Taylor Made Golf Co Inc v. Parsons Xtreme Golf LLC

1. Case Identification

• Case #: IPR2019-00363
• Patent #: 9,764,208
• Filed: December 3, 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 Heads and Methods to Manufacture Golf Club Heads
• Brief Description: The ’208 patent relates to iron-type golf club heads having a hollow body with an interior cavity filled with an elastic polymer material. The design incorporates perimeter weight portions to optimize the club head’s center of gravity (CG) and moment of inertia (MOI).

3. Grounds for Unpatentability

Ground 1: Anticipation over Parsons ’336 - Claims 1, 4-9, 12-16, and 18-20 are anticipated by Parsons under 35 U.S.C. §102.

• Prior Art Relied Upon: Parsons (Patent 8,961,336).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Parsons discloses every limitation of the challenged independent claims. Parsons teaches a hollow, iron-type golf club head with an interior cavity that may be filled with an elastic polymer. It also discloses weight portions located above and below a horizontal midplane to optimize performance. For the key mathematical limitations in independent claims 1, 8, and 15, Petitioner contended that Parsons inherently discloses at least one value falling within the claimed ranges. By using the disclosed body mass (e.g., 310g), the mass of material removed to form the cavity (e.g., 100g), and the density of the steel material, Petitioner calculated that the ratio of the cavity volume to the body portion volume is approximately 0.32, which is squarely within the claimed range of 0.2 to 0.5. Similarly, using the disclosed face thickness (0.075 inch) and calculated polymer volume, Petitioner demonstrated that Parsons discloses a face thickness-to-polymer volume ratio of 0.096, which falls within the claimed range of 0.01 to 0.2.

Ground 2: Obviousness over Parsons ’336 and Linphone - Claims 2, 3, 10, 11, and 17 are obvious over Parsons in view of Linphone under 35 U.S.C. §103.

• Prior Art Relied Upon: Parsons (’336 patent) and Linphone (German Utility Model No. 29715997).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Parsons teaches the base polymer-filled, hollow-body club head of the independent claims. The challenged dependent claims add limitations requiring a "bonding portion" (claims 2, 10, 17) and specific curing states for that bonding agent (claims 3, 11). Linphone addresses these limitations by teaching the use of an adhesive (the "bonding portion") to bond a shock-absorbing rubber filler to the inner walls of a club head cavity, including the back surface of the face. Linphone’s method of applying an adhesive at an initial temperature and then injection-molding hot rubber filler discloses a two-step curing process at different temperatures, as required by claims 3 and 11.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would have been motivated to combine the references to solve a known problem. While Parsons taught filling the cavity to absorb shock, it did not specify how to optimize this or prevent the filler from shifting. Linphone explicitly taught using an adhesive bonding method to improve shock absorption and minimize undesirable vibrations. A POSA would combine Linphone’s known bonding method with Parsons's club head design to improve performance and secure the polymer filler.
  • Expectation of Success: A POSA would have had a reasonable expectation of success, as the combination involved applying a known technique (adhesive bonding) to a similar device (a hollow-body iron) to achieve the predictable result of improved shock absorption and filler stability.

• Additional Grounds: Petitioner asserted an alternative obviousness challenge (Ground 2) against claims 1, 4-9, 12-16, and 18-20 based solely on Parsons, arguing that even if Parsons does not explicitly disclose a club body made of a single homogenous material, it would have been obvious for a POSA to do so for manufacturing simplicity and cost reduction.

4. Key Claim Construction Positions

• "weight portions": Petitioner proposed construing 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." This construction emphasizes their function in adjusting club performance parameters.
• "bonding portion": Petitioner argued this term, central to Ground 2, should be construed as "an adhesive agent, distinct from the elastic polymer material and from the body portion, that joins the elastic polymer material to the body portion." This construction is based on the specification and ensures the bonding agent is a separate element, as taught by Linphone.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention was that the ’208 patent is not entitled to its claimed priority dates from earlier applications. Petitioner argued that the specific mathematical equations and ratio ranges recited in the independent claims were first disclosed in a provisional application filed on May 31, 2016. This effective filing date is crucial because it establishes Parsons, issued on February 24, 2015, as valid prior art under §102.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not deny institution under 35 U.S.C. §325(d). Although the Examiner cited Parsons during prosecution in the context of an obviousness-type double patenting rejection, it was never applied as a prior art reference against the claims. Therefore, the anticipation and obviousness arguments presented in the petition were not the same as or substantially similar to arguments previously presented to and considered by the USPTO.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’208 patent as unpatentable.