Parsons Xtreme Golf LLC v. Taylor Made Golf Co Inc

1. Case Identification

• Case #: IPR2019-00260
• Patent #: 7,281,994
• Filed: November 9, 2018
• Petitioner(s): Parsons Xtreme Golf, LLC
• Patent Owner(s): Taylor Made Golf Company, Inc.
• Challenged Claims: 1-7, 9, 11-15

2. Patent Overview

• Title: Wood-Type Golf Club Head with Composite Crown and Surface Veil
• Brief Description: The ’994 patent describes a hollow, wood-type golf club head constructed from metal and composite materials. The invention focuses on a design where a lightweight composite crown is attached to the club head body to cover an upper opening, and a "veil" is disposed over the junction between the crown and the body to aid in preventing cracking and peeling of the club head's surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hocknell, Masanori, and Zimmerman - Claims 1-7, 9, and 11-15 are obvious over Hocknell, Masanori, and Zimmerman

• Prior Art Relied Upon: Hocknell (Patent 6,663,504), Masanori (Japanese Patent Application No. 2002-165902), and Zimmerman (a 1993 university dissertation on composite joining and repair).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hocknell taught a multi-material golf club head with nearly all claimed features, including a body with a sole, side sections, a top portion with an opening, and a composite crown (termed a "minor body") attached to a ledge. However, Hocknell’s opening and crown extended down the sides and rear of the club head. Masanori was introduced to teach the specific limitation of an upper opening and crown located entirely within the top portion of the club head. Zimmerman, which detailed methods for joining and repairing structural composites, was cited to teach both a "veil" and tapered edges. Zimmerman’s use of fillers and a "reinforcing patch" to fill and cover a beveled ("scarfed") joint was argued to be analogous to the claimed veil covering the junction between the crown and shoulder.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Hocknell and Masanori to improve manufacturability and reliability. Placing the composite crown solely on the top surface, as in Masanori, would simplify the joining process to a single plane. A POSITA would then be motivated to consult a reference like Zimmerman for established techniques on strengthening such a composite-to-metal joint. Applying Zimmerman's teachings would involve using fillers and a reinforcing patch (the "veil") to fill the resulting gap and prevent joint failure, a known problem in the art.
  • Expectation of Success: The combination involved applying known solutions to known problems. A POSITA would expect that modifying Hocknell's design with Masanori's crown placement and reinforcing the joint per Zimmerman's methods would predictably yield a more reliable and manufacturable club head without negatively impacting its primary performance characteristic, the coefficient of restitution (COR).

Ground 2: Obviousness with Separately Formed Striking Plate - Claims 1-4, 6, 9, 11, 13-15 are obvious over Hocknell and Masanori, further in view of Helmstetter and optionally Cheng

• Prior Art Relied Upon: Hocknell (Patent 6,663,504), Masanori (Japanese Patent Application No. 2002-165902), Helmstetter (Patent 6,565,452), and Cheng (Patent 6,932,875).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative based on a narrower construction of "striking plate" as a separately formed component. While Hocknell taught an integral striking plate, Petitioner argued Helmstetter explicitly disclosed a separately formed "striking plate insert" attached to a front opening in the club head body. The core combination of Hocknell's body and Masanori's top-only crown was maintained. The "veil" limitation was met either by applying a protective lacquer coating as taught by Cheng (under a broad construction of "veil") or by using composite repair patches taught by other references like Zimmerman or Ahn (under a narrow "separately formed piece" construction).
  • Motivation to Combine: A POSITA would be motivated to substitute Helmstetter's separately formed striking plate into the Hocknell/Masanori club head to improve performance. Both Hocknell and Helmstetter sought to increase COR by using stronger, thinner face materials. A POSITA would recognize that using Helmstetter's stronger forged striking plate in place of Hocknell's integral one would allow for a thinner, more flexible face, thereby increasing the COR—a primary goal in golf club design. Adding Cheng's protective coating was argued to be a simple, routine step for aesthetic and protective purposes.
  • Expectation of Success: Combining a known type of body with a known type of faceplate to achieve their respective, predictable functions would have a high expectation of success. The technical benefits of using a stronger, separately formed faceplate were well-understood in the art.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using Ahn (a 1998 journal article on composite repair) as an alternative to Zimmerman for teaching tapered joints and a separately formed "veil" comprised of carbon fiber plies. The petition also included grounds that combined Helmstetter with the Zimmerman and Ahn combinations to address the separately formed striking plate limitation in those contexts.

4. Key Claim Construction Positions

• "a striking plate": Petitioner argued this term should be construed broadly to encompass both integrally formed striking plates (as in Hocknell) and separately formed and attached plates. To account for a potentially narrower construction, Petitioner presented alternative grounds including Helmstetter, which explicitly taught a separately formed plate.
• "a top portion having an upper opening defined therein": For the purposes of the petition, Petitioner adopted the Board's narrow construction from related proceedings, requiring the opening and crown to be located entirely within the top portion of the club head. This construction made the teachings of Masanori essential to the invalidity argument.
• "a veil": Petitioner proposed construing "veil" as "a separately formed piece of lightweight material," consistent with the patent's figures. Petitioner argued against a broader construction that could include paint or adhesive. However, in the alternative, Petitioner argued that even under a broad construction, the claims would be obvious, for example, over the adhesive in Hocknell or the lacquer coating taught by Cheng.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be improper. The petition relied on significant prior art—specifically Hocknell, Helmstetter, Cheng, Zimmerman, and Ahn—that was not considered by the examiner during the original prosecution of the ’994 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 9, and 11-15 of the ’994 patent as unpatentable.