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Case 1:04-cv-01551-JJF Document 261-2 Filed 05/29/2007 Page1 of 3

Case 1:04-cv-01551-JJF Document 261-2 Filed 05/29/2007 Page 2 of 3
LEXSEE
Analysis
As of: May 30, 2007
BRIDGESTONE SPORTS CO. LTD. and BRIDGESTONE GOLF, INC., Plaintiffs,
v. ACUSHNET COMPANY, Defendant.
Civil Action N0. 05-132-JJF
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
2007 U.S. Dist. LEXIS 13347
February 26, 2007, Decided
PRIOR HISTORY: Bridgestone Sports Co. v. Acushnet Prior Art References (D.I. 283). For the reasons dis-
Q., 2007 U.S. Dist. LEXIS 11370 [D. Del., Feb. 15, cussed, the Motion will be denied.
ZQMJ
I. THE PARTIES' CONTENTIONS
CORE TERMS: pammS’ lnvalidlt)/’ .r?cOI?Sld€mtlOn’ By its Motion Acushnet Company ("Acushnet") re-
obviousness, expert report, manifest injustice, expert . . . .
Witness Olfbau Su lcmcmmion dc Ositions smite ic quests the Court to reconsider its decision to exclude two
` g ’ pp ’ P ’ g of the six prior art references raised by Acushnet in this
COUNSEL: [*1] For Bridgestone Sports C0 Ltd., litigation agamst Bridgestone Sports 'Co. Ltd. and
. . . _ Bridgestone Golf Inc. (collectively, Bridgestone ).
Bridgestone Golf Inc., Plaintiffs. Jack B. Blumenfeld, S ccmcall Acushnet contends that two of Brid €_
LEAD ATTORNEY, Morris, Nichols, Arsht & Tunnell p , y’ g
. . _ . . . stones patents, U.S. Patent No. 5 779 563 [*2] (the
LLP, Wilmington, DE, Leslie A. Polizoti, Maiyellen ,,, ,, 4‘f?L·`*····‘—
. . . . . 563 patent ) and United States Patent No. 6 174 247
Noreika, Morris, Nichols, Arsht & Tunnell, Wilmington, ,,, ,,
DF (the 247 patent ), are critical to its defense that U.S.
" Patent No. 6,679,791 (the "'791 patent") is invalid.
For Acushnet Company, Defendant: Richard L. Horwitz, According to Acushnet, it discovered during deposi-
LEAD ATTORNEY, David Ellis Moore, Potter Ander- tions of Bridgestone witnesses conducted in August and
son & Corroon, LLP, Wilmington, DE. October 2006, that golf ball cores made under the QQ
patent did not differ from earlier cores made by Bridge-
For Acushnet Company, Counter Claimant: David Ellis stone. After learning this information, Acushnet contends
Moore, Potter Anderson & Corroon, LLP, Wilmington, that it searched prior are patents in November 2006, and
DE. its search uncovered the Bridgestone @3 and '247 pat-
@. Acushnet subsequently tested these patents by mak-
JUDGES: Joseph J. Farnan Jr., UNITED STATES DIS- ing golf ball cores consistent with their teachings and
TRICT JUDGE. then realized that the '563 patent anticipates the '791 pat-
@ and the '247 patent renders the '791 patent obvious.
OPINION BY: Joseph J. Farnan Jr. Acushnet directs the Court to the conclusions of its ex-
pert witness, Dr. Felker, who relied on these patents in
OPINION: his expert reports. Acushnet points out that each of Dr.
MEMORANDUM ORDER Felker's invalidity arguments relies. on the E and
patents, either alone or in combination with another prior
Pending before the Court is Acushnet Company's are reference, and therefore, exclusion of these patents
Motion For Partial Reconsideration Of Order Excluding would severely prejudice Acushnet by leaving it with no
invalidity defense [*3] regarding the '791 patent.
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Case 1:04-cv-01551-JJF Document 261-2 Filed 05/29/2007 Page 3 of 3
2007 U.S. Dist. LEXIS 13347, *
In the alternative, Acushnet requests leave to sup-
plement Dr. Felker's report regarding his obviousness [*5] III. DISCUSSION
conclusions. Dr. Felker relies on United States Patent , . .
4 ... 4 .. T——Y . . . Based on Acushnet s arguments, rt IS apparent to the
No. 6,390,935 (the 935 patent) rn combination with . . . . .
