Trials@uspto.gov
`571.272.7822
`
`Paper No. 15
`July 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PARSONS XTREME GOLF, LLC,
`
`Petitioner,
`
`V.
`
`TAYLOR MADE GOLF COMPANY, INC.,
`Patent Owner.
`
`Case IPR2018-00516
`
`Patent 8,932,150 B2
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`35 US. C. § 314
`
`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`1.
`
`INTRODUCTION
`
`Parsons Xtreme Golf, LLC (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) requesting institution of inter partes review of claims 1—4, 6-12, 14—
`
`16, 18, and 19 ofU.S. Patent No. 8,932,150 B2 (Ex. 1001, “the
`
`’150 patent”). Taylor Made Golf Company, Inc. (“Patent Owner”) filed a
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`Preliminary Response (Paper 10, “PO Prelim. Resp”). We have jurisdiction
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`under 35 U.S.C. § 314(a), which provides that an inter partes review may
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`not be instituted “unless .
`
`.
`
`. the information presented in the petition .
`
`.
`
`.
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`shows that there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.”
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`Moreover, a decision to institute'under 35 U.S.C. § 314 may not institute on
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`fewer than all claims challenged in the petition. SAS Inst, Inc. v. Iancu, 138
`
`S. Ct. 1348, 1.359—60 (2018).
`
`Upon consideration of the Petition and the Preliminary Response we
`
`conclude the information presented shows there is a reasonable likelihood
`
`that Petitioner would prevail in showing the unpatentability of at least one
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`challenged claim. Accordingly, we authorize an inter partes review to be
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`instituted as to all challenged claims of the ’150 patent on all grounds raised
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`in the Petition. Our factual findings and conclusions at this stage of the
`
`proceeding are based on the evidentiary record developed thus far (prior to
`
`Patent Owner’s Response). This is not a final decision as to patentability of
`
`claims for which inter partes review is instituted. Any final decision will be
`
`based on the record, as fully developed during trial.
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`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`II.
`
`BACKGROUND
`
`A.
`
`The ’150 Patent
`
`The ’150 patent, titled “Golf Club Head,” issued January 13, 2015,
`
`from US. Application No. 13/960,677, filed August 6, 2013. Ex. 1001,
`
`[21], [22], [54]. The ’150 patent generally relates to “a golf club head made
`
`of multiple pieces that are welded together.” Ex. 1001, 1:15—17. Patent
`
`Owner further explains the basic pieces of the claimed iron-type club: “the
`
`striking plate is the ‘first piece,’ the main body of the cavity-back iron is the
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`‘second piece,’ and the badge [is] the ‘third piece.” PO Prelim. Resp. 3.
`
`Figure 1A of the ’150 patent is reproduced below:
`
`100
`
`\
`
`126
`
` 114
`
`Fig. 1A
`
`Figure 1A illustrates an exploded View of golf club head 100, “including a
`
`first piece striking plate 118 and a second piece 126.” Ex. 1001, 2:52—53,
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`

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`IPR2018-00516
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`Patent 8,932,150 B2
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`3:27—28. Striking plate 118 includes “first contact surface 122 extending
`
`away from a perimeter of the front surface 120.” Id. at 3:37—39. Second
`
`piece 126 includes cavity back wall 113, front opening 114, and second
`
`contact surface 116. Id. at 3:40—43.
`
`Figure 1B of the ’150 patent is reproduced below.
`
`
`
`Fig. IB
`
`Figure 1B illustrates golf club head 100 after striking plate 118 is inserted
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`into second piece 126 and held in place by front weld bead 128 “formed
`
`from a continuous laser weld or plasma weld that extends along a contact
`interface between the first contact surface 122 and second contact surface
`
`116.” Id. at 3:44—49.
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`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`Figures 3A and 3B of the ’150 patent are reproduced below.
`
`126
`
`Figure 3A illustrates a cross-sectional View of golf club head 100 taken
`
`along section line 3A-3A in Figure 1B. Id. at 2:58—59. Figure 3B is a
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`magnified view of a weld zone. Id. at 2:60. Welding device 302 creates top
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`weld line 304 and bottom weld line 308 (which may be parts of the same
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`continuous weld line or two distinct weld lines), and may be “any type of
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`weld including (but not limited to) bead, groove, fillet, surfacing, tack, plug,
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`slot, friction, and resistance welds.” Id. at 4:43—49. Prior to finishing, top
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`weld line 304 has front weld bead 320 and rear weld bead 318 and bottom
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`weld line 308 has front weld bead 312 and rear weld bead 314. Id. at 5:1—4.
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`Figure 3B illustrates bottom weld line 308 after front weld bead 312
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`has been removed to create a smooth front surface. Id. 5:60—63. The weld
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`includes fusion zone 328 and heat-affected zone 326. 1:57—59, 4:50—52,
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`5:63—65. According to the ’150 patent, locating fusion zone 328 outside of
`
`hinge region 330 “allows for greater dimensional uniformity” in hinge
`
`region 330 during casting or forming of the second piece and “prevents any
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`

