District Judge William F. Kuntz, II denied defendants Acushnet Company, Inc., Cobra Golf Company, and Puma North America, Inc.’s motion for summary judgment of invalidity, granted defendants’ motion for summary judgment of non-infringement, and denied plaintiff Nassau Precision Casting Co., Inc.’s cross-motion for summary judgment of infringement. Plaintiff sued defendants for infringement of U.S. Patent No. 5,486,000 (“the ’000 patent”), which is related to the weight distribution design of golf iron clubs. The court previously granted defendants’ motion for summary judgment on the basis of non-infringement. On appeal, the Court of Appeals for the Federal Circuit affirmed the court’s grant of summary judgment of non-infringement on claim 2, and vacated and remanded the court’s grant of summary judgment of non-infringement on claim 1.

The court denied defendants’ motion for summary judgment that the ’000 patent was invalid as anticipated by a prior art product, patent, or marketing publications. Defendants relied on the declaration of their expert in arguing that the method used to design the prior art golf clubs anticipates claim 1 of the ’000 patent. The court explained that defendants’ expert’s testimony “alone cannot invalidate the ’000 Patent” at this stage and stated that while it “will not go as far as to say [the expert’s] testimony is insufficiently corroborated as a matter of law, insufficient evidence regarding the eight corroboration factors has been set forth by both parties.” The court also found that the prior art patent did not anticipate the ’000 patent because the patents are “diametrically opposed in their approaches to removing material from the top of the toe – one discloses removing material from the top of the toe of the club and the other distinctly teaches away from removing any material from the toe of the club at all.” Finally, the court found that defendants failed to meet their burden of proof in relation to the prior art marketing materials because “[d]efendants [made] no effort to show that all the limitations of Claim 1 of the ’000 Patent are in a single one of the prior art marketing materials.”

Defendants also argued that the term “no adverse consequences” in claim 1 is indefinite because plaintiff’s expert “admitted the term is susceptible to subjectivity.” However, the court found the specification “sufficiently precise to explain to a person of ordinary skill in the art what is meant by ‘no adverse consequences’ [such that] it would be inappropriate for the Court to look to extrinsic evidence to contradict the intrinsic evidence of the language of the ’000 Patent itself.” Finally, the court again granted defendants’ motion for summary judgment that none of their accused golf clubs infringe claim 1 of the ’000 patent because the accused clubs “all engage in actions which the ’000 Patent does not condone.”

Case: Nassau Precision Casting Co. v. Acushnet Co., 10 Civ. 4226 (WFK) (AKT), (E.D.N.Y. Mar. 31, 2015)