Lee Wright | May 19, 2010

The possibility of PTO and the courts adopting different claim constructions has arisen in Callaway’s case against Acushnet for infringement of four golf ball patents.

In August 2009, the CAFC vacated a jury verdict because it contained an “irreconcilable inconsistency” – specifically, a finding that Callaway’s independent claim was non-obvious, but that a dependent claim was obvious.  In March of this year, after a second trial, the jury found that all the asserted Callaway claims were anticipated and obvious.  The case is now back at the CAFC awaiting decision.

For its part, Acushnet initiated inter partes reexaminations against each of Callaway’s four patents.  The Examiner has rejected the Callaway claims, and the PTO Board is now considering Callaway’s appeal.

Notably, however, the Examiner did not follow the CAFC’s construction of a key claim limitation common to all four Callaway patents: that the measurement of the claimed hardness value is “on the ball.”  Rather, the Examiner stated that “[d]uring reexamination claims are given the broadest reasonable interpretation consistent with the specification (MPEP 2658(I) and 2258(I)(G))” and “[t]o be consistent with the specification, then, the [Callaway claims] do not require a Shore hardness value measured ‘on the ball’” (emphasis added).

The Examiner noted that a non-final court decision concerning a patent under reexamination has no binding effect on a reexamination proceeding (MPEP 2686.04(IV)).  Hence, the Examiner has reviewed the holding of the District Court, but states that he is not bound by it.  While not bound by a non-final determination of claim validity, the Examiner did not agree that a final court decision regarding the validity for one or more claims resulting from litigation between the patent owner and the third party requester would require termination of inter partes reexamination as to those claims (MPEP 2686.04(IV)).

Stay tuned to see whether the Board maintains the Examiner’s claim construction and if it does, whether the Board reaches the same conclusion of unpatentability as did the jury.

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