Shades of "Markman"

Submitted by patentadmin on Mon, 01/18/2010 - 11:26

Some patentees never give up; they persist in their efforts to enforce their patents against infringers, even to the point of petitioning the Supreme Court to change the existing patent law relating to the determination of patent invalidity due to obviousness. (Acushnet Company v. Callaway Golf Company)

Callaway, a manufacturer of golf balls – yes, Acushnet is petitioning the Supreme Court in a case about golf balls – sued Acushnet, manufacturer of the Titleist golf balls, alleging infringement of four patents. After the trial court issued its claim construction, Acushnet stipulated to infringement. The case then proceeded to a jury trial on the issue of liability. Acushnet argued that the patents-in-suit, all of which shared a common specification, were invalid due to obviousness. The only disputed factual issues were the difference between the claimed invention and the prior art, and whether there was any motivation to combine the cited references. The jury found eight of the nine asserted claims not invalid and the Court entered judgment for Callaway. Acushnet moved for judgment as a matter of law (JMOL), which was denied. The district court held that the burden was on Acushnet “to prove obviousness at trial by clear and convincing evidence” and that its burden, with regards the JMOL motion, was to “demonstrate that the verdict of obviousness was not supported by substantial evidence.”

Acushnet then appealed to the C.A.F.C., which agreed with the trial court, holding “that, when viewed in the light most favorable to the verdict, the jury could have reasonably concluded that Acushnet failed to prove invalidity due to obviousness.”

Acushnet, apparently no quitter, has now petitioned the Supreme Court to take up the matter. As stated in its petition, Acushnet argues that “[a] defendant’s burden applies to the facts underlying its invalidity defense, not the ultimate legal conclusion” and that the “ultimate question of validity under §103” is a question of law, to be decided by the Court, not the jury. “Properly understood, a jury’s [obviousness] verdict is not advisory as to its findings … but is advisory and entitled to no weight or deference on its ultimate legal conclusion …”

Acushnet seeks nothing less than a seminal ruling that the determination of obviousness is a question of law to be decided by the Court, not by the jury. It is, in that respect, similar to the petitioner in Markman v. Westview Instruments, Inc., where the Supreme Court decided claim construction was a question of law to be decided by the Court, not by the jury. Depending upon the outcome, we may be faced in future trials with an Acushnet hearing in addition to the Markman hearing.

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