IP Law Daily, PATENT—Fed. Cir.: Patent Board bogeys review of golf club patent, (Sep 30, 2014)

By Jody Coultas, J.D.

The Patent Trial and Appeal Board’s (Board) determination of non-obviousness of claims for a golf club head weight patent has been vacated and remanded by the U.S. Court of Appeals for the Federal Circuit (In re Taylor Made Golf Company, Inc., September 30, 2014, Per Curiam). On remand, the Board must consider the disclosure of the prior art in the context of the background knowledge that would have been possessed by a person of ordinary skill in the art at the time of the invention, and further expand upon the grounds for its decision-making.

U.S. Patent No. 7,344,450 (the ’450 patent) was issued to Dogleg Right Corporation, which was generally directed to a method of shifting the center of gravity of a golf club head by attaching removable weights. Taylor Made requested inter partes reexamination of the ’450 patent.

A patent examiner invalidated claims 1–7, 10–11, and 14–18 as obvious in light of prior art, but confirmed the patentability of claims 8, 9, 12, and 13. The Board declined to reject claims 8, 9, 12, and 13 of the ’450 patent for obviousness in light of two prior art references relating to press fitting.

The Board failed to consider the general knowledge possessed by one skilled in the art of press fitting in applying the obviousness standard, according to the court. The claims affirmed by the Board were directed to a method involving press fitting or latching weights to a golf club. Neither “press fitting” nor “latches” were defined in the ’450 patent. The Board determined that the disclosure of press fitting in the prior art did not render the claimed invention obvious because the prior art “fail[ed] to disclose or suggest press-fitting or latching at least one weight to the shell of a golf club head.” Press fitting as a means of attachment was common knowledge at the time of the invention. Prior art must be viewed in the context of what was generally known in the art at the time of the invention. Therefore, it was error for the Board to fail to consider whether a person of ordinary skill in the art would be motivated to combine press fitting with the prior to arrive at the claimed invention.

The Board’s determination of non-obviousness as to claims 8, 9, 12, and 13 was vacated, and the matter was remanded to the Board.

The case is No. 2013-1552.

Attorneys: Gary A. Clark (Sheppard, Mullin, Richter & Hampton LLP) for Taylor Made Golf Company, Inc.

Companies: Taylor Made Golf Company, Inc.; Dogleg Right Corporation

Cases: Patent FedCir