DCT

3:24-cv-00212

Taylor Made Golf Co Inc v. Costco Wholesale Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:24-cv-00212, S.D. Cal., 05/31/2024
  • Venue Allegations: Venue is alleged to be proper based on Defendants’ business operations within the Southern District of California, including Costco’s retail store locations, SCDC's principal place of business, and SM Global's incorporation and business activities in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ Kirkland Signature Players Iron set infringes five patents related to the design and construction of hollow-body, multi-material golf club heads.
  • Technical Context: The technology involves advanced iron-type golf clubs with hollow internal cavities, often filled with a lightweight polymer foam and containing precisely placed weights to optimize performance characteristics like distance, forgiveness, and feel.
  • Key Procedural History: The complaint alleges that Plaintiff sent a letter to Defendant Costco on December 12, 2023, identifying the asserted patents. It further alleges that the president of Defendant SCDC is a former Taylor Made engineer who worked on the development of Plaintiff's P790 irons, which embody the patented technology. The current filing is a First Amended Complaint, superseding an original complaint filed on January 31, 2024.

Case Timeline

Date Event
2012-06-08 ’653 Patent - Earliest Priority Date
2016-12-29 ’293, ’426, ’097 Patents - Earliest Priority Date
2019-10-22 ’653 Patent - Issue Date
2019-10-31 ’727 Patent - Earliest Priority Date
2021-03-23 ’293 Patent - Issue Date
2022-06-07 ’426 Patent - Issue Date
2022-08-23 ’097 Patent - Issue Date
2022-12-31 Accused Products listed on USGA conforming clubs list (at the latest)
2023-01-24 ’727 Patent - Issue Date
2023-12-09 Costco begins selling the Accused Products
2023-12-12 Plaintiff sends notice letter to Costco
2023-12-28 Costco website listing for Accused Products taken down (at the latest)
2024-01-10 Costco resumes selling the Accused Products (on or around)
2024-01-31 Original Complaint filed
2024-05-31 First Amended Complaint filed

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

U.S. Reissue Patent No. RE47,653 - "Golf Club Head"

  • Patent Identification: U.S. Reissue Patent No. RE47,653, "Golf Club Head," issued October 22, 2019.

The Invention Explained

  • Problem Addressed: The patent's background section describes the challenge of improving the sound and feel of hollow-body irons, which can produce undesirable vibrations upon impact, and the difficulty of precisely positioning weights within the hollow cavity. (RE47,653 Patent, col. 1:26-58).
  • The Patented Solution: The invention proposes a hollow club head with an internal cavity into which a plug is inserted. A lightweight filler material, such as an expanding foam, is then introduced into the cavity to surround the plug, securing it in place while also damping vibrations to improve sound and feel. (RE47,653 Patent, Abstract; col. 2:32-40; Fig. 6A).
  • Technical Importance: This design allows for the combination of precise weight placement via the plug and improved acoustic properties from the filler material within a single high-performance, hollow-body iron. (Compl. ¶18).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶90).
  • Claim 1 requires:
    • A hollow iron-type golf club head with a heel, sole, toe, top-line, front, and rear portion, and a striking face with an unsupported surface area within a specified range.
    • A back wall creating a substantially enclosed cavity.
    • A filler material located within the cavity.
    • The cavity having a volume between 10 cc and 20 cc.
    • The striking face having a thickness less than 3 mm.
    • The club head having a coefficient of restitution greater than about 0.8.
  • The complaint alleges infringement of one or more claims of the patent. (Compl. ¶89).

U.S. Patent No. 10,953,293 - "Golf Club Head"

  • Patent Identification: U.S. Patent No. 10,953,293, "Golf Club Head," issued March 23, 2021.

The Invention Explained

  • Problem Addressed: The patent background explains that while multi-piece club heads (a body and a separate strike plate) allow for complex geometries and dissimilar materials, the conventional method of welding the strike plate continuously around its entire periphery can introduce structural weaknesses and stress risers. ('293 Patent, col. 1:41-54).
  • The Patented Solution: The invention is a golf club head where a separate strike plate is attached to the body via a "peripherally discontinuous" weld. This design leaves at least one portion of the strike plate's outer edge unwelded to the body, which can increase the flexibility of the strike face to improve performance on off-center hits. This unwelded portion often forms a "sole slot." ('293 Patent, Abstract; col. 8:32-43; Fig. 3).
  • Technical Importance: This discontinuous welding method provides a way to increase the flexibility and forgiveness of a multi-piece iron face without fully detaching it from the body, balancing structural integrity with performance enhancement. ('293 Patent, col. 5:56-62).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶98).
  • Claim 1 requires a hollow body iron-type golf club head with a highly detailed structure, including:
    • A body comprising a "first part of a sole portion" with a recess.
    • A strike plate welded to the body, where the strike plate itself comprises a "second part of the sole portion."
    • A tungsten weight located within the recess of the first part of the sole portion.
    • A filler material within the internal cavity.
    • A threaded toe port for injecting the filler material and a corresponding plug.
    • A specific "COR change value" between 0 and -0.01 when the cavity is filled versus unfilled.
  • The complaint alleges infringement of one or more claims of the '293 patent. (Compl. ¶97).

