Inter Partes Review
`No. IPR2015-01236
`
`Taylor Made Golf Company, Inc.
`v.
`Triple Tee Golf, Inc.
`
`Exhibit TMG 1021
`
`
`No. IPR2015-01236
`
`Taylor Made Golf Company, Inc.
`v.
`Triple Tee Golf, Inc.
`
`Exhibit TMG 1021
`
`
`
`U.S. Patent No. 8,142,308
`
`(TMG 1001)
`
`2
`
`
`
`Independent Claims 1, 10 & 17
`
` Limitations common to claims 1, 10 & 17
`– Preamble – “virtual 3x3x3 X,Y,Z orthonormal coordinate system”
`– Golf club head with void space
`– Two/multiple weighting elements
`– One weighting element at an X2, Z2 coordinate
` Claim 1:
`– One weighting element not contiguous with face plate
`– Unequal Y-axis values
` Claim 10:
`– One weighting element between a high Y, high Z to a low Y, low Z
` Claim 17:
`– Multiple weighting elements for adjusting CG about a plane defined by
`Y=aZ
`
`(TMG 1001, 9:48-10:10, 10:41-67 & 11:28-12:34.)
`
`3
`
`
`
`Disputed Issues
`
` Claim construction
`
` Application of claims to prior art
`
`4
`
`
`
`Claim Construction Disputes
`
` “A virtual 3x3x3 X, Y, Z orthonormal coordinate system
`comprising 27 volumetric coordinates…”
`
` Weighting element “disposed at a position having a
`coordinate of X2 and a coordinate of Z2”
`
` “A golfer replaceable weighting element within said void
`space between a high Y, high Z coordinate…to a lower Y,
`lower Z coordinate…” [or “between a lower Y, lower Z
`coordinate…to a higher Y, higher Z coordinate”]
`
` “About a plane defined by Y=aZ of said club head…, where a
`is a scaler [sic] number”
`
`5
`
`
`
`“A virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates…”
`
`Claim 1: In a virtual 3x3x3 X, Y, Z orthonormal coordinate system comprising 27
`volumetric coordinates in which a face plate of a golf club head intersects a forward-most XZ
`plane of said system, in which a heel and hosel side of said golf club head intersects a YZ
`plane thereof substantially at an origin of said coordinate system, and further in which an
`increase in X-axis value from X1 to X3 corresponds to a direction of a toe of said golf club
`head, with each of X1, X2 and X3 representing one third of said golf club head in the X-axis; an
`increase in Y-axis value from Y1 to Y3 corresponds in direction to a rear of said golf club head,
`with each of Y1, Y2 and Y3 representing one third of said golf club head in the Y-axis; and an
`increase in Z-axis value from Z1 to Z3 corresponds to an increase in height above a bottom-
`most XY plane, with each of Z1, Z2 and Z3 representing one third of said golf club head in the
`Z-axis; a golf club adjustment system comprising:
`(a) said club head having a void space behind said face plate of said golf club and above said
`sole portion thereof, said void space substantially conformal in geometry to that of said club
`head; and
`(b) two selectable golfer replaceable weighting elements secured within said void space, wherein
`at least one weighting element thereof is not contiguous to any part of said face plate, and a
`selected coordinate value upon the Y-axis in any one of said weighting elements does not equal
`a selected coordinate value of Y of at least a second one of said weighting elements, and
`wherein at least one selected weighting element is recessed within said void space and
`disposed at a position having a coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 9:48-10:10.)
`
`6
`
`
`
`“A virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates…”
`
`Claim 10: In a virtual 3x3x3 X, Y, Z orthonormal coordinate system comprising 27
`volumetric coordinates in which a face plate of a golf club head intersects a forward-
`most XZ plane of said system, and in which a heel and hosel side of said club head
`intersects a YZ plane thereof substantially at an origin of said coordinate system, and
`further in which an increase in X-axis value from X1 to X3 corresponds to a direction of a
`toe of said club head, with each of X1, X2 and X3 representing one third of said club
`head in the X-axis; an increase in Y-axis value from Y1 to Y3 corresponds in direction to
`a rear of said club head, with each of Y1, Y2 and Y3 representing one third of said club
`head in the Y-axis; and an increase in Z-axis value from Z1 to Z3 corresponds to an
`increase in height above a bottom-most XY plane with each of Z1, Z2 and Z3
`representing one third of said club head in the Z-axis; a golf club adjustment system
`comprising:
`(a) said club head having a void space behind said face portion of said club head and
`above said sole portion thereof, said void space substantially conformal in geometry to
`that of said club head; and
`(b) a golfer replaceable weighting element within said void space between a higher Y,
`higher Z coordinate, to minimize ballooning, to a lower Y, lower Z coordinate to maximize
`said ballooning; and
`(c) a golfer replaceable weighting recessed within said void space at a position having a
`coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 10:41-67.)
