Update 9/17 at 5 p.m.
On Friday, Judge John J. Tuchi denied PXG’s request for a TRO (temporary restraining order) against TaylorMade P-790 irons. A TaylorMade representative released the following statement on behalf of the company:
“While TaylorMade respects the intellectual property rights of others, we will always defend ourselves vigorously when someone falsely accuses us of infringement. Our victory in court today re-affirms our confidence in our products and technologies, and reinforces the excitement and momentum we are experiencing with our P790 irons to date.
“P790 is a TaylorMade owned, game-changing product that delivers superior performance benefits to golfers through its key innovations. When you have an iron like P790 that also has Tour player adoption and golfers of all skill levels testing, experiencing distance gains and placing orders, others have no choice but to attempt to slow down our momentum. We fully anticipate a strong reception at retail this weekend and are already increasing our forecast to accommodate greater than anticipated demand.”
A hearing on PXG’s appeal for a preliminary injunction against TaylorMade is set for November 14.
PXG Founder Bob Parsons said in a Tweet that he’s sued TaylorMade for patent infringement related to its new P-790 irons.
Taylormade Golf’s new P790 irons infringe upon many PXG patents. Sued them in Federal court today!
— Bob Parsons (@DrBobParsons) September 12, 2017
TaylorMade’s P-790 irons are due in stores on September 15 in the U.S. They use a hollow construction that’s filled with a material TaylorMade calls “SpeedFoam.” It supports the thin, forged clubs faces used in the irons the help improve distance and accuracy. The material also helps quiet vibrations to improve the sound and feel of the irons.
Tech Story: Learn more about TaylorMade’s P-790 irons
PXG’s 0311 iron series also uses a hollow-body construction. The forged club heads are filled with a TPE (thermoplastic elastomer) material that serves the same purpose as TaylorMade’s SpeedFoam.
To get a handle on the lawsuit, we spoke to Rob Van Arnam and Mike Sajovec, two patent attorneys from the law firm Williams Mullen. They explained that, in sum, PXG is claiming that its design for a better-performing iron is accomplished by the clubs having an expanded sweet spot, an ultra-thin club face, and an elastic material injected into the hollow-bodied club head. The claims of PXG’s patents are generally alleged to cover any golf club that includes a hollow portion filled with an elastomeric polymer, a first weight portion at a “top-and-toe transition region”, and a second weight portion located below a horizontal midplane of the golf club head with the first weight portion having a mass less than the second portion.
Thus, in layman’s terms, the patents attempt to cover the PXG club head with a polymer/rubber insert with the four weights near the toe and the seven weights on the back face of the club head closer to the sole of the club head. The eight patents asserted by PXG are related and are part of PXG’s portfolio of patents.
We also asked them why they thought this case was filed.
“It is not surprising that PXG filed suit to protect its technology and PXG irons, as they appear to be the lifeblood of Bob Parson’s company,” Van Arnam said. “PXG will likely portray itself as an innovator and that TaylorMade is merely trading off PXG’s technology and success.”
We asked about the defenses TaylorMade will raise.
“TaylorMade will likely counter that golf club heads for years have had hollow cavities with polymers or foams and have come with weights,” Sajovec said. “Thus, nothing that PXG is doing is new; it only looks better. TaylorMade will also focus on the different design of its weights, while PXG will allege that because TaylorMade utilizes two sets of weight, those weights are equivalent to the weights in the PXG patents claims. TaylorMade will counter that although PXG patents may be valid, the claims do not cover the TaylorMade design, particularly the placement of the weights.”
So what will happen first, how will the case proceed, and how long will it last?
“PXG has already asked for a TRO (temporary restraining order) and a preliminary injunction to stop TaylorMade from making and selling its P-790 clubs while the case is pending,” Van Arnam said. “So there will be an intense few months to decide that motion. Because of the extraordinary relief injunctions offer, that may be an uphill battle. At the same time, we would expect TaylorMade will seek to stay the case and to challenge it with an Inter Partes Review (IPR) proceeding in the patent office, seeking a reexamination and invalidation of the patents.”
Sajovec added that IPRs are a common litigation challenge in patent cases and that “a quick look at the prosecution history of several of the PXG patents gives the impression that the patent examiner may not have fully appreciated the prior art cited during prosecution.”
“As a result of those actions and barring any early resolution, the case could last for 2-3 years or more,” Van Arnam said.