IRREVOCABLE TRUST OF ANTHONY J. ANTONIOUS v. NIKE, INC.

Filing 54

OPINION. Signed by Judge Kevin McNulty on 1/8/14. (jd, )

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

Civil Action No. 1 1-cv-06327
(KM)

IRREVOCABLE TRUST of
ANTHONY J. ANTONIOUS,
Plaintiff,

OPINION
(Markman Patent Construction)
NIKE, INC.,
Defendant.

MCNULTY, District Judge
TABLE OF CONTENTS
Introduction

.

I. Factual Background and Procedural History

.

2
2

II. Applicable Standards and Identification of Claims in Dispute
A. Patent Claim Construction
B. Parts of the Golf Club Head
C. The Specification and the Disputed Claims of the ‘754 Patent

5
5
9
10

III. Construction of Disputed Claims

11

A. “Substantially parallel with/to” and
“c-shaped slot” (Claims 1 and 9)
1. The Trust’s proposed construction
2. Nike’s proposed construction
3. The Court’s construction
B. “Skid
from
1.
2.

surface” and “Wall separating said skid surface
said bottom surface” (Claim 1 only)
The Parties’ proposed construction
The Court’s construction

13
13
17
19

24
24
25

C. “Offset from” (Claim 9 only)

27

Conclusion

30
1

Introduction
This Opinion contains the Court’s construction of key patent terms
following a Markman hearing. This patent infringement case arises from a
dispute over the proprietary design of golf club heads. The plaintiff is a trust
representing the interests of Anthony Antonious, now deceased, who was “a
prolific inventor of golf equipment.” Plaintiff (the “Trust”)’ owns U.S. Patent No.
5,735,754 for an Aerodynamic Wood Golf Club Head (the “ ‘754 patent”). (A
copy of the ‘754 patent, with Reexamination Certificate, is annexed to this
opinion.) See Plaintiff’s Opening Markman Brief under Loc. Pat. R. 4.5(a),
November 5, 2012, ECF No. 37 (“P1. Opening Br.”) at 1.
The Trust alleges that the defendant, Nike, Inc., has infringed the ‘754
patent by “making, using, importing, advertising, offering for sale, and selling
products infringing Plaintiff’s ‘754 patent including, without limitation, various
drivers, hybrids and fairways woods sold under the name SQ DYMO, and other
Defendant’s golf clubs, principally during the 2008 to 2011 period.” Complaint,
filed October 27, 2011, ECF No. 1 (“Compl.”) ¶ 13. Nike responds that the
claims of the ‘754 patent are not nearly as broad as the Trust seems to think.
Nike further submits that, during a reexamination of the ‘754 patent, the Trust
disclaimed critical elements upon which it now bases its claims of
infringement. See Defendant Nike Inc.’s Opening Claim Construction Brief for
Claims 1 and 9 of U.S. Patent No. 5,735,754, November 7, 2012, ECF No. 39
(“Def. Opening Br.”) at 1.
Patent construction must of course precede any analysis of patent
infringement. Therefore, on April 29, 2013, I convened a Markman hearing to
determine the meaning of various claims contained in the ‘754 patent. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976—79 (Fed. Cir. 1995)
(en banc), affd, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). I
have carefully considered all of the parties’ written submissions and
arguments. In this Opinion I set forth my construction of the patent claims in
dispute.

I.

Factual Background and Procedural History

The Trust claims that Mr. Antonious’s invention “relates to improvements
in the aerodynamic configuration of the base or bottom surface of a club head,
which allow greater speed and accuracy of golf swings, for a given application
of force by a golfer, by minimizing undesirable effects of air resistance.” P1.
Opening Br. at 1.

