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

1. Case Identification

• 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: Hollow-Body, Polymer-Filled Golf Club Head with Perimeter Weighting
• Brief Description: The ’952 patent relates to an iron-type golf club head featuring a hollow body with an interior cavity at least partially filled with an elastic polymer material. The design incorporates perimeter weighting to optimize the club head’s center of gravity (CG) and moment of inertia (MOI).

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are obvious over Mizuno, 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 a hollow-bodied iron with an internal cavity filled with an elastic polymer to dampen vibration and lower the CG. Oku taught dispersing weight to the peripheral edge of a club head via a plurality of weights to increase MOI and improve accuracy. Gilbert was cited for teaching the specific material properties (e.g., density, tensile strength) of various stainless steels, including types suitable for the claimed body portion.
  • Motivation to Combine: A POSITA starting with Mizuno’s polymer-filled hollow body would be motivated to incorporate Oku’s perimeter weighting system to further increase the MOI, a well-known goal in club design for improving forgiveness on off-center hits. A POSITA would consult a reference like Gilbert to select a suitable stainless steel with known, predictable, and desirable performance characteristics for the combined Mizuno-Oku design.
  • Expectation of Success: Combining these known elements to achieve their known functions would have yielded predictable results, as each element was used for its intended purpose.

Ground 2: Claims 8-14 are obvious over Mizuno, Oku, Gilbert, and Bennett

• Prior Art Relied Upon: Mizuno, Oku, Gilbert (as in Ground 1), and Bennett (Application # 2010/0304887).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Mizuno/Oku/Gilbert combination by adding Bennett. Petitioner asserted that Bennett teaches arranging weight ports in distinct sets located both above and below a horizontal midplane (e.g., proximate to the top and sole portions) and using weights of different masses to fine-tune CG and MOI. This addresses limitations in independent claim 8, such as the arrangement of a first set of weight ports above a midplane and a second set below it.
  • Motivation to Combine: After arriving at the base combination of Mizuno, Oku, and Gilbert, a POSITA seeking further design optimization would have been motivated to look to Bennett. Bennett explicitly discloses the benefits of arranging interchangeable weights of varied masses at multiple locations around the club head perimeter to manipulate CG and MOI, providing a clear path to the configuration claimed in claims 8-14.
  • Expectation of Success: Incorporating Bennett’s teachings on multi-location and varied-mass weighting into the Mizuno/Oku design was a predictable design step for a POSITA seeking to enhance club performance.

Ground 3: Claims 15-20 are obvious over Wahl, Takahashi, Lahaix, and Atlas

• Prior Art Relied Upon: Wahl (Patent 8,088,025), Takahashi (Japanese Application # H10-277187), Lahaix (UK Application # 2249031), and Atlas (a commercial steel data sheet).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wahl taught a hollow iron-type club head with its cavity filled with a material like expandable foam and also disclosed the use of weighting elements. Takahashi taught a more extensive perimeter weighting system using removable screw weights arranged around the entire periphery of the club head. Lahaix taught the specific technique of filling a hollow club head via injection molding, which also served to structurally support a thin club face. Atlas, a commercial data sheet, provided specific material properties for 410 stainless steel, one of the materials Wahl suggested for use.
  • Motivation to Combine: A POSITA would combine Wahl’s basic filled-cavity design with Takahashi’s more advanced perimeter weighting for superior MOI and CG control. To fill the resulting cavity, the POSITA would adopt the known injection molding method from Lahaix for efficiency and the added benefit of face support. When selecting a specific material from those listed in Wahl, a POSITA would consult a data sheet like Atlas to find the precise material properties needed to meet the claimed ranges for density and strength.
  • Expectation of Success: The combination represents the application of known techniques (advanced weighting, injection molding) and information sources (data sheets) to a base design (Wahl) to achieve predictable improvements in performance and manufacturability.
• Additional Grounds: Petitioner asserted that claims 15-20 were also obvious over the combination of Mizuno, Oku, Gilbert, and Lahaix. This argument relied on adding Lahaix's injection molding teachings to the primary combination of Ground 1 to meet limitations related to the method of filling the cavity.

4. Key Claim Construction Positions

• "weight portions": Petitioner argued this term should be construed as “discrete pieces of material coupled to the club head for the purpose of optimizing the center of gravity and/or moment of inertia.”
• "set of weight ports": Based on the plural term "ports," Petitioner contended this should be construed as “more than one weight port.”
• "top portion," "toe portion," "sole portion," etc.: Petitioner proposed that these terms should be construed as the surface at the referenced area of the club head. This was argued to counter the Patent Owner's alleged litigation position that these terms encompass large, bisected halves of the club head, an interpretation Petitioner contended exceeds the broadest reasonable interpretation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate for all grounds. While some of the asserted prior art (Gilbert, Bennett, Wahl) were cited during prosecution, Petitioner contended they were not applied by the Examiner in the combinations presented in the petition. Petitioner argued that its combinations, which pair cited art with new, unconsidered references (e.g., Mizuno, Oku, Takahashi, Lahaix), present arguments and art that are not the same or substantially similar to those previously evaluated by the Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of Patent 9,814,952 as unpatentable.