`

`IPR2018-00516
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`Patent 8,932,150 B2
`
`unintentional deformation of material” within hinge region 330 “ensuring
`
`consistent mechanical characteristics and performance during impact.” 7:8—
`
`10, 13—16; see also id. at 8:28—33 (stating in regard to an embodiment
`
`shown in Figure 3B that the “location of the weld bead 314 and fusion zone
`
`328 with respect to the hinge region 330 is critical to achieving a high COR
`
`(coefficient of restitution), thin face, cavity back iron having consistent
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`hinge region performance while saving mass in the face to be allocated to
`
`other regions of the golf club head.”). “The hinge-rear wall boundary 334
`
`indicates the location where the hinge region 330 ends and the rear wall 324
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`begins.” Id. at 7:35—37. Additionally, “hinge region 330 can extend
`
`between the upper return wall 322 and front striking surface 338 as well.”
`
`Id. at 6:63-65.
`
`Figure 12A of the ’150 patent is reproduced below.
`
`
`
`Figure 12A illustrates an isometric view of cavity back golf club head
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`1200, “including a club head portion 1202 and a badge 1204 (or third
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`piece).” Id. at 3:10, 14:26—28. Rather than incur additional manufacturing
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`costs, rear weld bead 1204 is not removed or polished and remains exposed
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`

`

`IPR2018-00516
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`Patent 8,932,150 B2
`
`in the cavity. Id. at 14:32—35. “[B]adge 1204 is adhesively bonded to the
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`rear surface of the striking face of the club head 1200” and “obscures the
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`weld bead 1204 so that no visual difference can be observed by the user.”
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`Id. at 14:36—39.] The ’150 patent further states that “badge 1204 can have
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`desirable effects on sound and vibration dampening upon impact with a golf
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`ball.” Id. 14:40—42.
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`B.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1, 3, and 19 are independent, claim 2
`
`depends from claim 1, and claims 4, 6—12, 14—16, and 18 depend, directly or
`
`indirectly, from claim 3.
`
`Claim 1 is illustrative of the claimed subject matter and is reproduced
`
`below:
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`1. An iron-type golf club head comprising:
`
`a front striking surface;
`
`a rear face surface located behind at least a portion of the front
`striking surface in a cavity region;
`
`a first piece including at least a portion of the front striking
`surface;
`
`a second piece including a sole portion, a heel portion, a toe
`portion, a top-line portion, and at least a portion of a hinge
`region, wherein the cavity region is surrounded by the heel
`portion, the sole portion, the toe portion, and the top-line
`portion;
`
`a contact surface of the first piece being connected with a contact
`surface ofthe second piece, the contact between the first piece
`and the second piece defining a contact interface;
`
`a continuous weld extending along the contact interface attaching
`the first piece and the second piece together at the contact
`
`‘ Patent Owner notes that the ’150 patent “appears to use the same reference
`number [1204] for the weld bead and the badge.” PO Prelim. Resp. 7 n.l.
`
`7
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`

`

`IPR2018-00516
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`Patent 8,932,150 B2
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`the continuous weld including a fusion zone
`interface,
`creating a weld bead in the cavity region; and
`
`a third piece attached to the rear face surface and substantially
`covering the weld bead.
`
`Ex. 1001, 15:42—63.
`
`C.
`
`Related Proceedings
`
`The parties indicate that the ’150 patent is asserted in the United
`
`States District Court for the District of Arizona, in a case captioned Parsons
`
`Xtreme Golf, LLC, v. Taylor Made Golf Co, Inc., No. CV-17-03125-PHX-
`
`JJT (D. Ariz.). Pet. 1; Paper 5, 1. Additionally, Petitioner filed a petition in
`
`IPR2018-00540 seeking inter partes review ofU.S. Patent No. 8,353,785 B2
`
`(“the ’785 patent”). Paper 7, 1; Paper 9, 1. The ’150 patent is a divisional of
`
`the ’785 patent. Id.
`
`D.
`
`Real Parties in Interest
`
`Petitioner identifies only itself as a real party in interest. Pet. 1.
`
`Patent Owner identifies itself and KPS Capital Partners LP as real parties in
`
`interest. Paper 7, 1.
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`

