Here we go again.
Here's the latest in what's turned into a semi-weekly update in the ongoing patent infringement case between PXG and TaylorMade.
When last we checked in, TaylorMade had just countersued PXG, claiming that several of the Bob Parsons owned company's products infringe on TaylorMade patents. As is commonplace in patent litigation cases, TaylorMade also asked the court to declare five of PXG's patents invalid.
On December 4th, and pretty much as expected, PXG fired back. In its Amended Complaint, PXG has expanded its original complaint, now alleging that TaylorMade has specifically infringed on 11 of its patents (in total PXG has been granted 156 patents). The complaints dive deep into the technical weeds. We've covered a bit of this before, but it's worth reiterating that what we're talking about is significantly more specific than what we've loosely termed goo-filled, hollow-body construction.
The infringement allegations deal with things like specific distribution of mass, the volume of polymer/elastomer relative to body mass, and almost all of that is tied to "a face thickness of less than or equal to 1.5 millimeters." Assuming PXG's patents are valid (not guaranteed), and prior art arguments aside, it's that last bit that would theoretically be the workaround for any arguments citing TaylorMade's ICW irons.
Technical details aside, the updated complaint doesn't mince words in accusing TaylorMade of wrongdoing.
After a reasonable opportunity for investigation and discovery, the evidence will likely show that TaylorMade not only knew, or should have known, about the ’336 patent, but also that TaylorMade knew (or was willfully blind to the fact) that its conduct infringed the ’336 patent, that it lacked any reasonable defense to infringement of the ’336 patent, and that TaylorMade’s egregious conduct was the sort of wanton conduct that stands out from other patent cases and rises to the level of willful infringement.
As we said last time around, this is all part and parcel of patent litigation. With each exchange, the number of complaints grows, and hostility bubbles to the surface. Case in point:
On information and belief, TaylorMade has been and is now actively inducing infringement of at least claim 15 of the ’203 patent in violation of 35 U.S.C. § 271(b) by, with specific intent or willful blindness, actively aiding and abetting others (including retailers and other TaylorMade distributors, several professional golfers, and others) to directly infringe the ’203 patent, including without limitation by: using, selling, offering to sell, and/or importing the P790 Products in the United States. TaylorMade’s inducements include, without limitation, and with specific intent to encourage infringement, knowingly inducing retailers and other distributors to sell the P790 Products within the United States, and knowingly inducing customers and celebrity endorsers to use the P790 Products within the United States, with the specific intent to cause infringement or with willful blindness to the resulting infringement of at least claim 15 of the ’203 patent.
For all patents in play, PXG is seeking relief including judgment that TaylorMade has infringed on each patent, along with profits and damages from "TaylorMade's past and present infringement". It's once again seeking injunctive relief to prohibit the continued sale of the P790 iron. Among other things, PXG is also seeking damages and interest, an award of attorneys' fees, repayment of costs incurred by PXG, and any other relief the Court deems proper.
Finally, PXG has asked for a jury trial on all issues that are triable by jury.
The TaylorMade Response?
PXG has effectively tossed the ball back to TaylorMade's side of the court. For now, it appears that neither side is backing down, so it appears we're heading for a prolonged legal battle.
Whom, if anyone, infringed on what may ultimately be decided by a jury, but there are some factors worth considering:
- I'm not one who believes this is attention play by Bob Parsons. I'm reasonably confident that he and his R&D team believe TaylorMade's P790 infringes on several of its patents.
- I'm reasonably confident TaylorMade believes it hasn't infringed on anything. It probably also believes several of PXG's patents shouldn't have been granted to begin with. Worth mentioning, the experts we've spoken with have told me that's the case with a majority of the patents granted each year. I'm less convinced it actually believes PXG infringed on its patents.
- Bob Parsons' net worth has been estimated at more than 1 Billion (some estimates have it over 3 Billion). Risking upwards of $15 million in legal fees, whether it's to prove a point, show the industry he won't be bullied, or protect his golf company's intellectual property, is likely well worth what is, within his larger picture, a small investment.
