Parsons Xtreme Golf, LLC v. TAYLOR MADE GOLF COMPANY, INC.

1. Case Identification

• Case #: Unassigned
• Patent #: 7261646
• Filed: January 19, 2018
• Petitioner(s): Parsons Xtreme Golf, LLC
• Patent Owner(s): Taylor Made Golf Company, Inc.
• Challenged Claims: 1-3, 5-9, 12, 14, 16-19, and 21

2. Patent Overview

• Title: Wood-Type Golf Club Head
• Brief Description: The ’646 patent describes a hollow, wood-type golf club head constructed from multiple pieces. The design features a main body with openings on the top and front, a separately formed crown to enclose the top opening, and a separately formed striking plate to enclose the front opening. The claims specify a metallic body, a non-metallic (e.g., composite) crown, and performance characteristics such as a minimum volume and a high coefficient of restitution (COR).

3. Grounds for Unpatentability

Ground 1: Obviousness over Hocknell and Helmstetter - Claims 1-3, 5-9, 12, 14, 16-19, and 21 are obvious under 35 U.S.C. §103 over Hocknell in view of Helmstetter.

• Prior Art Relied Upon: Hocknell (Patent 6,663,504) and Helmstetter (Patent 6,565,452).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hocknell taught all limitations of the challenged claims except for a body with a front opening enclosed by a separately attached striking plate. Hocknell disclosed a wood-type golf club head with a major body (made of metal, including amorphous metal with a density > 4 g/cc), an upper opening, and a separately attached composite crown. Hocknell also taught the claimed club head volumes and COR values. Helmstetter, which is from the same patent family as Hocknell, explicitly remedied Hocknell's deficiency by teaching a golf club head with a front opening enclosed by a separately formed striking plate insert, which could be made from a high-strength forged metal like titanium. Petitioner asserted that combining Helmstetter's separate striking plate with Hocknell's club head design would result in the invention claimed in the ’646 patent. Dependent claims reciting specific materials (e.g., graphite-epoxy crown), dimensions, and design features (e.g., a support ledge for the crown) were argued to be disclosed in Hocknell or otherwise well-known and obvious variations.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings for clear performance reasons. Both references aimed to increase COR and optimize the moment of inertia by using thinner, more flexible faces and strategic material placement. Hocknell taught using a lightweight composite crown to lower the center of gravity but used an integrally formed striking face. Helmstetter taught that using a separate, stronger (forged or formed) material for the striking plate allows it to be made thinner and more flexible than an integral cast face. A POSITA would have recognized the benefit of replacing Hocknell's integral face with Helmstetter's stronger, separate striking plate to improve face flexibility and COR—a predictable improvement based on known design principles. This modification would tailor materials to stresses, placing the strongest material at the high-stress face and lighter materials elsewhere.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the combination involved substituting a known element (Helmstetter's separate face insert) for a related element (Hocknell's integral face) to achieve a predictable result (improved flexibility and COR). The petition argued that joining a separate striking plate to a club head body was a conventional and well-understood practice in golf club design, ensuring the combination would be structurally sound and perform as expected.
  • Key Aspects: Petitioner heavily emphasized that during the prosecution of a related Taylor Made application (the ’298 application), the Examiner rejected claims of similar scope as obvious over a nearly identical combination of prior art (Hocknell in view of Hocknell 604, a patent from the same family as Helmstetter). Petitioner argued this history demonstrated that the Patent Office itself had already found the core inventive concept to be obvious based on the same teachings asserted in this inter partes review (IPR).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The primary prior art references, Hocknell and Helmstetter, were never asserted by the Examiner or otherwise considered during the original prosecution of the ’646 patent. Therefore, the arguments and prior art presented in the petition were not the "same or substantially the same" as those previously before the Office. The fact that the Office later relied on this same combination to reject similar claims in a related application further showed that the art is material, not cumulative, and presents a substantial new question of patentability.

5. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-3, 5-9, 12, 14, 16-19, and 21 of the ’646 patent as unpatentable.