The inventor listed on the patent at issue was Mr. Antonious. For simplicity,
this opinion may use “the Trust” to refer to the plaintiff/inventor.
2
1

The present invention represents an improvement over known
prior art wood type golf club heads by providing an aerodynamic
surface on the bottom surface adjacent the rear edge of the club
head, which produces greater club head speed when the club is
swung. This aerodynamic surface reduces undesirable air
turbulence which causes aerodynamic drag and creates a
smoother, laminar type airflow around the club head. A golf club
using this improvement permits a golfer to hit longer and
straighter golf shots for a given applied swing force. The
aerodynamic structure also creates increased aerodynamic
stability club head resulting in increased control of the club head
position during the swing, particularly on impact, thereby
producing more consistent golf shots.
‘754 patent at Column 1, “Summary of the Invention.”
2
The ‘754 patent was issued in April 1998. It was reexamined by the PTO
See P1. Opening Br. at 1. According to Nike, the
starting in September 2008.
PTO opened the reexamination at the request of Adams Golf, “a competitor in
the golf industry that the Trust sued for alleged infringement of the ‘754
patent. The reexamination challenged the validity of the ‘754 patent in view of
prior art golf club heads the PTO had not previously considered.” Def. Opening
Br. at 4—5. During reexamination, the Trust amended the ‘754 Patent by
adding certain limitations to the original specification and claims, and by

2

the Director finds that a substantial new question of patentability
If.
affecting any claim of a patent is raised, the determination will include
an order for reexamination of the patent for resolution of the question.
The patent owner will be given a reasonable period, not less than two
months from the date a copy of the determination is given or mailed to
him, within which he may file a statement on such question, including
any amendment to his patent and new claim or claims he may wish to
propose, for consideration in the reexamination.
.

.

35 U.S.C. § 304.

In any reexamination proceeding under this chapter, the patent
owner will be permitted to propose any amendment to his patent and a
new claim or claims thereto, in order to distinguish the invention as
claimed from the prior art cited under the provisions of section 301, or in
response to a decision adverse to the patentability of a claim of a patent.
No proposed amended or new claim enlarging the scope of a claim of the
patent will be permitted in a reexamination proceeding under this
chapter.
35 U.S.C. § 305.
3

adding a new claim, “Claim 9.” Id. at 5-6. Thus amended, the Patent received a
Reexamination Certificate on January 5, 2010. See P1. Opening Br. at 1 and
“Ex Parte Reexamination Certificate,” Exhibit B to Complaint. (A copy of the
Reexamination Certificate is attached to this opinion, after the patent.)
In October 2011, the Trust filed the Complaint in this action, alleging
that Nike’s “various drivers, hybrids and fairways woods sold under the name
SQ DYMO, and other of Defendant’s golf clubs,” sold principally during the
2008 to 2011 period, infringed the reexamined ‘754 patent. Compi. ¶f 11-31;
see 35 U.S.C. § 271.
Pursuant to the Local Patent Rules of the United States District Court for
the District of New Jersey (“Local Patent Rules”) 43,4 the Parties submitted a
3

(a) Except as otherwise provided in this title, whoever without authority
makes, uses, offers to sell, or sells any patented invention, within the
United States or imports into the United States any patented invention
during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as
an infringer.
(c) Whoever offers to sell or sells within the United States or imports into
the United States a component of a patented machine, manufacture,
combination or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted
for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial noninfringing use, shall
be liable as a contributory infringer.
35 U.S.C. § 271.
4

4.3. Joint Claim Construction and Prehearing Statement. Not later
than 30 days after the exchange of “Preliminary Claim Constructions”

under L. Pat. R. 4.2(a), the parties shall complete and file a Joint Claim
Construction and Prehearing Statement, which shall contain the
following information:
(a) The construction of those terms on which the parties agree;
(b) Each party’s proposed construction of each disputed term,
together with an identification of all references from the intrinsic
evidence that support that construction, and an identification of any
extrinsic evidence known to the party on which it intends to rely either to
support its proposed construction or to oppose any other party’s
proposed construction, including, but not limited to, as permitted by law,
dictionary definitions, citations to learned treatises and prior art, and
testimony of all witnesses including experts;
(c) An identification of the terms whose construction will be most
significant to the resolution of the case. The parties shall also identify
any term whose construction will be case or claim dispositive or
4

“Joint Claim Construction and Prehearing Statement” on September 20, 2012.
See ECF No. 35 (“Joint Statement”). The Joint Statement identifies the claim
terms in dispute, the construction of which will dispose of, or be most
significant to the resolution of, the case. See id. at 2—3 and L. Pat. R. § 4.3(c).
The Joint Statement says that the Parties agree that the most critical terms to
be construed are:
1.
2.
3.
4.
5.

