Last Friday, the Court of Appeals for the Federal Circuit threw out a jury verdict against Acushnet Company and vacated a permanent injunction that had prevented it from selling the Titleist Pro V1 line of golf balls that Acushnet had introduced to the market in 2000. The court ordered a new trial because the jury had reached a verdict that was impossible to interpret due to internal inconsistencies. The trial court had found the confusing verdict to be “harmless,” but the Federal Circuit disagreed and held that the only way to resolve the inconsistency was to order a new trial.
Acushnet had argued that patents for the golf balls, owned by Callaway Golf Company, were invalid due to patent doctrines known as “obviousness” and “anticipation.” The requirement that a patent be nonobvious generally means that the differences between the patented invention and the prior art must amount to more than a mere rearrangement of prior art elements with each element predictably performing its same function in the new combination, as viewed from the standpoint of one with ordinary skill in the field. Similarly, a patent will be void for “anticipation” if a single, prior art document decribes every element of the claimed invention, such that a person of ordinary skill in the art could practice the invention “without undue experimentation.” In other words, Acushnet essentially argued that Callaway’s golf-ball patents were nothing special because any competent manufacturer could have come up with the idea simply by reviewing existing golf-ball-related patents.
In reviewing a particular independent claim of the relevant patent, the jury found that it was nonobvious and valid. However, the jury also found that one of its dependent claims to be invalid for obviousness. This finding, the court held, was incomprehensible: “A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.” (See Opinion at 21-22, quoting Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)).
The appeals court ruled that the inconsistency could not be reconciled because there was evidence submitted at trial that would be sufficient to support either of the two inconsistent verdicts. It therefore ordered an entirely new trial on the issue of obviousness. Whether, given this second opportunity, the jury will be able to comprehend the highly technical evidence, involving how things like low-acid ionomer resins and “Shore D hardness” affect golf ball playability characteristics, remains to be seen.