Pro V1 lawsuit saga continues

December 23, 2008

Christmas may be a time for peace on earth, good will toward men, but not when it comes to golf ball patent infringement lawsuits.

The ongoing Callaway-Acushnet lawsuit over the patents involving the Pro V1 took another anti-Titleist turn Tuesday when the U.S. Court of Appeals for the Federal Circuit denied the industry leader's request for a stay of a lower court's decision to grant a permanent injunction stopping the sales of models of the Pro V1 that infringe patents owned by Callaway Golf by December 31.

A November decision in U.S. District Court in Delaware granted Callaway an injunction against Pro V1 sales, denying Titleist parent company Acushnet's request to overturn a jury's December 2007 verdict which found that Callaway Golf's golf ball patents were valid and infringed by Acushnet's Titleist Pro V1 family of golf balls. The case originally began in February 2006.

The two companies continue to disagree about what the latest ruling means. Callaway maintains in a press release that it's time for Acushnet to give up, as in immediately. In a company statement, Steve McCracken, Senior Executive Vice President, Chief Administrative Officer, Callaway Golf, said, "Callaway Golf believes it is time for Acushnet to accept its losses in court and get on with the task of helping retailers clean up their inventories over the next week."

Titleist says not so fast, believing the courts will eventually reverse the original decision and cites a U.S. Patent Office action that determined the patents in question invalid, pretty much the opposite determination by the courts up to this point. An Acushnet Company press release indicated that the appeals process would continue and that the Appeals Court would "next review these complex issues in far greater detail and will likely render a decision sometime late in 2009."

In a company statement, Joe Nauman, executive vice president, corporate and legal of Acushnet, said, "This decision will not interfere with Titleist's ability to continue to manufacture, distribute and sell Pro V1 golf balls. While the stay was not granted, we understand that it was a request for extraordinary relief based upon a limited review."

Titleist had announced previously that it changed the formulation of the Pro V1 to make it free from the patents in question in September, and it believes "there will be limited amounts of non-converted Pro V1 golf balls in retail inventory."

While the degree to which retailers may be caught in the middle of this question is uncertain, even less clear is what might happen to tour players who might choose to play the Pro V1, especially models that were not changed or models that are older than the 2007 version. Complicating the dispute further is the fact that the next iteration of Titleist's top tour ball is expected to be introduced in early 2009. Technically, those non-converted Pro V1 balls remain on the USGA conforming list.

Titleist spokesman Joe Gomes said, "Tour players (in U.S. events) will be able to play modified/converted Pro V1/Pro V1x product as well as the new 2009 Pro V1 and Pro V1x."

"We do not expect that there will be any issues involving professionals being provided or playing infringing balls after January 1," said Callaway spokeswoman Michele Szynal. "After all, this is a game of integrity where players call penalties on themselves."