True Spec Golf LLC

Patent Trials and Appeals Board

Jan 27, 2021

IPR2019-01148 (P.T.A.B. Jan. 27, 2021)

Trials@uspto.gov Paper 87
571-272-7822 Entered: December 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CLUB CHAMPION LLC,
Petitioner,
v.
TRUE SPEC GOLF LLC,
Patent Owner.

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Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
SCOTT C. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
Denying Patent Owner’s Revised Contingent Motion to Amend
35 U.S.C. § 318(a)
Denying Patent Owner’s Motion to Exclude
37 C.F.R. § 42.64

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I. INTRODUCTION
A. Background and Summary
Club Champion LLC (“Petitioner”) filed a Petition requesting an inter
partes review of claims 1–3, 5, 15, 16, and 19 of U.S. Patent No. 8,046,899
B2 (“the ’899 Patent”). Paper 6 (“Pet.”). We instituted an inter partes
review as to all claims and grounds set forth in the Petition. Paper 11
(“Institution Decision”).
After institution, Patent Owner filed a response to the Petition (Paper
28, “Response” or “Resp.”) and a Contingent Motion to Amend (Paper 29),
and Petitioner filed a reply to Patent Owner’s Response (Paper 35, “Reply”)
and an opposition to the Contingent Motion to Amend (Paper 36). We
subsequently issued Preliminary Guidance determining that the proposed
substitute claims in the Contingent Motion to Amend were reasonably likely
to be found unpatentable. Paper 41, 7.
After considering our Preliminary Guidance, Patent Owner filed a
Revised Contingent Motion to Amend (Paper 51, “Revised Motion to
Amend”) and a sur-reply to Petitioner’s Reply (Paper 52, “Sur-Reply”).
Petitioner filed an opposition to the Revised Motion to Amend (Paper 58),
Patent Owner filed a reply in support of the Revised Motion to Amend
(Paper 64), and Petitioner filed a sur-reply in opposition to the Revised
Motion to Amend (Paper 76). Patent Owner also filed a Motion to Exclude.
Paper 69. Petitioner opposed the Motion to Exclude (Paper 71), and Patent
Owner filed a reply in support of its Motion to Exclude (Paper 73).
Both parties requested an oral hearing. Papers 53, 54. An oral
hearing was held on October 6, 2020, and a transcript of this hearing is in the
record. Paper 79 (“Hearing Tr.”).

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We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has shown by a preponderance of the
evidence that all challenged claims are unpatentable. We also deny both
Patent Owner’s Revised Motion to Amend and Patent Owner’s Motion to
Exclude.
B. Related Matters
Patent Owner has sued Petitioner for infringement of the ’899 Patent.
Pet. 2 (citing True-Spec Golf LLC et al. v. Club Champion LLC, Case No.
1:19-cv-00633-KPF (S.D.N.Y.) (filed Jan. 22, 2019)); Paper 26 (same).
On August 30, 2019, Petitioner filed a separate petition requesting
inter partes review of claims 7–11, 15, 17, and 18 of the ’899 Patent. See
IPR2019-01569, Paper 1, 2. In that proceeding, we declined to institute an
inter partes review. IPR2019-01569, Paper 9.
C. The ’899 Patent
The ’899 Patent is directed to “a specific connection method for
quickly securing any brand of golf club shaft and golf club head to one
another.” Ex. 1001, 1:16–19.
The ’899 Patent indicates that, in prior art releasable connectors, “both
the connector itself and the tip end of the shaft are received within the bore
in the hosel portion of the golf club head.” Ex. 1001, 1:28–41. This type of
connector, according to the ’899 Patent, disadvantageously requires “a hosel
portion and bore that are significantly larger than industry standard.” Id. at
1:41–44. In contrast, the connector of the ’899 Patent “couples the shaft and

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head without the need to alter or custom design the hosel of the golf club
head.” Id. at 1:61–63.
Figure 1 of the ’899 Patent, reproduced below, depicts an embodiment
of a universal shaft and head connector. Ex. 1001, 2:28–29.

Figure 1 depicts head connector 10 as comprising shaft adapter 22, hosel
adapter 24, and compression nut 26. Id. at 2:29–37. Shaft adapter 22
includes cylindrical bore 34, which is sized to receive end 36 of golf club
shaft 12. Id. at 2:38–42. Hosel adapter 24 includes body portion 42, which
has an outside diameter corresponding to the size of the bore of hosel 16 of
golf club head 14. Id. at 3:5–9. Hosel adapter 24 also includes a bore 48,
which is sized to receive shaft portion 32 of shaft adapter 22. Id. at 3:16–18.

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To form an assembled golf club, “hosel adapter 24 is potted within the
compression nut 26,” and
[t]hereafter, an adhesive (e.g., epoxy) is applied to the outer
surface of the body portion 42 of the hosel adapter 24 and/or
injected into the bore 18 in the hosel 16. Thereafter, the body
portion 42 of the hosel adapter 24 is inserted into the bore 18 in
the hosel 16 and the epoxy is allowed to sufficiently harden (e.g.,
dried, cured, etc.). In addition, an epoxy is also applied to the tip
end 36 of the shaft 12 and/or injected into the bore 34 in the shaft
adapter 22. Thereafter, the tip end 36 of the shaft 12 is inserted
into the bore 34 in the shaft adapter 22 and the adhesive is
allowed to sufficiently harden.
Ex. 1001, 3:62–4:6. When compression nut 26 is rotated, and the hosel
adapter 24 and shaft adapter 22 “are drawn tightly together.” Id. at 4:13–18.
According to the ’899 Patent, this type of removable connector provides “a
quick, easy and convenient way for consumers, retailers, and others to try,
test, and use different shafts 12 and heads 14 of standard or conventional
size and configuration.” Id. at 4:39–42.
D. Illustrative Claims
Petitioner challenges claims 1–3, 5, 15, 16, and 19 of the ’899 Patent.
Of these, claims 1 and 15 are independent. Claims 2, 3, and 5 depend from
claim 1, and claims 16 and 19 depend from claim 15.
Claim 1, reproduced below, is representative.
1. A method of assembling a golf club, comprising:
providing a golf club head;
providing a golf club shaft;
arranging a compression nut generally in a region of interface
between the golf club head and the golf club shaft, the
compression nut having first threading and freely rotatable
relative to the golf club head and the golf club shaft;

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arranging a second threading on at least one of the golf club shaft
and the golf club head;
freely rotating the compression nut relative to the golf club head
and the golf club shaft; and
drawing the golf club head and the golf club shaft together by
said freely rotating.
Ex. 1001, 5:27–40.
Independent claim 15 is similar to claim 1, except that claim 15 does
not recite the step of “arranging a second threading on at least one of the golf
club shaft and the golf club head,” and claim 15 recites the additional steps
of “installing a shaft adaptor on the golf club shaft with the golf club shaft
received into a sleeve portion on the shaft adaptor” and “installing hosel
adaptor into the hosel of the golf club head.” Ex. 1001, 6:65–7:13.

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E. Challenged Claims and Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
Ground Claim(s) Challenged 35 U.S.C. § Reference(s)
1 1–3, 5, 15,1 19 103(a)2 Burrows3 and
Hartley4
2 1–3, 5, 15, 16, 19 103(a) Burrows
3 16 103(a) Burrows and Wood5
Petitioner also relies on the Declaration of Dr. Benoit Vincent
(Ex. 1002, “First Vincent Declaration”), the Declaration of Dr. Benoit
Vincent in Support of Petitioner’s Reply to Patent Owner Response and
Petitioner’s Opposition to Patent Owner’s Motion to Amend (Ex. 1023,

1 Petitioner omitted claim 15 from the summary of Ground 1 on page 5 of
the Petition, and the “Ground 1” heading on page 20 of the Petition.
Petitioner’s discussion of Ground 1, however, includes a detailed analysis of
claim 15. See Pet. 45–49. As we indicated in our Institution Decision
(Paper 11, 6 n.1), it appears that the omissions of claim 15 on pages 5 and 20
of the Petition were inadvertent, and we therefore interpret Ground 1 as
encompassing a challenge to claim 15.
Patent Owner argues in its Response that that construing Ground 1 so as to
encompass claim 15 would improperly expand the scope of this proceeding
so as to encompass a ground not set forth in the Petition. Resp. 19 n. 2.
This argument is not persuasive because, as we noted in our Institution
Decision (see Paper 11, 6 n.1), the Petition itself makes clear that Ground 1
was intended to encompass claim 15 (see Pet. 45–59).
2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’899 Patent issued was filed
before this date, the pre-AIA version of § 103 applies.
3 U.S. Pat. No. 6,890,269 B2, issued May 10, 2005 (Ex. 1004).
4 U.K. Pat. Appl. Pub. No. 325,677, published Feb. 27, 1930 (Ex. 1005).
5 U.S. Pat. No. 5,951,411, issued Sept. 14, 1999 (Ex. 1007).

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“Second Vincent Declaration”),6 the Declaration of Dr. Benoit Vincent in
Support of Petitioner’s Opposition to Patent Owner’s Revised Motion to
Amend (Ex. 1088, “Third Vincent Declaration”), the Declaration of Ivan T.
Hoffman (Ex. 1024, “Hoffman Declaration”), and the Declaration of Dr.
Laurentis Marais (Ex. 1098, the “Marais Declaration”).
Patent Owner relies on the Declaration of George Thomas Mase,
Ph.D. in Support of Patent Owner Response and Motion to Amend (Ex.
2018, “First Mase Declaration”), the Declaration of George Thomas Mase,
Ph.D., in Support of Patent Owner’s Revised Motion to Amend (Ex. 2088,
“Second Mase Declaration”), the Declaration of Bruce D. Barrows (Ex.
2024, “Burrows Declaration”), the Declaration of John G. Plumpe (Ex.
2025, “Plumpe Declaration”), and the Declaration of Mohan Rao, Ph.D. (Ex.
2119, “Rao Declaration”).
II. PATENTABILITY OF THE CHALLENGED CLAIMS
A. Principles of Law
An invention is not patentable under 35 U.S.C. § 103 “if the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” The question of obviousness is resolved

6 Pursuant to our July 2, 2020 Order, Petitioner may rely on the Second
Vincent Declaration in order to rebut arguments set forth in the First Mase
Declaration, the Burrows Declaration, and the Revised Motion to Amend,
but Petitioner may not rely on the Second Vincent Declaration as additional
evidentiary support for the grounds of unpatentability set forth in the
Petition. Paper 49, 9.

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on the basis of underlying factual determinations including: (1) the scope
and content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of skill in the art; and, (4) where in
evidence, so-called secondary considerations, including commercial success,
long-felt but unsolved needs, and failure of others. Graham v. John Deere
Co., 383 U.S. 1, 17−18 (1966).
When evaluating a combination of teachings, we must also “determine
whether there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977, 988 (Fed. Cir.
2006)).
B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“the level of skill in the art is a prism or lens
through which a judge, jury, or the Board views the prior art and the claimed
invention”). Petitioner asserts in the Petition that a person of ordinary skill
“would have at least a bachelors’ degree in mechanical engineering, or an
equivalent degree or coursework, with two years of experience in the design
and manufacture of golf clubs,” and that “[a]dditional education might
compensate for a deficiency in experience, and vice-versa.” Pet. 12. We
adopted this formulation in our Institution Decision. Paper 11, 12.
In its Response, Patent Owner confirms that it accepts Petitioner’s
proposed formulation regarding the level of ordinary skill in the art.

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Resp. 9. Accordingly, for purposes of this Decision, we accept and apply
Petitioner’s proposed formulation.
C. Claim Construction
The Petition was filed on May 31, 2019, which is after the date that 37
C.F.R. § 42.100(b) was amended to require that we apply “the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. § 282(b).” See 38 Fed. Reg. 51,340 (Oct. 11, 2018)
(indicating that the amendment to 37 C.F.R. § 41.100(b) would apply to all
petitions filed on or after November 13, 2018) (now codified at 37 C.F.R.
§ 42.200(b) (2019)). Thus, we apply the Phillips claim construction
standard in this case. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc).
Under the Phillips standard, words of a claim generally are given their
ordinary and customary meaning. Phillips, 415 F.3d at 1312. “[T]he
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention.” Id. at 1313. The person of ordinary skill in the art is
deemed to read the claim term not only in the context of the particular claim
in which the disputed term appears, but in the context of the entire patent,
including the specification. Id.
“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy.’” Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999)). Petitioner asserts “no terms appear to require

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construction for purposes of this Petition.” Pet. 13. Patent Owner concurs
in its Response. Resp. 9 (“The parties agree that no claim terms require
construction at this stage.”) Given the absence of any claim construction
disputes, we decline to adopt specific constructions of any claim terms.
D. Secondary Considerations
Through a subsidiary, Patent Owner sells a product called the Faz-Fit
connector. Resp. 59, 62. Patent Owner contends that Faz-Fit has been a
commercial success, has received industry praise, and met a long-felt but
unmet need. Id. at 62–69. Patent Owner asserts that this evidence is
relevant to the patentability of claims 3 and 19 of the ’899 Patent. Id. at 59.
Our reviewing court has held that such secondary considerations, or
objective indicia of nonobviousness, “must be considered in every case
where present.” Apple Inc. v. Samsung Elecs. Co. Ltd., 839 F.3d 1034, 1048
(Fed. Cir. 2016) (en banc). Before considering Patent Owner’s secondary
considerations evidence, however, we examine the issue of whether Patent
Owner has demonstrated a nexus between the proffered evidence (which
pertains to the Faz-Fit connector), and claims 3 and 19 of the ’899 Patent.
1. Nexus
“[T]o be accorded substantial weight in the obviousness analysis, the
evidence of secondary considerations must have a ‘nexus’ to the claims, i.e.,
there must be ‘a legally and factually sufficient connection’ between the
evidence and the patented invention.” Henny Penny Corp. v. Frymaster
LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019). “The burden of proof as to this
connection or nexus resides with the patentee.” Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).

