Taylor Made Golf Company, 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 hollow-bodied, iron-type golf club heads with an interior cavity filled with an elastic polymer. The design uses perimeter weighting and specific mathematical relationships between the club head’s volumes and thicknesses to optimize performance characteristics like center of gravity and moment of inertia.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 4-9, 12-16, and 18-20 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 the ’336 patent discloses all elements of the independent claims, including a hollow, iron-type club head, perimeter weights, and a cavity that may be filled with an elastic polymer. The central contention was that Parsons '336 inherently discloses the claimed mathematical ratios (e.g., 0.2≤Ve/Vb≤0.5). Petitioner used disclosed mass values from Parsons '336 for the club head body (e.g., 200-310 grams) and the material removed to form the cavity (approx. 100 grams). By assuming a single, homogenous material (steel) with a constant density, Petitioner calculated a volume ratio (e.g., 100g / 310g = 0.32) that falls squarely within the claimed range, thereby anticipating the claim.
  • Key Aspects: The argument relied on the legal principle that a prior art reference’s disclosure of a single point or species within a claimed range is sufficient to anticipate the entire range.

Ground 2: Obviousness of Claims 1, 4-9, 12-16, and 18-20 under 35 U.S.C. §103

• Prior Art Relied Upon: Parsons (Patent 8,961,336).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to anticipation. Petitioner argued that if Parsons '336 was found not to explicitly disclose a body made of a single, homogenous material (a premise for the direct ratio calculation in Ground 1), it would have been obvious for a person of ordinary skill in the art (POSITA) to construct it that way.
  • Motivation to Combine: A POSITA would be motivated to make the body portion from a single, steel-based material for reasons of manufacturing simplicity and cost-effectiveness, both of which were conventional goals in the art. This obvious modification would result in a club head with a constant density, leading directly to the claimed ratios disclosed in Parsons '336.
  • Expectation of Success: A POSITA would have a high expectation of success, as fabricating a golf club head from a single material is a standard, routine, and predictable manufacturing process.

Ground 3: Obviousness of Claims 2, 3, 10, 11, and 17 over Parsons '336 in view of Linphone

• Prior Art Relied Upon: Parsons (Patent 8,961,336) and Linphone (German Utility Model No. 29715997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Parsons '336 teaches the base hollow club head with a polymer-filled cavity. The challenged dependent claims add limitations requiring a "bonding portion" to bond the polymer to the face portion and, in some claims, a bonding agent with specific cure states. Petitioner argued Linphone supplies these elements, as it explicitly teaches applying an adhesive (the bonding portion) to the inner cavity walls, including the back of the face, before adding a shock-absorbing filler. Linphone also describes applying the adhesive at one temperature and injection-molding the filler at a higher temperature, disclosing different cure states.
  • Motivation to Combine: A POSITA seeking to improve the shock-absorbing qualities and durability of the Parsons '336 design would be motivated to consult references like Linphone. Linphone’s method of bonding the filler material prevents unwanted shifting and improves vibration dampening. A POSITA would combine Linphone's known bonding technique with Parsons' club head in a simple combination of known elements to achieve the predictable result of improved feel and performance.
  • Expectation of Success: Success was highly predictable because applying adhesives with different cure states to bond components in a golf club was a well-understood and routine practice in the industry.

4. Key Claim Construction Positions

• "weight portions" (claims 1, 8, 15): Petitioner proposed this term means "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 was argued to be grounded in the specification’s description of using high-density materials like tungsten to optimize the club head’s physical properties.
• "top portion," "toe portion," etc. (claims 1, 8, 15): Petitioner contended these terms refer to the respective surfaces of the club head, consistent with their depiction in the patent's figures. This position was framed as contrary to the Patent Owner's alleged litigation position that these "portions" encompass large, bisected sections of the entire club head.
• "bonding portion" (claims 2, 10): Petitioner argued this term must be construed as "an adhesive agent, distinct from the elastic polymer material and from the body portion." This construction emphasizes that the bonding portion is a separate, discrete material applied between the components, not an inherent property of the filler or body.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: The petition’s foundational argument was that the ’208 patent is not entitled to its claimed priority dates. Petitioner asserted that the specific mathematical ratios and equations recited in the independent claims lacked written description support in the priority chain until a provisional application filed on May 31, 2016. Establishing this later effective filing date was critical for making Parsons '336 (issued February 2015) available as prior art under 35 U.S.C. §102.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It was contended that although the Examiner cited the Parsons ’336 patent during prosecution, it was only in the context of an obviousness-type double patenting rejection. Petitioner asserted this is not a substantive prior art rejection on the merits, and therefore the anticipation and obviousness arguments presented in the petition were not the "same or substantially the same" as those previously considered by the USPTO.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,764,208 as unpatentable.