Federal Circuit Reverses Summary Judgment in Golf Club Infringement Case


On September 16, 2010, Nassau Precision Casting Co., Inc., owner of U.S. Patent No. 5,486,000, entitled “Weighted Golf Iron Club Head,” brought a patent infringement lawsuit accusing Acushnet of infringing claims 1 and 2 of the ’000 patent by making, offering to sell, and selling its Cobra S9, Cobra S9 Second Generation, King Cobra UFi, and Cobra S2 clubs. The ’000 patent describes what it says is an improvement in the distribution of weight within the head of a golf club. The purpose of the invention is to achieve “sweet spot-enhancement, i.e. significant improvement in the ball-striking efficacy of the club head, while maintaining the same starting overall weight of the club head.”

The United States District Court for the Eastern District of New York granted summary judgment of non-infringement to Acushnet. On June 6, 2014, the Federal Circuit affirmed in part, vacated in part and remanded after determining that, based on the district court’s claim interpretation, the only element found lacking from the accused device relative to claim 2 was in fact present in the accused device. See Nassau Precision Casting v. Acushnet Company, Inc.

Claim 1 of the ‘000 patent reads:

1. In a golf iron club head of a type having a ball-striking body of weight-imparting construction material inclined at a selected angle for driving a struck golf ball a corresponding selected height during its trajectory, said body having spaced-apart top and bottom surfaces bounding a ball-striking surface therebetween, the method of improving weight distribution comprising removing construction material from said top surface, relocating said removed construction material from said top surface to clearance positions below said top surface located adjacent opposite ends of said bottom, surface whereby said removed construction material from a location not used during ball-striking service of said golf iron, is of no adverse consequence thereto and said removed construction material in said relocated positions contributes to increasing said height attained by a struck golf ball.

As to claim 1, the district court construed the phrase “removed construction material from a location not used during ball-striking service” as “prohibit[ing] removal of construction material from the club head face,” because “any area of the club head face may be used to strike a golf ball.”  Having so construed the claim element, the district court then concluded that the accused clubs did not meet this element, even though it was undisputed that in the accused clubs material was “removed” only from the top surface of the club head, not the face.

The Federal Circuit, per Judge Taranto (with Judges Wallach and Chen) affirmed the ruling of the district court,  affirming that the accused device did not infringe claim 1. Judge Taranto concluded that the district court was specifically correct to conclude that not all of the construction material allegedly removed from the top could be placed on the bottom of the accused clubs.

Claim 2 of the ‘000 patent reads:

2. A method of improving the weight-distribution of a selected construction material constituting a golf iron club head with a ball-striking surface bounded in a vertical perspective by top and bottom surfaces and in a horizontal perspective by toe and heel portions said method comprising the steps of removing construction material from a central portion of said top surface, determining the weight of said removed construction material, and embodying as part of selected bottom areas of said toe and heel of said club head said removed construction material having said determined weight, whereby the weight is distributed to said selected bottom area without any increase in the overall weight of the club head.

As to claim 2, the district court reasoned that the claim requires that “all of the construction material or weight removed from the top of the club be embodied in the selected bottom areas,” while not changing the net weight of the club. In the accused clubs, only the amount of construction material equal to the difference in weight between the polymer insert and the removed construction material is embodied in the bottom areas. For that reason, the district court found that the accused clubs could not infringe claim 2.

The Federal Circuit reversed on claim 2, vacating the district court’s summary judgment of non-infringement. Judge Taranto explained: “The sole claim element that the district court found missing in the accused clubs is, on the record before us, undisputedly present.”

The Federal Circuit went on:

Under the district court’s construction of the pertinent claim element, the removed construction material must be from an area other than the club head face. Under Nassau’s still broader construction of the claim element, the removed construction material must be either from club head areas other than the club head face or from the upper portion of the club head face (which is not normally and intentionally used by golfers for striking the ball). Under either construction, the accused clubs meet the requirement: it is undisputed that all of the removed material is from areas other than the club head face.

Thus, the Federal Circuit did not need to choose between the district court’s claim construction or the claim construction offered by Nassau, because under either claim construction, the accused clubs were readily captured by the claim.

The Federal Circuit also rejected Acushnet’s alternative claim construction that claim 2 was to a manufacturing process and not to a design process.

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