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Patent Owner contends that it is entitled to a rebuttable presumption
of nexus under Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072
(Fed. Cir. 2018), because its secondary considerations evidence is tied to the
Faz-Fit product, and the Faz-Fit product “embodies the claimed features and
is coextensive with them.” Resp. 58.
Patent Owner also attempts to establish a nexus by showing a direct
connection between the allegedly unique features of the Faz-Fit connector.
In particular, Patent Owner contends:
[T]he commercial success of the ’899 Patent is due to its methods
of using a versatile golf club connector for quickly and easily,
but reversibly, “securing any brand of golf club shaft and golf
club head to one another,” by allowing the shaft to remain
outside of the hosel and without requiring any modification to
the golf club shaft or the golf club head.
Resp. 69–70 (emphasis in original). Patent Owner similarly contends that
the Faz-Fit connector met a long-felt but unmet need “for brand-agnostic
connectors that could temporarily, but securely, connect a golf club head and
golf club shaft without modifications to the head or shaft and where the shaft
could remain outside of the hosel.” Id. at 67–68.
Petitioner argues that there is no nexus or presumption of nexus
because the ’899 Patent does not claim the alleged product-differentiating
feature of not “requiring any modification to the golf club shaft or the golf
club head.” Reply 15–17. Petitioner further contends that the other alleged
driver of the Faz-Fit’s success—the ability of the shaft to remain outside of
the hosel—was taught by the prior art Burch reference. Id. at 17–18. We
are persuaded by both of these arguments.
As discussed below, Patent Owner concedes that Burrows teaches or
suggests all limitations of challenged claims 1, 2, 15, and 16. See infra

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§§ II.E.1, II.E.2; Hearing Tr. 50:9–23. Claims 3 and 19 depend from claims
2 and 15, respectively. Accordingly, the only potentially novel limitations
of claims 3 and 19 are the recitation in claim 3 of “axially spacing the shaft
outside of the hosel of the golf club head in a fully assembled state,” and the
similar recitation in claim 19 of “wherein no part of the golf club shaft is
received into the hosel” (hereinafter, the “outside-the-hosel” limitations).
See Ex. 1001, 5:48–49, 7:11–12. It is these same limitations that Patent
Owner contends drove commercial success of the Faz-Fit connector, resulted
in industry praise, and allowed the Faz-Fit to satisfy a long-felt but unmet
need for a connector that would allow different brands of golf club shafts
and heads to be connected together without modifications to the shafts or
heads. See Resp. 58–69.
But as Petitioner points out, and as we noted in our Institution
Decision, claims 3 and 19 of the ’899 Patent do not require the ability to
connect different types of golf club shafts and heads without first modifying
either the shaft or the club head. Reply 15–17; Paper 11, 15. And to the
extent Patent Owner contends that this allegedly desirable–but not explicitly
claimed—feature was enabled by outside-the-hosel limitations in claims 3
and 19, we find that these limitations were not novel because they were
taught by at least the prior art Burch reference (U.S. Patent App. Pub.
2005/0176521 A1 (published Aug. 11, 2005)) (“Burch”) (Ex. 1009). See
Reply 17–18 (citing Ex. 1002 ¶¶ 19–23, 52–53; Ex. 1023 ¶¶ 150–51).

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Figure 2 of Burch, with colored annotations added by Petitioner, is
reproduced below.

See Reply 187 (citing Ex. 1002 ¶¶ 52–53). Figure 2 is an exploded
perspective view of a connector for connecting a golf club head to a golf
club shaft. Ex. 1009 ¶¶ 6–7. Golf club shaft 14 and golf club head 12 are
annotated with green and blue highlighting, respectively. See Ex. 1002 ¶¶
52–53; Ex. 1009, Fig. 2, ¶¶ 15–16. The components of the connector are
annotated with purple and yellow highlighting. See id.
It is apparent from Figure 2 of Burch that, when the depicted
connector is assembled, shaft 14 remains outside of, and axially spaced

7 We reproduce the figure contained in Paragraph 52 of the Vincent
Declaration. The Reply appears to contain an incorrect figure.

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from, the hosel of club head 12. Ex. 1002 ¶¶ 52–53; Ex. 1009, Fig. 2;
Ex. 1029, 42:24–43:8. Burch also explicitly teaches that this connector
“allows [golf club] shops to create as many different shaft and club head
combinations as may be desired,” and “allows for combinations of shafts
and heads of different shaft components and head component
manufacturers.” Ex. 1009 ¶ 4; Ex. 1002 ¶ 53.
We find that Burch’s connector satisfied the outside-the-hosel
limitation of claims 3 and 19, and allowed different types of golf club shafts
and heads to be connected together without modifying either the shaft or the
club head. See Reply 17–19, Ex. 1002 ¶¶ 19–23, 52–53; Ex. 1009, Fig. 2, ¶¶
4, 6–7, 15–16; Ex. 1023 ¶¶ 150–51; Ex. 1024 ¶¶ 54–59. These are the same
two features that allegedly differentiated the Faz-Fit connector from
competing devices, allowing it to become commercially successful, receive
industry praise, and satisfy a long-felt but unmet need.
The Federal Circuit has held that there is no nexus where commercial
success, or other secondary considerations, arise from features of a product
that were readily available in the prior art. See, e.g., Ormco Corp. v. Align
Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (internal citation omitted)
(“Evidence of commercial success, or other secondary considerations, is
only significant if there is a nexus between the claimed invention. . . . [I]f the
feature that creates the commercial success was known in the prior art, the
success is not pertinent.”); J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106
F.3d 1563, 1571 (Fed. Cir. 1997) (“[T]he asserted commercial success of the
product must be due to the merits of the claimed invention beyond what was
readily available in the prior art.”)

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Considering the evidence put forth by both parties, we determine that
Patent Owner has failed to demonstrate any nexus between features of
claims 3 and 19 that were not readily available in the prior art, and the
secondary considerations evidence it offers concerning the Faz-Fit product.
To the extent Patent Owner is entitled to a presumption of nexus because of
similarities between the Faz-Fit connector and the subject matter of claims 3
and 19, we find for the same reasons that Petitioner has successfully rebutted
that presumption.
Because Patent Owner has failed to establish a nexus, Patent Owner’s
evidence has little or no probative value as to the issue of whether claims 3
and 19 are obvious. Moreover, for the reasons discussed below, Patent
Owner’s evidence that the Faz-Fit connector was a commercial success,
received industry praise, or satisfied a long-felt need, is also not persuasive.
2. Commercial Success and Industry Praise
In support of its contention that the Faz-Fit was a commercial success,
Patent Owner cites evidence that its Club-Conex subsidiary sold more than
85,000 Faz-Fit connectors between November 1, 2015 (the date Patent
Owner acquired Club-Conex) and September 4, 2019. Resp. 62 (citing
Ex. 2013). Patent Owner also cites a statement from Club-Conex’s website
that “FAZ-FIT is our top selling line of products and has been the #1 choice
amongst club fitting shops” (Resp. 62 (citing Ex. 2002)), a statement from a
golf publication describing Club-Conex as “one of the most important
companies in golf club fitting” (Resp. 62–63 (citing Ex. 2003)), evidence
that “[a]t least 109” of the top 296 golf club fitters in America have at some
time in the past purchased Faz-Fit connectors (Resp. 63 (citing Ex. 2025

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¶¶ 16, 21; Ex. 2056)), and evidence that Petitioner has purchased
“thousands” of Faz-Fit connectors (id.).
But as Petitioner points out, Patent Owner has offered no evidence
regarding the size of the relevant market. Reply 22–23; Ex. 1024 ¶¶ 24–53.
Patent Owner cites to a section of the Plumpe Declaration titled “Sales and
Market Share” (Resp. 62–63 (citing Ex. 2025 ¶¶ 20–26)), but Mr. Plumpe
never sets forth any evidence regarding the size of the relevant market, much
less specifies the Faz-Fit connector’s market share (see Ex. 2025 ¶¶ 20–26).
In addition, self-serving statements from Club-Conex’s own website (see
Resp. 62 (citing Ex. 2002)) are inadmissible hearsay under Fed. R. Evid.
802, and evidence that Faz-Fit was a single supplier’s top-selling product is
insufficient to demonstrate commercial success in a multi-supplier market.
The assertion that “[a]t least 109” club fitters purchased Faz-Fit connectors
at some time in the past (see Resp. 63) also does not demonstrate Faz-Fit’s
share of the market for golf club connectors. For example, there is no
persuasive evidence that these 109 club fitters relied solely on Faz-Fit
connectors, and never purchased competing connectors. See Resp. 63;
Ex. 2025 ¶¶ 16, 21; Ex. 2056.
Because Patent Owner has offered no “evidence as to market share so
as to put the evidence of gross sales figures into perspective in the context of
the particular market at hand,” Ex Parte Jella, 90 U.S.P.Q.2d 1009 (B.P.A.I.
2008) (Precedential), we are not persuaded on this record that the Faz-Fit
was a sufficient commercial success to weigh materially in favor of
patentability.
Patent Owner also cites several examples of supposed industry praise,
including an article that describes Club-Conex as “arguably one of the most

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important companies in golf club fitting” (Resp. 62–63 (citing Ex. 2003)), a
statements by Petitioner’s CEO that “[i]f you want to play your best golf,
find a fitter that has a Club-Conex system” (Resp. 63 (emphasis omitted)
(citing Ex. 2004; Ex. 2018, 121–123; Ex. 2025 ¶¶ 28–38)), excerpts from
Petitioner’s twitter feed that depict the Faz-Fit product (Resp. 65–66 (citing
Exs. 2010, 2011, 2018)), and a promotional video in which Petitioner’s
founder says that Faz-Fit is “how we fit each and every golfer to find the
very specific club that they need” (Resp. 66–67 (emphasis omitted) (citing
Ex. 2006)).
But, as Petitioner points out in its Reply, it was using the Faz-Fit
product in its golf shops at the time it made these statements, and Patent
Owner did not acquire rights to the ’899 Patent until after Petitioner
purchased these products. Reply 25 (citing Exs. 2051; 1068, 145:6–10).
Thus, the cited statements by Petitioner are just examples of a company
praising a product that the company itself was using. They are not examples
of a company praising a product it viewed as being a competitor. See
Resp. 64. In addition, we agree with Petitioner’s contention that none of
Patent Owner’s evidence appears to directly praise the allegedly novel
features of the Faz-Fit connector. See Reply 24 (citing Ex. 1030, 90:11–
102:7); Resp. 62–67; Ex. 1024 ¶¶ 77–79. Accordingly, we are not
persuaded on this record that the allegedly novel features of the Faz-Fit
connector received significant industry praise. See ClassCo, Inc. v. Apple,
Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016) (“[P]raise focused on
conventional features in the prior art” is “properly discounted.”).

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3. Long-Felt but Unmet Need
Patent Owner also argues that the Faz-Fit connector “met a long-felt
need for brand agnostic connectors that could temporarily, but securely,
connect a golf club head and golf club shaft without modifications to the
head or shaft and where the shaft could remain outside of the hosel.” Resp.
67–68 (citing Ex. 2018 ¶¶ 118–119, Ex. 2024 ¶ 48, Ex. 2006, Ex. 2004).
But, as explained in detail above, we find that the prior art Burch reference
disclosed precisely this type of connector. See supra § II.D.1. Thus, to the
extent there was a long-felt but unmet need for such a connector, that need
was not met by the invention claimed in the ’899 Patent.
4. Conclusion
For the foregoing reasons, we find that Patent Owner has not
established a nexus between its secondary considerations evidence and any
challenged claims of the ’899 Patent. Moreover, even if Patent Owner had
established a nexus, its evidence would be insufficient to persuade us that
the Faz-Fit connector was a commercial success, received industry praise, or
satisfied a long-felt but unmet need. Accordingly, we accord Patent
Owner’s secondary considerations evidence little weight in our analysis of
the obviousness of claims 3 and 19.