- TaylorMade has operated in the red for the past several years (projections have it in the black for 2017) and was recently sold to private equity firm KPS Financial. PE firms aren't known for over-spending. Cost-cutting is assumed to be part of the 2018 operating plan, and with big money already committed to its PGA Tour staff, one has to wonder if there's a limit to what the new owners will spend to protect what is for now a single product.
I'm not suggesting either side will blink, but I'd wager it won't be PXG.
Assume there's more to come as it certainly appears this isn't going to end quietly.
Gregory Lynn
4 months agoThe well funded win 90% of Patent Law disputes. Sad this is, though as I feel a little sorry for TM, which is odd as they have been ripping us all off for years. I remember the ICW, it was a good looking club, if only they knew to fill it with gloop the last twenty-five years might have been very different for us golfers. Or maybe not!
Nick Aquilino
4 months agoa quick look shows the patents are limited and it follows they should be easy to avoid. I like the TM position.
Charles Briere Jr.
4 months agoPxg is another example of a rich guy with to much money unhappy because taylormade makes a superior product better marketing as well as making them more affordable. Golf needs to be cheaper. Go play on your private course with over inflated prices with your expensive clubs I’ll still beat you.
Dave Sanguinetti
4 months agoLet’s put Abeles and Parsons in the steel cage and let them fight for their companies- whoever prevails is right. Then we can round up all the judges, lawyers, (politicians and lobbyists because they are lawyers too) and burn them at the stake “Salemlike”! And the world will be free of all demons.
John G
4 months agoI am quite surprised at the hate for PXG. Yes, their clubs are quite pricey. But, I believe it is company’s like this that push the status quo into change.
Here’s a guy trying to make the best clubs possible and maybe the most professional fitting available for the player today. Albeit, at a very high cost.
Will the rich guy play better with these clubs. Maybe.
The TM’s and Callaway’s keep marketing with pictures of pro’s and claims of longer straighter etc. Very little fitting available. We can’t even be sure if the shafts in the production clubs are what they say they are.
Many of the best ideas and innovations come from the smaller companies. In this case one that is well funded.
Mike Abate
4 months agoAll this is, is a pissing contest.
Dave Allshouse
4 months agoMeanwhile people go to Callaway, mizuno, titleist and ping…….
ROD
4 months agoPXG is now on my NO GOOD list. Will never buy any of its products. He thinks he invented the round ball.
baudi
4 months agoThis is a silly battle. TM and PXG will lose. Lawyers on both sides will win. Quote: ‘The infringement allegations deal with things like specific distribution of mass, the volume of polymer/elastomer relative to body mass, and almost all of that is tied to “a face thickness of less than or equal to 1.5 millimeters’
…tied to a face thickness of less or equal to 1.5 mm…
So PXG has the sole rights to produce heads with face thinner than 1.5 mm due to redistribution of weight etc.? So what is really important here? The redistribution of weight or the face thickness?
This is a trap because over the years this feature has been researched many times by many different companies.
if I recollect correctly the infringement also deals with production techniques. Am i right?
thomas murphy
4 months agoThe other question here is who else could be in the sites of PXG and is this just the first ‘trial balloon’ before they go after other hollow heads and other areas of their patent portfolio. And as such does Taylormade then have any allies who would rather see this shut down by joining with Taylormade rather than be the next target? We had Apple do that once and so a group of companies all produced prior art and filed for cease and desist and the “problem” went away.
AndyW
4 months agoSo what we have are hollow clubheads with goo in them, obviously patented way back. So PXG patented the same, only with real thin/skinny clubhead walls with special “super” goo inside. If I am on the jury, I vote for TM and award then one dollar.
