Callaway Golf v. Acushnet, 2009–1076 (Fed. Cir. 2009)
Inconsistent Verdict: The jury found eight of Callaway’s golf ball claims valid – all except for dependent claim 5. According to the jury, that claim was obvious even though the broader independent claim was nonobvious.
On appeal, the Federal Circut vacated – holding that the jury verdict was “based upon irreconcilably inconsistent jury verdicts.”
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.
Testing Evidence: The Federal Circuit also found fault with Judge Robinson’s exclusion of evidence regarding test balls that Acushnet created based on a prior art reference and used in its anticipation argument. The problem was that the test ball design was not fully described within a single prior art reference. However, on appeal, the court found that the needed disclosures may have been properly incorporated-by-reference within the prior art.
Material 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. (Quoting Advanced Displays, 212 F.3d 1272 (Fed. Cir. 2000).
For anticipation purposes the incorporation-by-reference must clearly identify the material being incorporated. Here, the court found that the prior art had done so sufficiently by referring to “foamable compositions” to be found in the incorporated reference.