Nassau Precision Casting Co., Inc. v. Acushnet Co. Inc.

The prior art of golf-club construction specified a certain clubhead profile and an amount of metal or graphite calibrated to each golfer’s size and handicap. Nassau Precision Casting Company, Inc. (Nassau) (plaintiff) patented a change to the profile that allowed weight to be removed from a clubhead’s face and top surfaces and relocated to the clubhead’s underside so that the clubhead’s redistributed weight would improve the whole club’s performance. Nassau accused Acushnet Company, Inc. (Acushnet) (defendant) of infringing the patent. The federal district court construed the patent’s two claims in reverse order. Claim two of the patent described Nassau’s method for ensuring that the clubhead’s redistributed weight matched its pre-redistribution weight. Acushnet’s design called for maintaining constant weight through the use of polymer. The court ruled that because Nassau’s method used only metal or graphite and Acushnet’s design also used polymer, there was no infringement of claim two. Claim one of the patent described Nassau’s method for removing material from those portions of the clubhead’s face and top never used in striking a ball and therefore incapable of adversely affecting a golfer’s stroke. Acushnet’s design called for leaving the clubhead’s face untouched. The court did not address Acushnet’s disputation of Nassau’s no-adverse-impact claim. The court rejected Acushnet’s contention that its design could not infringe Nassau’s manufacturing patent; the court ruled that the patent pertained to design. The court also rejected Nassau’s characterization of claim one as involving no areas of the clubhead face used in striking a ball; the court reasoned that a golfer might strike a ball with any part of the face, if only inadvertently. Nevertheless, the court ruled that because Nassau removed material from portions of both the clubhead’s face and its top, and Acushnet removed material only from the top, Acushnet did not infringe claim one. The court entered summary judgment for Acushnet. Nassau appealed to the Federal Circuit.