Three Updates: Callaway v. Acushnet, Intellectual Ventures v. Xilinx, Zimmer Spine v. NuVasive

Scott Daniels | March 10, 2011

1.  Callaway v. Acushnet

Last May we reported the possibility of a conflict between the PTO and the District Court in the golf ball patent dispute, Callaway v. Acushnet, 1:06-cv-0091-SLR (D. Del).  A jury had determined that Callaway’s four patents – U.S. Patent Nos. 6,210,293, 6,503,156, 6,506,130, 6,595,873 – were invalid over the prior art.  The accused products were Acushnet’s Titleist Pro VI® golf balls.  In the meantime, the PTO was conducting reexamination of each of the Callaway patents, and, conceivably could have reached a contrary conclusion rearding those patents. 

Yesterday, however, the PTO Board reached the same conclusion as the Delaware jury when it affirmed the prior art rejection of the claims of the ‘293, ‘156 and ‘873 patents.  Notable for reexamination practitioners, was the Board’s skepticism of Callaway’s commercial success argument that featured $1.5 billion in sales.  As has happened in many appeals, the Board found a lack of nexus between the claimed invention and the asserted commercial success.  Callaway had withdrawn the appeal of the ‘130 rejection. 

2.  Intellectual Ventures v. Xilinx

Each week seems to bring a new request by Xilinx for reexamination of one of the Intellectual Ventures patents from its case against Xilinx and several other companies. Intellectual Ventures v. Altera et al.  (Case No.  10–cv-1065-LPS (D. Del.)).  Yesterday Xilinx requested reexamination of IV’s U.S. Patent No. 6,993,669.  A request for reexamination of the last IV patent, U.S. Patent No. 5,675,808, is presumably on the way. 

 3.  Zimmer Spine v. NuVasive

We have previously mentioned that the examiner had withdrawn his rejection of the Zimmer Spine patent claims, in U.S. Patent No. 6,936,501, in the inter partes reexamination requested by rival NuVasive.  NuVasive made a comeback yesterday, however, when the Board reversed the examiner.  Specifically, the Board found that the Zimmer claims were anticipated by the prior art and therefore reversed the examiner’s decision to withdraw his earlier anticipation rejection. 

The Board’s decision is interesting in that it construes the claim terms in dispute, first by considering the definition from a general usage dictionary, and then finding that the specification is consistent with that definition.  The case also emphasizes the benefit a requester derives from its right to appeal in inter partes, as opposed to ex parte, reexamination.

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