`
`7
`
`
`
`“A virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates…”
`
`Claim 17: A system for adjusting the performance of a golf club including a golf club
`having a center of gravity and to which a virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates may be applied such that a face plate of
`said club head intersects a forward-most XZ plane of said system, and in which a heel
`and hosel side of said club head intersects a YZ plane thereof substantially at an origin
`of said coordinate system, and further in which an increase in X-axis value from X1 to X3
`corresponds to a direction of a toe of said club head, with each of X1, X2 and X3
`representing one third of said club head in the X-axis; an increase Y-axis value from Y1
`to Y3 corresponds in direction to a rear of said club head, with each of Y1, Y2 and Y3
`representing one third of said club head in the Y-axis; and an increase in Z-axis value
`from Z1 to Z3 corresponds to an increase in height above a bottom-most XY plane, with
`each of Z1, Z2 and Z3 representing one third of said club head in the Z-axis; the system
`comprising:
`(a) at least one void space within said club head, said void space substantially conformal
`in geometry to that of said club head; and
`(b) user-replaceable weighting elements for adjusting said center of gravity about a plane
`defined by Y=aZ of said club head by increasing a mass of said weighting element at a
`point within said plane defined by Y=aZ, where a is a scaler number, wherein at least one
`of said weighting elements is recessed within said void space and disposed at a position
`having a coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 11:28-12:34.)
`
`8
`
`
`
`“A virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates…”
`
` Patent Owner: Each edge must have same unit length
`– Dictionary Definition: “set of vectors having the properties that
`any two vectors are perpendicular and that each vector has a
`length of one unit”
`
` Petitioner: Total length of each axis is equal to length of
`club head along that axis and unit length along each axis
`is divided into thirds.
`– Construction is consistent with:
`• Specification
`• Prosecution history
`• Prior reexamination proceedings
`
`(PO Response, pp. 2-4; Pet. Reply, pp. 2-6.)
`
`9
`
`
`
`“A virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates…”
`
` Specification:
`– No patent embodiments include coordinate systems with equal
`unit lengths
`– Total length of each axis is equal to length of club head along
`that axis
`– Unit length along each axis is total length divided into thirds
`
`(Pet. Reply, pp. 2-4.)
`
`10
`
`
`
`“A virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates…”
`
` Prosecution History:
`– Patent Owner applied a 3x3x3 coordinate system to drawing
`figures of cited reference (Sumikawa)
`– Used same coordinate scheme as patent embodiments
`– As shown, coordinate system has unequal unit lengths
`
`(Pet. Reply, p. 5.)
`
`11
`
`
`
`“A virtual 3x3x3 X, Y, Z orthonormal coordinate
`system comprising 27 volumetric coordinates…”
`
` Prior Reexaminations of ‘660 and ‘667 patents:
`– Petitioner used same scheme as patent embodiments to apply
`coordinate system to prior art
`– Petitioner’s claim charts based on these coordinate systems
`were relied on in:
`• Examiner’s Right of Appeal Notice finally rejecting ‘660 patent
`claims, and
`• Board’s Decision on Appeal affirming rejection of ‘667 patent claims
`– Patent Owner never objected
`
`(Pet. Reply, pp. 5 & 6.)
`
`12
`
`
`
`Weighting element “disposed at a position having a
`coordinate of X2 and a coordinate of Z2”
`
`Claim 1: In a virtual 3x3x3 X, Y, Z orthonormal coordinate system comprising 27 volumetric
`coordinates in which a face plate of a golf club head intersects a forward-most XZ plane of said
`system, in which a heel and hosel side of said golf club head intersects a YZ plane thereof
`substantially at an origin of said coordinate system, and further in which an increase in X-axis value
`from X1 to X3 corresponds to a direction of a toe of said golf club head, with each of X1, X2 and X3
`representing one third of said golf club head in the X-axis; an increase in Y-axis value from Y1 to Y3
`corresponds in direction to a rear of said golf club head, with each of Y1, Y2 and Y3 representing one
`third of said golf club head in the Y-axis; and an increase in Z-axis value from Z1 to Z3 corresponds to
`an increase in height above a bottom-most XY plane, with each of Z1, Z2 and Z3 representing one
`third of said golf club head in the Z-axis; a golf club adjustment system comprising:
`(a) said club head having a void space behind said face plate of said golf club and above said
`sole portion thereof, said void space substantially conformal in geometry to that of said club
`head; and
`(b) two selectable golfer replaceable weighting elements secured within said void space, wherein
`at least one weighting element thereof is not contiguous to any part of said face plate, and a
`selected coordinate value upon the Y-axis in any one of said weighting elements does not equal
`a selected coordinate value of Y of at least a second one of said weighting elements, and
`wherein at least one selected weighting element is recessed within said void space and
`disposed at a position having a coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 9:48-10:10.)
