DCT

2:17-cv-03125

Parsons Xtreme Golf LLC v. Taylor Made Golf Co Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

Case Timeline

Date Event
2014-02-20 ’203 Patent Priority Date
2014-06-11 ’938 Patent Priority Date
2014-08-25 ’336 and ’143 Patent Priority Date
2015-01-05 ’201 Patent Priority Date
2015-02-19 ’481 Patent Priority Date
2015-02-24 U.S. Patent No. 8,961,336 Issued
2015-05-13 ’727 and ’853 Patent Priority Date
2015-12-01 U.S. Patent No. 9,199,143 Issued
2016-05-24 U.S. Patent No. 9,345,938 Issued
2016-05-24 U.S. Patent No. 9,346,203 Issued
2016-06-14 U.S. Patent No. 9,364,727 Issued
2017-01-03 U.S. Patent No. 9,533,201 Issued
2017-04-04 U.S. Patent No. 9,610,481 Issued
2017-06-13 U.S. Patent No. 9,675,853 Issued
2017-09-09 Accused P790 Products offered at "fitting event"
2017-09-12 Complaint Filed
2017-09-15 Accused P790 Products expected in stock

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,961,336 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: February 24, 2015 (Compl. ¶12)

The Invention Explained

  • Problem Addressed: The patent's background describes the challenge of using multiple materials in a golf club head to optimize its center of gravity (CG) and moment of inertia (MOI), which in turn produce the desired trajectory and spin rate of a golf ball (’336 Patent, col. 1:30-38).
  • The Patented Solution: The invention is an iron-type golf club head with a hollow body containing an internal cavity (’336 Patent, Fig. 8). This design allows for discretionary mass to be repositioned into strategically placed external weight portions on the club's back, toe, and sole to control the CG and MOI (’336 Patent, col. 3:28-67). The patent also describes that the internal cavity can be filled with an elastic polymer material to support a very thin club face, enhancing performance while maintaining a desirable sound and feel (’336 Patent, col. 8:31-48).
  • Technical Importance: This hollow-body, polymer-filled construction enabled the use of an ultra-thin club face for higher ball speeds without the structural failure or undesirable feel typically associated with thin-faced iron designs of the time (’336 Patent, col. 9:1-32).

Key Claims at a Glance

  • The complaint asserts at least independent claim 16 (Compl. ¶35).
  • Essential Elements of Claim 16:
    • An iron-type golf club head comprising a hollow body portion with a face, toe, top, sole, and back portion.
    • An interior cavity extending between the top and sole portions is partially or entirely filled with an elastic polymer material.
    • A first set of weight portions is coupled to the hollow body at or proximate to a top-and-toe transition region, having a first total mass.
    • A second set of of weight portions is coupled to the hollow body at or proximate to a sole-and-toe transition region, having a second total mass.
    • The first total mass is less than the second total mass.
    • The second set of weight portions is located below a horizontal midplane of the golf club head.

U.S. Patent No. 9,199,143 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: December 1, 2015 (Compl. ¶14)

The Invention Explained

  • Problem Addressed: Similar to its parent '336 patent, the '143 Patent addresses the technical challenge of optimizing CG and MOI in multi-material club heads to improve performance ('143 Patent, col. 1:30-38).
  • The Patented Solution: The patent describes an iron-type golf club head with a hollow body filled with an elastic polymer material (’143 Patent, col. 8:49-55). The invention focuses on the use of a first weight portion near the top-and-toe transition region and a second weight portion near the sole-and-toe transition region, specifically claiming a mass relationship where the upper weight is less massive than the lower weight to precisely control the CG location (’143 Patent, col. 7:1-18).
  • Technical Importance: By explicitly claiming a mass differential between the upper and lower weights, the invention provides a more defined method for lowering the club head's CG, which is a critical factor for achieving higher launch angles and lower spin rates in modern irons (’143 Patent, col. 7:22-38).