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`IPR2018-00516
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`Patent 8,932,150 B2
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`.
`
`E.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1—4, 6—12, 14—16, 18,
`
`and 19 the ’ 150 patent on the following grounds:
`
`
`Reference(s)
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`C1aim(s) challenged
`
`18, and 19
`
`Gilbert and Matsunaga3
`
`§ 103(a)
`
`Gilbert and Gilbert ’0484
`
`'
`
`§ 103(a)
`
`8, 9, 12, 14, and 16
`
`Gilbert and Yoshida5
`
`§ 03(a)
`1
`
`1,3 4 6,10 11 15 16
`,
`18, and 19
`
`Gilbert, Yoshida, and Matsunaga
`
`§ 103(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`§ “’3‘”
`“4’
`
`19
`
`Gilbert, Yoshida, and Gilbert ’048
`
`§ 103(a)
`
`8, 9, 12, 14, and 16
`
`dated January 17, 2018 (Ex. 1003).
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`In an inter partes review, “[a] claim in an unexpired patent .
`
`.
`
`. shall
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`be given its broadest reasonable construction in light of the specification of
`
`the patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`
`2 US. Patent No. 7,281,991 B2, issued October 16, 2007 (Ex. 1004,
`“Gilbert”).
`3 US. Pat. App. No. 2008/0125246 A1, published May 29, 2008 (Ex. 1005,
`“Matsunaga”).
`4 US. Pat. App. No. 2008/0015048 A1, published January 17, 2008
`(Ex. 1006, “Gilbert ’048f’).
`5 JP 2004-209091, published July 29, 2004 (Ex. 1008, “Yoshida” (English
`translation)); see also Ex. 1007 (original text), Ex. 1009 (translation
`certification).
`
`-
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`

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`IPR2018-00516
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`Patent 8,932,150 B2
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`LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the use ofthe broadest
`
`reasonable interpretation standard). In determining the broadest reasonable
`
`construction, we presume that claim terms carry their ordinary and
`
`customary meaning. See In re Translogz'c Tee/1., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007). A patentee may define a claim term in a manner that
`
`differs from its ordinary meaning; however, any special definitions must be
`
`set forth in the specification with reasonable clarity, deliberateness, and
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`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`I.
`
`“hinge region”
`
`Claim 1 recites “a second piece including .
`
`.
`
`. a portion of a hinge
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`region.” Ex. 1001 15:47—49. Independent claims 3 and 19 contain similar
`
`limitations, and claim 2, which depends from claim 1, refers back to the
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`“hinge portion.” Id. at 15:63—66, 16:3—4, 16:53-54. Petitioner contends
`
`that, in accordance with the ’150 patent, a “hinge region” is the “transition
`region between the front striking surface and the upper or lower return wall.”
`
`Pet. 10 (citing Ex. 1001, 6:58—60, 63—65, Fig. 3B; Ex. 1003 1[ 25). Patent
`Owner has not disputed Petitioner’s proposed construction. PO Prelim.
`
`Resp. 15. For purposes of this Decision we adopt Petitioner’s uncontested
`
`construction because it is reasonable and supported by the ’150 patent.
`
`2.
`
`“rear wall portion ”
`
`Claim 7, which depends from claim 3, recites “a weld centerline axis
`
`is offset from a rear wall portion.” Ex. 1001, 16:22—23. Petitioner contends
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`that, in accordance with the ’150 patent, “‘rear wall portion’ is the same as
`
`the ‘lower return wall’ and is the wall that extends in a rearward direction
`from the front striking surface.” Pet. 11 (citing Ex. 1001, 5:16—19, 8:11—17,
`
`Fig. 3C; Ex. 1003 {[1] 26—27). Patent Owner has not disputed Petitioner’s
`
`10
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`