Mike Reed
4 months agoI was once told by a lawyer that a patent is only as good as your ability to defend it. Therefore, I think PXG will prevail. I also would not be surprised to see PXG buy Taylor Made if TM’s financial picture is as bad as it has been speculated. Forcing a competitor out of the market does not mean that people will buy your product; especially when there are other companies like Ping and Titelist and all the rest to meet customer needs.
Nick Aquilino
4 months agoI have been practicing patent law for approximately 50 years with a lot of experience in the golf industry. I am guessing I have worked on somewhere near 500 golf related patents. The questions of infringement and validity of the patents involved cannot be determined by simple speculation. There is a presumption of validity when a patent is issued but that is no guarantee a patent will be declared valid and even if so there is still the further question of infringement. Most patent claims in today’s technical world are quite limited and usually provide much less protection than the inventor assumes he is entitled to. It will be interesting to see how this litigation plays out. One thing is certain; the attorneys will do quite well; not so sure about the litigants.
thomas murphy
4 months agoYes for the attorneys. I would think the projection is a set of volleys and a settlement and then it is all about positioning. If Parsons will back down without the product being removed from market that will be the key.
Gannon
4 months agoI’m a corporate lawyer (retired) and was involved in a few patent lawsuits during my career. I always found that the judges were not terribly experienced with or knowledgeable about patent law. Hence, the cases tended to languish while the judges pushed them down to their magistrates and did their best to encourage settlement. Was that your experience, Nick?
Nick Aquilino
4 months agoEverything you said is true. An even bigger problem is that most judges know next to nothing about technical things like electronics, mechanics, chemistry etc. so they avoid patent suits as much as they can. Ultimately it is usually an ego thing even though no one would realistically expect judges to be technically knowledgeable.
LarryB
4 months agoLet them have their dog fights. In the end will it increase their positions in the market place? Will it make me feel confident that their products will benefit my golf game? Will the cost of their products keep increasing due to the added cost of litigation? Will it make me trust them more as a provider of golf equipment? The answers are obvious. Companies like this affect the whole industry with their antics and will only lend to the rest of the golf club manufactures to become sheep. In other words be prepared for the large increases of products in the up coming years. Time for some new blood (entrepreneurs) with realistic values geared towards the everyday common player(amateur) who can afford their products.
Craig Konkle
4 months agoHopefully PXG wins this battle .
capecodbeachfrontgolfer
4 months agoAs for me…. I’ll wait 6 months for the Chinese fake clubs for both models to hit the market. Just tried to get a club verified as authentic by Callaway… Their reply, “We don’t verify if a club is authentic. Please buy from an authorized dealer.” To me that means the market is full of fakes… not worth their effort to fight back. The patent battle may wage on… but I will put by wager on the Chinese fakes being the big winner.
Bryan Armstrong
4 months ago(Disclaimer: I graduate from law school this month and am a professional golfer.) PXG certainly has the high ground at this point. Once a patent is granted it would be an extraordinary step to then have it negated. PXG’s attorney’s could easily argue that the USPO performed their due diligence in issuing the patents. That alone would leave TM’s arguments moot. Keep in mind that the technology would not necessarily have to be identical in order to be deemed to have infringed. If it’s close enough that a reasonable consumer could not tell the difference then infringement claims would be justified. It certianly seems like PXG has the leverage (both financial and legal) to force TM to settle. I think it’s a strong power move to also accuse TM of aiding and abetting retailers and professional golfers in patent infringement. That alone could force pressure on TM from those parties to settle. Bob Parsons is not to be taken lightly.
Steve S
4 months agoNot sure what your patent experience is but your statement “Once a patent is granted it would be an extraordinary step to then have it negated. ” is basically correct in the broad sense but not correct in the details. Most patent lawyers and patent law experts have said that a third to half of all patents could be over turned in full OR IN PART, if challenged. Hardly any court action makes it that far because the parties usually settle. Recent actions that allow anyone to file challenges to patents and applications has muddied those waters further. In the computer industry companies have figured out it’s usually a lot cheaper to cross license technology than fight in court. This after the Apple vs. Microsoft debacle about the Graphical User Interface. Apple sued Microsoft for selling Windows and got smacked in court because Xerox invented it before anyone. So much for Apple being a tech leader.
