findings supported by substantial
evidence. Thus, not only are courts not rendering an
independent judicial decision on the ultimate validity
issue as required by this Court’s precedent, but the
Federal Circuit’s review methodology has become so
fundamentally flawed that this Court’s guidance and
correction is required.

This Court should make clear that the judicial
role in reviewing a jury’s § 103 verdicts (whether on
JMOL or appeal) requires more than simply deciding
whether one or even all of the jury’ underlying
findings are supported by substantial evidence.
Instead, the proper judicial inquiry is a two-step
process where the second step requires the court to
render its own legal conclusion based on the facts
established by the jury’s supported findings. In this
case, as in many others decided under the Federal
Circuit’s flawed approach, the second step is simply
not being done.

Here, the Federal Circuit only affirmed that a
reasonable jury could have found a difference
between the claimed invention and the prior art, and
then affirmed the district court’s acceptance of the

22

jurys nonobviousness verdicts on that basis.
However, the mere fact that one or more claim
limitations are not in the prior art does not
invariably require a conclusion of nonobviousness.
Regardless of that finding, both the district court and
the Federal Circuit were obligated to decide de novo
(i.e., without deference to the jury’s § 103 verdicts)
whether, despite that difference, the asserted claims
were invalid for obviousness.

As this Court settled in Graham, obviousness
is a question of law. Yet, in its own words, the
Federal Circuit merely agreed “that, when viewed in
the light most favorable to the verdict, the jury could
have reasonably concluded that Acushnet failed to
prove invalidity by clear and convincing evidence.”
Tab A, at 12. That review methodology is wrong for
at least three reasons.

Unlike a jury’s resolution of the disputed facts,
a jury’s ultimate legal conclusion (1) should never be
reviewed in a light most favorable to the verdict, (2)
should never be reviewed from the perspective of a
reasonable jury, and (3) is not itself a fact to be
proven by clear and convincing evidence. Under
Graham, obviousness is not a factual question, and a
jury verdict on that ultimate legal question should
never be reviewed only for substantial evidence.
Once a jury’s findings are reviewed to establish the
facts, the reviewing court must then render its own
legal conclusion of “valid” or “invalid”— regardless of
whether the jury’s conclusion could be deemed
plausible or reasonable.

23

The jury’s § 103 verdict necessarily identifies
its presumed fact findings, but cannot be binding as
to its stated legal conclusion. Moreover, the
reviewing court’s acceptance of any or all of a jury’s
findings on the disputed underlying factual issues
cannot relieve that court from rendering its own
legal conclusion on patent validity without regard to
the jury’s or the lower court’s conclusion. This Court
in Graham rendered its own legal conclusion on the
ultimate § 103 issues by disagreeing with the
contrary conclusions of the lower courts without
remanding or describing any underlying finding as
“clearly erroneous.” By itself, Graham establishes
that both the district court and the Federal Circuit
cannot simply uphold one or some of the jury’s
findings and then affirm the jury’s verdict without
ever independently analyzing and deciding the
ultimate legal issue on validity.

Those fundamental errors in the Federal
Circuit’s methodology for reviewing § 103 verdicts
are not unique to this case and clearly warrant this
Court’s review. Moreover, by correcting the Federal
Circuit’s improperly truncated approach, this Court
will provide much needed guidance regarding the
correct “fact vs. law” distinctions under § 103 that
will affect not only JMOL motions, but motions for
summary judgment, jury instructions, and jury
interrogatories. Because differentiating between the
factual and legal aspects of the obviousness inquiry
implicates virtually every litigated patent case, there
may be no more important doctrinal issue in the
Federal Circuit’s precedent in need of review and
clarification by this Court.

24

I. THIS COURT SHOULD REVIEW AND
CORRECT THE FEDERAL CIRCUIT'S
METHODOLOGY FOR REVIEWING
JURY OBVIOUSNESS HOLDINGS

As the Federal Circuit itself explained 20
years ago, at the express direction of this Court, the
§ 103 inquiry requires resolving any disputes on the
underlying factual issues and then making the
separate legal conclusion on the ultimate invalidity
issue. See Panduit, 810 F.2d at 1566-69. In a jury
case, the jury does only the first step while the court
(whether trial or appellate) should be the one that
does the second. Unfortunately, as in this case,
many Federal Circuit and district court decisions
since Panduit incorrectly treat obviousness as a
factual question, review the conclusion only for what
a reasonable jury might decide, or assume upholding
any factual finding requires acceptance of the jury’s
legal conclusion.

Because obviousness is a question of law,
there should be no such thing as a jury “finding” on
obviousness, nor is there any basis for holding that a
jurys § 103 verdict is supported by “substantial
evidence.” However, the Federal Circuit has
repeatedly rendered such _ holdings. See, e.g.,
Honeywell Intl Inc. v. Hamilton Sundstrand Corp.,
370 F.3d 1131, 1145-46 (Fed. Cir. 2004) (en banc) (we
agree “there is substantial evidence to support the
jury’s finding of nonobviousness”). Moreover, such
improper holdings cannot be disregarded as merely

25

loose language or dicta.2 In light of such Federal
Circuit precedents, many district courts, like the one
in this case, are incorrectly reviewing § 103 verdicts
only for substantial evidence.

As noted, the Federal Circuit had begun by the
mid-1990’s to invoke the “clearly erroneous” or
“substantial evidence” standards of review that
should have been applicable only to issues of fact
when reviewing the ultimate legal issue of validity
under § 103. See Lockwood, 50 F.3d at 988-89 (Nies,
J., dissenting). However, the current Federal Circuit
has elevated that mistaken approach into that
court's standard review methodology. See, e.g.,
Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro
S.A., 464 F.3d 1339, 1344 n.2 (Fed. Cir. 2006) (“[o]ur
cases ...have applied the substantial evidence
standard to general jury verdicts on obviousness,
..and PIVEG has not pointed to any contrary
authority”). However, the contrary authority resides

2 See, e.g., Cordis Corp. v. Boston Scientific Corp., 561 F.3d
1319, 1322 (Fed. Cir. 2009) (“there was substantial evidence
that these prior art patents did not render claim 36 obvious’);
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d
1371, 1378 (Fed. Cir. 2004) (“The record contains substantial
evidence whereby a reasonable jury could have reached the
verdict that it would not have been obvious ... [i]n view of this
evidentiary support, the district court’s grant of JMOL cannot
stand.”); LNP Engineering Plastics, Inc. v. Miller Waste Mills,
Inc., 275 F.3d 1347, 1353 (Fed. Cir. 2001) (“the record supplies
substantial eviaence for a reasonable jury to find that claim 1
... would have been obvious”); Richardson v. Suzuki Motor Co.,
868 F.2d 1226, 1237 (Fed. Cir. 1989) (“Our review shows that
there was substantial evidence on which reasonable jurors
could have concluded that claim 9 had not been proved invalid
for obviousness, and thus reached the verdict of ‘valid.”).

26

in Graham and this Court’s other invalidity decisions
where this Court has consistently drawn its own
independent legal conclusion from the undisputed
and established facts.

This problem is consistently surfacing and will
not be resolved without this Court’s intervention, In
Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc.,
554 F.3d 1010, 1020 (Fed. Cir.), cert. denied, 2009
WL 2493730 (Nov. 17, 2009), the Federal Circuit
affirmed a nonobviousness judgment merely upon
upholding a jury’s finding that the prior art did not
disclose one claim limitation (“treating a wound with
negative pressure”). As in this case, the Federal
Circuit held that “this was sufficient to support the
jury’s verdict of non-obviousness.” Jd. As in this
case, however, the accepted finding in Kinetic
Concepts merely identified one difference with the
prior art, a factual inquiry under Graham. Thus, as
in this case, the mere existence of a difference with
the prior art should not have been dispositive nor the
end of the judicial § 103 inquiry.

More recently the Federal Circuit in
Fresenius USA, Inc. v. Baxter Intl, Inc., 582 F.3d
1288 (Fed. Cir. 2009), reviewed a district court’s
grant of JMOL of nonobviousness that reversed a
jury’s obviousness verdicts. For five different sets of

3 See, e.g., Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280 (1976);
Dann v. Johnson, 425 U.S. 219, 230 (1976); Anderson’s-Black
Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63 (1969);
United States v. Adams, 383 U.S. 39, 51 (1966); Great Atlantic
& Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S.
147, 153-54 (1950).

27

asserted claims, the Federal Circuit again treated
the existence of substantial evidence supporting the
jury’s implicit factual finding that a particular claim
limitation was in the prior art as being dispositive of
the ultimate legal conclusion. See id. at 1297-1300
(“[b]ecause substantial evidence supports the jury’s
implicit finding, JMOL was inappropriate”). Once
again, whether or not the jury’s “differences with the
prior art” findings were supported, they cannot be
dispositive of the ultimate legal conclusion. More
importantly, the mere existence of differences with
the prior art should not have allowed the Federal
Circuit to avoid independently deciding the legal
issue of whether it would have been obvious to
overcome the identified differences.

The petition for a writ of certiorari in the
Kinetic Concepts case asked this Court to decide
whether a defendant “has a right to independent
judicial, as distinct from lay jury, determination of
fobviousness].” See Medela AG v. Kinetic Concepts,
Inc., No. 09-198 (filed Aug. 13, 2009). While that
petition correctly recognized the problem, the
petition likely proposed an overbroad solution—
eliminating the jury entirely from deciding issues of
patent validity. However, the real problem stems
not from allowing a jury to resolve disputed facts, but
from the Federal Circuit’s error in allowing the jury’s
legal conclusion to be insulated from independent
judicial review under the guise of applying
“substantial evidence” and “reasonable jury”
standards of review.