Key Claims at a Glance

  • The complaint asserts at least independent claim 15 (Compl. ¶36).
  • Essential Elements of Claim 15:
    • An iron-type golf club head comprising a hollow body portion with various club sections and an interior cavity filled with an elastic polymer material.
    • A first weight portion with a first mass, coupled to the body at or proximate to a top-and-toe transition region.
    • A second weight portion with a second mass, coupled to the body at or proximate to a sole-and-toe transition region.
    • The second weight portion is located below a horizontal midplane of the club head.
    • The first weight portion's mass is less than the mass of the second weight portion.

U.S. Patent No. 9,345,938 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: May 24, 2016 (Compl. ¶16)
  • Technology Synopsis: This patent describes a golf club head with a hollow body, an ultra-thin face portion (≤ 1.5 mm), and an interior cavity filled by injection molding an elastic polymer material to structurally support the face during impact. It further claims a specific distribution of weight portions above and below the club's horizontal midplane (Compl. ¶17).
  • Asserted Claims: At least independent claim 15 is asserted (Compl. ¶36).
  • Accused Features: The accused P790 Products are alleged to have a hollow body, a thin face, an injected polymer ("Speedfoam"), and a weight distribution that meets the claim limitations (Compl. ¶¶33-34, 36).

U.S. Patent No. 9,346,203 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: May 24, 2016 (Compl. ¶18)
  • Technology Synopsis: This patent claims a method of manufacturing a hollow-bodied golf club. The method includes forming a hollow body with various portions, coupling first and second weight portions to specific transition regions, and forming an interior cavity with an elastic polymer material configured to absorb impact on the face (Compl. ¶19).
  • Asserted Claims: At least independent claim 15 is asserted (Compl. ¶35).
  • Accused Features: TaylorMade's manufacturing process for the P790 Products is alleged to practice the claimed method by forming a hollow body, filling it with polymer, and adding weight portions as claimed (Compl. ¶¶33, 35).

U.S. Patent No. 9,364,727 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: June 14, 2016 (Compl. ¶20)
  • Technology Synopsis: This patent describes an iron-type golf club head with a hollow body, an interior cavity filled with an injection-molded elastic polymer, and a bonding portion. It claims a specific arrangement of first and second weight portions where the second set (lower on the club head) has a greater number of individual weight portions than the first set (Compl. ¶21).
  • Asserted Claims: At least independent claim 16 is asserted (Compl. ¶36).
  • Accused Features: The P790 Products are alleged to infringe by having a hollow, polymer-filled body with a greater number of weights below the midplane than above it (Compl. ¶¶33, 36).

U.S. Patent No. 9,533,201 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: January 3, 2017 (Compl. ¶22)
  • Technology Synopsis: This patent describes a golf club head with a thin face (≤ 1.5 mm), an interior cavity, a bonding portion, and an injection-molded elastic polymer. The key limitation is a greater number of weight portions located on the back portion below a horizontal midplane than above the midplane (Compl. ¶23).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶36).
  • Accused Features: The accused P790 Products are alleged to have a thin face, injected polymer, a bonding portion, and a greater number of weights below the midplane than above it (Compl. ¶¶33-34, 36).

U.S. Patent No. 9,610,481 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: April 4, 2017 (Compl. ¶24)
  • Technology Synopsis: This patent claims a golf club head with a body portion and an interior cavity filled with an elastic polymer. The invention is defined by a specific mathematical relationship where the volume of the elastic polymer material (Ve) is between 20% and 50% of the body portion's volume (Vb), combined with a greater number of weights below the horizontal midplane (Compl. ¶25).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶36).
  • Accused Features: The P790 Products are alleged to infringe by meeting the claimed volumetric ratio of polymer-to-body and having the specified weight distribution (Compl. ¶¶33, 36).

