Taylor Made Golf Co Inc v. Parsons Xtreme Golf LLC

1. Case Identification

• Case #: IPR2018-01542
• Patent #: 9,814,952
• Filed: August 17, 2018
• Petitioner(s): Taylor Made Golf Company, Inc.
• Patent Owner(s): Parsons Xtreme Golf, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Golf Club Head
• Brief Description: The ’952 patent relates to iron-type golf club heads featuring an interior cavity at least partially filled with an elastic polymer material and a plurality of weight portions arranged along the club head’s periphery to optimize performance characteristics such as center of gravity (CG) and moment of inertia (MOI).

3. Grounds for Unpatentability

Ground 1: Obviousness over Mizuno, Oku, and Gilbert - Claims 1-7 are obvious over Mizuno in view of Oku and Gilbert.

• Prior Art Relied Upon: Mizuno (Japanese Application # 2004-313777), Oku (Japanese Application # H10-127832), and Gilbert (Patent 7,153,222).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mizuno taught the core limitations of independent claim 1, including an iron golf club head with a hollow body, an interior cavity, and an elastic body (polymer) filling that cavity to improve feel and sound. To add the claimed plurality of weight ports, Petitioner asserted that Oku taught dispersing cylindrical weights in insertion holes along the periphery of a cavity-back iron to increase MOI. Gilbert was introduced to provide the specific stainless steel material properties (density, tensile strength, hardness) recited in claim 1 and its dependent claims, which were not detailed in Mizuno or Oku.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Mizuno’s polymer-filled head with Oku’s perimeter weighting system to concurrently achieve the known benefits of improved feel (from the polymer) and optimized performance (higher MOI from the weights). As Mizuno only generically mentioned stainless steel, a POSA would have been motivated to consult a reference like Gilbert, which specified material properties for stainless steels commonly used in iron-type clubs, to select an optimal material.
  • Expectation of Success: Petitioner contended that a POSA would have had a reasonable expectation of success, as the combination involved applying well-known design principles (polymer filling, perimeter weighting) to achieve their predictable and desired effects on a golf club head.

Ground 2: Obviousness over Mizuno, Oku, Gilbert, and Bennett - Claims 8-14 are obvious over Mizuno in view of Oku, Gilbert, and Bennett.

• Prior Art Relied Upon: Mizuno, Oku, Gilbert, and Bennett (Application # 2010/0304887).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Mizuno/Oku/Gilbert combination to address the specific weight port configurations of independent claim 8, which required a first set of ports located above a horizontal midplane and a second set below it. While Mizuno and Oku provided the polymer-filled cavity and general perimeter weighting, Petitioner argued Bennett supplied the motivation for this specific arrangement. Bennett taught club heads with interchangeable weight elements at various locations around the periphery—including top, toe, sole, and heel portions—to manipulate CG and MOI and make the club more forgiving.
  • Motivation to Combine: A POSA seeking to further optimize the CG and MOI of the Mizuno/Oku club head would have looked to Bennett for its teachings on arranging weights across different regions of the club head. Adding Bennett’s teachings to arrange weights both above and below the midplane was argued to be a predictable design choice to achieve more granular control over performance characteristics.

Ground 3: Obviousness over Wahl, Takahashi, Lahaix, and Atlas - Claims 15-20 are obvious over Wahl in view of Takahashi, Lahaix, and Atlas.

• Prior Art Relied Upon: Wahl (Patent 8,088,025), Takahashi (Japanese Application # H10-277187), Lahaix (UK Application # 2249031), and Atlas ("Atlas Steel Grade Data Sheet: 410").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that this alternative combination also rendered the claims obvious. Wahl taught a hollow, iron-type golf club head with its cavity filled with a filler material (e.g., polymer) and the use of weighting elements for CG placement. Takahashi disclosed a more extensive perimeter weighting system, with screw weights in ports arranged around nearly the entire periphery of the club head back. Lahaix taught the specific method of filling a hollow club head by injection molding, which also provided structural support to a thin face—a limitation of claim 15. Finally, Atlas, a commercial data sheet, provided the specific material properties for 410 stainless steel, a material identified as suitable in Wahl.
  • Motivation to Combine: A POSA would combine Wahl’s filled-cavity design with Takahashi’s more comprehensive perimeter weighting scheme to further optimize CG and MOI. To implement the filling, a POSA would have been motivated to use a known technique like injection molding, as taught by Lahaix, especially to support the thin face claimed. When selecting a specific material from those listed in Wahl, a POSA would naturally consult a data sheet like Atlas to find a stainless steel with the required physical properties.

4. Key Claim Construction Positions

• "weight portions" (claims 1, 15): Petitioner argued a POSA would interpret this term to mean "discrete pieces of material coupled to the club head for the purpose of optimizing the center of gravity and/or moment of inertia."
• "top portion," "toe portion," etc. (claims 1, 8, 15): Petitioner contended these terms refer to the surface at the specified area of the club head. This construction was presented to counter the Patent Owner's allegedly overbroad interpretation in parallel district court litigation that each "portion" constitutes half of the club head.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. Although some references (Gilbert, Bennett) were cited during prosecution, they were not applied in the same manner or in the combinations asserted in the petition. For instance, Gilbert was used by the examiner only to show that certain material properties were well-known in the context of a double-patenting rejection, not in combination with Mizuno and Oku to invalidate the primary structural limitations. Petitioner asserted that its grounds relied on new combinations of prior art not previously considered by the USPTO.

6. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’952 patent as unpatentable.