Dependent Claim Improperly Held Obvious (When Independent is Nonobvious)

PatentLawPic746Callaway 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.

14 thoughts on “Dependent Claim Improperly Held Obvious (When Independent is Nonobvious)

  1. 14

    OK – maybe the jury was right and we have it all wrong.

    Can a species make a whole genus obvious? Maybe not if the relation of the species to the genus is not clear and direct.

    Can a species make a species obvious? maybe if the two species are sufficiently simliar.

    It seems like when you further define things in a dependent claim you may add enough form and color to start seeing the similarities between the prior art species and the claimed species.

    I am not sure if the logic works in reverse – at least in my feeblemindeness. It maybe be ghard to see how the species relates to the genus and therefore may not make it obvious….

  2. 13

    This is particular CAFC panel was MICHEL, Chief Judge, LINN, Circuit Judge, and ST. EVE, a visiting District Court Judge.
    But the main problem with “inequitable conduct” law has been the wide decisional variances between different panels with different judges as to the extent of proof of intent required. Some allowing intent to be liberally implied just from the alleged materiality. Plus, no clear consistent test standard – accepting allegations under old Rule 56 OR new Rule 56 OR OTHER standards. So an en banc CAFC decision is still badly needed.

  3. 12

    “they would likely all die of old age before they agreed on anything.”

    Inconsistent jury verdicts are nothing new. When they happen in criminal cases, sometimes a criminal defendent is stuck with them.

    But if the jury had some doubts about whether 112, 4th paragraph has truly met, the jury might find a dependent claim to be invalid over prior art despite finding that the independent claim not valid over the same art, particularly if they aren’t given a choice.

    Also, the FC said that 3rd circuit law covered what to do with inconsistent claims and that there was no clear 3rd circuit precedent. Given that, did the district court really get it wrong?

    Perhaps in some circuits, the FC would be forced to take the inconsistent jury decision at face value as the evidence supported both validity and invalidity verdicts.

  4. 10

    Yeah great, but if you put 12 patent attorneys, examiners, and inventors in a room, and told them to reach a verdict on obviousness, they would likely all die of old age before they agreed on anything. If the PTO can’t get it right, District Court judges can’t get it right, the almighty CAFC can’t get it right, and the SCOTUS often can’t get it right, then maybe that should be telling you that YOU are wrong.

  5. 9

    For the first time in memory, I agree wholeheartedly with 6.

    If the PTO can’t get it right, District Court judges can’t get it right, the almighty CAFC can’t get it right (in each case, according to some), and God knows the SCOTUS often can’t get it right (although there’s no one to correct them), then how can we possibly expect a dozen people who aren’t smart enough to get out of jury service to get it right? Patent Examiners go through (I assume) some pretty significant training, but a juror gets, what? A jury instruction?

    Do we really wonder anymore why the system is so messed up? I hope not.

  6. 7

    I see on page 24 of the Decision of the CAFC:

    …we vacate the judgement of the district court and remand for a new trial on obviousness.

    Will Plaintiff again exercise its right to trial by jury? People who enjoy their jobs do a good job, otherwise not. Will the jury members enjoy their job? Frankly, I’m not sure (even when the quality of the Directions to the Jury is higher than ever before).

    As to the cost of a re-trial, to the court system, and to the litigants, I say nothing. But I do wonder.

  7. 6


    The jury’s verdict is appealed–which means that the district court judge agreed with the verdict? Isn’t that odd? If a well trained district court judge can/will make such a mistake, how much money will be wasted in nonesense just because of this kind of errors?

  8. 4

    Tom K may be right, but the opinion only reproduces the verdict form, not all of the jury instructions. Without having seen the jury instructions, we can’t know whether there was a sufficiently clear instruction that the jury simply misunderstood/ignored.

    I note that the AIPLA Model Jury Instructions have this instruction: “If you find that the [Independent Claim] from which [Dependent Claim] depends is not literally infringed, then you cannot find that [Dependent Claim] is literally infringed.” But there is not a parallel instruction for obviousness such as “If you find that the [Independent Claim] from which [Dependent Claim] depends is not obvious, then you cannot find that [Dependent Claim] is obvious.”

  9. 3

    So, one says “poor jury” and the other says “poor instructions”. I say that something as abstruse as the validity of a claim of an issued patent is beyond the ability of any jury (just look what happens in Germany, where 5 specialist patents judges have the task of finding the facts). It’s a hopeless task, to write adequate and effective instructions to such a committee of fact finders.

    But then, I’m a fan of patent litigation, English-style, where one specialist patents judge finds the facts and the law, then writes the Decision. Just look at how quickly the English decisions issue, and how few English patents decisions go to appeal. Not a possibility in the USA, I realise, with the Constitutional right to trial by jury.

    This isn’t the first time though, is it, when a jury has found the obviousness attacks on independent claim 1 to be not well-founded, yet those directed at a narrower claim, dependent on claim 1, to invalidate the narrower claim. Does it happen often and, when it does, are we to blame the instructions, the jury, or both?

  10. 2

    If anything, this case is probably a good example of poorly drafted jury instructions and verdict sheet.

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