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E. Scope and Content of the Prior Art; Differences Between Claimed
Subject Matter and Prior Art
1. Ground 1: Obviousness of Claims 1–3, 5, 15,8 and 19, over
Burrows and Hartley
a. Burrows
Burrows is directed to “an improved temporary connection between a
golf club shaft and an additional club component such as a club head.”
Ex. 1004, 1:11–17.
Figure 3, reproduced below, shows an exploded perspective view of
the temporary shaft-head connection of Burrows.

8 See supra n.1.

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Figure 3 shows components of temporary shaft-head connection 12,
including shaft 14, sleeve-shaped adapter insert 28, lower insert segment 30,
adapter socket 32, hosel 24, club head 16, compression nut 44, mating
threads 46 and 48, and reaction ring 60 that seats within groove 62. See
generally id. at 6:42–7:8.
Figure 4, reproduced below, shows a side view of an assembled
connection between a golf club head and shaft.

Figure 4 shows assembled components including shaft 14, hosel 24, and club
head 16, and compression nut 44.

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b. Hartley
Hartley is directed to “improvements in the shafts of golf
instruments,” involving a “metal coupling” with first, second, and third
components. Ex. 1005, 1:6–29.
A portion of Figure 2, reproduced below, shows a golf club head
connected to a shaft with Hartley’s coupling.

Figure 2 depicts head 2, tapering portion 5, tapering recess 7, parallel
portion 6, end 12, flange 13, circular portion 14, and lower part 17, and
remaining part 18, of the “third portion” of the coupling. Id. at 3:3–68.
According to Petitioner, when the shaft and club head are assembled as
depicted above, Hartley’s shaft is axially spaced from, and does not enter
into, the hosel of the club head. Pet. 54.
c. Claims 1 and 15
Petitioner contends that Burrows teaches or suggests all limitations of
independent claims 1 and 15.

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Specifically, Petitioner alleges that Burrows discloses a method of
assembling a golf club, as recited in the preambles of independent claims 1
and 15, and supports this argument with declaration testimony and citations
to Burrows. See Pet. 20–21 (citing Ex. 1002 ¶¶ 56–58; Ex. 1004, Abstract,
Figs. 1–4, 1:21–22, 2:24–31, 2:44–51, 4:59–67, 5:12–21, 6:4–14, 8:21–23);
Pet. 45.
Petitioner asserts that club head 16 of Burrows corresponds to the
“golf club head” (see Pet. 21, 45) of claims 1 and 15, and that club shaft 14
of Burrows corresponds to the “golf club shaft” recited in those claims (see
id. at 23–25, 45). Petitioner supports these assertions with declaration
testimony and citations to Burrows. See Pet. 21–22 (citing Ex. 1002 ¶¶ 59–
60; Ex. 1004, Figs. 1, 3, 1:24–26, 5:28–33.); Pet. 23–25 (citing Ex. 1002
¶¶ 61–62; Ex. 1004, Figs. 1, 3, 5:3–7, 5:28–33); Pet. 45.
Petitioner contends that compression nut 44 of Burrows is a
compression nut arranged “generally in a region of interface between the
golf club head and the golf club shaft,” as recited in claims 1 and 15, and
supports this assertion with declaration testimony and citations to Burrows.
Pet. 25–30 (citing Ex. 1002 ¶¶ 63–69; Ex. 1004, Figs. 3, 4, 5:3–7, 6:44–47,
6:66–7:12, 7:30–40, 8:33–36); Pet. 46. Petitioner further contends, based on
declaration testimony and citations to Burrows, that compression nut 44 of
Burrows has a “first threading” and is “freely rotatable relative to the golf
club head and the golf club shaft,” as recited in claims 1 and 15. Pet. 30–33
(citing Ex. 1002 ¶¶ 70–75; Ex. 1004, Figs. 3, 4, 7:16–22, 7:30–34, 8:21–47).
Petitioner contends that Burrows discloses “freely rotating the
compression nut [44] relative to the golf club head [16] and the golf club
shaft [14],” in the manner recited in claims 1 and 15. Pet. 37–38, 49.

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Petitioner also asserts Burrows discloses “drawing the golf club head [16]
and the golf club shaft [14] together by said freely rotating,” in the manner
recited in claims 1 and 15. Id. at 38–40, 49. Petitioner supports these
contentions with declaration testimony and citations to Burrows. See
Pet. 37–38 (citing Ex. 1002 ¶¶ 83–85; Ex. 1004, 7:40–46, 9:21–24, 9:42–
48); Pet. 38–40 (citing Ex. 1002 ¶¶ 86–89; Ex. 1004, Figs. 3, 4, 6:50–55,
7:8–12, 7:40–46, 9:42–48); Pet. 49.
Claim 1 recites the additional step of “arranging a second threading on
at least one of the golf club shaft and the golf club head.” Ex. 1001, 5:35–
36. Petitioner contends, based on declaration testimony and citations to
Burrows, that male thread 48 on Burrows’ adapter socket 32 (which is glued
inside the hosel of the club head 16) is “a second threading on at least one of
the golf club shaft and the golf club head,” of the type recited in claim 1.
Pet. 33–35 (citing Ex. 1002 ¶¶ 76–82; Ex. 1004, Figs. 3, 4, 7:8–12, 7:34–
40).
Claim 15 recites the additional steps of “installing a shaft adaptor on
the golf club shaft with the golf club shaft received into a sleeve portion on
the shaft adaptor” and “installing hosel adaptor into the hosel of the golf club
head.” Ex. 1001, 7:6–9. Petitioner contends that adapter insert 28 of
Burrows corresponds to the recited shaft adaptor, that adapter insert 28 is
located on the golf club shaft, and that the golf club shaft is received into a
sleeve portion of adapter insert 28. Pet. 46–47 (citing Ex. 1002 ¶¶ 100–101;
Ex. 1004, 6:44–47, 6:50–55, Figs. 3–4). Petitioner contends that Burrows
further discloses that the hosel adapter (adapter socket 32) is installed into
hosel 24 of club head 16. Pet. 47–48 (citing Ex. 1002 ¶¶ 102–103; Ex. 1004,
7:8–12, Figs. 3–4).

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In its Response, Patent Owner contends that Burrows cannot be
combined with Hartley in the manner that allegedly renders obvious claims
3, 5, and 19, but Patent Owner does not substantively dispute Petitioner’s
contentions that Burrows teaches or suggests all limitations of independent
claims 1 and 15. See Resp. 19–52;9 Hearing Tr. 50:9:23.
d. Claim 2
Claim 2 depends from claim 1, and recites the additional steps of
“securing a head adapter to the golf club head,” “securing a shaft adapter to
the golf club shaft,” and “facilitating linearly translation without rotation
between the shaft and head adapters along an anti-rotation slide interface
between the adapters during said drawing.” Ex. 1001, 5:41–46.
Petitioner contends that Burrows discloses a head adapter (adapter
socket 32) that is secured to club head 16. Pet. 41 (citing Ex. 1002 ¶ 91; Ex.
1004, 7:8–112, Figs. 3–4). Petitioner also contends that Burrows discloses a
shaft adapter (adapter insert 28) that is secured to golf club shaft 14. Pet.
42–43 (citing Ex. 1002 ¶ 92; Ex. 1004, 6:50–55, Figs. 3–4). Petitioner
further contends that Burrows facilitates a linear translation between adapter
insert 28 (the shaft adapter) and adapter socket 32 (the head adapter) along
an anti-rotation slide interface between the adapters (splines 30 and 36), as
the golf club head and club shaft are drawn together. Pet. 43–45 (citing Ex.
1002 ¶¶ 93–94; Ex. 1004, 7:16–22, 9:42–48, Figs. 3–4).

9 Patent Owner argues that Burrows does not teach or suggest a method that
can be practiced without modifications to the diameter of the hosel bore or
shaft (see Resp. 43–48), but claims 1 and 15 do not contain such a limitation
(see Ex. 1001, 5:27–40, 6:65–7:13).

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Patent Owner does not substantively dispute Petitioner’s contentions
that Burrows teaches or suggests all of the additional limitations recited in
dependent claim 2. See Resp. 19–52; Hearing Tr. 50:9–23.
e. Claims 3, 5, and 19
Claims 3 and 5 recite “axially spacing the shaft outside of a hosel of
the golf club head in a fully assembled state,” and claim 19 recites “wherein
no part of the golf club shaft is received into the hosel.” Petitioner relies on
the teachings of Hartley to supply the limitations recited in these dependent
claims. See Pet. 58–60.
Petitioner contends there is an “explicit motivation in the art” to
combine or modify Burrows by trimming the club shaft and modifying the
adapter system to keep the shaft outside of the hosel. Pet. 49 (citing Ex.
1002 ¶¶ 106–119). According to Petitioner, the “problem of differing
diameters in shafts and club heads was long known in the field of club
making.” Id. at 49 (citing Ex. 1002 ¶ 109; Ex. 1008, 162). Petitioner asserts
that it was also well-known that “a connector-based design that depended on
the shaft being received into the hosel could be problematic” because shafts
for different types of golf clubs have varying diameters. See Pet. 50–51
(citing Ex. 1002 ¶ 110; Ex. 1009 ¶ 22; Ex. 1013, 1–2).
Petitioner contends that a person of ordinary skill in the art would
have looked for a solution to this problem by reviewing prior art in the field
of interchangeably connecting golf club heads and shafts, such as the Burch
reference. Pet. 51–53 (citing Ex. 1002 ¶¶ 112–114; Ex. 1009 ¶¶ 22, 28).
Such references, according to Petitioner, would have taught such a person to
use a connector that does not allow for the shaft to enter the hosel. Id.

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Petitioner asserts that the teachings of Burch would have motivated
one of ordinary skill in the art to combine Burrows with Hartley. Id. at 53–
57. In particular, Petitioner contends that Burrows and Hartley are directed
to the same technology (systems for temporarily and interchangeably
connecting conventional golf club heads and shafts), that they both employ
splines to prevent rotation, and that Hartley’s club shaft is axially spaced
from, and does not enter into, the hosel of Hartley’s club. Pet. 53–55 (citing
Ex. 1002 ¶¶ 107, 115–116; Ex. 1008, 397). Petitioner reasons that one of
ordinary skill, motivated by Burch, would reasonably have expected
combining the teachings of Burrows and Hartley to result in a successful
design that would “increase[e] the scope of combinable club heads and
shafts.” Pet. 55 (citing Ex. 1002 ¶ 116; Ex. 1009 ¶ 22). According to
Petitioner, “such a combination could be easily implemented by trimming
the shaft end portion from Burrows” and “optionally using a shaft adapter
that prevents the shaft from entering the hosel.” Pet. 57 (citing Ex. 1002 ¶
116). Reviewing the totality of the record, we find Petitioner’s motivation-
to-combine evidence to be persuasive.
Patent Owner makes 34 pages of arguments to the contrary, none of
which are persuasive. See Resp. 19–53. We now address each of Patent
Owner’s primary, substantive arguments in turn.
First, Patent Owner argues that one of ordinary skill in the art would
not have combined Burrows and Hartley because Hartley is an “antiquated”
reference that discloses wooden shafts, and Burrows is directed to “modern-
day composite shafts.” Resp. 20–22. According to Patent Owner, “a
POSITA having composite and metal shafts at their disposal today would
not use a wooden shaft,” and “Hartley’s method of using screws to attach the

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shaft to the adapter would not be compatible with modern day equipment,
especially the composite shafts of [Burrows].” Resp. 21. These bodily
incorporation arguments are not persuasive because “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference, but rather
whether ‘a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention.”’
Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d
1373, 1381 (Fed. Cir. 2016). In this case, Petitioner does not propose to
physically incorporate the wooden shaft or screws of Hartley into the
connector of Burrows; rather, Petitioner merely proposes modifying the
connector of Burrows, based upon the teachings of Hartley, so that the shaft
does not enter, and is axially spaced from, the hosel. See Pet. 53–57.
Second, Patent Owner argues that a person of ordinary skill would not
have combined Burrows and Hartley because these references are concerned
with different problems. Resp. 22–24. This argument is not persuasive
because it does not address the motivation to combine set forth by Petitioner,
namely that one of ordinary skill would have known, based on the teachings
of Burch, that keeping the shaft of Burrows outside of the hosel in the
manner taught by Hartley would have solved the well-known problems
created by incompatible club heads and shafts. See Pet. 50–57. Moreover,
we are persuaded by Petitioner’s evidence that, contrary to Patent Owner’s
assertions, modifying Burrows would not necessarily have significantly

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impacted the whip and flex characteristics of the golf club.10 Reply 8–9; Ex.
1023 ¶¶ 94–114. Unlike the testimony offered by Patent Owner (see Ex.
2024 ¶¶ 32–44), the testimony from the Second Vincent Declaration cited by
Petitioner is based on actual test data (see Ex. 1023 ¶¶ 94–114). And Patent
Owner does not persuasively show that any of the potential issues with Dr.
Vincent’s methodology and results set forth in the Sur-Reply would have
fundamentally affected Dr. Vincent’s test results. See Sur-Reply 3–5. We
have reviewed the portions of the Second Vincent Declaration that describe
this testing (Ex. 1023 ¶¶ 81–114) keeping in mind the potential issues
identified by Patent Owner, and we find that Dr. Vincent’s testing
persuasively rebuts Patent Owner’s assertions that the Petitioner-proposed
modifications to Burrows necessarily would have had significant negative
impacts on club performance.
Third, Patent Owner argues that a person of ordinary skill would not
have combined Burrows and Hartley because these references are
mechanically incompatible. Resp. 24–26. This argument is not persuasive
because Petitioner is not proposing to incorporate the physical adapter sleeve
of Hartley, or other mechanical features of Hartley, into the golf club
connector of Borrows. See Pet. 53–57.
Fourth, Patent Owner argues that one of ordinary skill would not have
combined Burrows and Hartley because Burrows discloses a different
solution to the problem of incompatible golf club heads and shafts—
chamfering. Resp. 27–31. The chamfering in Burrows, however, is used for

10 The Second Vincent Declaration (Ex. 1023) is admissible for the purpose
of rebutting the opinions Mr. Burrows set forth in Exhibit 2024. See Paper
49, 9.

