Free Redacted Document - District Court of Delaware - Delaware

Case 1:07-cv-00367-SLR Document 101 Filed 08/28/2008 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR TIIE DISTRICT OF DELAWARE
CALLAWAY GOLF COMPANY, )
D )
Plaintiff, ) C.A. No. 07-367-SLR
)
{ v. ) JURY TRIAL DEMANDED
1 )
1 ACUSHNET COMPANY, ) PUBLIC VERSION
8 ) August 28, 2008
. Defendant. )
LETTER TO THE HONORABLE SUE L. ROBINSON FROM
j DAVID E. MOORE, ESQUIRE DATED AUGUST 21, 2008
Richard L. Horwitz (#2246)
David E. Moore (#3983)
POTTER ANDERSON & CORROON LLP
Hercules Plaza 6th Floor
_ ` 13 13 N. Market Street `
P.O. Box 95l
Wilmington, DE 19899
Tel: (302) 984-6000
[email protected]
[email protected]
Attorneys for Dekndant Acushrzet Company
I ce: Clerk ofthe Court (via hand delivery)
Counsel of Record (via electronic filing
, 879501 /3&957

Case 1 :07-cv-00367-SLR Document 101 Filed 08/28/2008 Page 2 of 4
ttert
And€[5Q[} David E. Moore
'¤"* -. _COYI°OOI] LLP Aaomey at Law
1313 North Market Street [email protected]
P.0. Box 95E 302 984-6147 Direct Phone
Wilmington, DE 19899-0951 302 6584192 Fax
302 984~6000
W'WW.[]0ttBTHHd€TSOH.CDm l
August 21, 2008
Public Version Dated: August 28, 2008
VIA ELECTRONIC FILING
The Honorable Sue L. Robinson PUBLIC VERSION
United States District Court
for the District of Delaware
844 King Street
Wilmington, DE IQSOI
l Re: Callaway Golf Company v. Acuslmet Company
Z C.A. No. 07~··367»·SLR
Dear Judge Robinson:
Acuslmet submits this brief letter to the Court in light of new infomation revealed by
o a E1a y’s d c at ons that were yrovided to Acusbnet in redacted
t -<-_ .·-_- -. Z.- _¤l._ -.r· ..-` f; ‘..-, ·r·;; l.._ 4 -¢ · · - U- I . Because ofthe fundamental
C in d cy of C llaway’s rivilege log, ‘__. ‘ 1* _ -‘ { j;,_=- ,‘.__ fg . _ _.,_‘ _,.i-_ · - - I __ _._. .

Case 1 :07-cv-00367-SLR Document 101 Filed 08/28/2008 Page 3 of 4
The Honorable Sue L. Robinson
August 21, 2008 (Public Version Dated: August 28, 2008)
Z Page 2
Union Carbide Corp. v. Dow Chemical Co., 619 F. Supp. 1036, 1050 (D. Del. 1985) ("[T]he
l communications are pureiy factual recitations of technical data and research experiments
P conducted by Carbide’s employees. The fact that the documents were prepared by or forwarded
i to Carbide’s in-house counsel does not, in itself, qualify the documents as attorney work
1 product.").
Q Ei*fJ§.*i¥.‘T??i5-i;£Qf‘j`?4—€j$?¥? Q' `i``= ’”·Z` if ·`t. ` ·`‘“ ·; ‘-»-· ?‘*?]¥¤‘Y‘--“Y‘ ·¤l 5- Callaway cannot be
permitted to withhold such basic factual information, for example, what prior art it and the
inventor were aware of prior to filing its patent applications:
A party should not be allowed to conceal critical, uomprivileged, discoverable
infomation, which is uniquely within the knowledge ofthe party and which is not
obtainable from any other source, simply by imparting the information to its
attorney and then attempting to hide behind the work product doctrine after the
party fails to remember the irrformation.2
Acushnet further disputes Ca1laway’s suggestions that Acushnet’s inequitable conduct
Z claims are somehow "speculative.“ While the frequency testing data at issue here is critical to
Acushnet’s inequitable conduct claims, it is just the tip of the iceberg. Acushnet’s inequitabie
1 conduct defense is substantial. Acushnet has identified numerous instances of fraud committed
by Callaway on the PTO, including but not limited to:
1. Failing to cite to the PTO three prior art references cited in a related
foreign prosecution;3
- 2 See Astra Aktiebolag v. Analrx Pharmaceuticals, Inc., 208 F.R.D. 92, 106-07 (S.D.N.Y.
Z 2002) (permitting disclosure of underlying factual information which contained infomation
, "extremely relevant to the issue of inventorship and the knowledge held by the inventors”); see
also Resolution Trust Corp. v. Dabney, 73 F.3d 262, 266 (i0th Cir. i995) (noting that work
product "does not protect facts concerning the creation of work product or facts contained within
work product").
3 See MPEP § 2001.06(a) ("Applicants and other individuals, as set forth in 37 CFR 1.56,
? have a duty to bring to the attention ofthe Office any material prior art or other information cited
or brought to their attention in any related foreign application. The inference that such prior art

Case 1 :07-cv-00367-SLR Document 101 Filed 08/28/2008 Page 4 of 4
The Honorable Sue L. Robinson
August 21, 2008 (Public Version Dated: August 28, 2008)
Page 3
2. Failing to cite the public use and sale of Callaway’s commercial
embodiments in the United States when filing a continuation—in—part
application;4
For these reasons and the reasons articulated by Acashnet at the Court’s August Sth
discovery conference, Acushnet requests that the Court permit Acushnet to inspect Callaway’s
natural frequency testing data that it submitted for in camera review.
Respectfully,
/s/ David E. Moore
David E. Moore
DEM/msb/ir/9501 /31957
cc: Clerk ofthe Court (via hand delivery)
Counsel of Record (via electronic filing)
or other infomation is material is especially strong where it has been used in rejecting the same
or similar claims in the foreign application .... ").
4 See 37 C.F.R. § 1.56(e) ("ln any continuation·in·part application, the duty under this
section includes the duty to disclose to the Office all information known to the person to be
material to patentability, as detined in paragraph (b) of this section, which became available
between the filing date of the prior application and the national or PCT international tiling date
of the continuation-·in·part application.
5 See, ag. Germ! Strap, Inc. v. Dar, 2006 WL 525794, at *2 (E.D.N.Y. 2006) (citing cases
_ where prosecuting attorney required to testify regarding rnateriality and intent).