`
`13
`
`
`
`Weighting element “disposed at a position having a
`coordinate of X2 and a coordinate of Z2”
`
`Claim 10: In a virtual 3x3x3 X, Y, Z orthonormal coordinate system comprising 27
`volumetric coordinates in which a face plate of a golf club head intersects a forward-most XZ
`plane of said system, and in which a heel and hosel side of said club head intersects a YZ
`plane thereof substantially at an origin of said coordinate system, and further in which an
`increase in X-axis value from X1 to X3 corresponds to a direction of a toe of said club head,
`with each of X1, X2 and X3 representing one third of said club head in the X-axis; an increase
`in Y-axis value from Y1 to Y3 corresponds in direction to a rear of said club head, with each of
`Y1, Y2 and Y3 representing one third of said club head in the Y-axis; and an increase in Z-axis
`value from Z1 to Z3 corresponds to an increase in height above a bottom-most XY plane with
`each of Z1, Z2 and Z3 representing one third of said club head in the Z-axis; a golf club
`adjustment system comprising:
`(a) said club head having a void space behind said face portion of said club head and
`above said sole portion thereof, said void space substantially conformal in geometry to
`that of said club head; and
`(b) a golfer replaceable weighting element within said void space between a higher Y,
`higher Z coordinate, to minimize ballooning, to a lower Y, lower Z coordinate to maximize
`said ballooning; and
`(c) a golfer replaceable weighting recessed within said void space at a position
`having a coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 10:41-67.)
`
`14
`
`
`
`Weighting element “disposed at a position having a
`coordinate of X2 and a coordinate of Z2”
`
`Claim 17: A system for adjusting the performance of a golf club including a golf club
`having a center of gravity and to which a virtual 3x3x3 X, Y, Z orthonormal coordinate system
`comprising 27 volumetric coordinates may be applied such that a face plate of said club head
`intersects a forward-most XZ plane of said system, and in which a heel and hosel side of said
`club head intersects a YZ plane thereof substantially at an origin of said coordinate system,
`and further in which an increase in X-axis value from X1 to X3 corresponds to a direction of a
`toe of said club head, with each of X1, X2 and X3 representing one third of said club head in
`the X-axis; an increase Y-axis value from Y1 to Y3 corresponds in direction to a rear of said
`club head, with each of Y1, Y2 and Y3 representing one third of said club head in the Y-axis;
`and an increase in Z-axis value from Z1 to Z3 corresponds to an increase in height above a
`bottom-most XY plane, with each of Z1, Z2 and Z3 representing one third of said club head in
`the Z-axis; the system comprising:
`(a) at least one void space within said club head, said void space substantially conformal
`in geometry to that of said club head; and
`(b) user-replaceable weighting elements for adjusting said center of gravity about a plane
`defined by Y=aZ of said club head by increasing a mass of said weighting element at a
`point within said plane defined by Y=aZ, where a is a scaler number, wherein at least
`one of said weighting elements is recessed within said void space and disposed at
`a position having a coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 11:28-12:34.)
`
`15
`
`
`
`Weighting element “disposed at a position having a
`coordinate of X2 and a coordinate of Z2”
`
` Patent Owner: Requires “cell-specific weighting,” i.e., weight may
`not overlap or span multiple X and Z coordinates.
`
` Petitioner: Satisfied by weighting element that spans multiple
`coordinates, including specified coordinate
`
` Board: “Patent Owner does not provide persuasive reasoning as
`to why the phrase, ‘weighting element…disposed at a position
`having a coordinate of X2 and a coordinate of Z2,’ must be read to
`exclude weighting elements that span multiple coordinates, such as
`the X2, Z1 location.”
`– “[W]e interpret ‘weighting element…disposed at a position having a coordinate of
`X2 and a coordinate of Z2’ on this record, to include weighting elements that
`span other coordinates, including the X2, Z1 coordinate.”