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the limited purpose of “defin[ing] a slightly reduced diameter distal end for
facilitated slide-fit reception into the adapter insert 28.” Ex. 1004, 6:47–50.
Patent Owner does not identify any teaching in Burrows that chamfering
could be used to connect adapter insert 28 to golf club shafts of various
sizes—which would require drastic chamfers, rather than the slight chamfer
disclosed in Burrows. See Resp. 27–29; Ex. 1004, 6:47–50. We also find
persuasive the evidence offered by Petitioner that using chamfering for this
purpose would be difficult, might compromise the structural integrity of the
shaft, would not be feasible with certain types of shafts, and would
undesirably affect club performance. See Reply 16–17; Ex. 1023 ¶¶ 22–33,
69, 81–114.
Fifth, Patent Owner argues that one of ordinary skill would not have
been motivated to create a universal connector system. Resp. 31–32. This
argument is not persuasive because Patent Owner never mentions the Burch
reference that Petitioner cites as motivation, much less explains why one of
ordinary skill in the art would have disregarded Burch’s teaching that
allowing for different combinations of shafts and heads would be a
“significant advantage” in a connector system. See id.
Sixth, Patent Owner argues that Hartley would not have taught one of
ordinary skill how to modify Burrows. Resp. 32–33. This argument is
based primarily on the same unpersuasive bodily incorporation arguments
discussed above. This argument is also unpersuasive because Petitioner
relies on the combined teachings of Burrows and Hartley, and not the
teachings of Hartley alone. See Pet. 53–57.
Seventh, Patent Owner argues that one of ordinary skill in the art
would not have had a reasonable expectation of success in combining the

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teachings of Burrows and Hartley. Resp. 33–43. Patent Owner argues,
based on testimony from Bruce Burrows (the named inventor of the Burrows
reference), that Burrows relies on a two-point connection, teaches that the
shaft should be inserted as far as possible into the hosel bore, and teaches
that the chamfered portion of the shaft should be reinforced with a
reinforcement plug. Resp. 33–37 (citing Ex. 2024 ¶¶ 23–24, 27, 29–41);
Sur-Reply 2–5. But having reviewed Burrows, we see no disclosure therein
that rises to the level of a teaching away. Moreover, Petitioner correctly
points out that the two-point connection of Burrows is a connection between
the shaft adapter and the hosel adapter, not a direct connection to the shaft.
Reply 7 (citing Ex. 2024 ¶ 35). In addition, Burrows makes clear that
chamfering is optional. See Ex. 1004, 6:47–50. These facts undermine
Patent Owner’s arguments. Patent Owner also argues, based on the Burrows
Declaration, that Petitioner’s proposed combination of Burrows and Hartley
would yield a club that was likely to fail, and which would have undesirable
performance characteristics. Resp. 38–43. Petitioner attempts to rebut this
argument with testimony from the Second Vincent Declaration describing
testing of physical prototypes of the allegedly obvious golf club. See Reply
9–10 (citing Ex. 1023 ¶¶ 81–114). In its Sur-Reply, Patent Owner disputes
the reliability of Dr. Vincent’s testing. But Patent Owner’s attacks are
relatively weak. For example, Patent Owner’s arguments regarding
statistical differences in test results and Dr. Vincent’s testing methodology
(see Sur-Reply at 3–5) appear to be relatively minor quibbles, and do not
persuasively demonstrate that Dr. Vincent’s ultimate conclusions were
incorrect. And the fact that Dr. Vincent used “modern equipment not
available at the relevant time” does not undermine the rebuttal value of his

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testimony. Petitioner does not rely on this testimony as affirmative evidence
that one of ordinary skill in the art, at the time of the invention, would have
expected to succeed. See Pet. 55 (citing Ex. 1002 ¶ 116; Ex. 1009 ¶ 22).
Petitioner offers this testimony for the limited purpose of rebutting the
testimony of Mr. Burrows that a modified club would have failed or had
undesirable performance characteristics.11 The Second Vincent Declaration
is persuasive evidence for this purpose. We additionally note, as Petitioner
points out in its Reply, that the Petitioner-proposed modifications would
have yielded a club with an adapter similar to the one disclosed in Burch—a
design a skilled artisan would have expected to work. See Reply 8 (citing
Ex. 1023 ¶ 17). On this record, we are persuaded that one of ordinary skill
in the art would have had a reasonable expectation of success. See Pet. 55
(citing Ex. 1002 ¶ 116; Ex. 1009 ¶ 22).
Eighth, Patent Owner argues that neither Burrows, nor the
combination of Burrows and Hartley, teaches a method that can be practiced
without modifications to the diameter of the hosel bore or shaft. See Resp.
43–53. This argument is not persuasive because none of the challenged
claims requires a method that can be performed “without modifications to
the diameter of the hosel bore or shaft.” Patent Owner is correct in its
assertion that the specification of the ’899 Patent discloses an embodiment
that does not require such modifications (see Resp. 43–44; Ex. 1001, 1:61–
63, 1:67, 2:3, 2:29–33, 2:44–47, 4:39–42), but this disclosure is not claimed.
And, as discussed above, we find that the testing evidence in the Second
Vincent Declaration (Ex. 1023 ¶¶ 81–114) persuasively rebuts the testimony

11 See supra n.10.

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in the Burrows declaration that the modified club would have failed or had
undesirable performance characteristics.
2. Ground 2: Obviousness of Claims 1–3, 5, 15, 16, and 19, over
Burrows
Claim 16 depends from claim 15, and recites the further step of
“utilizing tool engagement surfaces on [the] compression nut to rotate the
compression nut relative to the golf club head and the golf club shaft.” Ex.
1001, 7:14–16.
As discussed above, Petitioner contends that Burrows teaches or
suggests all limitations of claim 15. See supra § II.E.1.c. Petitioner
contends that compression nut 44 of Burrows also includes tool engagement
surfaces, and that Burrows thus teaches utilizing tool engagement surfaces in
the manner recited in claim 16. Pet. 61–62 (citing Ex. 1002 ¶¶ 130–131;
Ex. 1004 Fig. 3). Patent Owner does not dispute Petitioner’s contention that
Burrows teaches or suggests all limitations of claim 16. See Resp. 53–57
(not substantively addressing claim 16); Hearing Tr. 50:9:23.
For purposes of this decision, we find it unnecessary to address
Petitioner’s remaining contentions regarding the remaining claims
challenged in Ground 2.
3. Ground 3: Obviousness of Claim 16 over Burrows and Wood
For purposes of this decision, we find it unnecessary to address
Petitioner’s contentions regarding Ground 3.
F. Determinations Regarding Obviousness
For the foregoing reasons, and considering all of the evidence of
record, including the level of ordinary skill in the art, the proffered evidence

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regarding secondary considerations, the scope and content of the prior art,
and the differences (if any) between the claimed subject matter and the prior
art, we make the following determinations.
We find that Petitioner has persuasively shown that Burrows teaches
or suggests all limitations of claims 1, 2, 15, and 16. See supra §§ II.E.1,
II.E.2; Pet. 20–49, 61–65; Ex. 1002 ¶¶ 37–47, 56–105, 129–131. As
discussed above, Patent Owner does not dispute the unpatentability of these
claims. See Resp. 19–52; Hearing Tr. 50:9:23. Weighing all of the evidence
of record, including Patent Owner’s evidence as to secondary considerations,
we determine that Petitioner has proven by a preponderance of the evidence
that claims 1, 2, 15, and 16, are unpatentable over Burrows pursuant to 35
U.S.C. § 103(a).
Petitioner also has persuasively demonstrated that one of ordinary
skill in the art who had knowledge of the teachings of Burrows, Burch, and
Hartley, would have had a strong motivation to trim the club shaft of
Burrows and modify the adapter system of Burrows to keep the shaft outside
of the hosel. Pet. 49 (citing Ex. 1002 ¶¶ 106–119). We also find that
Petitioner would have had a reasonable expectation of success in so doing,
and that the resulting modified embodiment would have satisfied all
limitations of claims 3, 5, and 19. See supra § II.E.1.e; Pet. 49–60; Reply 2–
26; Ex. 1002 ¶¶ 37–53, 106–127; Ex. 1023 ¶¶ 13–41, 81–154; Ex. 1024
¶¶ 12–79.
Weighing all of the evidence of record, including Patent Owner’s
evidence of secondary considerations, we determine that Petitioner has
proven by a preponderance of the evidence that claims 3, 5, and 19, are
unpatentable over Burrows and Hartley pursuant to 35 U.S.C. § 103(a).

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III. REVISED MOTION TO AMEND
In its Revised Contingent Motion to Amend (Paper 51, “Revised
Motion to Amend” or “MTA”), Patent Owner moves, pursuant to 35 U.S.C.
§ 316(d)(1) and 37 C.F.R. § 42.121, to replace claims 1–3, 5, 15, 16, and 19
of the ’899 Patent, with proposed substitute claims 20–26. MTA 1. The
Revised Motion to Amend is contingent on our determination as to whether
Petitioner has demonstrated by a preponderance of the evidence that original
claims 1–3, 5, 15, 16, and 19, are unpatentable. Id.
As discussed above, we determine that original claims 1–3, 5, 15, 16,
and 19 have been shown by a preponderance of the evidence to be
unpatentable. See supra § II.F. We, therefore, proceed to address Patent
Owner’s Revised Motion to Amend.
A. Proposed Substitute Claims
Patent Owner submits the following proposed substitute claims 20–26
(with strikethroughs indicating deleted text, underscoring indicating added
text, and bracketed references added):
20. [pre] A method of assembling a golf club, comprising:
[a] providing a golf club head;
[b] providing a head adapter comprising a non-circular anti-
rotation bore;
[c] providing a golf club shaft;
[d] providing a shaft adapter comprising a sleeve sized and
dimensioned to receive the tip end of the shaft, an
intermediate portion, and a noncircular anti-rotation
projection, wherein the intermediate portion is axially
interposed between the sleeve and the anti-rotation
projection and the outer diameter of the anti-rotation
projection is less than the inner diameter of the sleeve;

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[e] wherein the non-circular anti-rotation bore of the head
adapter is sized and shaped to receive the non-circular
anti-rotation projection of the shaft adapter;
[f] securing the head adapter into a hosel bore of the golf club
head;
[g] securing the golf club shaft into the sleeve of the shaft
adapter;
[h] arranging a compression nut generally in a region of
interface between the golf club head and the golf club
shaft, the compression nut having first threading and
freely rotatable relative to the golf club head and the golf
club shaft;
[i] arranging a second threading on at least one of the golf club
shaft and the golf club head;
[j] sliding the non-circular anti-rotation projection of the shaft
adapter into the non-circular anti-rotation bore of the
head adapter along an anti-rotation slide interface
between the adapters;
[k] freely rotating the compression nut relative to the golf club
head and the golf club shaft; and
[l] drawing the golf club head and the golf club shaft tightly
together by said freely rotating; and
[m] axially spacing the golf club shaft outside of the hosel of
the golf club head in a fully assembled state.

21. [pre] The method of claim 1 20, further comprising:
[a] securing a head adapter to the golf club head;
securing a shaft adapter to the golf club shaft;
facilitating linearly linear translation without rotation
between the shaft and head adapters along an the anti-
rotation slide interface between the adapters during said
drawing; and
[b] wherein said sliding comprises sliding an axial length of the
anti-rotation projection into an axial length of the anti-
rotation bore such that the anti-rotation projection and
anti-rotation bore engage along at least one surface that is
parallel to said axial lengths.

22. [pre] The method of claim 2 21, further comprising:

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[a] axially spacing the shaft sleeve portion of the shaft adapter
outside of a hosel of the golf club head the hosel adapter
in a the fully assembled state.