The more modest solution posed by the
present petition—without any Seventh Amendment

28

concerns—is for this Court to instruct the Federal
Circuit and district courts regarding how to identify
and review te implicit factual findings within a
jury’s § 103 verdict without abdicating the court’s
independent responsibility to ensure that the
statutory standards for patentability have been
satisfied. By doing so, this Court will be able to
reaffirm that the ultimate “obvious” or “nonobvious”
decision is a legal conclusion to be made by the
reviewing court based on the undisputed and
established facts.

Il. AJURYS § 103 VERDICT IDENTIFIES
THE JURY'S IMPLICIT FINDINGS ON
ANY UNDERLYING DISPUTED
FACTUAL ISSUES, BUT IS MERELY
ADVISORY AS TO THE JURY’S STATED
LEGAL CONCLUSION

As demonstrated by this Court’s approach in
Graham, the court must decide the ultimate legal
issue, even in jury cases. However, in Perkin-Elmer
Corp. v. Computervision Corp., 732 F.2d 888, 895 n.5
(Fed. Cir. 1984), the Federal Circuit rejected the
view “that a jury verdict on nonobviousness is at best
advisory.” The Federal Circuit specifically disagreed
with Sarkisian v. Winn-Proof Corp., 688 F.2d 647,
651 (9th Cir. 1982), which allowed a jury to decide
obviousness but characterized a jury’s verdict on the
ultimate issue as being “a nonbinding advisory
opinion.” The Federal Circuit declared that the
Ninth Circuit’s view “would make charades” of
motions under Fed. R. Civ. P. 50 in patent cases. See
732 F.2d at 895 n.5.

29

Despite the Federal Circuit’s concerns in
Perkin-Elmer about patent cases not being different
from other civil cases, it overlooked that the Ninth
Circuit’s “advisory opinion” was properly limited to
the jury’s ultimate conclusion, not to its underlying
findings. The Ninth Circuit agreed that this Court’s
Graham factors were to be decided by the fact finder,
preferably by detailed special interrogatories in jury
trials or by detailed findings in nonjury trials. See
732 F.2d at 650. In contrast to the Federal Circuit’s
current confusion, the Ninth Circuit also understood
that the appropriate standard of appellate review
depended upon which portion of the obviousness
inquiry is at issue.

The predicate factual determinations are
reviewed under the appropriate standard for
findings of fact. If made by the jury, we
review for support by substantial evidence. ...
We review a judge’s findings under the clearly
erroncous test. Fed. R. Civ. P. 52(a).

The ultimate conclusion of obviousness ...is a
question of law. It is subject to our
independent review.

688 F,2d at 651. Thus, nothing in Sarkisian
intruded upon a jury’s traditional role of factfinding
or made a “charade” of post-trial motions under Rule
50. Indeed, it is the Federal Circuit’s current
practice of treating a jury’s Graham findings as
dispositive of the ultimate legal conclusion that
causes the post-trial JMOL motion to become a
charade rather than a true judicial decision.

30

This Court should resolve the conflict between
Sarkisian and Perkin-Elmer by holding that a jury’s
§ 103 verdicts are not advisory only to the extent
that they identify the jury’s underlying findings that
determine the factual “background” upon which the
court’s ultimate legal conclusion is to be drawn.
Where a jury returns a general verdict, all disputed
factual issues are presumed to have been decided in
favor of the verdict winner. But once those findings
are identified and reviewed, the jury’s § 103 verdict
on the ultimate legal conclusion is necessarily
advisory because, as in Graham, the reviewing court
must draw its own legal conclusion from the
established facts no matter how the jury itself
decided the invalidity issue.4

Properly understood, a jurys § 103 verdict is
not advisory as to its findings (even if they are
implicit), but is advisory and entitled to no weight or
deference on its ultimate legal conclusion (even
though explicitly stated). In the absence of special
interrogatories, a jurys § 103 verdict simply serves

4 Earlier Federal Circuit decisions correctly recognize that
distinction. See, e.g., Richardson-Vicks Inc. v. Upjohn Co., 122
F.3d 1476, 1479 (Fed. Cir. 1997) (“That an obviousness
determination stands upon the relevant facts does not convert
the ultimate conclusion of obviousness from one of law into one
of fact.”); Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d
757, 763 (Fed. Cir. 1988) (“it is not the function of the jury to
pick and choose among established facts relating to obviousness
in contrast to its obligation to sift through the conflicting
evidence to determine what those facts are”); Railroad
Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1515 (Fed. Cir.
1984) (“the judge must remain the ultimate arbiter on the
question of obviousness”).

31

as shorthand to identify how the jury must initially
be presumed to have resolved the underlying
disputed issues of fact.

One solution would be to require juries to
answer special interrogatories on the disputed
factual issues in patent cases. Like the Ninth
Circuit in Sarkisian, 688 F.2d at 650, the Federal
Circuit has encouraged that procedure, e.g., Hewlett-
Packard Co. v. Mustek Systems, Inc., 340 F.2d 1314,
1325 (Fed. Cir. 2003), but has never required it. One
inherent difficulty is that the underlying factual
issues for obviousness, particularly those related to
secondary considerations, are not always “yes-no”
questions that lend themselves to “fill in the blank”
jury interrogatories. Nevertheless, if litigants and
district courts were required to identify the disputed
factual issues for the jury, a jury would not need to
answer the ultimate question, the parties and the
reviewing court would know which factual disputes
had been resolved in favor of which party, and the
court could render its own legal conclusion based on
the actual findings, not just presumed ones.

Like most patent jury cases, that is not what
happened here, but that cannot absolve the courts
from properly reviewing the verdicts. Here, the
Federal Circuit presumed from the nonobviousness
verdicts that the jury accepted Callaway’s factual
assertion that the prior art did not show
polyurethane outer covers with a hardness below
Shore D 64 on a three-piece ball. The panel then
decided that a jury could have reasonably made that
finding. App. 18a-20a. Based on that one single
finding, the Federal Circuit then affirmed the denial

32

of JMOL without addressing whether the affected
claims would have been obvious despite that minor
difference in light of the clear teachings and explicit
suggestions in the prior art. Such judicial deference
to a jury’s ultimate § 103 conclusion should no longer
be allowed or perpetuated by this Court.

Iii, AFFIRMANCE OF EVEN ALL OF A
JURY’S UNDERLYING FINDINGS DOES
NOT MANDATE THAT THE REVIEWING
COURT AFFIRM THE JURY’S
ULTIMATE LEGAL CONCLUSION

As in Graham, even if every underlying
finding is accepted, the reviewing court is free to
disagree with the jury’s conclusion, and must always
consider the ultimate legal question itself and
without deference. This Court should grant this
petition to hold that a jury’s verdict on the ultimate
§ 103 invalidity issue can be reversed even if every
underlying finding is upheld. The Court should also
hold that no single finding on any Graham factor,
including secondary considerations, is dispositive of
the ultimate legal issue. Even the Federal Circuit’s
own precedent holds that all probative facts must be
considered before a court renders its ultimate legal
conclusion, See Panduit, 810 F.2d at 1569-71. Yet
here, as in Kinetic Concepts and Fresenius, the
Federal Circuit looked at just one.

Unlike some other mixed fact-and-law
questions, the appropriate legal conclusion under
§ 103 will not follow automatically from the findings
on the Graham factors. For example, the proper
legal conclusion on negligence follows directly from a

33

jurys findings on the four underlying factual
elements (duty, breach, proximate cause, and
damage). If each element is found as a matter of
fact, there is negligence as a matter of law. If any
element is absent, there is no negligence as a matter
of law. In contrast, even after a jury’s findings on
the Graham factors are identified and reviewed, the
legal conclusion based on those established facts
must be independently decided by the reviewing
court, and could be different from that reached by
the jury or a lower court.

For example, a patentee will try to prove as a
matter of fact that there are multiple differences
with the prior art while the defendant tries to show
there are few or none. Whatever the outcome,
resolution of those factual disputes merely provides
the backdrop for the court’s legal conclusion rather
than determines it. Even when differences with the
prior art exist, a defendant can still prove that the
claimed invention :vould have been obvious as a
matter of law despite such differences.

The required legal analysis cannot be different
where any differences with the prior art are resolved
by a jury rather than being undisputed. Indeed, an
affirmance of a jury’s finding establishes that fact as
no longer in dispute, but cannot end the court’s § 103
analysis. Yet, that is exactly what happened here.
The Federal Circuit held that “substantial evidence
supports the jury’s implicit resolution” of whether
the prior art disclosed a polyurethane outer cover
with a hardness below Shore D 64 on a three-piece
ball. App. 20a. At that point, the Federal Circuit’s
§ 103 analysis simply stopped. Jd.

