Patent Law Practice Center

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.

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CAFC Reverses Summary Judgment on Doctrine of Equivalents

In The Charles Machine Works, Inc. v. Vermeer Manufacturing Co. (Fed. Cir., July 26, 2013), the patent in question was U.S. Patent 5,490,569 (the “’569 patent”), which generally relates to a two-pipe drill for boring underground holes in the horizontal direction. An inner pipe rotates the drill bit. An outer pipe, which includes a body and casing, is used for steering. The ’569 patent also discusses a structure called a “deflection shoe” as a steering mechanism. The deflection shoe is included on one side of the casing to create an asymmetry about the casing’s centerline axis. If the casing does not rotate, the deflection shoe causes the drill to deflect away from a straight path. When the casing rotates, however, the drill follows a straight horizontal path.

The Charles Machine Works (“CMW”) sued Vermeer for infringement of the ’569 patent. Asserted apparatus claims 1, 4–8, 10, 12, 18, 20–25, and 27 recite “a deflection shoe mounted on a first side of” either “the body” or “the casing.” Asserted method claims 30–31 recite “the casing having a deflection shoe thereon.”

CMW alleged infringement by two types of Vermeer drills: non-commercial prototypes and commercial products. Both types of drills include a structure called a bent sub, which CMW contends meets the “deflection shoe” and “mounted on” limitations. The prototypes include an additional structure called a wear pad. Vermeer moved for summary judgment of noninfringement, literal or under the doctrine of equivalents, of the asserted claims. The district court granted Vermeer’s motion as to all accused products. CMW appealed to the United States Court of Appeals for the Federal Circuit.

Accused Infringer Uses Reexamination To Defeat Willfulness Allegation

Scott Daniels, partner at Westerman, Hattori, Daniels & Adrian LLP and Practice Center Contributor, sent along his analysis on the recent District Court decision, Plumley v. Mockett.  In a decision that may surprise many,  the District Court held that the accused infringer may use reexamination to obtain summary judgment of no willful infringement.  According to Daniels, “the first goal of a third party requesting reexamination is to
 invalidate the patent claims.  But even if the Patent Office confirms 
the validity of the claims, the reexamination may significantly benefit
 the requester on other issues, such as claim construction,  infringement, 
and inequitable conduct.”

Below is Scott Daniels’ analysis…

A party accused of patent infringement requests reexamination at the PTO to attack the patent as being anticipated or obvious in view of a prior art patent or printed publication.  An accused infringer, however, may also achieve other less obvious goals by seeking reexamination, such as creating an estoppel, creating a disclaimer limiting claim scope, or establishing the materiality of a prior art reference for an inequitable conduct defense.  Or, as in Plumley v. Mockett, the accused infringer may use reexamination to obtain summary judgment of no willful infringement.  2010 U.S. Dist. LEXIS 57254 (C.D. Cal. May 26, 2010). (more…)