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

1. Case Identification

• Case #: IPR2018-01729
• Patent #: 7,261,646
• Filed: September 14, 2018
• Petitioner(s): Parsons Xtreme Golf, LLC
• Patent Owner(s): Taylor Made Golf Company, Inc.
• Challenged Claims: 1-3, 5-9, 12, 14, and 16-23

2. Patent Overview

• Title: Wood-Type Golf Club Head
• Brief Description: The ’646 patent is directed to hollow, wood-type golf club heads constructed with a multi-piece design. The invention combines a metallic body, which has an opening in its top portion, with a separately attached striking plate and a non-metallic composite crown to improve performance characteristics like the coefficient of restitution (COR).

3. Grounds for Unpatentability

Ground 1: Obviousness over Hocknell, Helmstetter, and Ezawa - Claims 1-3, 5-9, 12, 14, and 16-23 are obvious over Hocknell in view of Helmstetter and Ezawa.

• Prior Art Relied Upon: Hocknell (Patent 6,663,504), Helmstetter (Patent 6,565,452), and Ezawa (Patent 6,334,817).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hocknell taught most limitations of the challenged claims, including a wood-type golf club head with a metallic major body, a non-metallic composite crown (minor body), a high COR, and a large volume. However, Hocknell’s body was a single piece. Helmstetter was introduced to teach a separately formed metallic striking plate attached to the front of a club head body to enclose a front opening. The combination of Hocknell and Helmstetter allegedly taught all limitations except for an upper opening and crown located entirely within the top portion of the club head, as required by the Board's construction in a prior IPR. Ezawa was introduced to explicitly teach this missing element, disclosing a "crown securing opening" and a corresponding crown that are both located entirely within the top portion of the club head body.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Hocknell and Helmstetter to predictably improve club performance. Both references aimed for high COR and shared technical approaches, such as using a flexible faceplate. A POSITA would replace Hocknell’s integrally formed face with Helmstetter’s higher-strength, separately attached striking plate to enhance durability and COR. A POSITA would then incorporate Ezawa’s design because confining the crown and its opening to the top surface simplifies manufacturing and improves the reliability of the joint between the composite crown and metal body, a known engineering challenge.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved applying known solutions (separate striking plate, top-surface crown) to solve known problems (improving COR, simplifying manufacturing) without changing the fundamental principles of the components.

Ground 4: Obviousness over Hocknell, Helmstetter, Ezawa, and Eckold - Claims 9, 19, and 20 are obvious over the combination of Hocknell, Helmstetter, Ezawa, and Eckold.

• Prior Art Relied Upon: Hocknell (Patent 6,663,504), Helmstetter (Patent 6,565,452), Ezawa (Patent 6,334,817), and Eckold (Design and Manufacture of Composite Structures (1994)).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination asserted in Ground 1. To the extent the base combination did not explicitly teach the specific material properties of the composite crown recited in dependent claims 9, 19, and 20, Petitioner introduced Eckold. Eckold, a general textbook on composite materials, was cited to teach that a typical unidirectional carbon/epoxy composite has a density (1.57 g/cm³) and fiber volume fraction (50-70%) that fall squarely within the ranges recited in the challenged claims.
  • Motivation to Combine: The motivation was straightforward design optimization. Once a POSITA decided to use a graphite-epoxy composite crown (as taught by Hocknell), it would be an obvious and routine step to select a material with typical, well-established properties to ensure performance and reliability. Eckold provided these typical properties, making it a natural reference for a POSITA to consult.
  • Expectation of Success: Success was expected because implementing a composite with standard, documented physical properties into the established club head design of the primary references would be a predictable application of basic material science.

• Additional Grounds: Petitioner asserted additional obviousness challenges that substituted Lo (Patent 5,624,331) or Masanori (Japanese Patent Application No. 2002-165902) for Ezawa, arguing they similarly taught an upper opening and crown located entirely within the top portion of a club head. Further grounds combined these references with Eckold to address the dependent claims.

4. Key Claim Construction Positions

• "upper opening": Petitioner explicitly adopted the Board's construction from a prior proceeding (IPR2018-00518) involving the same patent, which required the "upper opening" to be "located entirely within the top portion" of the club head. This construction was the basis for the denial of the prior petition and the primary reason for filing this follow-on petition with new art combinations.
• "crown": For the purposes of the petition, Petitioner adopted the Board's construction from a related case (IPR2018-00657) that the "crown" must also be located entirely within the top portion of the club head. Petitioner noted its disagreement with this construction but stated its applied references teach the feature even under this narrower interpretation.

5. Arguments Regarding Discretionary Denial

• This petition was a "follow-on" filing after a previous IPR (IPR2018-00518) against the ’646 patent was denied institution. Petitioner argued that the Board should not exercise its discretion to deny the petition under 35 U.S.C. §314(a) and the General Plastics factors. The core justification was that the prior denial resulted from the Board adopting a new, "unforeseeable" claim construction for "upper opening." Petitioner contended that its original invalidity grounds were based on a reasonable, broader construction and that this new petition was filed promptly (within two months of the denial) to specifically address the Board's narrower construction with new prior art (Ezawa, Lo, Masanori) that was not part of the original combinations.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5-9, 12, 14, and 16-23 of the ’646 patent as unpatentable.