34

Had the district court or the Federal Circuit
done the complete legal analysis, the undisputed
facts and the governing post-KSR law should have
compelled the ultimate legal conclusion that, despite
no express example in the prior art of a polyurethane
cover hardness below Shore D 64 on a three-piece
ball, the asserted claims are invalid. Proudfit’s soft,
three-piece, balata-covered ball met each limitation
but a polyurethane cover (App. 9a n.3), while other
cited prior art references taught substituting
castable polyurethane for balata, taught using
polyurethane and non-polyurethane covers with
hardness below Shore D 64, taught the desirability of
a relatively soft outer cover on a three-piece ball, and
taught as routine how to vary cover hardness. See
Acushnet Br. 11-15, 34. Even the Federal Circuit’s
analysis shows that the single difference found with
the prior art was truly miniscule. See App. 16a-20a
& n.8.

The Federal Circuit’s summary of the prior art
confirms that, as of Sullivan’s alleged invention,
three-piece golf ball designs and polyurethane covers
were well-known, App. 9a n.3, and Acushnet’s Dr.
Wu had just disclosed a new, castable polyurethane
specifically for use as a golf ball cover that prompted
the inventor to amend his pending applications and
caused multiple ball manufacturers to follow her
suggestion to substitute the new polyurethane
material onto existing ball designs. Where there is
but one difference over the closest prior art and
where there was an express motivation to combine, a
combination of well-known components being used
for their established function should be unpatentable
as a matter of law. See 550 U.S. at 418.

35

While Callaway stressed the _ alleged
“unpredictability” of achieving the right combination
out of the countless claimed permutations of
ordinary golf ball components, a proper application of
the law would not have allowed such arguments to
preserve the validity of the asserted claims. First,
contrary to Callaway’s premise, the asserted claims
have no limitations directed to any unexpected
results or unique performance criteria to distinguish
the prior art. See MuniAuction, Inc. v. Thomson
Corp., 532 F.3d 1318, 1328 n.5 (Fed. Cir. 2008)
(claims “broad enough to read on obvious subject
matter are unpatentable even though they also read
on nonobvious subject matter”). Absent such
limitations, the claims are nothing more than a
straightforward combination of well-known prior art
golf ball components.

As this Court made clear in KSR, where a
technique improves one device and one of ordinary
skill would recognize that it would improve similar
devices in the same way, using that technique to
improve the prior art is not patentable. 550 U.S. at
407. However, no court in this case has undertaken
this Court’s KSR analysis. Instead, both the district
court and the Federal Circuit simply accepted the
jury’s verdicts as supported by substantial evidence
without ever independently deciding whether the
ultimate legal conclusion based on those facts
comported with the controlling law.

36

Iv. THIS CASE PROVIDES AN EXCELLENT
VEHICLE FOR DECIDING THE
IMPORTANT ISSUES PRESENTED

Because the Federal Circuit has remanded
this case for a new trial, its interlocutory posture
might initially appear to weigh against granting
review at this time. However, a more important
consideration is that this case presents its important
doctrinal questions in an appropriate context for this
Court’s review. Moreover, there is nothing to be
gained by waiting any longer for self-correction by
the Federal Circuit.

The error inherent in the Federal Circuit’s
review methodology is cleanly presented by its
affirmance of the denial of JMOL based solely on a
single jury fact finding. Not only is that issue case
dispositive, but the Federal Circuit’s recent decisions
in Kinetic Concepts and Fresenius demonstrate that
the challenged methodology is not an exception but is
the rule in that court. Finally, there may never be a
clearer instance where the alleged secondary
considerations lacked any nexus to the invention as
actually claimed and thus were more misused before
the jury en route to a legally-flawed outcome.

By affirming the denial of JMOL of
obviousness merely by upholding the one difference
over the prior art, the Federal Circuit did not reach
the final disputed Graham factor, i.e., secondary
considerations. Nevertheless, because correction of
the Federal Circuit’s truncated review methodology
also implicates those issues, this case provides an
excellent vehicle by which this Court should reaffirm

37

its holding in Graham that secondary considerations
provide “legal inferences” that are “more susceptible
of judicial treatment than are the highly technical
facts often present in patent litigation.” See 383 U.S.
at 35-36.

As noted, Callaway’s efforts to preserve the
validity of the asserted claims at trial relied almost
exclusively on the commercial success and
unexpected results achieved by Acushnet’s accused
Pro V1 balls. Here, such allegations should not have
supported any legal inference of nonobviousness
because Callaway’s evidence lacked any “nexus” to
the broadly claimed subject matter.5 See In re
Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003)
(one or even a small number of species yielaing
unexpected results cannot support claims to a much
broader range). Such overbroad claims should never
have survived a court correctly applying the
controlling law, but as yet, no court has done the
proper legal analysis.

Moreover, despite Graham, the Federal
Circuit also incorrectly treats “nexus” as a factual
issue for the jury. See, e.g., Pro-Mold and Tool Co. v.
Great Lakes Plastics, Inc., 75 F.8d 1568, 1574 (Fed.

5 See, e.g., Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311-12 (Fed. Cir. 2006) (“Evidence of commercial success, or
other secondary considerations, is only significant if there is a
nexus between the claimed invention and the commercial
success.”); In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)
(“For objective evidence to be accorded substantial weight, its
proponent must establish a nexus between the evidence and the
merits of the claimed invention.”).

38

Cir. 1996). As with the other Graham factors, the
Federal Circuit thus confuses the factual components
with the legal component and improperly defers to a
jury’s implicit findings on secondary considerations
and nexus, when this Court has instructed that such
matters may give rise only to a “legal inference” that
should be reserved for judicial weighing en route to a
court rendering its ultimate legal conclusion.

More importantly, this petition raises issues of
fundamental importance that directly implicate most
pending and future patent cases apart from the
particular dispute between these parties. To be sure,
the parties’ dispute is of considerable importance
even on its own. The accused Pro V1 balls are the
world’s leading golf balls, and, if infringement
liability were to be established, the alleged damages
are well in the hundreds of millions of dollars.

Absent this Court’s review, the district court
will necessarily conduct a second trial. No matter
which side prevails, the court will surely again
review the resulting verdicts merely for substantial
evidence in the manner that the Federal Circuit has
just employed and approved. No matter which party
prevails, the other side will likely challenge the
review methodology all the way to this Court. Not
only would such proceedings be costly to the parties
and the judicial system, but a large number of other
patent jury cases will also be tried and incorrectly
reviewed during the intervening period.

There is nothing to be gained by waiting for
further developments. The issues are squarely
presented. Now is the time and this is the case in

39

which this Court should review and correct the
Federal Circuit’s flawed methodology for reviewing
jury verdicts under § 103.

CONCLUSION

The petition for writ of certiorari should be
granted.

Respectfully submitted.

RICHARD L. STANLEY
Counsel of Record

Howrey LLP

1111 Louisiana St., 25%

Floor

Houston, TX 77002

(713) 787-1400
HENRY C. BUNSOW

HOwREY LLP JOSEPH P. LAVELLE
525 Market Street, HowrREY LLP

Suite 3600 1299 Pennsylvania Ave., NW
San Francisco, CA 94105 Washington D.C. 20004
(415) 848-4900 (202) 783-0800

December 11, 2009 Attorneys for Petitioner

APPENDIX

la

APPENDIX A

UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT

2009-1076
CALLAWAY GOLF COMPANY,

Plaintiff-Appellee,
v.

ACUSHNET COMPANY,
Defendant-Appellant.

Frank E. Scherkenbach, Fish & Richardson
P.C., of Boston, Massachusetts, argued for plaintiff-
appellee. With him on the brief was Thomas L.
Halkowski, of Wilmington, Delaware.

Henry C. Bunsow, Howrey LLP, of San

Francisco, California, argued for defendant-
appellant. With him on the brief were Joseph P.
Lavelle and Kenneth W. Donnelly, of Washington,
DC, and Richard L. Stanley, of Houston, Texas. Of
counsel on the brief were Edward A. Pennington and
Amanda M. Rettig, Hanify & King, PC, of
Washington, DC.

Appealed from: United States District Court for the
District of Delaware

Judge Sue L. Robinson

2a

UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT

2009-1076
CALLAWAY GOLF COMPANY,

Plaintiff-Appellee,

v.
ACUSHNET COMPANY,

Defendant-Appellant.

Appeal from the United States District Court for the
District of Delaware in case no. 06-CV-091, Judge
Sue L. Robinson.

DECIDED: August 14, 2009

Before LINN, DYK, and PROST, Circuit Judges.

DYK, Circuit Judge.

Callaway Golf Company ("Callaway") brought
suit against Acushnet Company ("Acushnet"),
alleging that Acushnet had infringed various claims
of four golf ball patents owned by Callaway (known

3a

as the "Sullivan patents").! Acushnet stipulated that
its golf balls infringed, but contended that the
asserted claims were invalid for anticipation and
obviousness. After construing the claims, the district
court granted summary judgment of no anticipation.

Callaway Golf Co. v. Acushnet Co., 523 F. Supp. 2d
388, 407 (D. Del. 2007) ("Summary Judgment
Order"), vacated in part by 585 F. Supp. 2d 600 (D.

Del. 2008) ("JMOL Order"). 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. The district
court entered final judgment concluding that
dependent claim 5 of the '293 patent was invalid for
obviousness, but that independent claim 4 (from
which it stemmed), as well as the other seven
asserted claims, were not.

We conclude that Acushnet raised a genuine
question of material fact concerning anticipation,
and we reverse the district court's entry of summary
judgment on that issue and remand. As _ to
obviousness, we affirm the _ district court's
determination that Acushnet was not entitled to
judgment as a matter of law that the asserted claims
are invalid for obviousness. But because the
judgment on _ obviousness was based upon
irreconcilably inconsistent jury verdicts, we vacate

1 The four Sullivan patents are U.S. Patent Nos. 6,210,293
("293 patent"), 6,503,156 ("156 patent"), 6,506,130 (130
patent"), and 6,595,873 ("873 patent"). At issue are 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.

