In Callaway Golf Co. v. Acushnet Co., the Court of Appeals for the Federal Circuit (CAFC) vacated the judgment of the District Court and remanded the case for a new trial on the basis of irreconcilable jury verdicts. Callaway Golf Co. had brought suit against Acushnet Co., which owns the Titleist golf ball brand, for infringement on several claims of four golf ball patents, U.S. Patent Nos. 6,210,293; 6.503, 156; 6,506,130; and 6,595,873. The patents disclosed a golf ball containing a core and two outer layers: the outer cover being made of a harder resin and the inner cover being made of softer polyurethane. Following claim construction, Acushnet stipulated that its golf balls infringed, but contended that Callaway’s claims were invalid for anticipation and obviousness.

The District Court found no anticipation and granted summary judgment on the issue to Callaway. Following a trial on obviousness, the jury determined that dependent claim 5 of the ‘293 patent was invalid for obviousness, but no other claims, including independent claim 4 of the ‘293 patent, on which claim 5 depended, were obviousness. On appeal, Acushnet argued for reversal on invalid claim construction, obviousness, and anticipation grounds. In addition, Acushnet argued that the jury verdicts on obviousness with respect to independent claim 4 and dependent claim 5 of the ‘293 patent were irreconcilable.

Acushnet contended that a new trial on obvious was required because of irreconcilably inconsistent jury verdicts with respect to claims 4 and 5 of the ‘293 patent. Callaway argued that Acushnet had waived its objection by failing to object before the jury was released. However, upon the conclusion of the trial, counsel for Callaway called a sidebar regarding the inconsistent verdicts in which the judge indicated that she would not order a new trial. The District Court determined, and the CAFC agreed, that no waiver had occured by Acushent because the Distrct Court had rendered a final decision in response to Callaway’s objection and no purpose would have been served by repeating the point.

Under Third Circuit law, a court faced with inconsistent verdicts after the jury has been dismissed has an obligation to attempt to read the verdicts in a manner that will resolve the inconsistencies. The District Court agreed with Acushnet that the verdicts were irreconcilable, but noted that Acushnet stipulated that it had infringed three of the patents which the jury held valid, and therefore held that the inconsistency was harmless. The CAFC found this reasoning flawed. Although the jury did not find eight claims invalid, it did find claim 5 of the ‘293 patent invalid. Additionally, the CAFC determined that the evidence at trial was such that the jury could have rationally reached either valid or invalid verdicts with regard to asserted claims. Thus, the CAFC determined that the appropriate remedy was to order a new trial, and not to accept one verdict and dismiss the other. Therefore, the CAFC vacated the judgment and remanded for a new trial on the issue of obviousness on claims 4 and 5 of the ‘293 patent.

Additionally, Acushnet contended that the District Court had erred in construing the term “cover layer having a Shore D hardness” by construing the term to mean the harness as measured on the golf ball, and not of the material comprising the cover measured off the ball. The ASTM test method noted in the patent specification indicates that the layer under the material being tested can affect the measured hardness. However, because the claim concerned a ball with a cover layer having a certain harness (rather than focusing on the hardness of the material), and because Acushnet’s own witnesses testified that those skilled in the art typically took measurements off the ball, the CAFC held that the District Court had not erred in its construction of the disputed term.

Acushnet further contended that the District Court erred in failing to grant its motion for judgment as a matter of law on obviousness. Acushnet argued that the invention claimed in the patents were nothing more than a predictable and obvious variation of elements known at the time. Acushnet’s references did not expressly disclose the requisite hardness limitation for a polyurethane golf-ball cover on a three-piece ball. However, Acushnet attempted to rely on indirect evidence to establish that the hardness limitation existed in the prior art. The prior art taught that a two-piece ball should have a Shore C hardness within a certain range. Because no simple relationship exists between Shore C and Shore D measurements, the CAFC concluded that ample evidence was presented such that a rational jury could conclude that the combinations disclosed in the claims were not all obvious.

Finally, Acushnet contended that the Callaway claims had been anticipated by U.S. Patent No. 4,431,193 (“Nesbitt”) because it incorporated U.S. Patent No. 4,274,637 (“Molitor”) by reference. Nesbitt disclosed a three piece ball, and Molitor disclosed that many foamable materials, including polyurethane, may be used as golf ball cover materials. The District Court rejected this argument, concluding that Nesbitt failed to incorporate the relevant portions of Molitor. The CAFC disagreed, holding Nesbitt’s language, “Reference is made to . . . U.S. Pat. No. 4,274,637,” as sufficient to incorporate the entire Molitor patent. Callaway also contended that the District Court properly excluded evidence concerning test balls produced by Acushnet on the issue of anticipation. The CAFC disagreed, indicating its belief that the District Court had not considered the evidence in terms of anticipation, and instead made its ruling in terms of obviousness. The CAFC indicated that on remand, the District Court should determine whether this testimony may be admitted for use on the issue of anticipation. Because Nesbitt incorporated Molitor, the CAFC reversed the judgment of summary judgment on the issue of anticipation and remanded for further proceedings.