Rather than trying to patent technology that is so narrow(and maybe obvious) and then trying to defend it maybe these companies should work on there processes and be come more “efficient” in the marketplace.
Bulldog
4 months agoBy the time this is settled, the technology from the patents will be old news, and the industry will have moved on.
Personally, I’m waiting for the quark fiber, photon impluse neuralized club face with the passive/reactive, ancient forest friendly, shaft.
Of course, I’ll still have my same old swing…
Doug
4 months agoBulldog,
You obviously forgot that the new face will be “the hottest ever” and will get you 15 more yards on your swing 😛
10shot
4 months agoThink those will come in D3
Richard Roush
4 months agoLet’s not forget that the Patents speak here. So without an engineering degree and complete legal knowledge of who patented what first, and who really owns the rights, can any of us tell who will win. It would all be nothing more than guessing! What PXG is doing is claiming to engineer a better performing club not unlike what Yeti is doing, then marketing the quality and charging for it. Great stuff to watch actually!
Michael Shaffner
4 months ago$3400 vs $1139.99
Cody Glidden
4 months agoThese two were meant for each other… two of the worst companies in golf!
Mrisinge
4 months agoThings are totally out of hand when the patent office will grant patents on things like “face thickness”.
As far as “prior art” goes:
1978-1984, both Walter Hagen and Wilson produced a slotted iron with a thinner face and a “rubber like substance” (think urethane) filling the bottom portion of the slot. They advertised its spring like action as increasing the distance the irons hit the ball. USGA introduced a rule prohibiting “spring like” faces. See this link from Frank Thomas’ Frankly Golf that discusses these irons. http://www.franklygolf.com/rememberthereflex.aspx
And this link of an advertisement for the original 1978 Wilson Reflex. https://www.amazon.com/Wilson-Reflex-Irons-Outdistance-Memorabilia/dp/B0086U5RB8
Keefus Beauceephus
4 months agoFWIW – Shamrock Golf, in the early 1970’s, actually preceeded every company I know with their technology with “slotted” faces on irons, a repositioning of the weight, and some type of epoxy/elastomer filling in the slot.
They went by the wayside in their original corporate form, while the name “Shamrock Golf” went forward.
I have no dog in this fight. Let the lawyers make their money sorting this out.
Jordan
4 months agoThe battle of Arrogance vs. Deception. It’s a tale old as time, song old as rhyme.
Stephen Pearcy
4 months agoI’d have more empathy for PXG if I thought they were anything more than an aggressive marketing group. Price over performance works for the gullible.
Joseph dreitler
4 months agoNot a PArsons fan, and no dog in this fight (I am an IP lawyer) but he is smart, aggressive and likely had very good patent lawyers do thorough prior art searches before they filed their patent apps. Would expect that TM did the same when they decided to come out with their products, but perhaps they took a calculated risk, thinking that what they did would not read on the issued PXG patents. They had to know they were going to get blowback big time, and they had to know they were looking at major time disruption of executives for Discovery and writing a huge check to litigate. If they do not settle quickly, we will find out how strong the case is after the Markmen hearing. But, as with all patent cases, more than 50% of them that are appealed after a trial verdict get reversed on appeal and sent back down. Looking at a 5 year fight at least, likely longer. Hard to imagine enough profit for TM in this line to spend all of that money – and risk an adverse verdict and potentially significant damages. Spalding spent a ton in the early 90’s suing everyone for infringing their ball design and settled most of them. I suspect with that volume it was worth the time and money. Is it in this one or is it the obvious “other” factors that people often hire lawyers to play knights on a chessboard and slay the other side? Haven’t read the pleadings so will enjoy reading follow up articles on this if you have some patent lawyers who know the subject area looking at least at the PACER docket.