U.S. Patent No. 9,675,853 - "GOLF CLUB HEADS AND METHODS TO MANUFACTURE GOLF CLUB HEADS"

  • Issued: June 13, 2017 (Compl. ¶26)
  • Technology Synopsis: This patent describes a golf club head with a thin face (≤ 1.5 mm), an injection-molded polymer to support the face, and a bonding portion. It distinguishes itself by requiring that at least one of the plurality of weight portions is constructed from a different material than the body portion itself, in addition to having more weights below the midplane than above (Compl. ¶27).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶36).
  • Accused Features: The P790 Products are alleged to infringe by using a tungsten weight portion (a different material from the body) in combination with a thin face, injected polymer, and the claimed weight distribution (Compl. ¶¶33-34, 36).

III. The Accused Instrumentality

Product Identification

  • The accused products are TaylorMade golf clubs sold under the name P790 ("P790 Products") (Compl. ¶29).

Functionality and Market Context

  • The complaint alleges the P790 Products are iron-type golf clubs featuring a hollow body construction (Compl. ¶33). This hollow cavity is described as being filled with an elastic polymer material that TaylorMade markets as "Speedfoam" (Compl. ¶33). The complaint alleges the clubs incorporate a thin face of approximately 1.5 millimeters, a screw located in a weight port near the top-and-toe area of the club, and a separate tungsten weight portion located near the sole-and-toe area (Compl. ¶33). The complaint includes a cross-sectional image of a P790 iron that illustrates the hollow body and the internal polymer filler (Compl. ¶31).

IV. Analysis of Infringement Allegations

'8,961,336 Infringement Allegations

Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
a hollow body portion having a face portion... and an interior cavity... filled with an elastic polymer material The P790 Products allegedly have a hollow body portion with an interior cavity filled with an elastic polymer material called "Speedfoam" ¶33 col. 8:8-27
a first set of weight portions coupled to the hollow body portion at or proximate to a top-and-toe transition region... being associated with a first total mass The P790 Products allegedly have a screw located in a weight port at or proximate to the top-to-toe transition region ¶33 col. 4:49-54
a second set of weight portions coupled to the hollow body portion at or proximate to a sole-and-toe transition region... being associated with a second total mass The P790 Products allegedly have a tungsten weight portion located in a weight port at or proximate to the sole-to-toe transition region ¶33 col. 4:61-66
wherein the first total mass is less than the second total mass The complaint does not explicitly allege this mass relationship, but it identifies the first weight as a screw and the second as a tungsten weight portion, which may imply the claimed relationship ¶33 col. 6:46-51
wherein the second set of weight portions is located below a horizontal midplane of the golf club head The P790 Products' tungsten weight is allegedly located below the horizontal midplane of the club head ¶33 col. 6:26-31

'9,199,143 Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
a hollow body portion having a face portion... and an interior cavity... filled with an elastic polymer material The P790 Products allegedly have a hollow body portion with an interior cavity filled with an elastic polymer material called "Speedfoam" ¶33 col. 8:31-48
a first weight portion coupled to the hollow body portion at or proximate to a top-and-toe transition region, the first weight portion having a first mass The P790 Products allegedly have a screw located in a weight port at or proximate to the top-to-toe transition region ¶33 col. 4:49-54
a second weight portion coupled to the hollow body portion at or proximate to a sole-and-toe transition region, the second weight portion having a second mass The P790 Products allegedly have a tungsten weight portion located in a weight port at or proximate to the sole-to-toe transition region ¶33 col. 4:61-66
wherein the second weight portion is located below a horizontal midplane of the golf club head The P790 Products' tungsten weight is allegedly located below the horizontal midplane of the club head ¶33 col. 6:26-31
and the first weight portion has a mass less than the mass of the second weight portion The complaint does not provide specific mass values but identifies the first weight as a screw and the second as denser tungsten, which may support an inference that this limitation is met ¶33 col. 7:1-18

