PTAB

IPR2018-00702

Taylor Made Golf Company, Inc. v. Parsons Xtreme Golf, LLC

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1. Case Identification

2. Patent Overview

  • Title: Iron-Type Golf Club Heads with Perimeter Weighting
  • Brief Description: The ’336 patent relates to iron-type golf club heads having a body portion, a plurality of weight portions made of a different material, and an interior cavity. The invention focuses on optimizing the center of gravity (CG) and moment of inertia (MOI) by arranging weight portions in ports along the perimeter of the club head and, in some embodiments, filling the interior cavity with an elastic polymer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wahl and Takahashi - Claims 1-8, 10-14, and 16-19 are obvious over Wahl in view of Takahashi.

  • Prior Art Relied Upon: Wahl (Patent 8,088,025) and Takahashi (Japanese Application No. H10-277187).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wahl disclosed the foundational elements of the challenged claims, including an iron-type golf club head with a hollow body, an interior cavity filled with a filler material (e.g., viscoelastic elastomers), and the use of weighting elements to control CG. Wahl, through its incorporation of the ’496 patent, also taught perimeter weighting to increase MOI. Petitioner asserted that Takahashi disclosed the specific perimeter weighting configuration recited in the claims, including multiple screw weights in ports arranged along the periphery of the club head, which could be grouped into a "first set" (near the toe/top) and a "second set" (near the sole). The combination of Wahl's body and Takahashi's weighting system allegedly rendered the independent claims obvious.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine the teachings of Wahl and Takahashi because both references are from the same field and address the same problem: optimizing CG and MOI in iron-type golf clubs. A POSITA would have been motivated to apply Takahashi’s advanced, fine-tunable perimeter weighting system to Wahl’s hollow-body design to predictably improve performance by lowering the CG and increasing MOI. This was described as a simple substitution of one known weighting system for another to achieve a known goal.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying known design principles (perimeter weighting) to a known club head type (hollow-body iron) to achieve the predictable result of improved weight distribution.

Ground 2: Obviousness over Wahl, Takahashi, and Hou - Claims 9, 15, and 20 are obvious over Wahl and Takahashi in view of Hou.

  • Prior Art Relied Upon: Wahl (Patent 8,088,025), Takahashi (Japanese Application No. H10-277187), and Hou (Patent 7,744,486).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1 to address dependent claims requiring a thin face portion (less than or equal to 0.762 mm). While Wahl taught a face thickness of "less than about 2.0mm," Hou was introduced because it specifically disclosed a hollow club head filled with a vibration-absorbing material and a striking plate with a thickness "substantially between 0.76 mm and 2.25 mm."
    • Motivation to Combine: Petitioner argued that a POSITA seeking to optimize the design from the Wahl/Takahashi combination would have been motivated to incorporate Hou's teaching of a thinner face plate. Reducing face thickness was a known technique to enhance performance, and Hou demonstrated its application in a similar club head structure. Therefore, modifying the Wahl/Takahashi design to include Hou's thinner face was an obvious design choice.

Ground 3: Obviousness over Mizuno and Oku - Claims 16 and 18-19 are obvious over Mizuno in view of Oku.

  • Prior Art Relied Upon: Mizuno (Japanese Application No. 2004-313777) and Oku (Japanese Application No. H10-127832).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative path to the invention. Petitioner asserted Mizuno disclosed a hollow iron-type golf club with an elastic body inserted into the cavity to reduce vibration and lower the CG. Oku was cited for its teaching of dispersing cylindrical weights in insertion holes on the periphery of a cavity-back iron to increase MOI and control CG. The combination allegedly taught the key features of claim 16, with Mizuno providing the polymer-filled hollow body and Oku providing the "first set" and "second set" of weights arranged at the periphery.
    • Motivation to Combine: Petitioner claimed a POSITA would combine Oku's peripheral weighting scheme with Mizuno's elastic-filled hollow body to further optimize Mizuno's design. This combination would predictably improve both vibration damping (from Mizuno) and MOI/CG placement (from Oku), improving the function of Mizuno's device in a known way.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 17 based on the combination of Mizuno, Oku, and Bennett (Application # 2010/0304887), arguing Bennett taught the use of weights with varied masses to achieve the claimed limitation that the first mass is less than the second mass.

4. Key Claim Construction Positions

  • Petitioner argued for constructions based on the plain and ordinary meaning of terms as understood by a POSITA in the field of golf club design. A central point of contention was the interpretation of terms defining club head geography, such as "toe portion," "sole portion," and "top portion," as well as "top-and-toe transition region" and "sole-and-toe transition region."
  • Petitioner contended these terms refer to distinct surface areas or peripheral regions of the club head. This contrasts with what Petitioner characterized as the Patent Owner's unreasonably broad interpretations in related litigation, where, for example, a "portion" was alleged to encompass half of the entire club head. Petitioner asserted its narrower constructions were necessary to properly analyze the prior art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 8,961,336 as unpatentable.