`

`IPR2018-00516
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`Patent 8,932,150 B2
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`proposed construction. PO Prelim. Resp. 15. For purposes of this Decision
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`we adopt Petitioner’s uncontested construction because it is reasonable and
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`supported by the ’150 patent.
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`3.
`
`“ usion zone ”
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`Claim 1 recites “the continuous weld including a fusion zone creating
`
`a weld bead.” Ex. 1001, 15:58—59. Patent Owner states that the ’150 patent
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`does not define the term “fusion zone,” but that it is a term of art in welding.
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`PO Prelim. Resp. 15. According to Patent Owner, “[a] technically
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`competent understanding of the term ‘fusion zone’ is important” and the
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`term should be construed as “the area where the metals of the base
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`material(s) and filler metal(s) (when used) are fully melted.” Id. at 15—16.
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`Patent Owner, however, identifies no evidence in support of its proposed
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`construction, offering instead only attorney argument without citation.
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`Additionally, the construction proposed in the Patent Owner Preliminary
`
`Response has not been addressed by Petitioner. Therefore, we do not know
`
`whether it is contested. See also Pet. 25 (stating “[t]he fusion zone is where
`
`the metal melts and then re-solidifies creating the bond attaching the pieces
`
`together.” (citing Ex. 1003 11 77)).
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`We understand from the ’150 patent that the “fusion zone” is a portion
`
`of the continuous weld that creates the weld bead. See id. at 2229—3 1. Until
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`the record in this case is more fully developed, we decline to adopt Patent
`
`Owner’s proposed construction and determine that no express construction is
`
`necessary for purposes of this Decision.
`
`B.
`
`Asserted Anticipation by, or Obviousness over, Gilbert, Alone or in
`Combination with Yoshida
`
`Petitioner contends claims 1, 3, 4, 6, 10, 11, 15, 16, 18, and 19 are
`
`anticipated by Gilbert. Pet. 17-27. Petitioner further contends that claims
`
`11
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`

`

`IPR2018-00516
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`Patent 8,932,150 B2
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`1—4, 6—12, 14—16, and 18—19 would have been obvious over Gilbert. Id. at
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`52—64. Petitioner also contends that claims 1, 3, 4, 6, 10, 11, 15, 16, 18, and
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`19 would have been obvious over Gilbert and Yoshida. Id. at 38—48.
`
`I .
`
`Summary of Gilbert (Ex. 1004)
`
`Gilbert, titled “Hollow Golf Club with Composite Core,” relates to “a
`
`hollow golf club head of the utility-iron type.” Ex. 1004, 1:14—15. Gilbert
`
`states that the body of the club “is hollow and comprises a front face in
`
`which an impact face insert is included.” Id. at 1:66—2:1. “The body has
`
`means for attaching the impact face insert.” Id. at 2:7—8. “The composite
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`material forms the inner portion of the body and preferably includes a
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`portion juxtaposed with the front face so as to provide structural support for
`
`a thin front face.” Id. at 218—1 1.
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`Figure 2 of Gilbert is reproduced below:
`
`
`
`FIG. 2
`
`Figure 2 illustrates golf club head body 12 of substantially hollow metal
`
`construction with inner surface 29, front face 34 with front opening 30, rear
`
`opening 32, and a plurality of tabs 26. Id. at 3:7—13, 56—57.
`
`12
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`

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`IPR2018-00516
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`Patent 8,932,150 B2
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`Figures 4 and 5 of Gilbert are reproduced below:
`
`IA14—
`
`20
`
`D
`
`
`
`
`16
`
`
`14
`
`I v
`
`
`:
`
`
`
`FIG. 4
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`FIG. 5
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`Figure 4 illustrates an expanded view of golf club head 10 and Figure 5
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`illustrates a toe cross-sectional view depicting the bladder molded composite
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`core. Ex. 1004, 2:48—52, 327—8. Golf club head 10 includes body 12 and
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`impact plate 36 of a size and shape for insertion within front opening 30 of
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`front face 34. Id. at 328—10, 17—19. “For ease of assembly there are a
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`plurality of tabs 26 positioned about the perimeter of the front opening 30
`
`for aligning the impact plate 36.” Id. at 3:56—58. “A lightweight composite
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`core 20 is placed with bias into the cavity 27, and is juxtaposed against an
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`inner surface 29 of the body 12, so as to internally reinforce the body 12,
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`while also providing support for the impact plate 36.” Id. at 3:21—24.
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`According to Gilbert, “[i]t is preferable that the impact plate insert 36 be
`
`founed from titanium as the composite core 20 will provide structural
`
`support. The impact plate 36 may be cast, stamped or forged and an
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`alternate material would be very thin stainless steel.” Id. at 3:34—38. There
`
`is no dispute that Gilbert is silent as to how impact plate 36 is attached to
`
`13
`
`