Identified Points of Contention

  • Scope Questions: A central question may be whether TaylorMade’s "Speedfoam" material meets the claimed definition of an "elastic polymer material" as that term is used in the patents. The patents’ specifications describe materials capable of absorbing shock, isolating vibration, and structurally supporting the club face, raising a factual question as to whether "Speedfoam" performs these functions in the claimed manner (’336 Patent, col. 8:31-48; col. 9:22-32).
  • Technical Questions: The complaint alleges the presence of specific components (a screw, a tungsten weight) but does not provide quantitative evidence that they satisfy the claimed mass relationships (e.g., "first total mass is less than the second total mass"). The case may turn on factual evidence developed in discovery regarding the actual mass of these components.
  • Scope Questions: For the ’336 Patent, a dispute may arise over whether the accused single screw constitutes "a first set of weight portions" as required by claim 16. Defendant may argue that the plural "portions" requires more than one component, while Plaintiff may point to specification language stating a "set" can be a single piece of material (’336 Patent, col. 4:45-48).

V. Key Claim Terms for Construction

For U.S. Patent No. 8,961,336

  • The Term: "a first set of weight portions"
  • Context and Importance: This term is critical because the complaint alleges that a single screw in the P790 iron meets this limitation. Practitioners may focus on this term because its construction will determine whether a single component can infringe a claim element phrased in the plural.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests a "set" of weights is not necessarily limited to multiple discrete pieces, stating that "each set of the first and second sets of weight portions . . . may be a single piece of weight portion" (’336 Patent, col. 4:45-48).
    • Evidence for a Narrower Interpretation: The claim language uses the plural "portions." Further, the primary embodiment shown in the patent figures depicts the "first set of weight portions (120)" as comprising four distinct weights (121, 122, 123, and 124), which could be argued to define the intended scope of the term (’336 Patent, Fig. 2).

For U.S. Patent No. 9,199,143

  • The Term: "elastic polymer material"
  • Context and Importance: This term is foundational to the technology of all asserted patents. The infringement analysis will depend on whether TaylorMade's "Speedfoam" falls within the scope of this term as defined by the intrinsic evidence.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides a list of exemplary materials, including "a viscoelastic urethane polymer material such as Sorbothane®, a thermoplastic elastomer material (TPE), a thermoplastic polyurethane material (TPU), and/or other suitable types of materials to absorb shock, isolate vibration, and/or dampen noise" (’143 Patent, col. 8:35-42). This suggests the term is not limited to a single chemical composition.
    • Evidence for a Narrower Interpretation: The specification repeatedly links the function of the polymer to providing structural support for a thin face portion to prevent degradation of "structural integrity, sound, and/or feel" (’143 Patent, col. 9:1-4). This functional requirement may be used to argue for a narrower definition that excludes materials that do not provide sufficient structural support.

VI. Other Allegations

Indirect Infringement

  • The complaint includes general allegations of inducement and contributory infringement for each asserted patent (e.g., Compl. ¶40, ¶49). It does not, however, allege specific facts to support the required elements of knowledge and intent, such as referencing user manuals or advertising materials that instruct users on an infringing use.

Willful Infringement

  • Willfulness is alleged for each asserted patent, based on TaylorMade having "actual notice and/or constructive notice" of the patents (e.g., Compl. ¶41, ¶42). The complaint does not specify whether this alleged notice was pre-suit or post-suit, nor does it plead facts such as prior correspondence or knowledge of PXG's patent portfolio.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of material equivalence: does the accused "Speedfoam" filler possess the functional and structural properties of the "elastic polymer material" claimed in the patents, specifically the dual ability to structurally support an ultra-thin club face while also providing vibration damping for improved feel?
  • A key evidentiary question will be one of factual proof: can Plaintiff produce evidence from the accused P790 irons demonstrating that the mass of the upper weight portion (the screw) is less than the mass of the lower weight portion (the tungsten insert), as explicitly required by the asserted claims?
  • A central claim construction dispute may focus on definitional scope: for the ’336 Patent, can the claim term "a first set of weight portions," phrased in the plural, be construed to cover the single screw allegedly used in the accused products?