Substantially parallel with
C-shaped slot
Skid surface
Wall separating said skid surface from said bottom surface
Offset from

See Joint Statement Ex. B.
The two claims at issue, which contain those five critical terms, are
Claim 1 and Claim 9. Claim 1 was amended and Claim 9 was added as a new
claim in the reexamination. See Reexamination Certificate; Joint Statement Ex.
B.
A Markman hearing was held on April 29, 2013, during which the parties
presented their claim construction arguments and exhibits over the course of
approximately five hours. I reserved decision at the close of the hearing.
II.

Applicable Standards and Identification of Claims In Dispute
A. Patent Claim Construction

“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement

substantially conducive to promoting settlement, and the reasons
therefor;
(d) The anticipated length of time necessary for the Claim
Construction Hearing; and
(e) Whether any party proposes to call one or more witnesses at
the Claim Construction Hearing, the identity of each such witness, and
for each witness, a summary of his or her testimony including, for any
expert, each opinion to be offered related to claim construction.
(f) Any evidence that is not identified under L. Pat. R. 4.2(a)
through 4.2(c) inclusive shall not be included in the Joint Claim
Construction and Prehearing Statement.
(g) This rule does not apply to design patents.
L. Civ. R. 9.3(4.3) (D.N.J.).
5

thereof, may obtain a patent
therefor, subject to the condit
ions and
requirements of this title.” 35 U.S
.C. § 101. In order to obtain
a patent, the
inventor must submit a writte
n application providing (1) “a spe
cifica
prescribed by 35 U.S.C.
§ 112”; (2) “a drawing as prescribed by 113”; tion as
and (3)
“an oath or declaration as prescr
§
ibed by § 115.” See 35 U.S.C. 111
.
§
The patent’s specification must con
tain
a written description of the inv
ention, and of the manner and
process of making and using it,
in such full, clear, concise, and
exact terms as to enable any per
son skilled in the art to which it
pertains, or with which it is mo
st nearly connected, to make and
use the same, and shall set forth
the best mode contemplated by
the inventor or joint inventor of car
rying out the invention.
Id.

§ 112.

The patent’s “claims” round
out the specification by “partic
pointing out and distinctly claim
ularly
ing the subject matter which the
inventor or a
joint inventor regards as the inv
ention.” Id. § 112.
The function of claims is (a) to
point out what the invention is
in
such a way as to distinguish it
from what was previously known
,
i.e., from the prior art; and (b)
to define the scope of protectio
n
afforded by the patent. In both
of those aspects, claims are not
technical descriptions of the dis
closed inventions but are legal
documents like the descriptions
of lands by metes and bounds in
a
deed.
In re Vamco Mach. & Tool, Inc
., 752 F.2d 1564, 1577 n.5
(Fed. Cir. 1985)
(emphasis in original).

Patent infringement analysis
requires two steps: (1) determ
ining the
meaning and scope of the pat
ent claims asserted to be infrin
ged (i.e. “claim
construction”); (2) comparing
the properly construed claim
s to the device
accused of infringing. See Markm
an, 52 F.3d at 976; MBO Labor
atories, Inc. v.
Becton, Dickinson & Co., 474
F.3d 1323, 1329 (Fed. Cir.
2007) (“A
determination of patent infrin
gement requires a two-step ana
lysis: first, the
meaning of the claim language
is construed, then the facts are
applied to
determine if the accused dev
ice falls within the scope of
the claims as
interpreted.”). Here, we are con
cerned only with step one, wh
ich involves “a
matter of law exclusively for the
court.” Markman, 52 F.3d at 977
.
A fundamental principle of claim
construction is that patent claim
s
must have the same meaning to
all persons at all times, and tha
t
6

the meanings of the claims are determined and fixed
at the time
the [PTO] issued the patent. The purpose of a Markman
hearing is
for the court and the parties to settle conclusiv
ely on the
interpretation of disputed claims. Indeed, the need for
uniformity
of claim construction and concerns about fairness to
competitors
inform the policy of reserving the claim construction
function to
the trial judge.
Novartis Corp. v. Teva Pharmaceuticals USA, Inc.,
565 F. Supp. 2d 595, 603
(D.N.J. 2008) (internal citations omitted). “When a cour
t construes the claims
of the patent, it is as if the construction fixed
by the court had been
incorporated in the specification, and in this way
the court is defining the
federal legal rights created by the patent document.” Mark
man, 52 F.3d at 978
(internal quotations and citation omitted).

