Friday, August 14, 2009

Fore! Genuine issue of fact concerning anticipation of golf ball patent

The Federal Circuit has just remanded the long-running patent infringement dispute between Callaway and Acushnet concerning certain Callaway golf ball patents. The patents at issue are:
At the trial level, Acushnet stipulated that it infringed, but argued the patents were invalid for being anticipated and obvious over the prior art. The trial court disagreed on anticipation, but held a trial on obviousness, where the jury determined that all but one of the asserted claims was valid.

Acushnet argued that U.S. Patent 4,431,193 to Nesbitt anticipated each of the claimed limitations, even though it did not expressly disclose two limitations (namely the use of polyurethane in the outer cover and the use of a blend of ionomer resins in the inner cover). Acushnet explained that these two additional limitations were disclosed in Nesbitt because it incorporated by reference U.S. Patent 4,274,637 to Moliter:
Reference is made to the application Ser. No. 155,658, of Robert P. Molitor issued into U.S. Pat. No. 4,274,637 which describes a number of foamable compositions of a character which may be employed for one or both layers 14 and 16 for the golf ball of this invention.
The district court did not agree, because Nesbitt did not specifically incorporate polyurethane and ionomer-resin blends. The Federal Circuit explained the law as follows:
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 ll.51–61. We have previously held that language nearly identical to that used in Nesbitt (“[r]eference 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 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.
* * *
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 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.
As such, the Federal Circuit remanded the case to the trial court for further proceedings on the anticipation issue.

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