23. [pre] The A method of claim 2, further assembling a golf
club, comprising:
[a] axially spacing the shaft outside of a hosel of the golf club
head in a fully assembled state.
providing a golf club head;
[b] securing a head adapter to the golf club head;
[c] providing a golf club shaft;
[d] securing a shaft adapter to the golf club shaft;
[e] arranging a compression nut generally in a region of
interface between the golf club head and the golf club
shaft, the compression nut having first threading and
freely rotatable relative to the golf club head and the golf
club shaft;
[f] arranging a second threading on at least one of the golf club
shaft and the golf club head;
[g] freely rotating the compression nut relative to the golf club
head and the golf club shaft;
[h] drawing the golf club head and the golf club shaft tightly
together by said freely rotating;
[i] facilitating linear translation without rotation between the
shaft and head adapters along a non-circular anti-rotation
slide interface having at least one surface that is parallel
to an axial length between the adapters during said
drawing; and
[j] axially spacing the shaft outside of a hosel of the golf club
head in a fully assembled state.

24. [pre] A method of assembling a golf club, comprising:
[a] providing a golf club head;
[b] providing a hosel adapter comprising a non-circular anti-
rotation bore;
[c] providing a golf club shaft;
[d] providing a shaft adapter comprising a sleeve sized and
dimensioned to receive the tip end of the shaft and a non-
circular anti-rotation projection, wherein the sleeve

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portion is axially spaced from the anti-rotation projection
and the anti-rotation projection has an outer diameter that
is less than the outer diameter of the shaft;
[e] arranging a compression nut generally in a region of
interface between the golf club head and the golf club
shaft, the compression nut having first threading and
freely rotatable relative to the golf club head and the golf
club shaft;
[f] installing a the shaft adaptor adapter on the golf club shaft
with the golf club shaft received into a the sleeve portion
on of the shaft adaptor adapter;
[g] installing the hosel adaptor adapter into the hosel of the golf
club head;
[h] sliding the non-circular anti-rotation projection into the non-
circular anti-rotation bore in the hosel adapter along an
anti-rotation slide interface between the adapters;
[i] freely rotating the compression nut relative to the golf club
head and the golf club shaft; and
[j] drawing the golf club head and the golf club shaft tightly
together by said freely rotating;
[k] wherein no part of the golf club shaft is received into the
hosel.

25. [pre] The method of claim 15 24,:
[a] wherein said sliding comprises sliding an axial length of the
anti-rotation projection into an axial length of the anti-
rotation bore such that the anti-rotation projection and
anti-rotation bore engage along at least one surface that is
parallel to said axial lengths; and further comprising
[b] utilizing tool engagement surfaces on the compression nut
to rotate the compression nut relative to the golf club
head and the golf club shaft.

26. [pre] The method of claim 15 24, wherein
[a] no part of the golf club shaft adapter sleeve is received into
the hosel adapter.
MTA, A1–A11.

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B. Procedural Requirements
“Before considering the patentability of any substitute claims, . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121.” Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4
(PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”).
In its Response to the Revised Motion to Amend (Paper 58, “MTA
Opp.”), Petitioner contends that the proposed amendments impermissibly
broaden the scope of the challenged claims, but does not otherwise dispute
that these requirements are met. See generally MTA Opp. For the reasons
set forth below, we determine that Patent Owner has satisfied these statutory
and regulatory requirements.
First, the Motion to Amend proposes a reasonable number of
substitute claims. 35 U.S.C. § 316(d)(1)(B). “There is a rebuttable
presumption that a reasonable number of substitute claims per challenged
claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4–5 (citing
37 C.F.R. § 42.121(a)(3)). The Petition challenges seven claims. Pet. 5.
The Motion to Amend proposes seven substitute claims. MTA 1–2. We
determine that the number of proposed substitute claims is reasonable.
Second, the proposed substitute claims respond to a ground of
unpatentability involved in this trial. Lectrosonics, Paper 15 at 5–6. Patent
Owner seeks to amend original independent claim 1 so as to include
limitations that previously were recited in dependent claims 2 and 3, along
with new limitations that appear to be reasonable attempts to distinguish the
proposed substitute claim from the prior art. MTA 3, A1–A3. Patent Owner
seeks to amend original independent claim 15 so as to include limitations

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that previously were recited in dependent claim 19, along with new
limitations that appear to be reasonable attempts to distinguish the proposed
substitute claim from the prior art. Id. at 3, A8–A9. Patent Owner seeks to
amend claim 5 by rewriting that claim in independent form so that it recites
all limitations that were previously incorporated by way of dependence,
along with new limitations that appear to be reasonable attempts to
distinguish the proposed substitute claim from the prior art. Id. at 3, A6–A7.
Patent Owner seeks to make several additional amendments to original
claims 2, 3, 16, and 19, all of which appear to be reasonable attempts to
distinguish those proposed substitute claims from the prior art. Id. at 3, A4–
A5, A10–A11.
Third, “[a] motion to amend may not present substitute claims that
enlarge the scope of the claims of the challenged patent or introduce new
subject matter.” Lectrosonics, Paper 15 at 6–8 (citing 35 U.S.C. § 316(d)(3);
37 C.F.R. § 41.121(a)(2)(ii)). We determine that the proposed substitute
claims retain all limitations that were previously recited in the original
claims, and add additional limitations to each claim. See MTA, 3. For the
reasons set forth below, we are not persuaded by Petitioner’s argument that
the addition of the term “tightly” somehow broadens the scope of the
substitute claims (see infra § III.C.1) or introduces new matter not supported
by the specification (see infra § III.D).
In addition, the Motion to Amend includes a claim listing, as required
by 37 C.F.R. § 42.121(b). MTA A1–A11.
Because the Motion to Amend meets the statutory requirements of
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whether Petitioner has met its burden of persuasion with respect to
patentability.
C. Claim Construction
Patent Owner contends that we need not expressly construe any of the
terms recited in substitute claims 20–26. MTA 11.
It appears, however, that there is a dispute between the parties
regarding the meaning of the term “tightly” as recited in proposed substitute
claims 20, 23, and 24. See MTA Opp. 1–2. It also appears that there is a
dispute regarding the meaning of the phrase “the outer diameter of the anti-
rotation projection” in proposed substitute claim 20, and the similar term
“the anti-rotation projection has an outer diameter” in proposed substitute
claim 24. See id. at 2–3.
1. “tightly”
Petitioner asserts in its Opposition to the Revised Motion to Amend
that the addition of the term “tightly” broadens the claims scope of proposed
substitute claims 20, 23, and 24, by eliminating a requirement for some type
of “gross movement.” MTA Opp. 1. According to Petitioner, we
determined in our Preliminary Guidance (Paper 41) that the original claims
required “gross movement.” Id. (citing Paper 41, 5). Eliminating this
requirement, Petitioner reasons, impermissibly broadens those claims. Id.
We disagree.
Our Preliminary Guidance was a preliminary, non-binding document.
Paper 41, 3. And contrary to Petitioner’s assertion, we did not take a
position in that document as to whether or not the original claims required
“gross movement.” See Paper 41, 5. Nor do we take such a position now.

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Original claims 1 and 15 recited “drawing the golf club head and the
golf club shaft together by said freely rotating.” Ex. 1001, 5:39–40.
Proposed substitute claims 20, 23, and 24 recite “drawing the golf club head
and the golf club shaft tightly together by said freely rotating.” MTA A2,
A6, A9 (emphasis added). The original and proposed substitute claims both
require the same type of movement—drawing the golf club head and the
golf club shaft together. The difference is that the proposed substitute
claims encompass only methods in which these components be drawn
“tightly” together, whereas the original claims encompass methods in which
the golf club head and the golf club shaft are drawn together tightly or
loosely. Thus, the addition of the word “tightly” does not broaden the scope
of proposed substitute claims 20, 23, and 24. Having resolved the issue in
controversy, we decline to further construe this claim term. See Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
1017 (Fed. Cir. 2017).
2. “the outer diameter of the anti-rotation projection,” “the anti-
rotation projection has an outer diameter”
Petitioner contends that the claim term “the outer diameter of the anti-
rotation projection is less than the inner diameter of the sleeve” in proposed
substitute claim 20, and the similar term “the anti-rotation projection has an
outer diameter that is less than the outer diameter of the shaft” in proposed
substitute claim 24 cannot be construed because the recited anti-rotation
projections are non-circular, and “non-circular shapes such as hexagons and
squares do not have diameters.” MTA Opp. 2 (citing Ex. 1085, 74:18–75:6).
As discussed below, however, the ’899 Patent uses the term “diameter” to
describe a measurement of non-circular shapes.

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An excerpt from Figure 1 of the ’899 Patent is reproduced below.

This excerpt of Figure 1 depicts shaft adapter 22 having intermediate portion
28, and shaft portion 32. Ex. 1001, 2:38–40. “[I]ntermediate portion 28 is
generally cylindrical,” and “shaft portion 32 is generally axial and, when
viewed from below, has a hexagonal shape.” Id. at 2:55–59. The
specification goes on to describe hexagonal shaft portion 32 as having “an
outer diameter that is less than the outer diameter of the intermediate portion
28.” Id. at 2:61–63. It is apparent from this portion of the specification and
Figure 1 that the term “outer diameter” is being used to describe some
measurement of a width of hexagonal shaft portion 32.

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In the Third Vincent Declaration, Petitioner’s declarant cites three
dictionary definitions of “diameter,” which are reproduced below.

Ex. 1088 ¶ 31. Dr. Vincent’s first definition uses the term “diameter” solely
with respect to a circle, a conic, or a set of numbers, and thus is not helpful.
But Dr. Vincent’s second definition is broader, defining “diameter” as “a. A
straight line segment passing through the center of a figure, esp. of a circle
or sphere, and terminating at the periphery. b. The length of such a
segment.” Ex. 1088 ¶ 31 (citing Ex. 1103). Dr. Vincent’s third definition
similarly defines “diameter” as “b. a straight line passing from side to side
of any figure or body, through its center. 2. the length of such a line.”
Ex. 1088 ¶ 31 (citing Ex. 1004). These two definitions, which define the
term “diameter” to refer to a measurement of the width of a figure or body
along a line that passes through the center of the figure or body, are
consistent with the ’899 Patent specification’s use of the term “diameter” to
refer to a width of a hexagon.

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Patent Owner’s declarant, Dr. Mase, correctly points out that the ’899
Patent “specification calls for a comparison between the outer diameter of a
hexagon to the outer diameter of a circle.” Ex. 2129 ¶ 42; Ex. 1001, 2:61–
63. According to Dr. Mase, “[t]he means of performing this comparison
would be plain and clear to a POSITA, as a POSITA would find the
diameter of the smallest circle that encloses that hexagon (i.e., the outer
diameter of the hexagon) and compare that diameter to the outer diameter of
circular intermediate portion 28.” Ex. 2129 ¶ 42.
The Third Vincent Declaration includes an illustration that helps
explain Dr. Mase’s definition, which is reproduced below.

Ex. 1088 ¶ 33. The illustration above depicts a blue triangle, and a red circle
that is the smallest circle that can enclose that triangle. See id. The diameter
of the red circle is depicted as a green line. See id.
The Third Vincent argues that the term “diameter” could also refer to
measurements from one side of the triangle to the other, and that such
measurements would yield different diameters, or other widths or
thicknesses. Ex. 1088 ¶ 33. The below illustration from the Third Vincent
Declaration depicts examples of two other “diameters” of the triangle
depicted above.

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Id. The above illustration depicts a blue triangle and two separate black
lines, each of which passes through the center of the triangle. Id. According
to Dr. Vincent, these black lines would also constitute “diameters” under the
above dictionary definitions. Id. Thus, Dr. Vincent concludes that the term
“diameter” is indefinite as applied to non-circular shapes. Id.
We note, however, that if a circle encloses a shape, the diameter of the
circle (i.e., the maximum width of the circle) will always be equal to or
greater than the diameter of the enclosed shape. This is necessarily true
because a circle cannot enclose a shape if the shape is wider in any
dimension than the circle. Accordingly, if the outer diameter of a non-
circular anti-rotation projection, measured according to Dr. Mase’s
definition, is “less than the inner diameter of the sleeve” as recited in
proposed substitute claim 20, or “less than the outer diameter of the shaft” as
recited in proposed substitute claim 24, those limitations also would be
satisfied under any of Dr. Vincent’s alternative definitions.
As set forth below, we find that the cited prior art references teach or
suggest non-circular anti-rotation projections having outer diameters that
satisfy both of these claim limitations when the diameter is calculated by the

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method proposed by Patent Owner’s declarant, Dr. Mase. See Ex. 2129
¶ 42. Accordingly, the prior art anti-rotation projections necessarily satisfy
these limitations under any of the alternative definitions set forth by
Petitioner’s declarant, Dr. Vincent. See Ex. 1088 ¶ 33. Thus, for purposes
of this Decision, we need not resolve the dispute between the parties as to
which definition is correct in order to reach a determination as to whether
the proposed substitute claims are unpatentable under 35 U.S.C. § 103(a).
As discussed below, we also do not reach the issue of indefiniteness.
We decline to further construe these claim terms because we need not
do so in order to resolve the issues in dispute. See Nidec, 868 F.3d at 1017.
D. Patentability of the Proposed Substitute Claims under 35 U.S.C. § 112
Petitioner argues that proposed substitute claims 20, 21, and 23–25,
are unpatentable under 35 U.S.C. § 112 because “there is no written
description or enablement of drawing ‘tightly’ together while also ‘freely
rotating,’ because it is impossible to do both; to tighten requires rotation by
force.” MTA Opp. 2. This argument is not persuasive because it incorrectly
conflates the claim term “rotating,” which describes the motion of the
compression nut relative to the golf club head and shaft, with the claim term
“drawing . . . tightly together,” which describes the motion of the golf club
head and shaft themselves. See MTA, A1–A2. Because these two claim
terms describe different motions, we do not agree that it would be
“impossible to do both.” We find, on this record, that the specification
provides adequate written description support for, and enables, this
limitation. See, e.g., Ex. 1001, 4:13–17.