`

`IPR2018—005 16
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`Patent 8,932,150 B2
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`body 12. See Pet. 21, 39; see also Ex. 1004, 2:7—8 (“The body has means
`
`for attaching the impact face insert”).
`
`2.
`
`Summary onoshida (Ex. 1008)
`
`Yoshida, titled “Hollow Golfclub Head and Inspection Method
`
`Thereof,” generally relates to a hollow golf club head with a face member
`
`welded to a head body, which includes a visual observation hole for
`
`observing the inner side of the weld from the exterior of the head. Ex. 1008
`
`[57], [Claim 1].
`
`Figure 1(a) of Yoshida is reproduced below.
`
`H
`
`M
`
`3
`
`(a)
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`Figure 1(a) illustrates head body H with face opening 8 and face member P,
`
`which are welded together to form the club head. Id. fl 12. “The face
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`member F and the head body H are joined together by welding because the
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`head body H and the face member F are both made up of metals that can be
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`welded together.” Id. at 11 15. Visual observation hole M and light source
`
`hole K penetrate to the hollow portion of the head such that the inner side of
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`the welding portion can be visually observed from the exterior. Id. at fl 12.
`
`14
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`

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`IPR2018-00516
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`Patent 8,932,150 B2
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`Figure 4 of Yoshida is reproduced below.
`
`
`
`Figure 4 illustrates a cross sectional diagram of the golfclub head after
`
`welding head body H and face member F. Id. The following features are
`
`also illustrated in Figure 4:
`
`A front bead 10, which is the welding bead of the head outer side
`surface, is adhered to the head outer side surface of the portion
`where the face member F and the head body H are welded
`(welding portion), and a back bead l 1 is adhered to the head inner
`side surface of the welding portion. This back bead 11 is a
`welding bead that passes through the gap between the face
`member F and the head body H from the head outer side surface,
`reaching the head inner side surface.
`
`Id.
`
`3.
`
`Alleged Anticipation by Gilbert
`
`Petitioner contends Gilbert discloses all of the limitations of claim 1.
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`Pet. 17—27. According to Petitioner, impact plate 36 corresponds to the
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`claimed “first piece” and includes the claimed “front striking surface” and
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`“rear face surface,” body 12 corresponds to the claimed “second piece,” and
`
`15
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`

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`IPR2018-00516
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`Patent 8,932,150 B2
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`core 20 corresponds to the claimed “third piece.” Id. Petitioner further
`
`contends that the claimed “contact interface” is disclosed by Gilbert by the
`
`region where tabs 26 meet impact plate 36. Id. at 21.
`
`Claim 1 further requires “a continuous weld extending along the
`
`contact interface attaching the first piece and the second piece together at the
`
`contact interface, the continuous weld including a fusion zone creating a
`
`weld bead in the cavity region.” Ex. 1001, 15:56—60. Petitioner concedes
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`that Gilbert does not disclose expressly a continuous weld including a fusion
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`zone creating a weld bead in the cavity region. Pet. 21, 25. Petitioner
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`asserts for purposes of anticipation that the limitation is disclosed inherently
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`by Gilbert because welding was “standard practice” and “the only way a
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`skilled artisan would attach the impact plate of Gilbert to the body of the
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`club head would be with a continuous weld along the contact interface
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`between the impact plate and the body of the club.” Pet. 22—24 (citing, e.g.,
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`Ex. 1003 1111 64—75); see also Pet. 25—26 (contending a skilled artisan
`
`necessarily would choose a full penetration butt weld in a golf application
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`that would create a weld bead including a fusion zone on the cavity side of
`
`the body).
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`Patent Owner argues that there were many ways other than a
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`continuous weld that a person of ordinary skill could have used to attach
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`impact plate 36 to body 12. PO Prelim. Resp. 20. Similarly, Patent Owner
`
`contends “there are other welding techniques that do not create fusion
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`zones.” Id. Patent Owner further reasons that “even if a traditional fusion
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`weld is the probable or even preferred means for attachment, this is not
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`legally sufficient to support anticipation.” Id. (citing Cont ’I Can Co. USA v.
`
`Monsanto Ca, 948 F.2d 1264, 1269 (Fed. Cir. 1991) (a finding of inherent
`
`16
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`

