Gear & EquipmentApril 22, 2011

Callaway-Acushnet legal battle over? Of course not

The protracted and mind-numbingly confusing patent infringement lawsuit between Callaway and Acushnet (parent company of Titleist) over some patents involved in the development of the Pro V1 family of golf balls has reached a conclusion.

Again.

This time, as has been the trend in recent court and U.S. Patent and Trademark Office decisions in this case, Acushnet is declaring victory after a U.S. District Court judge in Delaware denied Callaway's request for a new trial on a lawsuit that is more than five years old.

"Today's positive ruling substantiates what our contention has been throughout this process, that the patents in question were invalid and should never have been issued," said Joe Nauman, Executive Vice President Corporate and Legal, Acushnet Company.  "We had confidence that once we had the opportunity to present all the evidence, and as we continued to receive favorable rulings from the U.S. Patent & Trademark Office (PTO), we would prevail.  The confirmation by the U.S. District Court is another significant step in finalizing this case."

Callaway, which had won an earlier judgment in the case, claims patents it owns (part of the assets from its purchase of Spalding in a bankruptcy auction in 2003) were infringed upon by the earliest Pro V1 balls. That lawsuit originally was filed in February 2006, and the verdict in Callaway's favor was rendered in December 2007. A subsequent Acushnet appeal, combined with judgments from the USPTO that the Callaway patents shouldn't have been granted in the first place, led to the injunction being lifted and an appeals court tossing out the original verdict. A federal jury then ruled those Callaway patents invalid a year ago, leading to Callaway's request for a new trial that has now been denied. There also remains a second patent infringement suit and countersuit between the two companies. [CLARIFICATION: An earlier version of this story indicated that the judge originally ruled that Acushnet was to pay Callaway $150 million in damages in the December 2007 verdict. That was incorrect. The judge never made a specific ruling on monetary damages. That number was included in our original reporting on the December 2007 and November 2008 verdicts, based on estimates from industry experts.]

But the saga, not surprisingly, continues. Callaway plans an appeal to U.S. Federal Circuit Court.

               "We are disappointed with the Court's decision, especially in light of our victory in the first trial and Acushnet's admitted infringement of our patents," said Tim Buckman, senior director of global communications. "We will appeal to the United States Court of Appeals for the Federal Circuit.  In the meantime, we will pursue our second suit against Acushnet for infringement of our other patents."

So five years and hundreds of legal filings later, if we think we know what's going on, we're fooling ourselves. Literally at issue here are things like the Shore D hardness rating of the cover of a golf ball and whether that is measured on the ball as constructed or some other way.  (I prefer we talk more about Shoreacres or Shore Gate than Shore D.)

What I am left to wonder now is what this trial might reveal about the state of innovation in golf. Specifically, is it possible, given that it seems the Callaway patents and the Acushnet patents were essentially in such close proximity to one another that both the court system and the U.S. PTO were at least initially confused and contradictory, that the vast open range for meaningful innovation no longer exists, that any two dogs fighting over the same bone are no different than any two golf companies searching for new technology?

Of course, I also wonder how much time and effort companies now must waste navigating the patent minefield, how much one company might fear acting on an idea because it might be too close to another's intellectual property, and how much innovation brainpower is diverted from developing equipment that might help golfers play better.

Innovation isn't dead, of course. The pioneers find a new frontier in a previously unknown or overlooked location and stake a claim. Others move in eventually. The fighting starts when the neighbors get too close. In the end, I don't think this trial helps the game, certainly. Seems messy, not particularly honorable or, in the word of the day when it comes to manufacturer relations, "collegial." Never should have happened, in fact. Yet, it continues. Honestly, how can anyone feel good about claiming victory or resolving to continue to fight?

--Mike Stachura

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