Multi-Patent Capsule: U.S. Patent No. 11,351,426 - "Golf Club Head"

  • Patent Identification: U.S. Patent No. 11,351,426, "Golf Club Head," issued June 7, 2022. (Compl. ¶28).
  • Technology Synopsis: This patent, related to the ’293 patent, describes a hollow-body iron head construction. The claims focus on the internal architecture, including a sole bar protruding into the cavity, a forward protrusion from that bar that the strike plate wraps underneath, and the interaction of the filler material with these internal surfaces, all while achieving a specific COR change value between 0 and -0.01. (’426 Patent, Claim 17).
  • Asserted Claims: At least independent claim 17 is asserted. (Compl. ¶106).
  • Accused Features: The complaint alleges the accused products' multi-material construction, including the stainless steel body, internal tungsten weight, and injected insert, infringes this patent. (Compl. ¶40, ¶105).

Multi-Patent Capsule: U.S. Patent No. 11,420,097 - "Golf Club Head"

  • Patent Identification: U.S. Patent No. 11,420,097, "Golf Club Head," issued August 23, 2022. (Compl. ¶31).
  • Technology Synopsis: This patent describes a golf club head with a discontinuously welded strike plate, creating at least one unwelded portion. The claims focus on the geometric and structural relationships, such as the unwelded portion extending along a "sole wrap portion" that is angled relative to the strike face, and the creation of a "sole slot" between the unwelded edge and the club body. (’097 Patent, Abstract, Claim 13).
  • Asserted Claims: At least independent claim 13 is asserted. (Compl. ¶114).
  • Accused Features: The complaint's allegations regarding the multi-piece construction and internal cavity of the accused products form the basis of infringement. (Compl. ¶40, ¶113).

Multi-Patent Capsule: U.S. Patent No. 11,559,727 - "Golf Club Head"

  • Patent Identification: U.S. Patent No. 11,559,727, "Golf Club Head," issued January 24, 2023. (Compl. ¶34).
  • Technology Synopsis: This patent describes a hollow-body iron comprising a body of a first material, an internal weight of a second, denser material, and a filler material having specific density and mass properties. The claims recite specific quantitative parameters, including the ratio of internal cavity volume to external club head volume and minimum and maximum front-to-back depths of the internal cavity. (’727 Patent, Abstract, Claim 13).
  • Asserted Claims: At least independent claim 13 is asserted. (Compl. ¶122).
  • Accused Features: The infringement theory relies on the accused products' use of a steel body, an internal tungsten weight, and an injected polymer insert, which allegedly meet the claimed material and dimensional properties. (Compl. ¶40, ¶121).

III. The Accused Instrumentality

Product Identification

  • The "Kirkland Signature™ Players Iron set" sold by Defendant Costco. (Compl. ¶39).

Functionality and Market Context

  • The complaint alleges, based on Defendant Costco’s own marketing materials, that the accused irons are constructed with multiple materials to enhance performance. (Compl. ¶40). A diagram from Costco's website, included in the complaint, shows an exploded view of the club head identifying a "stainless steel body," an "injected urethane insert" that fills an "internal cavity," and an "internal tungsten weight." (Compl. p. 19). The complaint alleges these features are intended to provide "distance and forgiveness" and "optimal launch, forgiveness, and playability," positioning the product in the high-performance "players distance" category of the golf market. (Compl. ¶40).

IV. Analysis of Infringement Allegations

RE47,653 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A hollow iron-type golf club head comprising: a heel portion, a sole portion, a toe portion, a top-line portion, a front portion, a rear portion... The accused Kirkland Signature™ irons are iron-type golf clubs. ¶39 col. 2:12-18
...a back wall in the rear portion enclosing a substantial portion of the rear portion to create a substantially enclosed cavity... The accused products are constructed with a "stainless steel body" that defines an "internal cavity." ¶40 col. 2:27-31
a filler material located within the enclosed cavity... The accused products' internal cavity contains an "injected urethane insert." ¶40 col. 4:18-20
wherein the enclosed cavity has a volume between about 10 cc and 20 cc... The complaint makes a conclusory allegation that the accused products meet this limitation. ¶90 col. 12:1-2
wherein the striking face thickness is less than 3 mm... The complaint makes a conclusory allegation that the accused products meet this limitation. ¶90 col. 12:2-3
  • Identified Points of Contention:
    • Technical Questions: Claim 1 requires the accused product to meet specific quantitative metrics for cavity volume and face thickness. The complaint alleges these are met but does not provide test data or measurements. A key evidentiary question will be whether the physical construction of the accused irons satisfies these numerical limitations.
    • Scope Questions: The patent's specification heavily describes an invention where the "filler material" is used to secure a separate "plug" within the cavity. The complaint alleges infringement based on an "injected urethane insert" without mentioning a corresponding plug. This raises the question of whether the term "filler material," in the context of the patent, can be construed to cover a foam-filled cavity that does not contain a separate plug to be secured.

