PTAB

IPR2018-00540

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

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1. Case Identification

2. Patent Overview

  • Title: Golf Club Head
  • Brief Description: The ’785 patent describes an iron-type golf club head constructed from two main pieces: a body and a separate striking plate (face). The purported novelty lies in attaching the striking plate to the body via a continuous weld that creates a weld bead on the rear surface of the face, inside the club head's cavity.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Gilbert (Patent 7,281,991)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gilbert, which discloses a hollow utility-iron head with a separate impact plate, teaches all limitations of the independent claims. While Gilbert is silent on the specific welding method, Petitioner contended that the key welding limitations are inherently disclosed. These include using a continuous weld, creating a fusion zone, forming a rear weld bead, and removing the front weld bead. Petitioner asserted that to achieve the required high-strength, permanent bond between the face and body, a person of ordinary skill in the art (POSITA) would have necessarily used a full penetration butt weld. This standard technique would inherently create weld beads on both the front and rear of the face, and a POSITA would have known to grind the front bead smooth to ensure proper ball flight, thus anticipating the claims. For claim 2, Gilbert’s composite core was alleged to be a "third piece" that would substantially cover the inherent rear weld bead.
    • Key Aspects: This ground relied heavily on inherency, arguing that the claimed welding process is the only logical and standard manufacturing choice for the structure disclosed in Gilbert.

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 # 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 disclose the welding process, it would have been obvious to a POSITA to implement the method taught by Yoshida. Yoshida explicitly describes welding a clubface to a hollow club body, which results in a front weld bead on the outer surface and a back weld bead on the inner surface. Critically, Yoshida teaches that the back bead improves performance and explicitly discloses removing the front weld bead via a polishing process to create a smooth striking surface. This directly teaches the key limitations of independent claim 1.
    • Motivation to Combine: A POSITA looking to attach the face plate to the body in Gilbert would have been motivated to consult analogous art like Yoshida, which addresses the exact same problem of attaching a face to a hollow club head. Yoshida encourages applying its welding technique to "hollow iron type" clubs, like Gilbert's, to improve joint strength and club performance.
    • Expectation of Success: A POSITA would have had a high expectation of success in applying Yoshida's conventional welding and polishing techniques to Gilbert's club head, as both relate to similar structures and the combination involved predictable results.

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 addressed dependent claims 3 and 16, which require the weld centerline to be offset from a rear wall portion or hinge portion by at least 1 mm. Petitioner asserted that while Gilbert shows a distance between the weld location and the hinge/rear wall, it does not specify a measurement. Matsunaga, another hollow-body golf club reference, explicitly teaches this feature for improved durability, disclosing a weld bead (K) located away from the hinge region by a preferred distance (Wg) of 2 to 5 mm.
    • Motivation to Combine: A POSITA seeking to optimize the design of Gilbert's club head would have looked to references like Matsunaga for specific, proven design parameters. Since Matsunaga teaches that offsetting the weld improves the club's strength and durability, a POSITA would have been motivated to incorporate this feature into Gilbert's design.
    • Expectation of Success: A POSITA would have reasonably expected that applying the dimensional offset from Matsunaga to the Gilbert design would successfully increase durability without undue experimentation.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims requiring specific face area dimensions (claims 4, 5, 8, 10) are obvious over Gilbert in view of Gilbert '048 (Application # 2008/0015048), which discloses tables of such dimensions. Further grounds combined Gilbert and Yoshida with Matsunaga or Gilbert '048 to address various dependent claims. A final ground argued all challenged claims were obvious over Gilbert alone.

4. Key Claim Construction Positions

  • "hinge region": Petitioner argued this term is not a term of art and, based on the ’785 patent’s specification and figures, should be construed as the “transition region between the front striking surface and the upper or lower return wall.” This construction was central to mapping prior art to claims requiring a weld offset from this region.
  • "rear wall portion": Petitioner asserted this term is also not a term of art and, based on its use with reference numeral 324 in the specification, should be construed as the "lower return wall," which is a wall that extends in a rearward direction from the front striking surface.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 10-12, and 14-16 of Patent 8,353,785 as unpatentable.