Free Letter - District Court of Delaware - Delaware

i Case 1 :07-cv—00367-SLR Document 93 Filed 08/19/2008 Page 1 of 3
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m AI1€l€IT$0I1 aroma L. Horwitz
- ‘ I · ‘ e ‘ Pm
COITOOH Attorilley at Law
1313 North Market Street [email protected]
P.O. Box 951 302 9846027 Direct Phone
Wilmington, DE 19899·0951 302 658-1192 Fax
302 984—6000
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I August l9, 2008
VIA ELECTRONIC FILING
The Honorable Sue L. Robinson
{ United States District Court
for the District of Delaware
i 844 King Street
Q Wilmington, DE l9801
Re: Callaway Golf Company v. Acushnet Company
I C.A. No. 07-367-SLR
g Dear Judge Robinson:
At the August Sth discovery conference, the Court requested that the parties provide a
letter regarding two topics: (1) counsel for Ca1laway’s instructions not to answer during the
deposition of the Callaway attorney who prosecuted the Callaway patents-in-suit; and (2)
Cal1away’s objection to Acushnet’s expert, Mr. Frank Thomas, having access to Cal1away's
confidential infomation. In addition, the Court requested that Callaway produce its frequency
Q testing data for an in camera review to determine whether it constitutes work product, and if so,
whether Acushnet has a substantial need for that infomation.
l Caliaways Prosecuting Attorney
. Callaway’s counsel instructed its prosecuting attorney not to answer questions about the
. prosecution of the Callaway patents—in-suit because those answers may reflect his "mental
impressions? Callaway has not claimed, however, that the prosecution of the Callaway patents-
in-suit was done in anticipation of litigation}
During the discovery conference, the Court requested that the parties provide their best
authority regarding whether an accused intringer is limited to the public record in proving
inequitable conduct. Acuslmet points the Court to Alcon Laboratories, Inc. v. Pharmacia Corp.,
‘ It is clear that the "mere possibiIity” that litigation may arise from a patent is insufficient
to invoke the worloproduct privilege. Sec, e. g. , Stryker Corp. v. Intermedics Orthopedics Inc.,
y 24 U.S.P.Q. 2d 1676, 1677 (E.D.N.Y. 1992) ("This court rejects the theory that litigation is a
‘possibility’ in every patent application?).

Case 1 :07-cv-00367-SLR Document 93 Filed 08/19/2008 Page 2 of 3
The Honorable Sue L. Robinson
August 19, 2008
Page 2
225 F. Supp. 2d 340, 344 (S.D.N.Y. 2002), in which the district court noted that a "prosecuting
attorney’s mental impressions are crucial to any claim of inequitable conduct in a patent
infringement action."2 Acushnet is not aware of any authority that limits a defendant to proving
. inequitable conduct through the public record. To the contrary, it appears that courts, including
the Alcon court, routinely permit defendants to take the deposition ofthe prosecuting attorney to
obtain information regarding materiality and intent.3
Mr. Thomas
Callaway has objected to one of Acushnet’s experts, Frank Thomas, having access to
E confidential Callaway information. Callaway specifically objected to W. Thomas having access
to such confidential information because he may be involved in consulting with other companies
regarding the design of drivers at a future date.
After the discovery conference, Acushnet attempted to compromise with Callaway by
g l agreeing to limit Mr. Tl1omas’ access only to Callaway documents that reflect tests of third party,
prior art golf clubs, and not Callaway’s confidential design documents. This compromise
addressed Ca1laway’s stated concern that Mr. Thomas not have access to Callaway’s design
documents. Callaway objected to this proposal because (l) Acushnet has identified several
E Callaway clubs as alleged prior art, and Callaway objects to Mr. Thomas seeing confidential
9 documents regarding the design of those clubs; (2) documents involving discussions of prior art
Q clubs are likely to also contain information regarding the design of Callaway clubs; and (3) it
g would be impractical for Callaway to have to review every document Acushnet proposes to show
Mr. Thomas in order to ensure that he is not exposed to confidential design information.
1 Acuslmet believes that Callaway’s continuing objections are not supportable, and that
Acushnet’s proposal alleviates any concerns that Callaway may legitimately possess. In further
support of this proposition, with regard to Callaway prior art clubs, Acushnet agrees to limit Mr.
Thomas’ access only to frequency test results, which shall not include any design documents
1 with regard to those clubs. Acushnet believes that this compromise, coupled with Mr. ThomaS’
; agreement to be bound by the Protective Order in this case, is sufficient to permit Mr. Thomas to
have access to the limited universe of Cal1away’s confidential information proposed.
Nonetheless, Mr. Thomas is available to testify before the Court on this issue if given reasonable
notice.
2 225 F. Supp.2d 340, 344 (S.D.N.Y. 2002) (emphasis added) (citing Environ Products,
. Inc. v. Total Containment, Inc., 4l l}.S.P.Q.2d 1302, 1306 (ED. ?a. 1996)).
3 See, ag. Genal Strap, Inc. v. Dar, 2006 WL 525794 at *2 (E.D.N.Y. 2006) (citing cases).

1 Case 1 :07-cv—00367-SLR Document 93 Filed 08/19/2008 Page 3 of 3 -
The Honorable Sue L. Robinson
August 19, 2008
Page 3
Frequency test results
I Callaway’s patents broadly claim a golf club head having a striking plate natural
frequency within a range of 2,800 to 4,500 I-lz.4 To support these claims, the specification of
each of these patents states that, based on experimental testing, "cturently available driver golf
club heads have striking—face natural frequencies greater than 4,500 Ha?
Acushnet has made substantial claims of invalidity and inequitable conduct in this case.
(See D.l. 78.) At the core of these defenses is the fact that numerous prior art drivers had striking
plate natural frequencies less than 4,500 Hz, and that Callaway was aware of these golf clubs
prior to tiling its patents, but did not cite them to the PTO. Indeed, Acushnet already is aware of
two clubs that may fall into this category. Callaway, however, refuses to permit any discovery
into the frequency testing it conducted prior to the tiling of its patents, including the club models
i and the results, making it impossible for Acushnet to ascertain what Callaway knew prior to the
filing of its patents. It is critical that Acushnet not only learn the results of the frequency tests
Â¥ being withheld by Callaway, but also learn when and how Callaway itselfknew of those results.
$ Callaway’s knowledge ofthe uncited prior art is a critical element to Acushnet’s inequitable
i conduct case, and is a proper subject of inquiry.5
Respectfully,
/s/ Richard L. Horwitz
Richard L. Horwitz
RLH/mm/stator/ares?
cc: Clerk of the Court (via hand delivery)
E Counsel of Record (via electronic tiling)
" The non-asserted claims claim a range from 2,800 to 8,500 Hz.
S See Molins PLC v. Textron, Inc., 48 F.3d 1}.72, 1178 (Fed. Cir. 1995) (proving
inequitable conduct requires showing "knowledge chargeable to the application of that prior art
and of its materiality").