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Petitioner also argues that the claim terms “outer diameter of the anti-
rotation projection” and “the anti-rotation projection has an outer diameter”
are indefinite because they lack antecedent basis, and because one of
ordinary skill would not understand this term. MTA Opp. 1–3, 10. As
discussed below, however, we determine that the proposed substitute claims
are all unpatentable under 35 U.S.C. § 103(a). Accordingly, we need not,
and do not, reach Petitioner’s indefiniteness argument.
E. Patentability of the Proposed Substitute Claims under 35 U.S.C.
§ 103(a)
Petitioner asserts in its Opposition to the Revised Motion to Amend
that the proposed substitute claims are unpatentable on the following
grounds:
Ground Claim(s)
Challenged
35 U.S.C. § Reference(s)
1 20–26 103(a) Burrows, Hartley, Wheeler,12
Burrows ’10613
2 20–26 103(a) Burch, Burrows, Hartley,
Wood, Burrows ’106

1. Level of Ordinary Skill in the Art
When analyzing the substitute claims, we apply the same formulation
regarding the level of ordinary skill in the art that we applied when
analyzing the original claims. See supra § II.B.

12 U.S. Patent App. Pub. No. 2007/0265106 A1, published Nov. 15. 2007
(Ex. 1086).
13 U.S. Patent No. 3,524,646, issued Aug. 18, 1970 (Ex. 1087).

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2. Secondary Considerations
Patent Owner’s secondary considerations arguments regarding the
proposed substitute claims are similar to its arguments regarding the original
claims, and are unpersuasive for similar reasons.
Patent Owner begins its secondary considerations arguments by
attempting to incorporate by reference arguments set forth in 51 paragraphs
of Exhibit 2025 (the Plumpe Declaration), 27 paragraphs of Exhibit 2088
(the Second Mase Declaration), the entirety of Exhibits 2004 and 2012 (a
video from Petitioner’s website and a photograph of Faz-Fit packaging), and
one paragraph of Exhibit 2023 (the Declaration of Hoyt McGarity). Our
rules, however, prohibit such attempts to incorporate by reference arguments
from other papers. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be
incorporated by reference from one document into another document.”)
Accordingly, we disregard these improper attempts to incorporate from other
documents arguments that are not fully set forth in the Revised Motion to
Amend. We also disregard all other arguments regarding secondary
considerations that Patent Owner does not fully set forth in its Revised
Motion to Amend. We now consider the arguments set forth in its Revised
Motion to Amend.
Patent Owner argues that it is entitled to a presumption of nexus
because “the Faz-Fit connector is coextensive with the features of the
substitute claims.” MTA 20. But Patent Owner never explains in its
Revised Motion to Amend why the amended claims are co-extensive with
the Faz-Fit connector. See id. at 20–21. Instead, it attempts to demonstrate
this by improperly incorporating by reference arguments from Ex. 2088 (the
Second Mase Declaration). Because Patent Owner does not explain in its

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Revised Motion to Amend why it is entitled to a presumption of nexus,
Patent Owner fails to carry its burden on this issue.
But even assuming, arguendo, that Patent Owner is entitled to
presumption of nexus, Petitioner has set forth sufficient evidence to rebut
such a presumption. Patent Owner’s Revised Motion to Amend never
identifies the features of the Faz-Fit connector that allegedly differentiated it
from the prior art, resulting in commercial success and industry praise. See
MTA 21–24. But it appears that Patent Owner is relying on the same
features of the Faz-Fit that it contended in its Response led to commercial
success and industry praise, i.e., the ability of the Faz-Fit connector to allow
“the shaft to remain outside of the hosel . . . without requiring any
modification to the golf club shaft or the golf club head.” Resp. 69–70
(emphasis in original). Like the original claims, however, the proposed
substitute claims fail to claim the feature of not requiring modifications to
the golf club shaft or the golf club head. See MTA, A1–A11. Thus, to the
extent this feature drove commercial success or industry praise, we agree
with Petitioner that there would be no nexus to the claimed invention. See
MTA Opp. 21. And to the extent commercial success resulted from the
claimed feature of allowing the golf club shaft to remain outside of the
hosel, we agree with Petitioner that such success would not be due to novel
aspects of the claimed invention because that feature was known in the prior
art. See supra § II.D.1; MTA Opp. 22; Ormco Corp. v. Align Tech., Inc.,
463 F.3d 1299, 1312 (Fed. Cir. 2006) (internal citation omitted) (“Evidence
of commercial success, or other secondary considerations, is only significant
if there is a nexus between the claimed invention. . . . [I]f the feature that
creates the commercial success was known in the prior art, the success is not

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pertinent.”); J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571
(Fed. Cir. 1997) (“[T]he asserted commercial success of the product must be
due to the merits of the claimed invention beyond what was readily available
in the prior art.”).
In addition, even if Patent Owner had established a nexus, its evidence
would still be insufficient to persuasively demonstrate that the Faz-Fit
connector was a commercial success or received industry praise. Patent
Owner again cites sales figures, but fails to offer any persuasive evidence in
its Revised Motion to Amend, or in the Reply In Support of the Revised
Motion to Amend (Paper 64, “MTA Reply”), that would allow us to
determine the size of the relevant market. See MTA 21–24; MTA Reply 11–
12; Ex Parte Jella, 90 U.S.P.Q.2d 1009 (BPAI 2008) (precedential). Given
the absence of such evidence, we are not persuaded that the Faz-Fit
connector was a commercial success. Patent Owner also fails to allege,
much less prove, that any of the alleged industry praise set forth in its
Revised Motion to Amend related to or resulted from the allegedly novel
features of the Faz-Fit connector. Thus, we are not persuaded that Patent
Owner has identified any relevant evidence of industry praise. See ClassCo,
Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016) (“[P]raise focused
on conventional features in the prior art” is “properly discounted.”).
Patent Owner makes an additional allegation that Petitioner’s own
success was due to the Faz-Fit connector. MTA 24–25; MTA Reply 11–12.
It is not disputed that Petitioner purchased Faz-Fit connectors for some of its
stores before Patent Owner obtained rights to the ’899 Patent. Reply 25
(citing Ex. 2051; Ex. 1068, 145:6–10). But this fact does not demonstrate
that Petitioner’s stores were successful or that any such success was due to

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the Faz-Fit connector, much less that the Faz-Fit connector was a sufficient
commercial success in the relevant market to be material to patentability.
None of Patent Owner’s arguments regarding Petitioner’s alleged use of the
Faz-Fit connector persuasively demonstrates that the Faz-Fit was a
commercial success.
For the foregoing reasons, we determine that Patent Owner’s evidence
regarding secondary considerations is entitled to little or no weight in the
obviousness analysis.
3. Scope and Content of the Prior Art; Differences Between
Claimed Subject Matter and Prior Art
a. Ground 1: Alleged Obviousness of Substitute Claims 20–
26 over Burrows, Hartley, Wheeler, and Burrows ’106
Regarding proposed substitute claim 20, elements14 [a], [c], [h], [i],
[k], and [l] (with the exception of the word “tightly”) are identical to
corresponding elements in original claim 1. Compare MTA, A1–A2, with
Ex. 1001, 5:26–40. As discussed above, Petitioner has offered persuasive
evidence in support of its contentions that Burrows teaches or suggests each
of these claim limitations, and Patent Owner does not dispute these
contentions. See supra § II.E.1.c; see also MTA 11–17 (not disputing that
Burrows discloses these limitations of substitute claim 20). Thus, we are
persuaded that Burrows teaches or suggests each of these limitations of
proposed substitute claim 20.

14 We refer to elements of the substitute claims using the bracketed reference
letters set forth in the Revised Motion to Amend (see MTA, A1–A11), and
reproduced above (see supra § III.A).

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In addition, the recitations of “providing a head adapter” in element
[b], “providing a shaft adapter” in element [d], “securing the head adapter”
to “the golf club head” in element [f], and “securing the golf club shaft” to
“the shaft adapter” in element [g], were copied from original dependent
claim 2. As discussed above, Petitioner also has offered persuasive evidence
in support of its contentions that Burrows teaches or suggests each of these
claim limitations, and Patent Owner does not dispute these contentions. See
supra § II.E.1.d; MTA 11–17. We are persuaded that Burrows also teaches
these limitations of proposed substitute claim 20.
Element [m] of proposed substitute claim 20 was copied from original
dependent claim 3. We have already found that a person of ordinary skill in
the art, in view of the combined teachings of Burrows and Hartley, would
have had reason to modify Burrows so that the golf club shaft was axially
spaced outside of the hosel of the golf club head in a fully assembled state,
as required by element [m]. See supra § II.E.1.e.
In its Revised Motion to Amend and the accompanying Reply, Patent
Owner makes several arguments to the contrary that are similar to arguments
set forth in its Response. See MTA 13–17; MTA Reply 7. We reject these
arguments for similar reasons. In particular, for substantially the same
reasons set forth above (see supra § II.E.1.e), we are not persuaded by Patent
Owner’s assertions that Burrows teaches away from the proposed
combination (see MTA 13–14), and that neither Hartley nor Burch would
have motivated a person of ordinary skill to modify Burrows in the manner
proposed by Petitioner (see id. at 14–15). We also find for the same reasons
set forth above that nothing in Burrows constitutes a teaching away, and that
one of ordinary skill in the art, having knowledge of the teachings of

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Burrows, Burch, and Hartley, would have had a strong motivation to modify
Burrows in the proposed manner. See supra § II.E.1.e; MTA Opp. 4–7.
Patent Owner additionally argues that “Burrows was pointedly not
brand agnostic.” See MTA 14. But as discussed in detail above, Petitioner
cites Burch, not Burrows, as providing the motivation to design a brand-
agnostic connector. See supra § II.E.1.e; Ex. 1009 ¶ 4 (“It is a significant
advantage of the present invention that the connector . . . allows [golf club]
shops to create as many different shaft and club head combinations as may
be desired,” and “allows for combinations of shafts and heads of different
shaft component and head components manufacturers.”).
Regarding the issue of a reasonable expectation of success, we found
above, based on the First Vincent Declaration and the teachings of Burch,
that a person of ordinary skill in the art would have reasonably expected to
be successful in modifying Burrows. See supra § II.E.1.e (Pet. 55; Ex. 1002
¶ 116; Ex. 1009 ¶ 22). In its Revised Motion to Amend, Patent Owner
argues that the testing data in the Second Vincent Declaration somehow
proves the absence of a reasonable expectation of success. MTA 15–17.
Paten Owner argues, for example, that certain statistically significant
differences in Dr. Vincent’s test results, and errors in methodology,
undermine the test results. See id. These arguments are similar to the
arguments Patent Owner raised in its Sur-Reply, and are unpersuasive for
substantially the same reasons. See supra § II.E.1.e. We have reviewed the
Second Vincent Declaration in view of alleged errors set forth by Patent
Owner. See MTA 15–17. We reiterate our finding that Dr. Vincent’s
testimony persuasively rebuts Patent Owner’s arguments that the modified
Burrows club would have failed or had undesirable performance

