Digest of In Re Taylor Made Golf Co., Inc., No. 2013-1552 (Fed. Cir. Sept. 30, 2014) (non-precedential). On appeal from the PTAB. Before Dyke and O’Malley (per curiam) (Rader did not participate).
Procedural Posture: Petitioner appealed a decision from the PTAB affirming the patentability of certain dependent claims subject to inter partes reexamination. The CAFC vacated the Board’s decision and remanded for further proceedings.
Obviousness: The patent at issue is directed to a method of shifting the center of gravity of a golf club head by attaching removable weights. The PTAB affirmed the invalidity of the independent claim at issue and also affirmed the patentability of a subset of dependent claims that related to securing weights to golf clubs using “press fitting” or “latching.” Specifically, the PTAB concluded that none of the prior art references considered by the Examiner disclosed or suggested press-fitting (or latching) weights to golf clubs as recited by the relevant dependent claims. The CACF held that the PTAB erred by failing to view the prior art in the context of what was generally known in the art at the time of the invention. The CAFC concluded that press fitting as a means of attachment was common knowledge at the time of the invention, and that the PTAB erred by failing to consider whether one of ordinary skill would have been motivated to combine press fitting with the prior art.