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Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness.  The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness:  the jury held a dependent claim obvious but the independent claim from which it depends not obvious.  The court stated that such a result reflects an "irreconcilable inconsistency" and thus a new trial on obviousness must be granted.

The court also addressed the question of incorporation by reference.  The defendant argued the claims were anticipated based on a prior art patent that made reference to another patent for one of the relevant limitations.  The district court held the incorporation by reference was ineffective and excluded expert testimony regarding the "combined" prior art.  The Federal Circuit reversed, holding the incorporation by reference was sufficiently specific to be successful, and remanded the issue of anticipation to the district court for redetermination.

More on Callaway Golf Co. v. Acushnet Co. after the jump.

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Full post as published by FileWrapper on October 19, 2009 (boomark / email).