When construing claims, a district court should give
the claim terms
their “ordinary and customary meaning.” Phillips v. AWH
Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (quoting Vitronics Corp. V. Con
ceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996)). “Ordinary and customary
meaning” however, is
not limited to the understanding of the average perso
n. Rather, it must be
assessed from the standpoint of a hypothetical “person
of ordinary skill in the
art in question at the time of the invention, i.e., as of
the effective filing date of
the patent application.” Id. at 1313. (That hypotheti
5
cal person is sometimes
abbreviated as a “PHOSITA”.)
[The] objective baseline from which to begin claim inter
pretation
is based on the well-settled understanding that inve
ntors are
typically persons skilled in the field of the invention
and that
patents are addressed to and intended to be read by
others of skill
in the pertinent art.
Importantly, 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 appe
ars, but in the
context of the entire patent, including the specification.
.

.

.

Id. (internal citations omitted); see also Novartis Corp
., 565 F. Supp. 2d at 604
(“Although an invention is defined by a patent’s
claims, they do not stand
alone. Instead, claims are part of a fully integrated
written instrument
consisting principally of a written description of the inve
ntion, often referred to

Defendant submits that, in this case, a person having ordin
ary skill in the art
(“PHOSITA”) has either a specialized schooling back
ground (e.g. undergraduate
engineering degree) and at least two years of experienc
e designing golf clubs, or a
person having at least four years of experience researchin
g, designing, and developing
golf clubs and having some formal training in physics. See
Def. Opening Br. at 7-8.
Plaintiff has little to say on the definition of a PHOSITA.
7

as the specification, and concluding with the claims. For that reason
, claims
must be read in view of the specification, of which they are a part.”)
(internal
quotations and citations omitted).
In some cases, the meaning of claim terms as understood by a PHOS
ITA
may be readily apparent, “even to lay judges, and claim construction
in such
cases involves little more than the application of the widely accepted
meaning
of commonly understood words.” Phillips, 415 F.3d at 1314. In other
cases,
however, the meaning is not so easily ascertained, and the court must
look to
the “sources available to the public that show what a person of skill
in the art
would have understood disputed claim language to mean.” MBO Labs,
474 F.3d
at 1329 (quoting Phillips, 415 F.3d at 1314). “Those sources include
the words
of the claims themselves, the remainder of the specification, the prosec
ution
history, and extrinsic evidence concerning relevant scientific princip
les, the
meaning of technical terms, and the state of the art.” Phillips, 415
F.3d at
1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration
Sys., Inc., 381
F.3d 1111, 1116 (Fed. Cir. 2004)).
Those sources are not necessarily weighted equally; there is a hierarc
hy
of relevance. Generally, the patent’s “intrinsic evidence”—”the patent
itself,
including the claims, the specification and, if in evidence, the prosec
ution
history
.“—“is the most significant source of the legally operative meaning
of disputed claim language.” Novartis, 565 F. Supp. 2d at 603-04
(quoting
Vitronics Corp., 90 F.3d at 1582).
.

.

.

The patent’s specification, “the single best guide to the meaning
of a
disputed term,” should be consulted first. Phillips, 415 F.3d at
1317 (citing
Vitronics, 90 F.3d at 1582). The specification may reveal “whether
the inventor
has used any terms in a manner inconsistent with their ordinary meanin
g. The
specification acts as a dictionary when it expressly defines terms
used in the
claims or when it defines terms by implication.” Novartis, 565 F.
Supp. 2d at
604 (quoting Vitronics, 90 F.3d at 1582). After consulting the specifi
cation, the
court should review the patent’s prosecution history, which also is
“part of the
‘intrinsic evidence’ that directly reflects how the patentee has charac
terized the
invention.” MBO Labs, Inc., 474 F.3d at 1329 (quoting Vitronics,
90 F.3d at
1317). The prosecution history includes statements made by the
patentee
during reexamination. See Krippelz v. Ford Motor Co., 667 F.3d 1261,
1266
(Fed. Cir. 2012) (“A patentees statements during reexamination
can be
considered during claim construction, in keeping with the
doctrine of
prosecution disclaimer”) (citation omitted). Finally, if the specification
and the
patent’s intrinsic evidence do not clarify the claim terms, the court may
consult
“extrinsic evidence”—testimony, dictionaries, learned treatises
or other
materials not part of the public record. See Phillips, 415 F.3d at 1317.

