| FrontPageGolf |
News Commentary Opinion
| Copyright MMXI, Front Page Golf. All Rights Reserved. www.FrontPageGolf.com is a trademark of FrontPageGolf. |
Acushnet aces Callaway
The end to a long series of law suits?
By ED TRAVIS
The end to a long series of law suits?
By ED TRAVIS
 |  |  |  |  |
With the golf business continuing to see few gains, it
makes sense for major equipment companies to
spend their resources finding new and better
products. However, while all the big guys (and the
small ones too) have been battling it out for the hearts
and wallets of recreational players with impressive
research and flashy marketing one nagging irritant
has had a long life.
Callaway Golf decided the old fashion method of
earning additional market share by building a better
mousetrap wasn’t the right path to compete with
Acushnet Golf’s industry-standard golf ball, the Titleist
Pro V1. Five years ago Callaway sued Acushnet saying
Acushnet was violating four Callaway patents. Acushnet
of course said they weren’t infringing and that the
patents were invalid. Callaway must have been
particularly interested in pursing this case since the
patents had to do with the manufacturing of Acushnet’s
number one selling Titleist Pro V1.
After the convolutions, rulings and counter-rulings things
might be close to being settled once and for all…maybe.
According to a press release from Acushnet:
Acushnet Company, the golf business of Fortune
Brands, Inc., announced that the U.S. District Court for
the District of Delaware provided its final judgment in
Acushnet Company’s favor today in a long-running
patent dispute with Callaway Golf. The judge denied
Callaway’s request for a new trial, and the case is
officially closed in the U.S. District Court more than five
years after Callaway filed a lawsuit asserting that
Acushnet’s Titleist Pro V1 golf balls infringed on four
Callaway patents.
“Today’s positive ruling substantiates what our
contention has been throughout this process, that the
patents in question were invalid and should never have
been issued,” said Joe Nauman, Executive Vice
President Corporate and Legal, Acushnet Company.
“We had confidence that once we had the opportunity to
present all the evidence, and as we continued to receive
favorable rulings from the U.S. Patent & Trademark
Office (PTO), we would prevail. The confirmation by the
U.S. District Court is another significant step in finalizing
this case.”
makes sense for major equipment companies to
spend their resources finding new and better
products. However, while all the big guys (and the
small ones too) have been battling it out for the hearts
and wallets of recreational players with impressive
research and flashy marketing one nagging irritant
has had a long life.
Callaway Golf decided the old fashion method of
earning additional market share by building a better
mousetrap wasn’t the right path to compete with
Acushnet Golf’s industry-standard golf ball, the Titleist
Pro V1. Five years ago Callaway sued Acushnet saying
Acushnet was violating four Callaway patents. Acushnet
of course said they weren’t infringing and that the
patents were invalid. Callaway must have been
particularly interested in pursing this case since the
patents had to do with the manufacturing of Acushnet’s
number one selling Titleist Pro V1.
After the convolutions, rulings and counter-rulings things
might be close to being settled once and for all…maybe.
According to a press release from Acushnet:
Acushnet Company, the golf business of Fortune
Brands, Inc., announced that the U.S. District Court for
the District of Delaware provided its final judgment in
Acushnet Company’s favor today in a long-running
patent dispute with Callaway Golf. The judge denied
Callaway’s request for a new trial, and the case is
officially closed in the U.S. District Court more than five
years after Callaway filed a lawsuit asserting that
Acushnet’s Titleist Pro V1 golf balls infringed on four
Callaway patents.
“Today’s positive ruling substantiates what our
contention has been throughout this process, that the
patents in question were invalid and should never have
been issued,” said Joe Nauman, Executive Vice
President Corporate and Legal, Acushnet Company.
“We had confidence that once we had the opportunity to
present all the evidence, and as we continued to receive
favorable rulings from the U.S. Patent & Trademark
Office (PTO), we would prevail. The confirmation by the
U.S. District Court is another significant step in finalizing
this case.”
| Versus |
Take a look at the timeline as this dispute played out; a
dispute that diverted the attention and resources of both
companies.
2000 – Acushnet Golf revolutionizes the ball business
with the multi-layer urethane cover Titleist Pro V1 which
quickly becomes the most played ball on the PGA Tour
and number one selling ball.
2001 and 2003 – Spalding Golf, at the time the number
two ball company, is issued four patents covering multi-
layer golf ball manufacturing.
2003 – Spalding goes bankrupt and the remnants,
including the four patents in question, are bought by
Callaway Golf.
January 2006 – Seven U.S. Patent and Trademark Office
examiners agree the Spalding patents are invalid. This
ruling is prior to Callaway’s first suit against Acushnet.