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`IPR2018-00516
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`Patent 8,932,150 B2
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`anticipation requires more than “probabilities or possibilities.”)); see also id.
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`at 23—24 (arguing that Petitioner fails to evaluate whether welding would be
`
`compatible with Gilbert’s composite crown). Patent Owner’s arguments
`
`appear to have merit but are unsupported by expert testimony and raise a
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`factual dispute which we decline to resolve on an incomplete record. See
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`also PO Prelim. Resp. 26 (arguing with regard to claim 16 that Gilbert does
`
`not expressly disclose one of the three claimed classes of stainless steel and
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`Petitioner has not shown inherency).
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`Patent Owner also argues that the preferred embodiment of Gilbert
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`utilizes stainless steel for body 12 and titanium for impact plate 36, and that
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`“[n]o [person of ordinary skill in the art] would ever attempt to weld
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`titanium to stainless steel to make a golf club.” Id. at 21; see also Ex. 2001,
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`17 (“[t]itanium is incompatible with most other metals and will form brittle
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`compounds if fusion welded directly to them.”). Patent Owner argues that
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`Petitioner offers no evidence to support welding stainless steel to titanium,
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`and “does not evaluate whether welding would be compatible with Gilbert’s
`
`composite crown construction,” because, if the core is placed prior to
`
`welding, heat from welding would purportedly destroy the core. PO Prelim.
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`ReSp. 22—23. The teachings of Gilbert, however, are not limited to its
`
`disclosed preferred embodiment and Gilbert states expressly that impact
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`plate 36 may be made of stainless steel as an alternative to titanium.
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`Ex. 1004, 3:36—38. Thus, Patent Owner’s arguments fail to address Gilbert’s
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`teaching of a golf head body and impact plate both made of steel.
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`Patent Owner also argues that, because Gilbert does not disclose
`
`welding, Gilbert does not disclose the claimed “third piece” that
`
`“substantially covers the weld bead,” as there is no weld bead to be covered.
`
`17
`
`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`PO Prelim. Resp. 24-25. Patent Owner’s argument, however, presumes a
`
`weld is not inherent to Gilbert, which is an issue yet to be resolved on a
`
`more complete record. Further, Patent Owner contends that core 20 of
`
`Gilbert provides support for impact plate 36, therefore, if impact plate 36
`
`were welded to body 12, there would be “no need” for core 20, and that if a
`
`weld bead were present on the rear face of impact plate 36 it would “impact
`
`the placement and performance of Gilbert’s composite core.” Id. We again
`
`find Patent Owner’s arguments are unsupported by expert testimony and
`
`raise factual disputes which we decline to resolve on an incomplete record.
`
`4.
`
`Alleged Obviousness over Gilbert
`
`For purposes of obviousness over Gilbert, Petitioner relies on the
`
`same elements of Gilbert as discussed above with respect to anticipation and
`
`further asserts that it would have been “obvious for a skilled artisan to
`
`choose the stronger, more effective continuous weld to attach the faceplate
`
`to the club head body” and “to use a welding technique that would
`
`necessarily create a weld bead, including a fusion zone, both in the cavity
`
`region, and on the front of the club.” Pet. 55—56 (citing Ex. 1003 111] 192—
`
`99). Thus, according to Petitioner the claimed continuous weld was a “well-
`
`known welding technique that a person of ordinary skill in the art would
`
`have known to use,” and would have been “merely the use of known
`
`elements, common sense, or the knowledge of a skilled artisan to address a
`
`known problem and achieve an anticipated solution, with predictable
`
`results.” Pet. 53 (citing KSR Int’l Co. v. Teleflex Inc, 550 US. 398, 416
`
`(2007); Perfect Web Techs, Inc. v. InbeSA, Inc, 587 F.3d 1324, 1331 (Fed.
`
`Cir. 2009); Ex. 1003 W 182—85).
`
`18
`
`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`Patent Owner argues that Gilbert does not disclose or suggest a weld,
`
`and that, under the preferred embodiment of Gilbert, a person of ordinary
`
`skill in the art “would have known that a titanium-stainless steel weld would
`
`be defective.” PO Prelim. Resp. 41. As noted above, Gilbert is not limited
`
`to a titanium-stainless steel combination of materials. Patent Owner further
`
`reasons that “it is legally impermissible to rely on common sense or the
`
`knowledge of the skilled artisan to fill gaps in the prior art with respect to
`
`physical elements of a claim.” Id. at 42. To the contrary, “[a] claimed
`
`invention may be obvious even when the prior art does not teach each claim
`
`limitation, so long as the record contains some reason why one of skill in the
`
`art would modify the prior art to obtain the claimed invention.” Nike, Inc. v.
`
`Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016). For purposes ofthis
`
`Decision, Petitioner has sufficiently provided such reasons. See Pet. 51.
`
`5.
`
`Alleged Obviousness over Gilbert and Yoshida
`
`For purposes of obviousness over Gilbert and Yoshida, Petitioner
`
`relies on the same elements of Gilbert as discussed above with respect to
`
`anticipation and further asserts that it would have been obvious “to modify
`
`Gilbert’s golf club head with Yoshida’s teachings of how to weld a golf
`
`club’s face to the rest of the body.” Pet. 39; see also id. at 41 (contending
`
`that “Yoshida discloses an analogous golf club that includes a continuous
`
`weld along the contact interface between the body and the clubface.”) (citing
`
`Ex. 1008 1111 7, 12).
`
`Petitioner further reasons that “[a] skilled artisan would have
`
`recognized that Yoshida’s club head teaches a method of welding the
`
`clubface to the body of a hollow club head, and would have understood
`
`Yoshida’s welding solution to be an obvious solution to the problem that
`
`19
`
`