`
`(PO Prelim. Response, p. 3-4; Petition, p. 5; Inst. Dec., pp. 10-11.)
`
`16
`
`
`
`Weighting element “disposed at a position having a
`coordinate of X2 and a coordinate of Z2”
`
` Claim language does not preclude weighting element from
`spanning multiple coordinates
`
` Consistent with ‘660 patent claims:
`– Dependent claim 7 - Limitation of claim 1 (“weighting means between a
`high Y [Y3], high Z [Z3] coordinate…to a low Y [Y1], low Z [Z1]
`coordinate”) is satisfied “by securing a strip-like weighting element over
`said void space at about a (Y2-Y3, Z2) position….”
`
`(Petition, pp. 5-6.)
`
`17
`
`
`
`“A golfer replaceable weighting element within said void space
`between a high Y, high Z [lower Y, lower Z] coordinate …to a
`lower Y, lower Z [higher Y, higher Z] coordinate”
`Claim 10: In a virtual 3x3x3 X, Y, Z orthonormal coordinate system comprising 27
`volumetric coordinates in which a face plate of a golf club head intersects a forward-most XZ
`plane of said system, and in which a heel and hosel side of said club head intersects a YZ
`plane thereof substantially at an origin of said coordinate system, and further in which an
`increase in X-axis value from X1 to X3 corresponds to a direction of a toe of said club head,
`with each of X1, X2 and X3 representing one third of said club head in the X-axis; an increase
`in Y-axis value from Y1 to Y3 corresponds in direction to a rear of said club head, with each of
`Y1, Y2 and Y3 representing one third of said club head in the Y-axis; and an increase in Z-axis
`value from Z1 to Z3 corresponds to an increase in height above a bottom-most XY plane with
`each of Z1, Z2 and Z3 representing one third of said club head in the Z-axis; a golf club
`adjustment system comprising:
`(a) said club head having a void space behind said face portion of said club head and
`above said sole portion thereof, said void space substantially conformal in geometry to
`that of said club head; and
`(b) a golfer replaceable weighting element within said void space between a higher
`Y, higher Z coordinate, to minimize ballooning, to a lower Y, lower Z coordinate to
`maximize said ballooning; and
`(c) a golfer replaceable weighting recessed within said void space at a position having a
`coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 10:41-67.)
`
`18
`
`
`
`“A golfer replaceable weighting element within said void space
`between a high Y, high Z [lower Y, lower Z] coordinate …to a
`lower Y, lower Z [higher Y, higher Z] coordinate”
`
`Claim 11: The system as recited in claim 10 further comprising:
`(d) at least one of the following weighting elements, in which a selected
`value of X, Y or Z does not include a value of Y of said weighting element
`(b), said at least one weighting element comprising:
`(i) a weighting element, substantially within said void space,
`between a lower Y, lower Z coordinate, to increase backspin, to a
`higher Y, higher Z coordinate to decrease backspin; or
`(ii) a weighting element substantially within said void space, between
`a lower Z-coordinate to increase trajectory to a higher Z-coordinate to
`decrease trajectory.
`
`(TMG 1001, 11:1-13.)
`
`19
`
`
`
`“A golfer replaceable weighting element within said void space
`between a high Y, high Z [lower Y, lower Z] coordinate …to a
`lower Y, lower Z [higher Y, higher Z] coordinate”
`
` Patent Owner: Requires concurrent adjustment of weights along Y
`and Z coordinates
` Petitioner: Satisfied by providing a weighting element in at least one
`position within the specified range
`– No requirement of weight adjustability
`– In reexamination of ‘667 patent with similar claim language, Board
`concluded that the claims “do not require adjustability” or embody “any
`requirement of a capability of adjusting or moving a weight along or within
`the claimed range.”
`
`(PO Response, p. 10; Petition, pp. 6-8; Pet. Reply, pp. 10 & 11.)