February 2006 – Callaway sues Acushnet saying the
Titleist Pro V1 infringes on the Spalding patents. During
the trial the judge rules Acushnet may not reveal the four
Spalding patents are invalid according to the U.S. Patent
& Trademark Office. The case is decided in 2007 when
the jury (not knowing about the invalid patents) says
Acushnet is at fault but Acushnet wins the right to have a
new trial.
dispute that diverted the attention and resources of both
companies.
2000 – Acushnet Golf revolutionizes the ball business
with the multi-layer urethane cover Titleist Pro V1 which
quickly becomes the most played ball on the PGA Tour
and number one selling ball.
2001 and 2003 – Spalding Golf, at the time the number
two ball company, is issued four patents covering multi-
layer golf ball manufacturing.
2003 – Spalding goes bankrupt and the remnants,
including the four patents in question, are bought by
Callaway Golf.
January 2006 – Seven U.S. Patent and Trademark Office
examiners agree the Spalding patents are invalid. This
ruling is prior to Callaway’s first suit against Acushnet.
February 2006 – Callaway sues Acushnet saying the
Titleist Pro V1 infringes on the Spalding patents. During
the trial the judge rules Acushnet may not reveal the four
Spalding patents are invalid according to the U.S. Patent
& Trademark Office. The case is decided in 2007 when
the jury (not knowing about the invalid patents) says
Acushnet is at fault but Acushnet wins the right to have a
new trial.
November 2008 – U.S. District Court grants Callaway an
injunction and judgment causing Acushnet to stop
manufacturing the then current version of the Pro V1.
Acushnet complies by pulling Pro V1s off golf shop
shelves and rushes a version to market that does not
violate the patents.
August 2009 – A U.S. Court of Appeals three judge
panel grants Acushnet a new trial and also overturns the
2008 judgment and injunction in favor of Callaway
prohibiting manufacture and sale of the Pro V1 ball.
Specifically the ruling says Acushnet can use as part of
its defense the 2006 Patent Office finding that the
Spalding patents are invalid.
March 2010 – In the second trial in U.S. District Court
Delaware, a jury decides Callaway has no case against
Acushnet for patent infringement and the four patents
are invalid.
March 2011 – the Board of Patent Appeals again says
the Callaway (nee’ Spalding) patents are invalid but
Callaway says they will appeal in the Federal Courts.
April 2011 – The U.S. District Court for the District of
Delaware in a final judgment rules for Acushnet and
against Callaway saying there was no patent
infringement because the Board of Patent Appeals have
reiterated a month earlier the four patents in question
are invalid. Further the judge officially closes the case,
saying Callaway would not be allowed a new trial
though an appeal is possible by Callaway in the Federal
Circuit Court.
Whew! It makes me tired thinking of all the effort wasted
to be right back at the same place. Since the current
version of the Titleist Pro V1 evidentially does not
infringe on any of the Spalding/Callaway patents even
though they are invalid, what would be the logic for
Callaway to continue pushing for a case which the
courts say it doesn’t have?
Complicating things even more is that Callaway is sure
to use its right to appeal the recent ruling denying them
a new trial and there is another patent case between the
two companies pending. Like I said it makes me tired
just thinking about it.
injunction and judgment causing Acushnet to stop
manufacturing the then current version of the Pro V1.
Acushnet complies by pulling Pro V1s off golf shop
shelves and rushes a version to market that does not
violate the patents.
August 2009 – A U.S. Court of Appeals three judge
panel grants Acushnet a new trial and also overturns the
2008 judgment and injunction in favor of Callaway
prohibiting manufacture and sale of the Pro V1 ball.
Specifically the ruling says Acushnet can use as part of
its defense the 2006 Patent Office finding that the
Spalding patents are invalid.
March 2010 – In the second trial in U.S. District Court
Delaware, a jury decides Callaway has no case against
Acushnet for patent infringement and the four patents
are invalid.
March 2011 – the Board of Patent Appeals again says
the Callaway (nee’ Spalding) patents are invalid but
Callaway says they will appeal in the Federal Courts.
April 2011 – The U.S. District Court for the District of
Delaware in a final judgment rules for Acushnet and
against Callaway saying there was no patent
infringement because the Board of Patent Appeals have
reiterated a month earlier the four patents in question
are invalid. Further the judge officially closes the case,
saying Callaway would not be allowed a new trial
though an appeal is possible by Callaway in the Federal
Circuit Court.
Whew! It makes me tired thinking of all the effort wasted
to be right back at the same place. Since the current
version of the Titleist Pro V1 evidentially does not
infringe on any of the Spalding/Callaway patents even
though they are invalid, what would be the logic for
Callaway to continue pushing for a case which the
courts say it doesn’t have?
Complicating things even more is that Callaway is sure
to use its right to appeal the recent ruling denying them
a new trial and there is another patent case between the
two companies pending. Like I said it makes me tired
just thinking about it.