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characteristics, notwithstanding the alleged issues raised by Patent Owner,
which we find to be mostly minor and insufficient to undermine
Dr. Vincent’s ultimate conclusions. See Ex. 2013 ¶¶ 81–114. Thus, we
remain persuaded that one of ordinary skill in the art would reasonably have
expected to be successful in modifying Burrows in the manner proposed by
Petitioner. See Pet. 55; Ex. 1002 ¶ 116; Ex. 1009 ¶ 22.
Proposed substitute claim 20 includes several additional limitations
that were not present in original claim 1. Limitation [b] has been amended
to require that the head adapter comprise “a non-circular anti-rotation bore,”
and limitation [d] additionally requires that the shaft adapter comprise “a
sleeve sized and dimensioned to receive the tip end of the shaft, an
intermediate portion, and a noncircular anti-rotation projection, wherein the
intermediate portion is axially interposed between the sleeve and the anti-
rotation projection and the outer diameter of the anti-rotation projection is
less than the inner diameter of the sleeve.” Compare MTA, A1–A2, with
Ex. 1001, 5:26–40. Patent Owner also added limitation [e], which recites
“wherein the non-circular anti-rotation bore of the head adapter is sized and
shaped to receive the non-circular anti-rotation projection of the shaft
adapter,” and limitation [j], which recites the step of “sliding the non-
circular anti-rotation projection of the shaft adapter into the non-circular
anti-rotation bore of the head adapter along an anti-rotation slide interface
between the adapters.” Id. Finally, Patent Owner amended limitation [l] so
as to require that the golf club head and shaft be drawn “tightly” together.
Id.
In our discussion of original claim 2, we explained that Burrows
discloses a head adapter (adapter socket 32) that is secured to club head 16, a

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shaft adapter (adapter insert 28) that is secured to golf club shaft 14, and
employs a design that facilitates a linear translation between adapter insert
28 (the shaft adapter) and adapter socket 32 (the head adapter) along an anti-
rotation slide interface between the adapters (splines 30 and 36), as the golf
club head and club shaft are drawn together. See supra § II.E.1.d. In our
discussion of original claim 15, we also found that adapter insert 28 (the
shaft adapter) comprises a sleeve portion that receives golf club shaft 14
(and that must therefore be sized and shaped to receive the tip of the shaft).
See supra § II.E.1.c. Patent Owner does not dispute these contentions.
Hearing Tr. 50:9–23.
Petitioner contends that splines 36 within adapter socket 32 (the head
adapter) comprise a non-circular anti-rotation bore, and that the
corresponding splines 30 on adapter insert 28 (the shaft adapter) are non-
circular anti-rotation projections. MTA Opp. 13–14 (citing Ex. 1023 ¶ 68;
Ex. 1085, 81:21–24; Ex. 1088 ¶¶ 59–62). Petitioner also contends that the
disclosure in Burrows of connecting adapter insert 28 and adapter socket 32
together along splines 30 and 36 teaches that “the non-circular anti-rotation
bore of the head adapter is sized and shaped to receive the non-circular anti-
rotation projection of the shaft adapter,” as well as the step of “sliding the
non-circular anti-rotation projection of the shaft adapter into the non-circular
anti-rotation bore of the head adapter along an anti-rotation slide interface
between the adapters.” See id. Petitioner further contends that adapter insert
28 comprises an “intermediate portion.” Id. at 15 (citing Ex. 1088 ¶ 64).
Petitioner additionally contends that Burrows discloses drawing the golf club
head and shaft “tightly” together. Id. at 12 (citing Ex. 1023 ¶¶ 46, 50–53).
Patent Owner does not substantively dispute Petitioner’s contentions that

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Burrows discloses each of these limitations. See MTA 11–19; MTA Reply
3–9. On this record, we are persuaded that Burrows teaches or suggests each
of these newly-recited limitations.
Petitioner further contends that the “intermediate portion” of Burrows
is “interposed between the sleeve and the anti-rotation projection.” MTA
Opp. 15 (citing Ex. 1088 ¶ 63). Patent Owner disagrees, arguing that the
Petitioner-identified “intermediate portion” is not “axially interposed
between the sleeve and the anti-rotation projection,” as recited in proposed
substitute claim 20. MTA 12 (citing Ex. 2088 ¶¶ 185, 188). But it is
apparent from the cited portions of the Second Mase Declaration that Patent
Owner’s argument is based on the un-modified Burrows design, in which the
golf club shaft extends through sleeve-shaped adapter insert 28 (including
the section that Petitioner identifies as the “intermediate portion”), and into
the hosel. See Ex. 2088 ¶ 185, 188. In the modified Burrows connector,
however, the shaft would not enter the hosel, and thus the “sleeve” that
receives the shaft would be axially separated from the intermediate portion
and the anti-rotation projection. See supra § II.E.1.e; Ex. 1088 ¶¶ 35–39.
We find that Petitioner has persuasively shown that Burrows, modified in
the manner that Petitioner argues would have been obvious in view of the
teachings of Hartley, would satisfy this limitation. MTA Opp. 15 (citing
Ex. 1088 ¶ 63).
The final disputed limitation of proposed substitute claim 20 is the
requirement that “the outer diameter of the anti-rotation projection is less
than the inner diameter of the sleeve.” Petitioner argues that if the diameters
of the Burrows golf club shaft and the hosel bore were kept constant, the
outer diameter of the anti-rotation projection in the modified Burrows

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embodiment would necessarily be less than the inner diameter of the sleeve.
See MTA Opp. 8–10. Specifically, Petitioner reasons that the anti-rotation
projection of adapter insert 28 (the shaft adapter) fits inside of, and thus
necessarily has a smaller outer diameter than, the diameter of adapter socket
32 (the head adapter), and adapter socket 32 fits inside of, and thus
necessarily has a smaller diameter than, the hosel bore. See MTA Opp. 8–10
(citing Ex. 1088 ¶¶ 35–41). If the hosel bore and shaft of Burrows were not
modified, they would both have the same diameters, and the outer diameter
of the anti-rotation projection would necessarily be less than the inner
diameter of the sleeve that encloses (and thus has the same diameter as) the
shaft. See id. We find Petitioner’s reasoning persuasive. If the outer
diameter of the anti-rotation projection (measured according to the method
proposed by Patent Owner’s expert, see supra § III.C.2) were not less than
the inner diameter of the hosel, the anti-rotation projection could not
possibly fit within an adapter socket that, in turn, fits within the hosel.
Petitioner contends that Burch would have motivated a person of
ordinary skill in the art to avoid modifying the hosel bore or shaft diameter
of Burrows when modifying Burrows in view of the teachings of Hartley.
MTA Opp. 7–8 (citing Ex. 1088 ¶¶ 12–22; Ex. 1029, 52:7–11, 66:22–67:6;
Ex. 1009 ¶ 22). We find this argument persuasive. As discussed above,
Burch teaches that it would be a “significant advantage” if a connector were
designed to permit different head and shaft combinations. Ex. 1009 ¶ 4.
Paragraph 22 of Burch further teaches that this significant advantage can be
achieved by configuring the connector so that the components of the
connector are sized to fit various diameters of golf club shafts and club head
hosels, thus making it “possible to interconnect golf club components of

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different manufacturers regardless of whether the shaft and the golf club
head have corresponding diameters and are capable of fitting with one
another absent the connector of the present invention.” MTA Opp. 7–8;
Ex. 1009 ¶ 22; Ex. 1088 ¶¶ 12–22. We agree that Burch would have
motivated one of ordinary skill in the art to avoid changing the golf club
shaft diameter, or the hosel bore diameter, when modifying Burrows in view
of the teachings of Hartley. In such an embodiment, the outer diameter of
the anti-rotation projection would necessarily be less than the inner diameter
of the sleeve.
Proposed substitute claim 21 depends from proposed substitute claim
20, and recites two additional steps. Step [a] of proposed substitute claim 21
was present in original claim 2, and is taught by Burrows for the same
reasons discussed above. See supra § II.E.1.d. Step [b], which is new,
recites “wherein said sliding comprises sliding an axial length of the anti-
rotation projection into an axial length of the anti-rotation bore such that the
anti-rotation projection and anti-rotation bore engage along at least one
surface that is parallel to said axial lengths.” Patent Owner does not
substantively dispute that Burrows satisfies this limitation. See MTA 11–19;
MTA Reply 3–9. We are persuaded that this limitation is satisfied by
Burrows because, when adapter insert 28 and adapter socket 32 are
connected, splines 30 and 36 slide together and engage along surfaces that
are parallel to their lengths. See MTA Opp. 13–14 (citing Ex. 1088 ¶¶ 59–
52).
Proposed substitute claim 22 depends from proposed substitute claim
21, and further recites “axially spacing the sleeve portion of the shaft adapter
outside of the hosel adapter in the fully assembled state.” As discussed

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above, in the modified Burrows embodiment described by Petitioner, the
golf club shaft (and thus the sleeve portion that surrounds the shaft) would
remain outside of the hosel in the fully assembled state. See supra
§ II.E.1.e; Ex. 1088 ¶¶ 35–39. Accordingly, the modified Burrows
embodiment would satisfy this additional limitation.
Regarding independent proposed substitute claim 23, limitations [a],
[c], [e], [f], [g], and [h] (except for the recitation of “tightly”), were all
present in original independent claim 1. Compare MTA, A6, with Ex. 1001,
5:26–40. All of limitation [d], and the recitations of “facilitating linear
translation without rotation between the shaft and head adapters along” an
“anti-rotation slide interface . . . between the adapters during said drawing”
in limitation [i], were present in original claim 2. Compare MTA, A6–A7,
with Ex. 1001, 5:41–46. Limitation [j], was present in original dependent
claim 3. Compare MTA, A7, with Ex. 1001, 5:47–48. The allegedly
obvious modified Burrows embodiment would thus have satisfied each of
these limitations for the same reasons it satisfied the corresponding
limitations of original claims 1–3. See supra § II.E.1. Proposed substitute
claim 23 additionally requires that the golf club head and shaft be drawn
“tightly” together, and that the recited anti-rotation slide interface be “non-
circular” and have “at least one surface that is parallel to an axial length.”
See MTA, A6–A7. We find that these additional limitations are taught or
suggested by Burrows for the same reasons discussed above with respect to
the substantively similar “tightly,” “non-circular anti-rotation projection,”
and “sliding an axial length of the anti-rotation projection into an axial
length of the anti-rotation bore . . . along at least one surface that is parallel
to said axial lengths” limitations of proposed substitute claim 20.

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Proposed substitute independent claim 24 includes limitations [a], [c],
[e], [f], [g], [i], and [j] (except for the recitation of “tightly”), which were
copied verbatim from original independent claim 15. Compare MTA, A8–
A9, with Ex. 1001, 6:65–7:13. The “hosel adapter” of limitation [b] and
“shaft adapter” of limitation [d] also were present in original claim 15. Id.
Limitation [k] was copied from original claim 19. Compare MTA, A9, with
Ex. 1001, 7:11–13. The allegedly obvious modified Burrows embodiment
thus would have satisfied each of these limitations for the same reasons it
satisfied the corresponding limitations of original claims 15 and 19. See
supra § II.E.1. Limitation [b] further recites “comprising a non-circular
anti-rotation bore.” MTA, A8. We find that Burrows teaches this limitation
for the same reasons discussed above with respect to the identical limitation
of proposed substitute claim 20. Limitation [d] further requires that the shaft
adapter comprise “a sleeve sized and dimensioned to receive the tip end of
the shaft and a non-circular anti-rotation projection, wherein the sleeve
portion is axially spaced from the anti-rotation projection and the anti-
rotation projection has an outer diameter that is less than the outer diameter
of the shaft.” MTA, A8–A9. We find that Burrows teaches this limitation
for the same reasons discussed above with respect to limitation [d] of
proposed substitute claim 20.15 Limitation [h] recites “sliding the non-
circular anti-rotation projection into the non-circular anti-rotation bore in the
hosel adapter along an anti-rotation slide interface between the adapters.”

15 For the reasons we explained in our discussion of proposed substitute
claim 20, the “outer diameter of the shaft” as recited in proposed substitute
claim 24, would be the same as the “inner diameter of the sleeve” as recited
in proposed substitute claim 20.

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Id. We find that Burrows teaches this limitation for the same reasons
discussed above with respect to limitation [j] of proposed substitute claim
20. We also find that Burrows teaches drawing the golf club head and golf
club shaft “tightly” together, as recited in limitation [j] of proposed
substitute claim 24, for the same reasons discussed above with respect to
limitation [l] of proposed substitute claim 20.
Proposed substitute claim 25 depends from proposed substitute claim
24. Limitation [b] was copied from original claim 16 (compare MTA, A10,
with Ex. 1001, 7:14–16), and is taught by Burrows for the same reasons
discussed above with respect to claim 16 (see supra § II.E.2). Limitation [a]
recites “wherein said sliding comprises sliding an axial length of the anti-
rotation projection into an axial length of the anti-rotation bore such that the
anti-rotation projection and anti-rotation bore engage along at least one
surface that is parallel to said axial lengths.” MTA, A10. We find that
Burrows teaches this limitation for the same reasons discussed above with
respect to limitation [b] of proposed substitute claim 21.
Proposed substitute claim 26 depends from proposed substitute claim
24, and further recites “no part of the golf club shaft adapter sleeve is
received into the hosel adapter.” MTA, A11. The modified allegedly
obvious modified Burrows embodiment would have satisfied this limitation
for the same reasons discussed above with respect to the similar limitations
of proposed substitute claim 22.