`
`20
`
`
`
`“About a plane defined by Y=aZ of said club
`head…, where a is a scaler [sic] number”
`
`Claim 17: A system for adjusting the performance of a golf club including a golf club
`having a center of gravity and to which a virtual 3x3x3 X, Y, Z orthonormal coordinate system
`comprising 27 volumetric coordinates may be applied such that a face plate of said club head
`intersects a forward-most XZ plane of said system, and in which a heel and hosel side of said
`club head intersects a YZ plane thereof substantially at an origin of said coordinate system,
`and further in which an increase in X-axis value from X1 to X3 corresponds to a direction of a
`toe of said club head, with each of X1, X2 and X3 representing one third of said club head in
`the X-axis; an increase Y-axis value from Y1 to Y3 corresponds in direction to a rear of said
`club head, with each of Y1, Y2 and Y3 representing one third of said club head in the Y-axis;
`and an increase in Z-axis value from Z1 to Z3 corresponds to an increase in height above a
`bottom-most XY plane, with each of Z1, Z2 and Z3 representing one third of said club head in
`the Z-axis; the system comprising:
`(a) at least one void space within said club head, said void space substantially conformal
`in geometry to that of said club head; and
`(b) user-replaceable weighting elements for adjusting said center of gravity about a
`plane defined by Y=aZ of said club head by increasing a mass of said weighting
`element at a point within said plane defined by Y=aZ, where a is a scaler number,
`wherein at least one of said weighting elements is recessed within said void space and
`disposed at a position having a coordinate of X2 and a coordinate of Z2.
`
`(TMG 1001, 11:28-12:34.)
`
`21
`
`
`
`“About a plane defined by Y=aZ of said club
`head…, where a is a scaler [sic] number”
` Patent Owner:
`– Mathematical representation of claim 10
`• Phrase “higher Y, higher Z…to lower Y, lower Z” replaced by formula Y=aZ
`– Encompasses “all possible angulations” of diagonal line shown in Fig. 5
`– Requires more precise relative weighting of Y versus Z elements
`
` Petitioner:
`– Defines a plane in which Y is a linear function of Z
`– Means near a plane with positive or negative slope that extends
`somewhere in club head
`– No language requiring more precise relative weighting of Y versus Z
`elements
`– Plane can vary from horizontal to vertical
`• Means it is satisfied by placing a weight anywhere within club head
`
`(PO Response, p. 16; Petition, pp. 12-13; Pet. Reply, p. 22.)
`
`22
`
`
`
`The Claims of the ‘308 Patent are
`Invalid Over the Prior Art
`
` Claims 1, 4-6, 8-13, 15-17 & 20 – anticipated by
`Parente
`
` Claims 3 & 19 – obvious over Parente
`
` Claims 2, 3, 7, 14, 18 & 19 – obvious over Parente
`and Ellingham
`
` Claims 8 & 15 – anticipated by Beach
`
`(Petition, p. 18; Inst. Decision, p. 28.)
`
`23
`
`
`
`Claims 1, 4-6, 8-13, 15-17 & 20 –
`Anticipated by Parente
` Summary of X, Y and Z coordinate positions of
`Parente’s weights:
`
`(Petition, pp. 19-20.)
`
`24
`
`
`
`Claims 1, 4-6, 8-13, 15-17 & 20 –
`Anticipated by Parente
` Petitioner applied virtual 3x3x3 coordinate system to Parente
`consistent with claim preambles
` Golf club head 10 has void space
` Three weighting elements – screws 14, 16,18
` Weight 16 in bore 42 positioned at X2, Z2 coordinate
` Claim 1:
`– Screw weights/threaded bores not contiguous with face plate
`– Y values for screws 14, 16, 18 are all different
` Claim 10:
`– Any screw in bore 40, medium/ long screw in bore 41, or longer screw in
`bore 42 is “between higher Y, high Z… to lower Y, lower Z coordinate”
` Claim 17:
`– Screw weight in any of threaded bores 41, 42, 43 will adjust CG of club
`head about a plane defined by Y=aZ
`(Petition, pp. 20-27.)
`
`25
`
`
`
`Claims 1, 4-6, 8-13, 15-17 & 20 –
`Anticipated by Parente
`
` No dispute that Parente satisfies added limitations of dependent
`claims 4-6, 8, 9, 12, 13, 15, 16 & 20
` Petition, pp. 27-33
` PO Response, pp. 16-17
`
` Patent Owner’s perimeter weighting argument misplaced with
`respect to these claims
`
`(Petition, pp. 27-33; PO Response, pp. 5-6 & 16-17; Pet. Reply, pp. 8-10.)
`
`26
`
`
`
`Claims 3 & 19 – Obvious over Parente
`
` Obvious to modify Parente to include screw having
`coordinates of X2, Z2 and Y1
`– Parente states that additional screws may be used in alternative
`embodiments (TMG 1003, 4:64 – 5:2.)
`– Parente states that screw of any length can be used in any
`location (e.g., including a screw having Z2 coordinate) (TMG
`1003, 4:16-18.)
