PTAB

IPR2018-00891

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

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1. Case Identification

2. Patent Overview

  • Title: Golf Club Heads
  • Brief Description: The ’821 patent discloses iron-type golf club heads with a hollow body, an interior cavity, and perimeter weighting. The design aims to optimize the center of gravity (CG) and moment of inertia (MOI) to produce a higher ball launch angle and lower spin rate for greater distance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wahl and Takahashi - Claims 1-7, 13-16, and 18-20 are obvious over Wahl in view of Takahashi.

  • Prior Art Relied Upon: Wahl (Patent 8,088,025), which incorporates Wahl ’496 (Patent 6,811,496) by reference, and Takahashi (Japanese Published Patent Application No. H10-277187).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wahl teaches the core features of a hollow, iron-type golf club head with an interior cavity that can be filled with a polymer material to improve feel and dampen vibration. Wahl, through its incorporation of Wahl ’496, also discloses using weighting elements (pins) in the sole portion to lower the CG. Petitioner contended that Takahashi improves upon this by teaching a more advanced perimeter weighting system with multiple, removable screw weights arranged along the entire periphery of the club head's back portion. Takahashi explicitly shows weights located both above and below the horizontal midplane, teaching the "first set" and "second set" of weights recited in the challenged claims. Petitioner further asserted that the claimed dimensional ratios, such as the cavity width relative to the body width, are disclosed by analyzing the figures in Wahl.
    • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine these references because they are from the same field and address the identical problem of optimizing CG and MOI in iron-type golf clubs. A POSA would have been motivated to replace or rearrange Wahl’s basic weighting scheme with Takahashi’s more sophisticated perimeter weighting system. This combination represents a predictable use of a known technique (Takahashi's weighting) to improve a similar device (Wahl's club head) to achieve finer adjustment and better performance.
    • Expectation of Success: A POSA would have had a reasonable expectation of success in combining the references. The integration of Takahashi's perimeter weights into Wahl's hollow-body design was a simple substitution of known elements that would predictably result in an improved ability to manipulate the club head's CG and MOI.

Ground 2: Obviousness over Wahl, Takahashi, and Linphone - Claims 8-12 and 17 are obvious over Wahl in view of Takahashi and Linphone.

  • Prior Art Relied Upon: Wahl (Patent 8,088,025), Takahashi (Japanese Published Patent Application No. H10-277187), and Linphone (German Utility Model No. DE29715997U1).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the combination of Wahl and Takahashi for the hollow body and perimeter weighting features. The Petitioner introduced Linphone to supply the remaining key limitations of this claim group, which relate to an elastic polymer material injection-molded into the cavity to structurally support the face and a "bonding portion" to couple the polymer to the face. Petitioner asserted that Wahl teaches filling the cavity with an elastic polymer, but Linphone specifically teaches bonding a shock-absorbing rubber filler to the back of the face portion using an adhesive. This adhesive corresponds to the claimed "bonding portion," and the rubber corresponds to the "elastic polymer material."
    • Motivation to Combine: Wahl discloses filling the cavity to dampen sound and vibration. Linphone teaches a method to more effectively achieve this goal by bonding the filler material directly to the face, improving the dissipation of vibrations. A POSA seeking to improve the shock-absorbing properties of the Wahl/Takahashi club head would have been motivated to incorporate Linphone's method of using an adhesive. This would ensure better coupling between the filler and the face, enhancing the dampening effect that Wahl sought.
    • Expectation of Success: Applying an adhesive to bond a polymer filler inside a golf club head is a straightforward mechanical step. A POSA would expect this combination to predictably improve adhesion and vibration dampening without undue experimentation.

4. Key Claim Construction Positions

  • "set of weight portions" / "set of exterior weight ports": Petitioner argued that "set" should be construed as "more than one" weight portion or port. This construction was based on the plural terms "portions" and "ports" and the claims' internal logic, which distinguishes between "a first set" and "at least one... port" from that set. This construction is critical to mapping the claims onto prior art like Takahashi, which discloses multiple perimeter weights.
  • "bonding portion": Petitioner proposed that this term means "an adhesive agent, distinct from the elastic polymer material and from the body portion, that joins the elastic polymer material to the body portion." This construction relies on the specification's examples of commercial adhesives (e.g., Loctite), its depiction as a discrete layer in Figure 28, and its separate recitation from the polymer material in the claims.
  • "toe portion," "top portion," "sole portion," "back portion": Petitioner argued these terms should be given their plain and ordinary meaning, referring to the respective surfaces of the club head. This was contrasted with an allegedly "unreasonably broad" interpretation advanced by the Patent Owner in co-pending litigation, which Petitioner claimed improperly defined these areas as large, bisected halves of the club head.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner contended that the claimed dimensional limitations, such as the interior cavity width being greater than 20% of the hollow body width (claim 1) or a ledge width being greater than the hollow body width (claim 13), lack any demonstrated criticality in the ’821 patent. Petitioner argued these are merely conventional design choices resulting from routine optimization. Furthermore, Petitioner asserted that these specific dimensional ratios are, in fact, disclosed or at least rendered obvious by the drawings in the Wahl prior art reference, especially when dimensioned by a POSA using thickness values disclosed elsewhere in Wahl's specification.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,468,821 as unpatentable.