4a

the judgment of the district court and remand for a
new trial. Thus, for the reasons that follow, we
affirm-in-part, reverse-in-part, vacate-in-part, and
remand for a new trial.

BACKGROUND
I

Callaway and Acushnet are golf equipment
manufacturers. Callaway is the current owner of the
Sullivan patents, which share nearly identical
specifications and contain similar claims to a multi-
layer polyurethane-covered golf ball. Historically,
golf balls designed to travel long distances when
struck by a driver were relatively hard. JMOL Order,
585 F. Supp. 2d at 605. In contrast, golf balls
designed to exhibit other desirable playability
characteristics (such as spin control for approach
shots, and the proper "click" and “feel” upon being
struck) typically were softer. Id. According to the
specification, a major advantage of the patented
invention is that it presents a "dual personality" ball
that is capable of travelling great distances, yet does
not exhibit diminished playability or durability. See
'293 patent col.5 11.23-30; id.col.3 11.21-29.

As shown below in Figure 2 of the '293 patent,
the patented golf ball contains a core 10 and a multi-
layer cover consisting of a first or inner layer 14 and
a second or outer layer 16. '293 patent col.5 11.51-52.
The first or inner cover layer is preferably made of a
blend of low-acid ionomer resins, while the second or
outer cover layer is made of a relatively soft

5a

polyurethane material. Id. col.5 11.35-54 & col. 6 1.56-
col.7 18.

FIG. 2
Claim lof the '293 patent is generally representative
of the asserted 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 neiyes a thickness of
0.100 to 0.010 inches, inner cover layer

comprising a blend of aan or more low acid

ionomer_ resins containing no more than
16% by weight of an alpha, beta-

unsaturated carboxylic acid;

and an outer cover laver 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 laver comprising a relatively

soft polyurethane material.

'293 patent col. 23 ll. 48-61 (emphases added).

6a

Callaway's other asserted claims vary slightly from
claim 1 of the '293 patent, but each claims a golf ball
with a core, an ionomer resin (or iouomer 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. "Shore D hardness"
refers to a hardness standard published by the
American Society for Testing and materials.”
Callaway sells or previously sold several lines of golf
balls that practice the patented’ technology.

Summary Judgment Order, 523 F. Supp. 2d at 393.

Il

Callaway sued Acushnet ffor patent
infringement on February 9, 2006, in the United
States District Court for the District of Delaware.
The accused products are the Titleist Pro V1, Pro
V1*, and Pro V1x golf balls, which Acushnet
introduced to the market in 2000, 2002, and 2003
respectively. The Pro Vl has a_ three-piece
construction consisting of a solid core, an ionomer-
blend inner cover, and a polyurethane outer cover.
The Pro V1* (since discontinued) and Pro V1x balls
are "dual-core" balls having an inner core, an outer

2 The standard, ASTM D-2240, describes a method of testing

hardness by forcing an indentor into the material to be tested.
The indentor's penetration into the material under specified
conditions indicates the relative hardness of the material. The
standard describes several standard sizes of indentors (type A,
B, C, D, etc.), with “Shore D” hardness referring to hardness
measured using a size "D" indentor. American Society for
Testing and Materials, Standard Test Method for Rubber
Property-Durometer Hardness 1 (1995) ("ASTM D-2240").

Ta

core, an ionomer inner cover, and a polyurethane
outer cover.

On November 20, 2007, the district court
construed various disputed terms of the Sullivan
patents, including the term "cover layer having a
Shore D hardness." The parties agreed that as a
general proposition "Shore D hardness" refers to a
durometer measurement of a material's hardness
rated on the Shore D hardness scale, which is
described in the ASTM D-2240 standard. They
disagreed, however, as to whether the Sullivan
patent claims refer to the hardness of the cover layer
as measured on a golf ball, or the hardness of a
sample of the cover layer material measured off the
ball. As the district court noted, the parties' experts
testified that mumerous factors (such as_ the
composition of the layer under the material being
tested) can affect the measured hardness of a
material. Thus, on-the-ball and off-the-ball hardness
measurements of the same cover material can differ.
JMOL Order, 585 F. Supp. 2d at 610 & n.6;
Summary Judgment Order, 523 F. Supp. 2d at 399 &
n.1l.

The district court held that the claim
limitation "[c]over layer having a Shore D hardness"
requires that the Shore D hardness measurement of
the cover layer be taken on the ball. Callaway Golf
Co. v. Acushnet Co., No. 06-CV-091, 2007 WL
4165415, at *I (D. Del. Nov. 20, 2007) ("Markman
Order"). Based on this on-the-ball construction,
Acushnet stipulated that its Titleist Pro V1 bail
infringed all of the asserted claims, and that its Pro

8a

Vil* and Pro Vlx balls infringed all claims except
claim 1 of the '293 patent.

iil

Thereafter Acushnet focused its defense on
the issues of anticipation and obviousness, moving
for summary judgment of invalidity on those
grounds. With regard to anticipation, Acushnet
argued that the text of U.S. Patent No. 4,431,193
("Nesbitt") itself discloses a three-piece golf ball
meeting all limitations of the Sullivan patents save
two: a polyurethane outer cover and a blend of
ionomers in the inner cover. Callaway apparently
does not dispute this. Acushnet argued that Nesbitt
incorporates by reference U.S. Patent No. 4,274,637
(“Molitor '637”), which teaches both polyurethane
and ionomer blends as cover materials and, Acushnet
maintains, inherently discloses the necessary
hardness limitations for those cover layers. Thus,
according to Acushnet, when properly viewed as a
single reference, Nesbitt/Molitor anticipates the
Sullivan patents as a matter of law. In support of its
anticipation argument, Acushnet also prepared test
golf balls combining the polyurethane outer cover
described by Molitor '637 with the core and ionomer-
blend inner cover of Nesbitt and _ proffered
measurements of the resulting balls. Callaway filed a
cross motion for summary judgment of no
anticipation (and opposed Acushnet's motion),
arguing that Nesbitt did not incorporate Molitor '637
and thus failed to disclose the necessary Shore D
hardness limitation.

9a

On November 20, 2007, the district court
granted Callaway's motion for summary judgment
that Nesbitt does not anticipate as a matter of law.
Summary Judgment Order, 523 F. Supp. 2d at 398:.
The court held that "Nzsbitt does not describe the
use of polyurethane or blends of ionomer resins in
Molitor '637 with sufficient particularity to effectuate
an incorporation by reference of those features." Id.
Based on this holding, the court also granted
summary judgment of no anticipation on the ground
that Nesbitt (without Molitor '637) does not disclose
a cover hardness of Shore D 64 or less. Id. at 400.

IV

With regard to obviousness, Acushnet
contended that the various separate elements of the
Sullivan patents—including golf balls with multi-
layer covers, ionomer-blend covers, and polyurethane
covers—were all well known in the prior art.
Acushnet relied on Nesbitt, Molitor '637, and three
additional golf ball patents, U.S. Patent Nos.
4,674,751 (“Molitor '751”), 5,314,187 ("Proudfit"), and
5,334,673 ("Wu"),3 in support of its contention that
one of skill in the art would have had reason to
combine the prior art and would have had a
reasonable expectation of success. With regard to the

3 Proudfit teaches a three-piece golf ball with a core, an
ionomer-blend inner cover, and a relatively soft outer cover of
balata (a type of rubber). Proudfit col.6 11.19-27; id. col.12 11.47-
52. Molitor '751 teaches a polyurethane cover that may be used
on two-piece or three-piece golf balls. Molitor '751 col.3 11.7-12;
col.7 11.49-51. Wu teaches a golf ball with a single cover layer
made of polyurethane. Wu col.7 il.37-47.

10a

cover hardness limitation, Acushnet contended that
Molitor '751 discloses the required range (albeit
stated in terms other than “Shore D” hardness).

A jury trial limited to the question of
obviousness was held from December 5 to December
14, 2007. The jury returned a verdict concluding that
dependent claim 5 of the '293 patent was invalid for
obviousness, but the remaining eight claims
(including independent claim 4 of the '293 patent)
had not been proven invalid.4 On December 19, 2007,
the court entered judgment tracking the jury's
verdict. Trial on willfulness and damages was
stayed.

After denying Acushnet's renewed motion for
judgment as a matter of law on the eight claims held
not invalid, on November 10, 2008, the district court
issued a permanent injunction against Acushnet.

. Question 1 of the verdict form is reproduced in its entirety:

1. Has Acushnet proven, by clear and
convincing evidence, that any of the following
claims of U.S. Patent No. 6,210,293 (the '293
patent) is invalid due to obviousness?

"Yes" is a finding for Acushnet. "No" is a finding for Callaway.
(A) Claim 1 Yes___ No_X__
(B) Claim 4 Yes__. No_X__
(C) Claim 5 Yes_X No __

JMOL Order, 585 F. Supp. 2d at 615. Questions 2, 3, and 4

were identical except for the patent and claim numbers, and for
each claim in those questions the jury marked "No." Id.

lla

JMOL Order, 585 F. Supp. 2d at 608-14, 622-23.
Acushnet timely appealed, and we have jurisdiction
under 28 U.S.C. § 1292(c)(1) and (2).