`

`IPR2018—005 16
`
`Patent 8,932,150 B2
`
`could have been readily implemented in the Gilbert golf club.” Id. (citing
`
`Ex. 1003 1] 129). Petitioner contends that both Yoshida and Gilbert address
`
`the same problem because they both “involve attaching a clubface to a
`
`hollow club head.” Id. at 39—40. Petitioner also contends as follows:
`
`Yoshida also encourages a skilled artisan to use its
`technique with the hollow iron club head disclosed in Gilbert.
`First, Yoshida explains that it can be applied “to other hollow
`heads, such as a hollow iron type” like Gilbert. Ex. 1008,
`1] [0034]. Yoshida also explains that its weld improves both the
`strength of the joint and the performance of the club, providing
`further encouragement. Ex. 1003 1] 130. For example, Yoshida
`notes “the welding portion is improved when there is a back
`bead” and that the back beads should be “uniform” because
`otherwise it will cause “a problem in which the head weight or
`the center of gravity of the head are affected.” Ex. 1008, 11 [0003].
`
`Id. at 40.
`
`Patent Owner contends that Yoshida “is not a welding reference.” PO
`
`Prelim. Resp. 29. Patent Owner also asserts that Yoshida and Gilbert seek to
`
`solve different problems and that the inspection technique of Yoshida is
`
`inapplicable to Gilbert. Id. at 30—31. We find unconvincing Patent Owner’s
`
`argument that “[t]o the extent that Yoshida discusses welding, it is incidental
`
`to Yoshida’s primary concern of inspecting the weld inside a hollow club
`
`head.” PO Prelim. Resp. 30. Patent Owner directs us to no authority to
`
`support the proposition that a reference may not be relied upon for all that it
`
`teaches if the disclosure at issue is “incidental,” nor that a teaching must be
`
`disregarded if the reference addresses other problems. For certain dependent
`
`claims, Patent Owner argues that Petitioner improperly relies on prior art
`
`beyond Gilbert. Id. at 42—43. We understand Petitioner’s contentions to be
`
`based on the knowledge of one of skill in the art as reflected in the prior art.
`
`20
`
`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`We have also considered Patent Owner’s argument that institution of
`
`review of claims as obvious over the combination of Gilbert and Yoshida
`
`should be declined under 35 U.S.C. § 325(d) because “[t]he Office already
`
`considered art more comprehensive than Yoshida.” Under 35 U.S.C. §
`
`325(d), the petition may be rejected because “the same or substantially the
`same prior art or arguments previously were presented to the Office.” We
`
`are not persuaded that individual grounds in the Petition may be rejected as
`
`Patent Owner suggests under Section 325(d). In light of SAS Inst,- we also
`
`are not persuaded by Patent Owner’s contention that we should deny certain
`
`grounds as redundant. See PO Prelim. Resp. 41—42; see also 138 S. Ct.
`
`1348 (2018).
`
`6.
`
`Likelihood ofPrevailing
`
`On this record, for the reasons provided above, we are persuaded that
`
`Petitioner has shown a reasonable likelihood of prevailing at least on its
`
`assertion that claim 1 is unpatentable as obvious over Gilbert and Yoshida.
`
`We also have reviewed Petitioner’s contentions regarding the alleged
`
`obviousness of claims 2—4, 6—12, 14—16, 18, and 19 over Gilbert and
`
`Yoshida and we are persuaded that Petitioner has made a sufficient showing
`
`at this stage for those claims as well. Given our determination that
`
`Petitioner has demonstrated a reasonable likelihood of prevailing as to claim
`