10,953,293 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a body, comprising a heel portion, a first part of a sole portion, a toe portion, a top portion, a rear wall... The accused products have a "stainless steel body" with these constituent parts. ¶40 col. 5:12-18
a strike plate welded to the body... The accused products are alleged to have a multi-piece construction consistent with a welded strike plate. ¶40 col. 5:41-45
the strike plate... and the... rear wall enclose an internal cavity of the golf club head... The accused products' "stainless steel body" and associated components form an "internal cavity." ¶40 col. 1:6-7
a filler material within the internal cavity... The accused products contain an "injected urethane insert." ¶40 col. 2:6-7
a tungsten weight located within the recess of the first part of the sole portion. The accused products contain an "internal tungsten weight." ¶40 col. 25:38-40
a threaded toe port formed in the toe portion... configured to receive the filler material... The complaint does not provide sufficient detail for analysis of this element. ¶98 col. 24:7-9
  • Identified Points of Contention:
    • Scope Questions: Claim 1 requires a very specific architecture where the sole is divided into a "first part" (part of the body) and a "second part" (part of the strike plate), with a recess in the first part containing the weight. It will be a central dispute whether the accused product's construction can be mapped onto this specific claimed arrangement or if there is a fundamental architectural mismatch.
    • Technical Questions: The claim explicitly requires a "threaded toe port" used to inject the filler material. The complaint does not allege the presence of this feature on the accused product, raising a direct question of whether this limitation is met.

V. Key Claim Terms for Construction

  • The Term: "filler material" (from ’653 Patent, Claim 1)

    • Context and Importance: The definition of this term is critical because the infringement theory for the ’653 patent hinges on the accused "injected urethane insert" meeting this limitation. Practitioners may focus on whether the term requires the presence of a separate plug that the filler material is intended to secure, as this is a primary function described in the patent's specification.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the filler material as potentially being a "foamed polymer" and notes its function is to damp vibrations, a function that foam alone can perform. (RE47,653 Patent, col. 9:32-33; col. 12:28-30).
      • Evidence for a Narrower Interpretation: The abstract states the filler material "surrounds the plug and is configured to hold the plug in place." Numerous embodiments and descriptions emphasize this securing function, suggesting the "filler material" is not merely cavity filler but is functionally tied to the presence of a plug. (RE47,653 Patent, Abstract; col. 1:63-65).

  • The Term: "a strike plate... compris[ing]... a second part of the sole portion" and a body "comprising... a first part of a sole portion" (from ’293 Patent, Claim 1)

    • Context and Importance: This language defines the specific two-piece construction of the club's sole. Infringement requires showing that the accused product's sole is physically divided into these two distinct parts as claimed. The dispute will likely center on whether the product's single-piece sole (if that is its construction) can be conceptually divided to meet these limitations.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent generally teaches the concept of separately forming a strike plate and a body from different materials or via different processes, which could support a broader view of what constitutes the "strike plate" versus the "body." ('293 Patent, col. 7:1-11).
      • Evidence for a Narrower Interpretation: Figure 5 explicitly shows the "strike plate" (104) as a distinct component that includes the "sole wrap portion" (122), which is then attached to the main "body" (102). This suggests a specific physical division, not a conceptual one, where the strike plate itself forms a portion of the club's bottom surface. ('293 Patent, Fig. 5; col. 8:50-54).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that SCDC and SM Global actively induced infringement by Costco. This is based on allegations that SCDC and SM Global designed, manufactured, and supplied the accused products to Costco with the knowledge and intent that Costco would sell them in the United States. (Compl. ¶¶63-65).
  • Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge. Pre-suit knowledge is alleged based on: (1) SCDC President Travis Downing's former employment at Taylor Made, where he allegedly worked on the patented P790 irons (Compl. ¶57); and (2) a notice letter sent to Costco on December 12, 2023, which allegedly identified the asserted patents (Compl. ¶47). Post-suit knowledge is alleged based on the filing of the original complaint and subsequent communications. (Compl. ¶¶52, 54).

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

  • Architectural Equivalence: A core issue will be one of structural mapping: does the accused product's multi-material construction, described generally as a body, an insert, and a weight, embody the highly specific and detailed architectural arrangements required by the asserted claims, such as the '293 patent's division of the sole into a "first part" and a "second part"?
  • Proof of Performance: A key evidentiary question will be one of quantitative proof: can Plaintiff demonstrate through testing and measurement that the accused irons meet the explicit numerical limitations recited in patents like the '653 and '727 patents, including specific ranges for cavity volume, face thickness, filler material density, and COR values?
  • Scope of Knowledge for Willfulness: The case will likely feature a significant dispute over willfulness, centered on the alleged knowledge of SCDC's president. A central question will be whether his prior work at Taylor Made provided him with knowledge of the specific patented inventions and whether the accused products were designed with an intent to copy those features, as the complaint alleges.