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Patent Law

: Golf Patents

ProV1 Patent Litigation Update ? Will Any of the Patents-in-Suit Survive Reexamination?

By David Dawsey PE Esq

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The Callaway v. Titleist (Acushnet) golf ball battle has been pending for a couple of years now, so a quick refresher is in order.

Back in December a jury found that 8 of the 9 claims in the 4 patents-in-suit were valid, and therefore infringed by Acushnet (click HERE to read the post on the verdict). Then, in mid-January Callaway filed a Motion for Permanent Injunction (click HERE to read the related post) seeking to bring a halt to the production and sale of ProV1?s. Next, Acushnet responded to Callaway?s motion at the end of February (click HERE to read the related post). Lastly, Callaway filed their ?reply? in support of the motion for permanent injunction leaving the motion ?fully briefed? and ready for action by the court (click HERE for the post).

You may recall that all four of the patents-in-suit are currently being re-examined by the USPTO, and things were not going well for the validity of the patents before the USPTO (recall, the jury already found majority of the claims valid). Now, for the update...... A recent letter from Acushnet?s attorney to the Court provides a nice status report regarding the reexamination progress.

Acushnet Company files this letter to bring to the Court's attention additional, new developments in the ongoing reexaminations of the golf ball patents-in-suit.

In the reexamination of the '130 patent, the PTO issued on June 24, 2008, a Right of Appeal Notice ("RAN"), again rejecting all of the '130 patent's claims on numerous grounds. In short, the PTO again considered and rejected all of Callaway's arguments for the alleged validity of the '130 patent. After agreeing with Acushnet that numerous prior art references disclosed or rendered obvious the claims at issue, the PTO further held that Callaway's purported evidence of secondary considerations "is not enough to overcome the prima facie case of obviousness presented in the rejections." '130 RAN at 185.

The PTO's '130 patent decision and RAN (214 pages, attached as Exhibit 1) constitutes now a "FINAL DECISION" by the Examiner that all claims of the '130 patent are invalid. Id. at 205-06. Callaway has one month to file an appeal, if it chooses to do so; otherwise the reexamination of the '130 patent will be concluded.

In the reexamination of the '873 patent, another patent-in-suit, the PTO issued on June 25, 2008, an Action Closing Prosecution. In it (185 pages, attached as Exhibit 2), the PTO again considered and rejected all of Callaway's arguments for the alleged validity of this patent's claims. Callaway has one month to file comments or submit proposed amendments to the claims, after which Acushnet will have a month to respond. Acushnet expects that, as with the `130 patent, a RAN will issue shortly thereafter for the '873 patent.

Click HERE to read the actual letter.

I predict that I will be reporting on this case for at least 2 more years! Hard to believe?

David Dawsey ? The IP Golf Guy

Full post as published by Golf Patents on July 01, 2008 (boomark / email).