Patentee of Golf Club Patents May Want a “Mulligan”
March 22, 2001
Last Month at the Federal Circuit - April 2001
Judges: Newman (author), Michel, and Plager
In Karsten Manufacturing Corp. v. Cleveland Golf Co., No. 99-1234 (Fed. Cir. Mar. 22, 2001), the Federal Circuit affirmed the grant of SJ of the district court that Cleveland Golf Company’s (“Cleveland”) 792 golf club set does not infringe Karsten Manufacturing Corporation’s (“Karsten”) U.S. Patent Nos. 4,621,813 (“the ‘813 patent”) and 5,193,805 (“the ‘805 patent”). The Federal Circuit also affirmed the SJ grant of invalidity of claims 1-6 of Karsten’s U.S. Patent No. 5,297,803 (“the ‘803 patent”), but reversed that grant as to claims 7-8 of that patent.
The invention of the ‘813 patent relates to the distribution of mass on fairway irons in order to increase the golf club’s moment of inertia. The district court ruled that the claim preamble recitation of a “correlated set” of clubs limited the claims to two or more clubs which contain the same design characteristics and are sold together as a set. The Federal Circuit agreed, based on the description of the invention in the specification, evidence of customary usage of that term, and the inclusion of that term in every claim. Also based on the description in the specification, the Federal Circuit confirmed the district court’s construction of the claim term a “back surface adjacent said indented trailing edge” of the golf club as excluding surfaces with a cavity in the back of the club and requiring that the surface must slope upward and inward.
Based on these claim constructions and the lack of a dispute as to the structure of Cleveland’s golf clubs, the Federal Circuit affirmed that Cleveland’s clubs do not literally infringe the ‘813 patent. The Federal Circuit also ruled that prosecution history estoppel precluded Karsten from asserting equivalence infringement against Cleveland’s clubs, under either Festo or estoppel law prior to Festo. The Court therefore affirmed the SJ grant of noninfringement of the ‘813 patent.
The ‘805 patent relates to a head of a golf club iron that includes an enlarged mass at its upper corners, called heel and toe protuberances. In the ‘805 patent, the broadest claim does not require a “correlated set,” but does require that the lower back surface slope upwardly and inwardly, as in the ‘813 patent. The Federal Circuit affirmed the district court’s construction of this term in the same way as in the ‘813 patent. Reviewing each Cleveland club separately, the district court found, and Cleveland did not dispute, that Cleveland’s 2-iron and Dwedge literally embody this limitation.
Based on the prosecution history, the district court required, and the Federal Circuit confirmed, that the claimed heel and toe protuberances bulge beyond the surrounding surfaces and that Cleveland’s 2-iron and D-wedge do not literally have such protruding bulges. The Federal Circuit once again ruled that prosecution amendments and arguments to overcome a rejection barred assertion of equivalency. Therefore, the Court affirmed the SJ grant of noninfringement of the ‘805 patent.
The district court held invalid claims 1-6 of the ‘803 patent as anticipated by a prior art Wilson golf club and held invalid claims 7-8 as obvious over the Wilson club in view of a prior art reference to Antonious. The Federal Circuit first recognized the difficult balance between reading claims narrowly to preserve validity as opposed to broadly and unlimited to specific embodiments, which can result in the claim’s reading on the prior art and its invalidity. As the Court mentioned, this becomes more difficult when the asserted prior art was not cited to the PTO, as is the case with the Wilson club, and the court is urged to reexamine the patent with a narrower scope. The Federal Circuit affirmed the finding of invalidity as to claims 1-6, even though the specific embodiments pictured in the ’803 patent are not identical to the Wilson club, because the role of claim construction is to describe the claim scope as intended when examined and obtained, not as it might have been on a different prior art record.
As to claims 7-8 of the ‘803 patent, however, the Federal Circuit reversed the finding of obviousness as a matter of law and remanded for a determination of infringement. The Federal Circuit found that the Wilson club, as described by a reference, and the Antonious reference had conflicting teachings that could not be viewed as suggesting their combination.