DISCUSSION

On appeal, Acushnet challenges five major
aspects of the proceedings before the district court.
We address each in turn.

I Claim Construction

Acushnet argues that the determinations that
the claims were not invalid were based upon a faulty
interpretation of the phrase "cover layer having a
Shore D hardness," which appears in each of the
asserted claims. Acushnet contends that the district
court's on-the-ball construction led it to improperly
reject Acushnet's invalidity arguments, which in part
depended on prior art disclosing the off-the-ball
hardness of polyurethane materials that can be used
to make golf ball covers. We review the district
court's claim construction de novo. Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir.
1998) (en banc). We generally assign to claim terms
"the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the
invention." Phillips v. AWH Corp., 41 5 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc).

Acushnet argues that the district court's claim
construction is erroneous because the specification
notes in several places that the hardness values
therein are “measured in accordance with ASTM

12a

method D-2240." '293 patent col.7 11.21-22.5 The
ASTM D-2240 standard states that hardness should
not be tested on a rounded or curved surface, which
Acushnet argues precludes measuring hardness on
the rounded and irregular surface of a golf ball.
ASTM D-2240, at 2. Thus, Acushnet contends, a
person of ordinary skill in the art would understand
"cover layer having a Shore D hardness" to mean the
hardness of a flat sample of the material used for the
cover layer at issue, tested off the ball.

We disagree. The Sullivan patents make clear
that, when read in context, the reference to ASTM D-
2240 does not require hardness of the cover layer to
be tested off the ball. To the contrary, the claims
speak of "[a] golf ball" with a "cover layer" having a
certain hardness, rather than focusing on the
hardness of the material used to create the cover
layer. E.g., '293 patent col.23 11.49-60. Likewise, the
specification points to the hardness of the assembled
ball (rather than of the cover materials in isolation)
as the relevant characteristic. E.g., id. col.5 11.7-8
("The hardness of the ball is the second principal
property involved in the performance of a golf ball."
(emphasis added)). While there are examples
providing off-the-ball measurements of commercially
available materials in the patent, the examples
directed to golf balls as opposed to starting materials
specifically disclose hardness measurements taken

5

See also '293 patent col.9 (Table 2, noting that "ASTM
Method" "D-2240" was used to test "Shore Hardness D"); id.
col.11 (Table 3, same); id. col.11 11.61-63 (noting Shore D
hardness was measured "per ASTM D-2240"); col.16 11.49-50
(same).

13a

on intermediate and finished balls. E.g., id. col.22
114 (Table 8, showing "Shore D" hardness
measurements on finished balls); see also id. col.17
11.36-37, 41 (Table 5, showing "Shore C Hardness" of
"Molded Intermediate Balis" with inner cover); id.
col.18 11.52-53, 57 (Table 6A, showing "Shore C
Hardness" of "Molded Finished Balls" with outer
cover in place); id. col.19 11.63, 66 (Table 6A, same).
These examples confirm that hardness was to be
measured on the ball.* Indeed, as the district court
noted, there is no “cover layer” to measure until a
golf ball is produced. Markman Order, 2007 WL
4165415, at *1.

Moreover, here there was evidence at trial
from Acushnet's own witnesses showing that those of
skill in the art typically took Shore D hardness
measurements on the ball. Jeff Dalton, for example-
Acushnet's Vice President of Product Development-
testified that the golf ball industry commonly
conducted hardness tests in substantial compliance
with ASTM D-2240, with the exception of the
requirement that the test not be conducted on the
ball: "[W]e-technical people in the golf ball industry
deviate from that standard by not measuring
[hardness] on the kind of test specimen that is called

for in ASTM [D-2240]. We generally measure it on

® Acushnet notes that some unasserted claims also specify a
flexural modulus for the cover layers, which must be measured
off the ball. See, e.g., '130 patent col.24 ll.1-2. Unlike modulus,
however, hardness can be measured on the ball, and as
discussed above, the patent makes clear that the claims refer to
on-the-ball measurement of hardness.

l4a

the ball." Trial Tr. 514:21-515:1 (emphasis added).?
Such evidence of accepted practice within the art,
when not at variance with the intrinsic evidence, is
relevant to the question of how a person of skill in
the pertinent field would understand a term. See
Phillips, 415 F.3d at 1318 ("[E]xtrinsic evidence in
the form of expert testimony can be useful to...
establish that a particular term in the patent or the
prior art has a particular meaning in the pertinent
field."); see also Symantec Corp. v. Computer Assocs.
Int'l, Inc., 522 F.3d 1279, 1289 n.3 (Fed. Cir. 2008).
The district court did not err in holding that the
phrase “cover layer having a Shore D hardness"
refers to an on-the-ball hardness measurement.

II Obviousness
A

The jury returned a verdict finding that eight
asserted claims of the Sullivan patents were not
invalid for obviousness. Acushnet contends that the
district court erred in failing to grant its motion for
judgment as a matter of law that the asserted claims
of the Sullivan patents would have been obvious.

We apply de novo the same JMOL standard
applied by the district court to the jury verdict. See
Caver v. Citv of Trenton, 420 F.3d 243, 262 (3d Cir.
2005); see also PharmaStem Therapeutics, Inc. v.

’ See also Trial Tr. 344:13-14 (Acushnet Senior Vice President

of Research and Development William Morgan noting that "it
was our standard practice at the time to measure the Shore D
hardness directly on the golf ball").

15a

Viacell, Inc., 491 F.3d 1342, 1359-60 (Fed. Cir. 2007).
2007). Although the ultimate question of obviousness
is a legal issue reviewed de novo, see KSR Int'l Co. v.

Teleflex Inc., 550 U.S. 398, 427 (2007), the
underlying findings of fact (whether implicit or

explicit within the jury's verdict) are reviewed for
substantial evidence, see Johns Hopkins Univ. v.
Datascope Corp., 543 F.3d 1342, 1345 (Fed. Cir.
2008). We agree with the district court that, when
viewed in the light most favorable to the verdict, the
jury could have reasonably concluded that Acushnet
failed to prove invalidity due to obviousness.

Acushnet frames the invention of the Sullivan
patents as nothing more than a predictable and
“obvious to try" variation of known elements (solid
cores, ionomer-blend covers, polyurethane covers,
and three-piece balls). See KSR, 550 U.S. at 416
(noting that a "combination of familiar elements
according to known methods is likely to be obvious
when it does no more than yield predictable results");
PharmaStem Therapeutics, 491 F.3d at 1360.
Callaway, in contrast, argues that such analysis is
inappropriate because the Sullivan patents disclose
more than a rearrangement of prior art elements
with each element predictably performing its same
function in the new combination. Rather, Callaway
contends that use of a soft polyurethane cover over a
hard ionomer inner cover and a solid core, a
construction not present in the prior art, "produce[s]
a synergy and an important new result" over and
beyond that which could be expected independently
from each prior art element: namely, a true dual-
personality ball. PI.-Appellee's Br. 28; see KSR, 550

16a

U.S. at 416 (noting prior-art elements "work[ing]
together in an unexpected and fruitful manner" as
indicia of nonobviousness).

The evidence before the jury did not compel a
finding that all claim limitations were present in the
prior art. At trial, Acushnet sought to establish
obviousness primarily through a combination of prior
art three-piece balls with non-polyurethane outer
covers (the ball taught by Proudfit and a similar ball
marketed by Wilson, the Ultra Tour Balata), with
the polyurethane covers of Wu or Molitor '751. JMOL
Order, 585 F. Supp. 2d at 607. Callaway argues that
the record contains ample evidence upon which the
jury could have rationally concluded that these
combinations did not in fact disclose or render
obvious all limitations of the asserted claims.

The Sullivan patent claims require the
polyurethane outer cover of the patented golf ball to
have a Shore D hardness, as measured on the ball,
no greater than 64. E.g., '293 patent col.5 11.48-61. It
is undisputed that none of the prior art references
upon which Acushnet relied expressly discloses the
requisite hardness limitation for a polyurethane golf-
ball cover on a three-piece ball. Lacking dizect
evidence of the claimed limitation, Acushnet instead
relied on indirect evidence to attempt to establish the
existence of the claimed hardness limitation in the
prior art. It first argued that Molitor '751, which
discloses a two-piece ball with a core and a
polyurethane cover, demonstrates the necessary
hardness because that patent's specification states
that the polyurethane-blend cover of the Molitor '751

17a

ball should have "a shore C hardness less than 85,
preferably 70-80, and most preferably 72-76."
Molitor '751 col.2 11.33-39 (emphasis added); id.col.7
11.65-68.

Callaway maintains that Molitor '751's
disclosure of a Shore C hardness is insufficient to
teach an on-the-ball Shore D hardness less than 64.
There is no dispute that a hardness measurement
taken with a size "C" indentor will vary from a
measurement of the same material taken with a size
“D” indentor; that is, a Shore C measurement cannot
be precisely converted mathematically into a Shore D
measurement or _ vice-versa. However, while
acknowledging that no simple linear relationship
exists between the two types of measurements,
Acushnet argues that one of skill in the art would
have understood that approximate comparisons can
be drawn between the scales. Indeed, Acushnet
argues, the Sullivan patents themselves contain
statements drawing such comparisons. E.g., '293
patent col.3 11.50-54 (describing layer that "has a
Shore D hardness of about 45 (i.e., Shore C hardness
of about 65)"). Acushnet thus contends that even if a
precise conversion between the scales is not possible,
a golf ball designer would have recognized that a
Shore C hardness of 72-76 would be something less
than Shore D 64. In support of this specific
comparison, it introduced the "comparison chart"
from the ASTM D-2240 _ standard ' = showing
approximate ranges for measurements taken with
different size indentors, as well as expert testimony
that Shore C 72-76 would be approximately Shore D
55.