Steve S
4 months agoAfter reading 100’s of patents over the years, I find the face thickness claim to be almost laughable. I’m really surprised that Taylormade hasn’t filed paperwork with the patent office directly disputing the claims of PXG patents, which is allowed under recently passed legislation. Maybe they have. Many companies are doing this because it is much cheaper than filing lawsuits. We did had it done to us and had to rewrite a patent because our lawyers missed some prior art(very common).
Joseph dreitler
4 months agoAgree with you that if TM has any questions about prior art, filing for a re-exam at the USPTO will likely put the brakes on and might wind up with (at least) some of the claims being narrowed or even knocked out of the patents.
Scott
4 months agoSo between the two companies why don’t they have a blind test shootout. Whoever chooses one over the other wins. My money is on PXG HANDS DOWN BABY!!!!!
Ell
4 months agoSo Scott, who’s going to swing the clubs for your test shootout? Jordan Speith, Justin Thomas, Rickey Fowler, Jason Day, or some 18 handicapper at a public golf course?
Gorden
4 months agoRight or wrong one thing has been shown what ever PXG is doing for their clubs to sell at such high markups other companies can match at much lower prices. Has there ever been something that improves club performance that just one OEM could absolutely control form other OEMs coming out with??
Ben Guy
4 months agoQueue the PXG haters. Aside from people’s hate to pxg/people who own pxg clubs it’s actually good to see “smaller clubs” not being bullied by the “big boys” who for years have pushed smaller companies around when their market share is threatened.
Christian Furu
4 months agoA billionaire making golf clubs is “smaller”? I’m pretty sure Parsons is a big guy by any standard. It’s like saying Trump isn’t part of the elite, just one of the guys.
Ryan Turner
4 months agoThe only reason the “smaller clubs” are getting pushed around here is because Bob Parsons has more money than God.
Rob Nieth
4 months agoWish a Bob Parsons type person owned Adams golf when TMAG stole their patented speed slot. Instead TMAG purchased Adams and the problem went away.
steve p
4 months agoAdams had NO patents on sole slots. Acushnet (Titleist) has the patents on slots and Acushnet licenses them out to other companies.
FACT.
Duke Nukem
4 months agoI own both. Currently game the TM set. Have over 150 rounds on my PXG irons and love them. The TM irons are every bit as good IMO and for me longer. At the reduced price point makes them even more attractive. Most that buy TM likely would have never bought PXG, again just my opinion. Stupid waste of money and courts time.
KM
4 months agoTaylorMade will win.
Chad Mardesen
4 months agoThis is glorious. I wish this was televised.
Thanks for being essentially the only entity reporting on this. The other golf “media” sources have both TM and PXG as advertisers and obviously that biases their editorial.
Parsons is an overgrown child in my honest opinion…this is all about ego. Legally he will have to show “loss” in order to win any substantial judgement. There is none.
Nevets Soriedem
4 months agoMulti-million dollar company’s in a court battle. Just means I have to pay more to recoup their losses
Tony Burn
4 months agoOr you can just go with a different brand
Nevets Soriedem
4 months agoI understand, just a general statement. Titleist suing Kirkland. It all translates in cost back to the consumer
Tony Burn
4 months agoTrue, but that’s also why those brands are so important. They keep the market competitive which benefits us.
Andy A.
4 months agoIf I am not mistaken, I believe Nickent had their ARC Blade that was a goo filled soft hitting club, so maybe both PXG, and Taylormade should send royalties to the old Nickent engineers. Just a thought.
Tony Covey
4 months agoI believe the ICW predates the ARC Blade, though as I said, it may not be relevant as much of the IP in question has a face thickness component that would appear to exclude both the ICW and the ARC.
Keith
4 months agoCorrect. ICW and Burner Midsize are earlier than Arc