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b. Ground 2: Alleged Obviousness of Substitute Claims 20–
26 over Burch, Burrows, Hartley, Wood, and Burrows
’106
For purposes of this decision, we find it unnecessary to address
Petitioner’s contentions regarding Ground 2.
4. Determinations Regarding Obviousness
For the foregoing reasons, and considering all of the evidence of
record, including the level of ordinary skill in the art, the proffered evidence
regarding secondary considerations, the scope and content of the prior art,
and the differences (if any) between the claimed subject matter and the prior
art, we make the following determinations.
We find that Petitioner has persuasively shown that one of ordinary
skill in the art who had knowledge of the teachings of Burrows, Burch, and
Hartley, would have had a strong motivation to modify Burrows so that the
golf club shaft was axially spaced outside of the hosel of the golf club head
in a fully assembled state, that such a person also would have had a strong
motivation not to alter the diameters of the golf club shaft or the hosel bore
when performing these, and that such a person would have had a reasonable
expectation of success. See supra § III.E.3.a; MTA Opp. 3–14; Ex. 1088
¶¶ 12–22, 27–29, 34–44. We further find that such a modified Burrows
embodiment would have satisfied all limitations of proposed substitute
claims 20–26. See id.
Weighing all of the evidence of record, including Patent Owner’s
evidence concerning secondary considerations, we determine that Petitioner
has proven by a preponderance of the evidence that proposed substitute
claims 20–26 are unpatentable pursuant to 35 U.S.C. § 103(a).

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IV. PATENT OWNER’S MOTION TO EXCLUDE
In its Motion to Exclude (Paper 69, “Mot.”), Patent Owner asks us to
exclude “Exhibits 1031, 1034, 1057-1065, 1071, 1089–1095, and 1098,
paragraphs 32 and 81–114 of Exhibit 1023, paragraphs 12–14, 20, and 23–
76 of Exhibit 1024, and paragraphs 28 and 66–88 of Exhibit 1088.” Mot. 1.
For the reasons set forth below, the Motion to Exclude is denied.
A. Exhibits 1023, 1034, 1057–1065, and 1088
Petitioner contends that Paragraphs 32 and 81–114 of Exhibit 1023
(the Second Vincent Declaration), and Paragraphs 28 and 66–88 of Exhibit
1088 (the Third Vincent Declaration) should be excluded under Federal Rule
of Evidence 702 and 37 C.F.R. §§ 42.51(b)(1), 42.65(a) because “Petitioner
denied Patent Owner a fair inspection and any testing of the golf clubs Dr.
Vincent tested, making it impossible to confirm the facts and data on which
his opinions were based.” Mot. 1–2. Patent Owner contends that “Exhibits
1034 and 1057–1065” relate to the physical testing in Exhibits 1023 and
1088, and should be excluded for the same reason. Id. at 2. We find these
arguments unpersuasive for at least the following reasons.
First, Patent Owner has not persuasively demonstrated that Dr.
Vincent’s opinions should be excluded pursuant to Federal Rule of Evidence
702. Mot. 2–7. Dr. Vincent’s qualifications are more than sufficient to
qualify him to provide testimony under Rule 702 (see Ex. 1002, 95–95), and
based on our review of Exhibits 1023 and 1088, we are persuaded that the
opinions expressed in his Second and Third Declarations are the product of
reliable principles and methods that were reliably applied to the facts of this
case. We note that although Patent Owner has identified certain potential

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flaws in Dr. Vincent’s methodology, Rule 702 does not require perfection.
See Mot. 3–6. In our view, however, such potential flaws go to the weight
of Dr. Vincent’s testimony, and we have considered them in reaching the
determinations set forth above.
Second, we are not persuaded on this record that Dr. Vincent failed to
disclose the facts and data underlying his opinions, as required by 37 C.F.R.
§ 42.65. Mot. 2–7. Exhibits 1023 and 1088 outline the facts and methods
that Dr. Vincent used to reach his opinions in great detail, and include the
information required by 37 C.F.R. § 42.65(b). Petitioner also allowed Patent
Owner to spend more than two hours inspecting the physical prototypes that
Dr. Vincent tested. Paper 71 (“Opposition” or “Opp.”). Patent Owner
asserts that this was not a “fair” inspection, but we find this argument
unpersuasive. Patent Owner does not cite any rule that required that
Petitioner make physical prototypes available for any testing, much less the
extensive types of testing that Patent Owner apparently envisioned. And
preventing Patent Owner from performing after-the-fact tests to generate its
own data, is not the same thing as depriving Patent Owner of access to the
data underlying Dr. Vincent’s opinions. In any event, as we noted
previously (see Paper 49, 7), nothing prevented Patent Owner from creating
and testing its own prototypes to conform or refute Dr. Vincent’s results.
Third, Patent Owner does not offer any persuasive evidence that
Petitioner withheld any materials “inconsistent with a position advanced by
the party” under 37 C.F.R. § 42.51(b)(1)(i)(iii). Mot. 5. Its arguments
regarding this rule appear to be based on mere speculation arising from
Petitioner’s alleged refusal “to answer Patent Owner’s question as to

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whether it conducted any tests that were not revealed to Dr. Vincent.”
See id.
Fourth, we do not agree that Exhibits 1023, 1034, 1057–1065, and
1088 are inadmissible because they are unauthenticated. Mot. 7. As a
preliminary matter, witnesses qualified to offer testimony under Federal
Rule of Evidence 702 may rely on materials that would not otherwise be
admissible. See Fed. R. Evid. 703. Moreover, we find that the evidence set
forth by Petitioner in its Opposition is more than sufficient to satisfy the
requirement of authentication under Federal Rule of Evidence 901, to the
extent that requirement applies here. See Opp. 8–9.
Fifth, we are not persuaded that any of the cited exhibits are
“irrelevant.” Mot. 8. The materials that Patent Owner seeks to exclude all
appear to be relevant at least for the purpose of rebutting the opinions of Mr.
Burrows set forth in Exhibit 2024.
Sixth, the materials that Patent Owner seeks to exclude are not
“outside of the scope of inter partes review.” Mot. 8. Though a petitioner
in an inter partes review may only challenge a patent based on prior art
consisting of patents and printed publications, our rules allow a petitioner to
support evidence in support of its contentions, including declarations and
supporting exhibits.
Seventh, there is no basis to exclude Exhibit 1088 under 37 C.F.R.
§ 42.51(b)(1)(i). Mot. 8–9. Petitioner did not submit a declaration from Mr.
Sherburne, so it is unclear why Patent Owner believes it was entitled to take
his deposition. In any event, Dr. Vincent was entitled to rely on Mr.
Sherburne’s statements under Rule 703. See Opp. 11–12.

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Eighth, Patent Owner waived its objections to many of these
documents. Patent Owner did not timely object to any of the challenged
exhibits under 37 C.F.R. § 42.65(a). See generally Paper 43. Patent Owner
also did not object to Exhibits 1034 or 1057–1064 on the basis of Federal
Rule of Evidence 702 or 37 C.F.R. § 42.51(b)(1). See Paper 43, 4, 8–10.
Patent Owner may not raise objections in a motion to exclude that were not
properly preserved. See 37 C.F.R. § 42.64.
For each of the above reasons, we decline to exclude Exhibits 1023,
1034, 1057–1065, and 1088. But, to the extent Patent Owner’s objections
bear on the persuasiveness of Dr. Vincent’s testimony, we have considered
them in deciding how much weight to accord to that testimony.
B. Exhibits 1024 and 1089–1095
Patent Owner asks us to exclude Paragraphs 12–14, 20, and 23–76 of
Exhibit 1024 (the Hoffman Declaration) because these paragraphs allegedly
relied on “undisclosed testimony or exhibits inaccessible to Patent Owner in
this proceeding.” Mot. 11. But in its Objections to this exhibit, Patent
Owner only cited Federal Rules of Evidence 401 and 403
(relevance/prejudice), and Federal Rules of Evidence 801 and 802 (hearsay).
We consider any objections under Rules 401 and 403 as going to weight,
rather than admissibility. The Hoffman Declaration constitutes direct
testimony in this action, and thus is not hearsay under Rules 801 or 802.
Patent Owner’s other potential objections to Exhibit 1024 were waived.
Moreover, as Petitioners point out in their Opposition, Mr. Hoffman,
who Patent Owner does not dispute qualifies as an expert under Federal Rule

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of Evidence 702, is permitted to rely on testimony and other evidence that
would not otherwise be admissible. See Opp. 13 (citing Fed. R. Evid. 703).
Patent Owner contends that Exhibits 1089 and 1095 were not
disclosed in a timely manner, but concedes that these materials were
eventually disclosed. See Mot. 12–14. In this regard, we note that Exhibits
1089–1095 were filed (and thus available to Patent Owner) on August 19,
2020, which is more than two weeks before Patent Owner filed the Reply in
Support of its Revised Motion to Amend (Paper 64). To the extent Patent
Owner thought the alleged late disclosure of these documents necessitated
an additional cross-examination of Mr. Hoffman, it should have contacted
the Board to make such a request. It did not. And our Rules did not require
Petitioner to make Mr. Lee or Mr. Sherburne available for deposition
because their testimony was not taken in this proceeding. See 37 C.F.R.
§ 42.53. Patent Owner also never requested leave to take their depositions.
See Opp. 13. Under these circumstances, we are not persuaded that Exhibits
1089–1095 should be excluded.
We also note that Patent Owner’s Motion appears to be moot as to
Exhibits 1089–1095 in view of our decision not to exclude the objected-to
portions of Exhibit 1024. This Decision does not rely on Exhibits 1089–
1095, except to the extent they form the basis for testimony set forth in
Exhibit 1024. And because Rule 703 permits Mr. Hoffman to rely on
inadmissible materials, Mr. Hoffman may rely on them regardless of
whether they are separately admissible under the Federal Rules of Evidence.

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C. Exhibits 1031 and 1071
Patent Owner contends that Exhibits 1031 and 1071 should be
excluded as hearsay, and under Federal Rules of Evidence 401 and 403. We
treat Patent Owner’s Rule 401/403 objection as going to weight, rather than
admissibility. With respect to the hearsay objection, we are persuaded that
Petitioner offers Exhibits 1031 and 1071 for the non-hearsay purposes of
showing that certain prior art existed and was known. See Opp. 15;
Paper 36, 8, 21. We consider Exhibits 1031 and 1071 only for such non-
hearsay purposes.
D. Exhibit 1098
Patent Owner objects to Exhibit 1098 (the Marais Declaration)
because Dr. Marais allegedly relied on Exhibit 1065, which Patent Owner
contends is inadmissible. Mot. 15. This objection is not persuasive because
we are not persuaded that Exhibit 1065 should be excluded, and because
Patent Owner does not object to the qualifications of Dr. Marais under
Federal Rule of Evidence 702. Accordingly, Dr. Marais may rely on
materials that are not admissible into evidence. See Fed. R. Evid. 703.
Patent Owner’s arguments regarding timing, and its allegation that we
should limit the relevancy of Exhibit 1098 to “rebuttal of Exhibits 2018 and
2024” (see Mot. 15), are not adequately explained or justified, and thus are
not persuasive. We treat Patent Owner’s arguments regarding relevance as
going to weight, rather than admissibility.
V. CONCLUSION
For the foregoing reasons, we determine that Petitioner has shown by
a preponderance of the evidence that all challenged claims of the ’899 Patent

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are unpatentable.16 We also deny Patent Owner’s Revised Contingent
Motion to Amend and Patent Owner’s Motion to Exclude.
In summary, regarding the challenged claims:
Claim(s)
Challenged
35
U.S.C. §
Reference(s) Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–3, 5, 15,
19
103(a) Burrows and
Hartley
1–3, 5, 15, 19
1–3, 5, 15,
16, 19
103(a)17 Burrows 16
16 103(a)18 Burrows and
Wood

Overall
Outcome
1–3, 5, 15,
16, 19

In summary, regarding the proposed substitute claims:
Motion to Amend Outcome Claim(s)
Original Claims Proposed to be Replaced 1–3, 5, 15, 16, 19
Substitute Claims Proposed in the Amendment 20–26
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 20–26

16 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2)
17 As discussed above, we only found it necessary to consider Ground 2 as it
pertains to claim 16. See supra § II.E.2
18 As discussed above, we did not reach Ground 3. See supra § II.E.3

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Motion to Amend Outcome Claim(s)
Substitute Claims: Not Reached

VI. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–3, 5, 15, 16, and 19 of U.S. Patent No.
8,046,899 B2, have been shown to be unpatentable;
FURTHER ORDERED that Patent Owner’s Revised Contingent
Motion to Amend is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
Gianni Cutri
Joel Merkin
Brian Verbus
KIRKLAND & ELLIS LLP
gianni.cutri@kirkland.com
jmerkin@kirkland.com
brian.verbus@kirkland.com

FOR PATENT OWNER:
Michael Fisher
Derek Brader
Robert Ashbrook
Blaine Hackman
Gregory Chuebon
DECHERT LLP
michael.fisher@dechert.com
derek.brader@dechert.com
robert.ashbrook@dechert.com
blaine.hackman@dechert.com
greg.chuebon@dechert.com