18a

Although the jury could have accepted
Acushnet's argument that the Shore C range
disclosed in Molitor '751 would have been equivalent
to an on-the-ball hardness measurement no greater
than Shore D 64, we cannot say that as a matter of
law the jury was required to do so. Substantial
evidence supports the contrary position. Most
notably, the ASTM "comparison chart" upon which
Acushnet relied states plainly on its face that "[t]his
is not and cannot be used as a conversion reference."
ASTM D-2240, at 1. The standard further cautions
that "there may be no simple relationship between
the results obtained with one type of [indentor] and
those obtained with another type," undercutting
Acushnet's argument that a material measuring
Shore C 72 would necessarily measure 64 or less if
tested with a type D indentor. Id. see also Trial Tr.
1162:3-24 (testimony of Callaway's expert, Dr. Risen,
that accurate Shore C to Shore D conversions were
not possible).

Equally importantly, the Shore C range
disclosed by Molitor '751 indicates a _ desired
hardness measurement of the cover on a two-piece
ball, rather than on the cover of a three-piece ball
with a hard ionomer-resin inner cover layer.
Testimony at trial established that the hardness

8 To be sure, there was contrary evidence as well, including
examples of Shore C to Shore D comparisons in the Sullivan
patents and evidence, as noted above, that such a comparison
was made in the course of the patents’ prosecution. See, e.g.,
'293 patent col.3 11.51-53. This evidence, however, did not rise to
the level of an admission that an accurate conversion between
Shore C and Shore D is always possible.

19a

measurement of a material depends to some degree
on what is underneath the material being tested,
such that an on-the-ball measurement of a thin
polyurethane cover with a hard layer underneath is
likely to be harder than an _ off-the-ball.
measurement. Acushnet's witness, Jeff Dalton,
agreed that "what's underneatn the layer you're
measuring can also influence the measurement."
Trial Tr. 516:17-18; see also id. at 516:23-24
(agreeing that thin covers are more subject to such
influence than thick covers); id. at 517:1-12 (agreeing
that on-the-ball measurements are often harder than
off-the-ball measurements). Acushnet's expert, Dr.
Statz, similarly agreed that hardness measurements
could be impacted by a number of factors, including
thickness and the material composition of adjacent
layers. Trial Tr. 720:6-19; id.616:8-9 (noting that "the
hardness will go up in the case of a thinner layer on
another material"). The jury was entitled to
determine that the imprecision of the ASTM chart,
coupled with uncertainty as to how much additional
hardness would be imparted by a hard intermediate
cover layer, was sufficient to undermine Acushnet's
claim that the Shore C hardness of 72-76 present in
the prior art would necessarily translate to an on-
the-ball Shore D hardness no greater than 64 on a
three-piece, two-cover ball.

Second, Acushnet contended that the Wu
patent demonstrates the necessary hardness
limitation, because expert testimony established that
the polyurethane cover material it teaches has a
Shore D hardness of about 48 when measured off the
ball, or of about 56 when measured on the single-

20a

cover golf ball discussed in the patent. But while Wu
discloses the hardness of the polyurethane material
itself, and an on-the-ball hardness of Shore D 56, it
(like Molitor '751) is not directed to a three-piece ball
having a relatively hard ionomer-resin inner cover
layer. As noted, evidence at trial showed that the
measured hardness of a thin outer cover layer is
impacted by the hardness and composition of the
underlying layer. Thus, as with Molitor '751, the jury
could have reasonably found that Acushnet failed to
show that the necessary hardness limitation was
known in the prior art.

In summary, whether the prior art disclosed
the necessary hardness limitation claimed in the
Sullivan patents was an issue of fact genuinely
contested before the jury. The district court did not
err in concluding that substantial evidence supports
the jury's implicit resolution of that factual issue in
Callaway’'s favor.

B

Acushnet also challenges two subsidiary
evidentiary rulings made by the district court in the
course of the trial on obviousness. We review the
district court's evidentiary rulings for abuse of

discretion. In re Paoli R.R. Yard PCB Litig., 35 F.3d
717, 749 (3d Cir. 1994).

First, Acushnet challenges the exclusion of
testimony concerning measurements performed on
certain test golf balls prepared in anticipation of
trial. The test balls in question were assembled using
elements from various prior art references; for

Z2la

example, Acushnet created a ball with Proudfit's
solid core and ionomer-blend inner cover, but with
the addition of the polyurethane outer cover taught
by Molitor '751. Acushnet sought to have a materials
expert, Dr. MacKnight, testify as to the testing of the
balls in order to demonstrate that the Shore D
hardness limitations of the asserted claims were
inherently met by golf balls made _ through
combination of the prior art. Before trial, however,
the district court noted that "Dr. MacKnight neither
prepared nor tested" the balls, and hence could not
actually vouch for the reliability of the test results.
Callaway Golf Co. v. Acushnet Co., No. 06-CV-091,
2007 WL 4165401, at "1 (D. Del. Nov. 20, 2007)
("Daubert Order"). Accordingly, it excluded Dr.
MacKnight's testimony and the test results ‘to the
extent that the reliability of the test results derives
from Dr. MacKnight's voucher." Id.

At trial, Acushnet again tried to introduce the
test ball evidence, this time proffering foundational
testimony from the Acushnet employee who
supervised production of the test balls and delivered
them to the independent laboratory for testing. The
district court again excluded the evidence, however,
apparently under Rule 403 of the Federal Rules of
Evidence. Aithough the district court did not
formally state the basis for its ruling, it noted at
sidebar that the introduction of evidence of "a
physical object that combines the prior art" ran a
high risk of causing “undue prejudice" by leading the
jury to give Acushnet's obviousness argument
excessive weight. Trial Tr. 749:3-13. It further noted
that "this testimony. . . has a danger of outweighing

22a

what was really in the art at the time." Id. at 754:1l-
12. On appeal, Acushnet challenges the exclusion of
the test ball evidence at trial.

We see no error in the district court's exclusion
of the test-ball testimony on the issue of obviousness.
The introduction of evidence concerning the test balls
ran a substantial risk of leading the jury towards the
inappropriate use of hindsight and towards unduly
weighting Acushnet’s arguments concerning
motivation to combine the prior art; the likely
outcome, as the district court perceived it, was the
jury understanding Acushnet's argument concerning
the combination of prior art as "[w]e did it, here it is,
anyone can do this." Trial Tr. 749:8-9. Nor does the
record indicate that Callaway made arguments that
would have been directly refuted by the test ball
evidence, such as a contention that it would have
been impossible to combine the prior art. The district
court was in the best position in this case to
determine whether in the context of the obviousness
trial the danger of unfair prejudice outweighed the
probative value of the test ball evidence. We cannot
say that excluding the evidence here was an abuse of
discretion. See Fed. R. Evid. 403; see_ also Young
Dental Mfg. Co. v. Q@3 Special Prods., Inc., 112 F.3d
1137, 1145-46 (Fed. Cir. 1997).

Second, Acushnet contends that the district
court abused its discretion by refusing to allow it to
introduce before the jury evidence of a parallel inter
partes re- examination of the Sullivan patents
proceeding before the Patent and Trademark Office
("PTO"). In the course of the re-examination, before

23a

trial, the PTO rejected each asserted claim of the
Sullivan patents. In doing so, the PTO relied on
essentially the same prior art relied upon by
Acushnet in this litigation. Acushnet sought to
introduce the re-examination at trial to counter
Callaway's statements in opening arguments that, by
approving the four Sullivan patents, "three patent
examiners" had concluded that they were valid. The
district court rejected Acushnet's request, stating
that giving evidence of the re-examination to the jury
would be "really confusing," not least because the
results of the non-final parallel proceeding were "not
binding" on the district court. Trial Tr. 354:16-17.
The court did, however, preclude Callaway from
further bolstering the validity of the patents by
further repeating the "three examiners" statements.

On appeal, Acushnet argues that it must be
granted a new trial because “allow[ing] Callaway to
argue .. . that multiple patent examiners had
reviewed the patents .. . without revealing that the
asserted claims stood rejected by multiple other
examiners .. . was entirely unfair." Def.-Appellant's
Br. 62. Acushnet is correct that Callaway's opening
statement, while truthful, nevertheless had potential
to mislead the jury by implying that every expert
examiner to have considered the patents had
concluded that they were valid. However, Acushnet
does not appear to have actually objected to
Callaway's opening argument itself (specifically, the
"three patent examiners" statements) as unfairly
prejudicial. Acushnet instead contended only that
the argument “provided perhaps the most compelling
reason yet to admit th[e re-examination] evidence"

24a

and that the district court should have allowed the
re-examination evidence before the jury.

On this point the district court did not err. The
non-final re-examination determinations were of
little relevance to the jury's independent
deliberations on the factual issues underlying the
question of obviousness. In contrast, the risk of jury
confusion if evidence of the non-final PTO
proceedings were introduced was high. The district
court did not abuse its discretion in concluding that
the prejudicial nature of evidence concerning the
ongoing parallel re-examination proceeding
outweighed whatever marginal probative or
corrective value it might have had in this case.