`
`(Petition, pp. 33-35.)
`
`27
`
`
`
`Claims 2, 3, 7, 14, 18 & 19 – Obvious Over
`Parente in view of Ellingham
` Summary of X, Y and Z coordinate positions of
`Ellingham’s weights:
`
`(Petition, p. 37.)
`
`28
`
`
`
`Claims 2, 3, 7, 14, 18 & 19 – Obvious Over
`Parente in view of Ellingham
`
` Ellingham teaches a golf club head having a screw and one or
`more separately attached weights/collars
`
` Obvious to select and position screw and collars to avoid
`interference with other screw weights
`
` Modification provides more precise weight adjustment and
`allows adjustment of CG between front and rear of club head
`
` Additional screw added to Parente would have Ellingham’s
`coordinates of X2, Y1-Y2-Y3, Z1-Z2 (claims 2, 3, 18 & 19)
`
` Collars would be integral with part of screw (claims 7 & 14)
`
`(Petition, pp. 37-42.)
`
`29
`
`
`
`Claims 2, 3, 7, 14, 18 & 19 – Obvious Over
`Parente in view of Ellingham
` Screw weights would not be not contiguous to face plate
`(claims 1 and 19)
`– Fig. 2 of Parente - screw weights not contiguous with face plate 20
`– Fig. 3 of Ellingham - screw 25 and collars 24 not contiguous with face
`plate 10
`
`(Petition, pp. 41-42; Pet. Reply, p. 19.)
`
`30
`
`
`
`Claims 2, 3, 7, 14, 18 & 19 – Obvious Over
`Parente in view of Ellingham
`
` No requirement to physically combine references
`
` Test is what combined teachings of references would have
`suggested to PHOSITA
`
` Parente not limited to perimeter weighting
`• Reference to a co-pending application = alternative materials
`for golf club head, not weight locations (TMG 1003, 5:3-10)
`• Parente distinguishes itself from perimeter weighting disclosed
`in the co-pending application (TMG 1003, 5:10-17)
`• Explains that both weighting systems can be used in same club
`head (TMG 1003, 5:15-18)
`
`(Pet. Reply, pp. 8-10 & 15-18.)
`
`31
`
`
`
`Claims 8 & 15 – Anticipated by Beach
`
` Summary of X, Y and Z coordinate positions of
`Beach’s weights:
`
`(Petition, pp. 42-43.)
`
`32
`
`
`
`Claims 8 & 15 – Anticipated by Beach
`
` Claims 8 & 15 depend from claims 1 & 10
` Beach satisfies claims 1 & 10
`– Petitioner applied virtual 3x3x3 coordinate system to
`Beach consistent with claim preambles
`– Golf club head 2 has void space
`– Two weighting elements – weights 11 and 21
`– Weight 11 in sleeve 5 positioned at X2, Z2 coordinate
`– Claim 1:
`• Weights 11 & 21 not contiguous with face plate
`• Weight 11 has Y1 coordinate & weight 21 has Y2 coordinate
`– Claim 10:
`• Weight 11 in sleeve 6 has Y1 coordinate and any Z coordinate and
`between higher Y, higher Z to lower Y, lower Z coordinate
`
`(Petition, pp. 43-48.)
`
`33
`
`
`
`Claims 8 & 15 – Anticipated by Beach
`
` No dispute that Beach satisfies added limitations of claims 8 & 15
`– PO only disputes one limitation in each of claims 1 & 10
` Claim 1 – Weighting elements with unequal Y coordinate values
`– Sleeve 6 has Y2 coordinate and abuts up against and possibly extends
`into Y1 coordinate
`
`– Sleeve 5 positioned in front of sleeve 6 and has Y1 coordinate
`
`– Thus, weight 21 in sleeve 6 has Y2 coordinate, which is not equal to Y
`coordinate (Y1) of weight 11 in sleeve 5
`
`(Petition, pp. 44-47; PO Response, pp. 11-13; Pet. Reply, pp. 22-24.)
`
`34
`
`
`
`Claims 8 & 15 – Anticipated by Beach
`
` Beach satisfies requirement of weighting element between higher Y,
`higher Z coordinate to lower Y, lower Z coordinate
`
`– Weight 11 in sleeve 6 has Y1 coordinate and any Z coordinate
`
`– Positioning weight 11 in bottom of sleeve 6 results in weight 11
`having coordinates of Y1 and Z1
`
`(Petition, pp. 47-48; Pet. Reply, pp. 24-25.)
`
`35
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