Parsons Xtreme Golf, LLC v. Taylor Made Golf Company, 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, and 11-15

2. Patent Overview

• Title: Wood-Type Golf Club Head
• Brief Description: The ’994 patent describes a wood-type golf club head with a hollow body made from a combination of metal and composite materials. The invention focuses on a multi-part construction, including a body with an upper opening, a separately formed composite crown to cover the opening, and a "veil" disposed over the junction between the crown and the body to prevent cracking and peeling.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hocknell/Masanori/Cheng - Claims 1-4, 6, 9, 11, and 13-15 are obvious over Hocknell, Masanori, and optionally Cheng.

• Prior Art Relied Upon: Hocknell (Patent 6,663,504), Masanori (Japanese Application No. 2002-165902), and Cheng (Patent 6,932,875).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hocknell taught a multi-component golf club head with nearly all the claimed structural elements, including a major body, a minor body (crown), a shoulder, and a ledge for attachment. However, Hocknell's crown extends over the sides of the club head. Masanori was cited to teach a golf club head with an upper opening and crown located entirely within the top portion of the club head body. For the "veil" limitation, Petitioner contended that under a broad construction, it is met by the obvious application of a protective coating as taught by Cheng, which discloses coating the outer surface of a similar carbon-fiber-and-metal club head with lacquer.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Hocknell and Masanori to simplify manufacturing and improve the reliability of the crown-to-body joint, as joining composites is easier along a single plane. A POSITA would be motivated to apply Cheng’s protective coating to the Hocknell/Masanori club head for the known purposes of improving aesthetics and protecting the club head from scratches, oxidation, and moisture.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success, as combining the features was a matter of applying known design principles to improve manufacturability and durability without changing the fundamental mechanical properties or performance (e.g., Coefficient of Restitution) of the club head.

Ground 2: Obviousness over Hocknell/Masanori/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 Application No. 2002-165902), and Zimmerman (a 1993 dissertation on composite joining).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Hocknell and Masanori for the same reasons as Ground 1. To teach the "veil," "tapered" edge, and multi-material limitations, Petitioner relied on Zimmerman. Zimmerman taught techniques for joining and repairing structural composites, including composite-to-metal joints. It disclosed using "scarf joints" with beveled/tapered edges to increase bonding area and using separately formed "fillers" (e.g., rolled fabric) and reinforcing patches (e.g., woven glass) to fill and cover the joint. Petitioner argued these fillers and patches constitute the claimed "veil" and teach the "tapered" and multi-material aspects of dependent claims.
  • Motivation to Combine (for §103 grounds): A POSITA would look to Zimmerman's teachings on analogous composite-to-metal joining to strengthen the joint between Hocknell's composite crown and metal body. The motivation was to reduce the risk of bond failure, prevent cracking, and provide a smooth surface for painting by filling the annular gap and applying a reinforcing patch, which directly corresponds to the stated purpose of the ’994 patent’s "veil."
  • Expectation of Success (for §103 grounds): Success was expected because Zimmerman's teachings were directly applicable to the type of joint in the modified Hocknell club head, and the modifications would not negatively impact the club's overall dynamics or performance.

Ground 3: Obviousness over Helmstetter in view of Hocknell/Masanori Combinations - Claims are obvious over Grounds 1-3 further in view of Helmstetter.

• Prior Art Relied Upon: Hocknell (Patent 6,663,504), Masanori (Japanese Application No. 2002-165902), Cheng (Patent 6,932,875), Zimmerman (1993 dissertation), Ahn (1998 journal article), and Helmstetter (Patent 6,565,452).
• Core Argument for this Ground:
  • Prior Art Mapping: This set of grounds (4-6 in the petition) was presented to address a potential claim construction of "striking plate" as being limited to a separately formed and attached piece, rather than an integral one. Hocknell taught an integral striking plate. Helmstetter was cited to explicitly teach a golf club head with a front opening into which a separately formed striking plate insert (e.g., forged titanium) is attached. This ground argued for substituting Helmstetter's separately formed striking plate into the club head body of Hocknell.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to combine Helmstetter with Hocknell to improve performance. Using a separately formed striking plate of a higher-strength material (as in Helmstetter) allows for a thinner, more flexible face, which increases the Coefficient of Restitution (COR), while using a different material for the main body (as in Hocknell) allows for optimized weight distribution and lower cost.
  • Expectation of Success (for §103 grounds): Both patents were in the same field, addressed the same performance goals (high COR), and disclosed similar manufacturing techniques. A POSITA would predictably be able to combine the two known approaches to achieve a desirable result.
• Additional Grounds: Petitioner asserted an additional challenge (Ground 3 in the petition) substituting Ahn, a 1998 journal article on composite repair using carbon fiber plies, for Zimmerman. The arguments paralleled those made for Zimmerman, presenting Ahn as an alternative teaching of a "veil" and "tapered" joints for composite structures.

4. Key Claim Construction Positions

• "a striking plate": Petitioner argued this term should be construed broadly as "the front portion of a golf club head body that is designed to strike the golf ball," encompassing both integral and separately formed plates. This construction was based on disclosures of both embodiments in the ’994 patent specification.
• "a veil disposed between the side edge of the crown and the shoulder": Petitioner proposed construing this as "a separately formed piece of lightweight material that is attached to the golf club head." Petitioner argued against an overbroad construction that would include any lightweight material like adhesive or paint, asserting the specification's focus on a sized, attached component, such as plies of composite material.
• "tapered": For claims reciting a "tapered" crown or shoulder, Petitioner argued the term requires an upwardly oriented planar profile forming an obtuse angle with the support ledge. This was based on figures and descriptions in the patent showing an "obtuse depression" formed by the tapered edges.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition asserted that it provided significant evidence of unpatentability that was not before the Examiner during the original prosecution. Specifically, none of the primary prior art references relied upon—Hocknell, Helmstetter, Cheng, Zimmerman, and Ahn—were previously considered.

6. Relief Requested

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