PTAB

IPR2018-00540

Parsons Xtreme Golf LLC v. Taylor Made Golf Co Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Golf Club Head
  • Brief Description: The ’785 patent discloses an iron-type golf club head constructed from two main pieces: a body and a separate striking plate (face). The patent’s purported novelty relates to attaching the striking plate to the body using a continuous butt weld that creates a rear weld bead exposed within the club head’s rear cavity, while a corresponding front weld bead is removed to create a smooth striking surface.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 6, 7, 11, 12, 14, and 15 under §102 by Gilbert

  • Prior Art Relied Upon: Gilbert (Patent 7,281,991).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Gilbert, which discloses a hollow utility-iron golf club head with a separate impact plate, inherently discloses every limitation of the challenged claims. Gilbert teaches a body with a front opening for receiving an impact plate, but is silent on the attachment method. Petitioner asserted that a person of ordinary skill in the art (POSITA) would necessarily use a full penetration butt weld to permanently join the thin metal impact plate to the club body to withstand the high forces of impact. Such a weld would inherently create a front weld bead on the striking surface and a rear weld bead inside the cavity.
    • Key Aspects: A critical feature of the argument was that a POSITA would also necessarily remove the front weld bead to ensure a smooth, uniform striking surface, a standard practice in golf club manufacturing. Gilbert’s disclosure of a composite core inserted into the cavity to support the impact plate was mapped to the "third piece" that "substantially cover[s]" the inherent rear weld bead, as recited in claims 2 and 15.

Ground 2: Obviousness of Claims 1, 2, 6, 7, 11, 12, 14, and 15 over Gilbert in view of Yoshida

  • Prior Art Relied Upon: Gilbert (Patent 7,281,991) and Yoshida (Japanese Application Publication No. 2004-209091).
  • Core Argument for this Ground:
    • Prior Art Mapping: As an alternative to inherency, Petitioner argued that to the extent Gilbert does not explicitly teach the claimed welding method, Yoshida provides the missing disclosure. Yoshida explicitly teaches welding a face member to a hollow iron-type club head body, creating both a front weld bead and a rear "back bead" inside the cavity. Yoshida further teaches that the front bead is removed via a "polishing process" to smooth the striking surface, directly corresponding to the limitations in claim 1.
    • Motivation to Combine: A POSITA would combine Gilbert and Yoshida because both address the same problem of attaching a face to a hollow club head. Yoshida expressly states its welding technique can be applied to "hollow iron type" clubs like Gilbert and improves the joint's strength and the club's performance. A POSITA would therefore have been motivated to apply Yoshida’s explicit welding and finishing method to Gilbert’s club head design.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved applying a known welding technique to a known type of club head to achieve the predictable result of a strong, permanent bond with a smooth exterior face.

Ground 3: Obviousness of Claims 3 and 16 over Gilbert in view of Matsunaga

  • Prior Art Relied Upon: Gilbert (Patent 7,281,991) and Matsunaga (Application # 2008/0125246).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground focused on dependent claims 3 and 16, which require the weld centerline to be offset from a rear wall or hinge portion by at least 1 mm. While Gilbert shows a distance between its hinge portion and the face attachment point, it does not specify a dimension. Matsunaga, another hollow-body golf club reference, explicitly discloses offsetting the weld bead from the hinge region by a preferred distance of 2 to 5 mm to improve strength and durability.
    • Motivation to Combine: A POSITA looking to optimize the design of Gilbert's club head would consult analogous prior art like Matsunaga for known design parameters. A POSITA would combine Matsunaga’s dimensional teachings with Gilbert’s design to achieve the known benefit of improved durability by moving the weld away from a high-stress hinge area.
    • Expectation of Success: The combination was presented as a simple and predictable substitution of a known dimensional characteristic from Matsunaga into the analogous structure of Gilbert.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on combining Gilbert with Gilbert ’048 (Application # 2008/0015048) to supply specific face area and thickness dimensions, three-way combinations of the prior art, and an alternative ground that Gilbert alone renders all challenged claims obvious based on the knowledge of a POSITA.

4. Key Claim Construction Positions

  • "hinge region": Petitioner argued this is not a term of art and proposed it be construed based on the patent’s specification as the "transition region between the front striking surface and the upper or lower return wall." This construction was important for locating the weld relative to this region as required by the claims.
  • "rear wall portion": Similarly, Petitioner proposed construing this term as being the same as the "lower return wall," defined as "the wall that extends in a rearward direction from the front striking surface." This construction was necessary to assess the weld offset limitation of claim 3.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 10-12, and 14-16 of the ’785 patent as unpatentable.