III Inconsistent Jury Verdicts on Obviousness

Acushnet contends that a new trial as to
obviousness is required because the district court
denied its timely request for JMOL or a new trial,
instead entering judgment on _irreconcilably
inconsistent jury verdicts. See JMOL Order, 585 F.
Supp. 2d at 617. The jury ruled dependent claim 5 of
the '293 patent invalid for obviousness while finding
all other asserted claims, including independent
claim 4 from which claim 5 depends, not invalid.

At the outset, Callaway contends that
Acushnet waived its objection to the allegedly
inconsistent verdicts by failing to object before the
jury was released. We review inconsistent verdicts,
an issue not unique to patent law, under regional
circuit law. Mvcogen Plant Sci., Inc. v. Monsanto Co.,

25a

243 F.3d 1316, 1325 (Fed. Cir. 2001). The Third
Circuit has not directly spoken to the question of
whether an objection is required to preserve error in
the face of inconsistent general verdicts, and how
that court would rule if squarely presented with the
issue is not entirely clear. We need not resolve this
question, however, because even assuming that such
an objection is required, it is apparent that Acushnet
did not waive its claim here.

After the jury was polled at the conclusion of
the trial, counsel for Callaway (not Acushnet) called
for a sidebar and the following exchange occurred:

[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.

® Compare Mallev-Duff & Assocs., Inc. v. Crown Life Ins. Co.,
734 F.2d 133, 144-45 (3d Cir. 1984) (no objection required for

inconsistent special verdicts under Rule 49(a)), and Simmons v.
City of Phil adelphia, 947 F.2d 1042, 1056-57 (3d Cir. 1991)
(suggesting in dicta that objection is required for inconsistent
interrogatories under Rule, 49(b)), with Mosely v. Wilson, 102
F.3d 85, 90 (3d Cir. 1996) ("Rule 49(b) does not address the
issue before us here-that of inconsistent general verdicts. We
have found little precedent on this issue... .”).

26a

Trial Tr. 1427:22-1428:5. The jury was then excused
without objection from Acushnet's counsel. Though it
did not object on the record, Acushnet contends that
because the court rendered a final decision in
response to Callaway's objection-"I'm not going to do
this. All right?"-no purpose would have been served
by repeating the point.

The district court evidently concluded here
that there was no waiver. Callaway argued waiver in
its post-trial briefing before the district court, but the
district court did not adopt Callaway's waiver theory,
stating that it was "sensitive to [Acushnet's]
argument that it was essentially ‘beaten to the
punch’ by [Callaway's] counsel and did not feel the
need to reiterate the same concerns following the
court's decision." JMOL Order. 585 F. Supp. 2d at
616. The district court then proceeded to decide
Acushnet's claim concerning the inconsistency on the
merits. Id. at 616-17. The district court here was in
the best position to evaluate the import of its
statements at sidebar, and we see no basis for
disturbing its determination that a waiver did not
occur.

Turning to the merits, we first must determine
whether the verdicts were in fact inconsistent. There
is no dispute that the verdicts with respect to claim 5
of the '293 patent (invalid) and claim 4 of that patent
(not invalid) were inconsistent. A _ broader
independent claim cannot be nonobvious where a
dependent claim stemming from that independent
claim is invalid for obviousness._See Ormco Corp. v.
Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir.

27a

2007). Callaway contends, however, that the verdict
is not irreconcilably inconsistent with regard to five
of the remaining asserted claims-claim I of the '293
patent, claims 1-3 of the '156 patent, and claim lof
the '873 patent. The basis for Callaway's argument is
that unlike claims 4 and 5 of the '293 patent, claim 5
of the '130 patent, and claim 3 of the '873 patent,
which require the inner cover layer to be made of "an
ionomer resin," those five claims require the inner
cover to contain a "blend" of ionomer resins. Thus,
Callaway argues, the jury could have rationally
concluded that the "blend" claims were not obvious
even if Claim 5, lacking a “blend" limitation, was
obvious.

The district court properly rejected this theory,
noting that Callaway's reasoning, which would at
best render the verdict "consistent with respect to
the 5 ‘blend’ claims, but. . . inconsistent with respect
to the four 'non-blend' claims," did "not give the court
sufficient means to reconcile the verdicts." JMOL
Order, 585 F. Supp. 2d at 616. Reconciliation of
inconsistent verdicts must be consistent with the
evidence and theories adduced at trial. See Malley:
Duff, 734 F.2d at 145-46. The contents of the four
Sullivan patents, which share essentially the same
specification and claim priority to the same parent
application, were presented to the jury as a group.
The evidence and theories at trial were also
advanced concerning the patents as a group, not ona
claim-by-claim basis. No party at trial asserted any
patentable difference among the asserted clams
before the jury or _ otherwise meaningfully
distinguished between claims on the basis of the

28a

"blend" limitation.

The district court recognized that under Third
Circuit law a court faced with inconsistent general
verdicts after the jury is dismissed has an obligation
to attempt to read the verdicts in a manner that will
resolve the inconsistencies. JMOL Order, 585 F.
Supp. 2d at 616-17; see Mosely, 102 F.3d at 90.
Although the district court agreed with Acushnet
that the verdicts here were genuinely and
irreconcilably inconsistent, it nevertheless denied
Acushnet's motion for a new trial. The court noted
that Acushnet "stipulated that it infringes each of
the Sullivan patents; three of which were held valid
by the jury without reservation," and that the
inconsistency therefore was harmless. JMOL Order,
585 F. Supp. 2d at 617.

This reasoning is flawed. Although it is true
that the jury found “without reservation" that eight
claims were not invalid, it is equally true that the
jury found claim 5 invalid without reservation.
Moreover, the evidence at trial was such that the
jury could have rationally reached either verdict with
regard to the asserted claims; neither party was
entitled to judgment as a matter of law. Under Third
Circuit law, in a case where a reading of the verdicts
that would solve the apparent inconsistency proves
impossible and the evidence might support either of
the two inconsistent verdicts, "the appropriate
remedy is ordinarily, not simply to accept one verdict
and dismiss the other, but to order an entirely new
trial."" Mosely, 102 F.3d at 90 (quoting Los Angeles v.

Heller, 475 U.S. 796, 806 (1986) (Stevens, J.,

29a

dissenting)).!° In these circumstances, Acushnet is
correct that a new trial rather than entry of
judgment was required as to claims 4 and 5 of the
'293 patent.

In sum, we agree with Acushnet that the
verdict form returned by the jury reflects an
irreconcilable inconsistency. Accordingly, we vacate
the judgment of the district court and remand for a
new trial on obviousness.

IV Anticipation

As noted above, the district court granted
summary judgment that the claims were not
anticipated by Nesbitt. Nesbitt describes a three-
piece ball with a core, a relatively hard ionomer-resin
inner cover, and a relatively soft ionomer-resin outer
cover. Summary Judgment Order, 523 F. Supp. 2d at
395. Although Nesbitt itself does not expressly
disclose two limitations of the Sullivan claims (the
use of polyurethane in the outer cover and the use of
a blend of ionomer resins in the inner cover),
Acushnet argued that Nesbitt contains these
limitations because it incorporates Molitor '637 by
reference. The relevant passage of Nesbitt describing

10 The Third Circuit has noted that in rare cases apparently
inconsistent verdicts may be allowed to stand. Mosely, 102 F.3d
at 90. That court has since clarified that "[t]hose circumstances
are where the verdict appears to be the result of compromise as
opposed to jury confusion." Acumed LLC v. Advanced Surgical
Servs., Inc 561 F.3d 199, 217 n.13 (3d Cir. 2009) (quotation
marks omitted). There is no contention that the verdict here
could plausibly be considered such a compromise.

30a

the materials that may be used in the cover layers of
the Nesbitt golf ball is as follows:

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 svnthetic
polymeric material. Polymeric materials are
preferably such as ionomer resins which are
foamable. Reference is made to the
litor i in S. Pat. No. 4,274,637
which describes a number of foamable
itions of har r_whi
emploved for one or both lavers 14 and I6 for
the golf ball of this invention.

Nesbitt col.3 11.51-61 (emphases added). Molitor '637,
in turn, undisputedly teaches that many foamable
materials, including both polyurethane and ionomer-
resin blends, may be used as golf ball cover
materials:

The range of synthetic polymeric materials
which can be used in accordance with this
invention, other than the above described
Surlyn [ionomer] resins, is much broader
than the range of natural materials. Suitable
polymer materials which may be adapted for
use in this invention are as follows:

Homopolymeric and copolymeric substances,
such as (1) vinyl resins. . .; (2) polyolefins such
as polyethylene, polypropylene, polybutylene,

3la

transpolyisoprene, and the like .. . (3)
polyurethanes . . .; (4) polyamides . . .; (5)
polystyrene. . .; (6) acrylic resins .. .; (7)

thermoplastic rubbers such as the urethanes. .
., and (8) polyphenylene oxide resins... . This
list is not meant to be limiting or exhaustive,
but merely illustrates the wide range of
polymeric materials which may be employed in
the present invention, Mixtures of the above
described material may also be used.

Molitor '637 col. 5 11.33-55 (emphases added); see also
id.col.l 11.44-45 ("Mixtures of various [ionomer]
resins as cover stock materials are likewise highly
advantageous.").