`1, we also determine that it is appropriate to institute a trial on Petitioner’s
`
`asserted grounds that claims 1, 3, 4, 6, 10, 11, 15, 16, 18, and 19 are
`
`anticipated by Gilbert and that claims 1—4, 6—12, 14—16, 18, and 19 would
`
`have been obvious over Gilbert. See SAS Inst, 138 S. Ct. at 1359—60
`
`(2018).
`
`21
`
`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`C.
`
`Asserted Obviousness over Gilbert and Matsunaga,
`with or without Yoshida
`
`Petitioner contends claims 2 and 7 would have been obvious over the
`
`combination of either Gilbert and Matsunaga or Gilbert, Yoshida, and
`
`Matsunaga. Pet. 32—35, 49-50. Claim 2 depends from claim 1 and claim 7
`
`depends from claim 3, with both claim 2 and claim 7 further specifying a
`
`particular dimension with respect to the golf head. Ex. 1001 15:63—66,
`
`16:22—24. Matsunaga, titled “Golf Club Head,” relates to a hollow golf club
`
`head. Ex. 1005 11 1. Petitioner contends that Gilbert does not identify a
`
`specific measurement for the recited dimension, but that Matsunaga
`
`“discloses a hollow golf club head analogous to the hollow golf club head in
`
`Gilbert,” and that Matsunaga teaches dimensions corresponding to the
`
`claimed dimensions. Pet. 33—35, 49. Patent Owner does not separately
`
`address Petitioner’s contentions with respect to the additional limitations of
`
`claims 2 and 7. PO Prelim. ReSp. 27—28, 39—40. Given our determination
`
`above that Petitioner has demonstrated a reasonable likelihood of prevailing
`
`as to at least one claim, we also determine that it is appropriate to institute a
`
`trial on Petitioner’s asserted grounds that claims 2 and 7 would have been
`
`obvious over Gilbert and Matsunaga as well as over Gilbert, Yoshida, and
`
`Matsunaga.
`
`D.
`
`Asserted Obviousness over Gilbert and Gilbert ’048,
`
`with or without Yoshida
`
`Petitioner contends that claims 8, 9, 12, 14, and 16 would have been
`
`obvious over the combination of either Gilbert and Gilbert ’048 or Gilbert,
`
`Gilbert ’048, and Yoshida. Pet. 35—38, 51—52. Claims 8, 9, 12, and 14,
`
`depend from claim 3 and further specify dimensions generally related to the
`
`size of the face of the club. Claim 16 also depends from claim 3 and recites
`
`22
`
`

`

`IPR2018-00516
`
`Patent 8,932,150 B2
`
`the first piece is forged of steel from a group of steel materials. Gilbert ’048,
`
`titled “Forged Iron-Type Golf Clubs,” generally relates to forged cavity back
`
`iron-type clubs. Ex. 1006, Abstract. Petitioner contends that Gilbert does
`
`not identify a specific measurement for the recited dimensions or the specific
`
`steel materials, but that Gilbert ’048 teaches a set of selected parameters
`
`corresponding to the claimed features. Pet. 36—38. Petitioner reasons that
`
`“[a] skilled artisan would have turned to analogous cavity-back iron
`
`reference Gilbert ‘048, which also discloses an iron with a face insert (like
`
`the insert in Gilbert) and its detailed disclosure of potential club face area
`
`measurements to identify potential measurements to try with Gilbert.” Id. at
`
`36; see also id. at 38 (stating in regard to claim 12 that “Gilbert ’048
`
`discloses that ‘17-4 PH SS [is] another commonly used metal for iron-type
`
`clubs.”’). Patent Owner does not separately address Petitioner’s contentions
`
`with respect to the additional limitations of claims 8, 9, 12, 14, and 16.
`
`PO Prelim. Resp. 28—29, 40. Given our determination above that Petitioner
`
`has demonstra

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