. , _ . . Court that IIS request for reconsideration IS grounded 1n
either the QQ and/or 247 patents for hrs obvrousness . . .
. . , the need to prevent what rt perceives to be a manifest
conclusion. While Acushnet contends that the L6; and . . . . . .. . .
'247 atents me referable because the are Bird estone ‘“l“S“°°’ "amdy rs '“"‘0""y *0 p“”“° 0 l°"‘” an ‘"“""
*-*1;* p . y lidity defense with respect to the '791 patent. In the
patents, Acushnet contends that It should be perm1tted an CO ws View h www Acushn vs inabm to ursuc
opportunity to mount a defense based on the '935 patent .u ’. O ’ . G . .p .
. . . . . . this defense IS the result of 1ts own strategic l1t1gat1on
by hm/mg DL Felker revise his Obvlousness 0pmlOns` decisions and the Court will not rescue Acushnet from
ln response, Bridgestone contends that any prejudice its choices. Nothing Acushnet has presented in its brief
suffered by Acushnet is the result of a strategic risk that leads the Court to conclude that its prior decision should
it chose to take in permitting Dr. Felker to rely upon the be reconsidered.
@*2 and . While Acushpct knew thc. use Of As for Acushnet‘s request for leave to supplement its
those references was rn dispute. Bridgestone points out . .
. . . . expert report, the Court lrkewrse concludes that such a
that Acushnet has other 1nval1d1ty defenses, two ofwhrch . . .
. . ,, request should be denied. Acushnet had a variety of prior
are based on 35 U.S.C. § 112, and Acushnet 1S not guar- . . . .
. . . . ,, art options It could have presented to IIS expert witness,
anteed a prior art 1nval1d1ty defense. (D.I. 290 at 9, em- . . .
phasis in Original ) yet rt chose to relly on patints whoie use was rn dispute.
' In this way, Acus net "too a risk t at the Court would []
Bridgestone further contends that Acushnet failed to allow [] further supplementation" ofthe expert reports, in
comply with the Courts Order requiring Acushnet to the event that the disputed patents were excluded.
pare down and provide [*4] Bridgestone with its Hnal Mosaid Techs., Inc. v. Samsung Elecs. Co., 362 F. Supp.
invalidity contentions. In addition, Bridgestone contends 2d 526, 559 (D.N.I. 2005]. That risk has proven to be
that, as time continues to pass, Bridgestone will be fur- unfruitful. [*6] Expert discovery closes in this case on
ther prejudiced if Acushnet is permitted to rely on these March 23 and opening summaryjudgment briefs are due
patents or supplement its expert report. In this regard, April 13. Trial is scheduled to commence on June 18,
Bridgestone contends that it is simply too late for the and it appears to the Court that the parties have much
parties to engage in another round of supplemental re- work to be done before that date. Thus, the Court agrees
ports and depositions. with Bridgestone that there is insufficient time to allow
further supplementation of Acushnet‘s expert report. The
II. STANDARD OF REVIEW prejudice Acushnet may suffer is of its own making, and
The purpose Of 8 motion for reconsideration is Um ghe Court wrlll not 1-mpart that prejudice to Bridgestone by
. urther delaying this case.
correct manrfest errors of law or fact or to present newly
discovered evidence." Max's Seafood Cafe v. Quinteros, NOW THEREFORE, IT IS HEREBY ORDERED
_l 76 F.3d 669, 677 (3d Cir. 1999)]. Motions for reconsid- that Acushnet Company's Motion For Partial Reconsid-
eration should be granted sparingly and may not be used eration Of Order Excluding Prior Art References (D.I.
to relitigate arguments already considered and decided 283) is DENIED.
by the Court. Corning Inc. v. SRU Biosystems, C.A. No.
03-033-111*. 2004 us. oisr. LEXIS 16025 2004 u.s. F"0'“0”’ 20,2007
Dist. LEXIS 16025 at *2-3 ID. Del. Aug. 13, 2004) (cita— DATE
tions omitted). Thus, a court may only grant reconsidera-
tion if there is: (1) a change in the controlling law; (2) Joseph J` Faman JL
newly available evidence; or (3) the need to correct a UNITED STATES DISTRICT JUDGE
clear error of law or fact to prevent manifest injustice.
Max's Seafood, 176 F.3d at 677.
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