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

1. Case Identification

• Patent #: 9,610,481
• Filed: April 13, 2018
• Petitioner(s): Taylor Made Golf Company, Inc.
• Patent Owner(s): Parsons Xtreme Golf, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Hollow Club Heads and Methods to Manufacture Hollow Club Heads
• Brief Description: The ’481 patent relates to iron-type golf club heads having a hollow body portion. The design involves filling the interior cavity with an elastic polymer material and incorporating a plurality of weight portions along the club head’s perimeter to optimize performance characteristics like center of gravity (CG) and moment of inertia (MOI).

3. Grounds for Unpatentability

Ground 1: Obviousness over Wahl, Wahl ’653, and Takahashi - Claims 1, 4-7, 15-16, and 19-20 are obvious over Wahl in view of Wahl ’653 and Takahashi.

• Prior Art Relied Upon: Wahl (Patent 8,088,025), Wahl ’653 (Patent 9,044,653), and Takahashi (Japanese Application # H10-277187).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wahl taught the fundamental structure of a hollow, iron-type golf club head with its interior cavity filled with an elastic polymer material (e.g., viscoelastic elastomers). Wahl (by incorporating Wahl ’496) further disclosed using weighting elements, such as tungsten pins, placed in the sole to lower the CG. To teach the claimed perimeter weighting, Petitioner pointed to Takahashi, which disclosed screw weights disposed along the entire periphery of the club head. For the specific volume-based equations in independent claims 1 and 15, Petitioner asserted that Wahl ’653 provided known, typical body volume ranges for iron-type clubs. Petitioner contended that combining the polymer-filled cavity of Wahl with the perimeter weights of Takahashi and the known design parameters (volumes) from Wahl ’653 rendered the claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would have been motivated to combine these references to achieve a well-known goal in golf club design: optimizing CG and MOI for improved performance. Petitioner argued a POSA would look to Takahashi's extensive perimeter weighting to improve on Wahl's basic weighting scheme. Because Wahl did not disclose specific club head volumes, a POSA would have naturally consulted a reference like Wahl ’653 for standard design parameters to complete the design, making the combination a matter of routine engineering.
  • Expectation of Success: A POSA would have had a reasonable expectation of success because the combination involved applying known techniques (perimeter weighting, cavity filling) to achieve predictable improvements in performance, such as increased forgiveness and better feel.

Ground 2: Obviousness over Wahl and Takahashi - Claims 8-9 and 12-14 are obvious over Wahl in view of Takahashi.

• Prior Art Relied Upon: Wahl (Patent 8,088,025) and Takahashi (Japanese Application # H10-277187).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground is similar to Ground 1 but omits Wahl ’653. Petitioner argued this combination was sufficient because independent claim 8, from which these claims depend, does not recite a club head body volume. Therefore, the teachings of Wahl (hollow, polymer-filled body with some weighting) and Takahashi (extensive perimeter weighting) were sufficient to render the limitations of claim 8 obvious. The equation in claim 8, relating face thickness to elastomer volume, was allegedly met by the disclosed ranges in Wahl alone.
  • Motivation to Combine: The motivation was identical to that in Ground 1: combining known elements from the same field to optimize CG and MOI, which were established goals in the art.
  • Expectation of Success: A POSA would have expected the combination to work for its intended purpose for the same reasons articulated in Ground 1.

Ground 3: Obviousness over Wahl, Wahl ’653, Takahashi, and Linphone - Claims 2-3 and 17-18 are obvious over the combination of these references.

• Prior Art Relied Upon: Wahl (Patent 8,088,025), Wahl ’653 (Patent 9,044,653), Takahashi (Japanese Application # H10-277187), and Linphone (German Utility Model No. 29715997).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination in Ground 1 and added Linphone to teach the "bonding portion" limitation recited in dependent claims 2, 3, 17, and 18. Petitioner asserted that Linphone taught bonding a shock-absorbing rubber filler to the back surface of the club face using an adhesive. This adhesive, Petitioner argued, constituted the claimed "bonding portion" or "bonding agent" that joins the elastic polymer to the club head body.
  • Motivation to Combine: A POSA, having arrived at the design from Ground 1, would have been motivated to further improve the club's sound and feel by reducing vibrations. Petitioner argued that Linphone explicitly taught using an adhesive for this purpose. Therefore, a POSA would have been motivated to incorporate Linphone's adhesive bonding method into the Wahl/Takahashi design to achieve improved shock and vibration damping.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 10-11 based on the combination of Wahl, Takahashi, and Linphone.

4. Key Claim Construction Positions

• "weight portions" (claims 1, 8, 15): Petitioner proposed this term meant "discrete pieces of material coupled to the club head for the purpose of optimizing the center of gravity and/or moment of inertia." This construction was intended to align with the prior art's use of distinct pins or screws for weighting.
• "top portion," "toe portion," etc. (claims 1, 8, 15): Petitioner argued these terms referred to the surface at the specified area of the club head (e.g., "the surface along the bottom of the club head" for "sole portion"). This was positioned against the Patent Owner's allegedly overbroad interpretation in district court litigation, where the terms were construed as large, bisected sections of the club head.
• "bonding portion" (claims 2, 10, 17): Petitioner contended this term should be construed as "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 requires a separate, discrete material, which Petitioner argued was taught by Linphone.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner advanced a central argument that the mathematical equations recited in independent claims 1, 8, 15, and dependent claim 19 were not patentably significant. It was argued that these equations merely claimed a subset of clubs resulting from routine design choices and the optimization of known variables (e.g., body volume, elastomer volume, face thickness). Using charts, Petitioner demonstrated that combining the known parameter ranges from the prior art would inherently and obviously result in club head designs that satisfied the claimed equations, suggesting they were a matter of design choice rather than an inventive step.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. While the primary reference, Wahl, was considered during prosecution, Petitioner contended that the asserted combinations were not. Specifically, the petition argued that Takahashi and Linphone were new references that taught key elements (e.g., specific perimeter weighting configurations, adhesive bonding) not present in the art before the Examiner. Therefore, the petition did not present the "same or substantially the same" arguments or art previously considered by the USPTO.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the '481 patent as unpatentable.