The district court rejected Acushnet's
argument, holding that Nesbitt failed to specifically
incorporate polyurethane and ionomer-resin blends
from Molitor '637. Summary Judgment Order, 523 F.
Supp. 2d at 396. Without the benefit of Molitor's
teachings, Nesbitt failed to anticipate as a matter of
law. The district court therefore granted summary
judgment of no anticipation. Id. at 398. On appeal,
Acushnet contends the district court erred in holding
that Nesbitt does not incorporate Molitor

We review the grant of summary judgment de
novo. Whether material is incorporated by reference
into a host document is a question of law. Advanced
Display Sys., Inc. vy. Kent State Univ., 212 F.3d 1272,

1283 (Fed. Cir. 2000). A patent claim is invalid due
to anticipation if, within "the four corners of a single,
prior art document. . . every element of the claimed

32a

invention [is described], either expressly or
inherently, such that a person of ordinary skill in the
art could practice the invention without undue
experimentation." Id, at 1282. However, "[mJaterial
not explicitly contained in the single, prior art
document may still be considered for purposes of
anticipation if that material is incorporated by
reference into the document.” Id.

To incorporate matter by reference, a host
document must contain language "clearly identifying
the subject matter which is incorporated and where
it is to be found"; a “mere reference to another
application, or patent, or publication is not an
incorporation of anything therein... ." In re de
Seversky, 474 F.2d 671, 674 (CCPA 1973). Put
differently, "the host document must identify with
detailed particularity what specific material it
incorporates and clearly indicate where that material
is found in the various documents.”_Adv. Display
Sys., 212 F.3d at 1282. Nesbitt identifies with
specificity both what material is being incorporated
by reference (foamable polymeric compositions
suitable for golf ball cover layers) and where it may
be found (the Molitor patent). Nesbitt col.3 11.51-61.
We have previously held that language nearly
identical to that used in Nesbitt ("[rjeference is made
to") can be sufficient to indicate to one of skill in the
art that the referenced material is fully incorporated
in the host document. See In re Voss, 557 F.2d 812,
815-16 (CCPA 1977); In re Hughes, 550 F.2d 1273,
1275-76 (CCPA 1977). Here, however, the district
court held that Nesbitt satisfies the requirements for
incorporation only with regard to the ionomer resins

33a

disclosed in Molitor, stating that "Molitor '673 is
mentioned in Nesbitt to identify examples of suitable
resins, preferably ionomer resins, and not to
specifically incorporate polyurethane." Summary
Judgment Order, 523 F. Supp. 2d at 396.

Callaway in support of the district court
argues that even if Nesbitt incorporates Molitor '637
as to ionomer resins, it does not incorporate with
respect to the use of polyurethane for the outer cover
because it refers to the use of ionomer resins as
"preferabl[{e]." Nesbitt col.3 1.55. Polyurethane is not
an ionomer resin. Although Molitor '637 does state
that ionomer resins are the preferable material for
such use, on its face the reference to Molitor '637 in
Nesbitt is not limited to those resins. Rather, Nesbitt
states broadly that the layers of the golf ball
disclosed therein may be made from a “natural or
synthetic polymeric material." Id. col.3 11.53-54.
Nesbitt goes on to directly indicate that such
materials include all of the foamable polymeric
materials described in Molitor: "Reference is made to
{Molitor '637] which describes a number of foamable
compositions of a character which may be employed
for one or both layers. . . for the golf ball of this
invention." Id. col.3 1156-61 (emphasis added).
Polyurethane is a foamable composition. Nesbitt
incorporates the entire list of foamable compounds
("a number of foamable compositions") disclosed by
Molitor '637 as appropriate materials for use in golf
ball cover layers, including polyurethane and
mixtures of ionomer resins.. . We perceive no basis to
differentiate between incorporation of the ionomeric
resins disclosed by Molitor '637 and the other

34a

compositions in the list, including polyurethane.'
Accordingly, we hold that Nesbitt incorporates by
reference the potential cover layer materials
described in Molitor ‘637, including polyurethane
and ionomer resin blends.

Callaway contends that even if the district
court erred in concluding that Nesbitt does not
incorporate Molitor ‘637, summary judgment of no
anticipation was still appropriate. That issue was not
addressed by the district court, and it is not clear to
us that Callaway properly raised this issue in its
motion for summary judgment before that court. We
are therefore reluctant to consider this issue on
appeal. Nothing we say here precludes the district
court from permitting Callaway to file a new motion
for summary judgment on that issue, if the district
court thinks it appropriate.

One matter, however, requires our attention.
Callaway contends that the trial court properly
excluded the test ball evidence on the issue of
anticipation. On this point we disagree. This requires
us to examine the grounds for the district court's
decision in this respect. First, the district court
refused to consider the test ball evidence on the issue
of anticipation because it found that Nesbitt did not
incorporate the Molitor '637 reference, and that the
test balls therefore did not embody any single item of
anticipatory prior art. Summary Judgment Order,
523 F. Supp. 2d at 400 ("The balls . . . were neither
completely representative of Nesbitt, nor were they
completely representative of Proudfit ... ."). This
ground for excluding the evidence necessarily fails in

35a

light of our holding that Nesbitt does incorporate
Molitor.!! Second, with respect to obviousness, the
district court refused to allow the test ball evidence
at trial because presentation of the evidence could
lead the jury to give undue weight to Acushnet's
arguments concerning motivation to combine and
obviousness. This ground is_ inapplicable to
Acushnet's anticipation argument, where motivation
to combine is not an issue. Third, at summary
judgment, the district court excluded the testimony
of Acushnet's expert, Dr. MacKnight, on the ground
that MacKnight had not had sufficient involvement
in the preparation and testing of the balls to vouch
for their reliability. Daubert Order, 2007 WL
4165401, at *1 ("Dr. MacKnight neither prepared nor
tested anything. ... [T]o the extent that the
reliability of the test results derives from Dr.
MacKnight’s voucher, such evidence is excluded"). As
discussed above we find no error in the district
court's ruling, but the fact remains that at trial
Acushnet also proffered the testimony of Jeff Dalton
(who supervised preparation of the balls) and of an
employee of the testing laboratory. On remand, that
testimony may be sufficient to authenticate the balls,
and support the admission into evidence of balls
designed to replicate Nesbitt on the issue of
anticipation.

i! Indeed, while challenging Acushnet's test balls as an
agglomeration of prior art elements, Callaway appears to
recognize that re-creations or "models of balls described in
individual prior art references" may be relevant. PI.-Appellee's
Br. 58; see id. at 25.

36a

Because Nesbitt incorporates the compositions
taught by Molitor '637, we reverse the judgment of
the district court granting summary judgment to
Callaway and remand for further proceedings on
that issue.

CONCLUSION

For the reasons discussed above, the judgment
of the district court is affirmed- in-part, reversed-in-
part, and vacated-in-part. The permanent injunction
against Acushnet entered on November 10, 2008, is
vacated and the case is remanded for further
proceedings not inconsistent with this opinion.

AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, and REMANDED

COSTS

No costs.

2009-1076

37a

APPENDIX B

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

06-091-SLR
CALLAWAY GOLF COMPANY,

Plaintiff,

v.
ACUSHNET COMPANY,
Defendant.
ORDER

At Wilmington, this 10th day of November,
2008, consistent with the memorandum opinion
issued this same date;

IT IS ORDERED that:

3. Defendant's motion for judgment as a
matter of law or, in the alternative, for a new trial
(D.I. 409) is denied.

2. Plaintiffs motion for a permanent

38a

injunction (D.I. 411) is granted.
3. Defendant’s motion to stay’ the
injunction pending appeal (D.I. 440) is denied.

United State District Judge

39a

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

06-091-SLR
CALLAWAY GOLF COMPANY,

Plaintiff,
v.

ACUSHNET COMPANY,
Defendant.
JUDGMENT IN A CIVIL CASE

For reasons stated in the jury verdict of
December 14, 2007;

IT IS ORDERED AND ADJUDGED that
judgment be and is hereby entered in favor of
Acushnet Company with respect to the invalidity of
asserted claim 5 of U.S. Patent No. 6,210,293 and for
Callaway Golf Company in all other respects.

United State District Judge

Dated: December 19, 2007
(By) Deputy Clerk

40a

APPENDIX C

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

06-091-SLR
CALLAWAY GOLF COMPANY,

Plaintiff,
Vv.

ACUSHNET COMPANY,
Defendant.
ORDER
WHEREAS Defendant Acushnet Company on
December 3, 2007 stipulated that its Pro V1® line of
products, collectively, are covered by and infringe the
following claims of Callaway Golf's patents: claims 1,
4, and 5 of U.S. Patent No. 6,210,293; claims 1, 2,
and 3 of U.S. Patent No. 6,503,156; claim 5 of U.S.
Patent No. 6,506,130; and claims 1 and 3 of U.S.

Patent No. 6,595,873 [D.I. 367]; and

4la

WHEREAS the Jury returned a verdict on
December 14, 2007 upholding the validity of claims 1
and 4 of U.S. Patent No. 6,210,293; claims 1, 2, and 3
of U.S. Patent No. 6,503,156; claim 5 of U.S. Patent
No. 6,506,130; and claims 1 and 3 of U.S. Patent No.
6,595,873 ("the Relevant Patent Claims") [D.I. 398];
and

WHEREAS, consis

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_1355%3A1. Public record. Not legal advice.