8

B. Parts of the Golf Club Head
Before identifying the disputed claims, it may be helpful to identify the
parts of the golf club head. For purposes of visualization (and not by way of
limiting or defining the claims), I here reprint Figures from the ‘754 patent. I
have added labels of certain parts.

112

ILLUSTRATION

lI-c5S/

/

/

M

\\--ç

124

Toe 116

(32 cpøeLo(
(el C -.sf)

&124
&132

128

126
130

FIG5
‘Do

9

C. The Specification and the Disputed Claims of the ‘754 Patent
There are two claims at issue: Claim 1 (amended) and Claim 9 (a new
claim), as reflected in the Reexamination Certificate issued in January 2010.
Claims 1 and 9 (like all of the patent’s claims) relate to the following
specification:
An aerodynamic golf club head including a club head body
having a heel, toe, rear surface, ball striking face, upper surface
and bottom surface.
Claim 1, as amended at the time of reexamination, describes the
following “improvement”:
An aerodynamic configuration on, and substantially parallel
with, said bottom surface adjacent said rear surface in the form
of a c-shaped slot having an open end facing forwardly toward
said ball striking face; said aerodynamic configuration further
including a skid surface formed on and raised from said bottom
surface; said skid surface having a wall separating said skid
surface from said bottom surface, said c-shaped slot
transecting a virtual centerline passing through said ball striking
surface and said rear surface of said club head.
Reexamination Certificate, p. 2, lines 16—30. (Disputed terms are in bold.
Amendments at the time of reexamination are in italics. Note that some
phrases are both.)
Claim 9, added as a new claim in the reexamination, describes the
following “improvement”:

and
within,
configuration
aerodynamic
An
substantially parallel to, said bottom surface
adjacent said rear surface, in the form of a c-shaped
slot having an open end facing forwardly toward said
ball striking face, said slot offset from, and a portion
thereof passing through, a virtual centerline passing
transversely through a heel-to-toe axis of said club
head.
Id., lines 41-51. (Disputed terms are in bold. All of Claim 9 was added in the
reexamination.)

10

The Parties have jointly summarized their positions as to each of
the
disputed terms as follows:
Term

Plaintiff’s Construction

Defendant’s Construction

1. Substantially parallel with

Relationship between the cshaped slot formed on a curved
surface and the curved bottom
surface, adjacent to the rear
surface, of the golf club head

The flat plane of the c-shaped
slot and the flat plane of the
bottom surface/sole of the club
head are essentially parallel to
each other, and the c-shaped
slot therefore does not extend
into the side walls or skirt.

2. C-shaped slot

Any generally C-shaped
channel.

An aerodynamic slot
characterized by a flat bottom
surface and a c-shaped profile,
in the sole/bottom surface, not
the sidewalls, of the golf club
head.

3. Skid surface:

A surface of the golf club head
formed on and raised from the
bottom surface so as to extend
outwardly from the bottom
surface/sole, and as designed
to skim across the ground when
the club head is swung.

A surface of the golf club head
formed on and raised from the
bottom surface so as to extend
outwardly from the bottom
surface/sole, separated from
the bottom surface by the
spacer wall, and designed to
skim across the ground when
the club head is swung.

4. Wall separating said skid The only term in this phrase
surface from said bottom not otherwise construed or
surface
discussed herein is ‘wall.’ Wall
means any non-horizontal
surface that separates the skid
surface from the bottom
surface.

A spacer wall separating the
bottom surface from the skid
surface, where the spacer wall
is separate and distinct from
the perimeter walls of the c
shaped slot.

5. Offset from:

Substantially, rotationally
offset relative to the virtual
centerline.

Existing or disposed at a
displacement from the virtual
centerline of the club head.

See Joint Statement Ex. B

III.

Construction of Disputed Claims

The Trust’s approach to claim construction can be described easily.
It
“seeks to interpret the claim language according to its ‘ordinary and
customary
meaning.”’ P1. Opening Br. at 7. The Trust therefore relies primar
ily on the
11

meanings of the words in the claim, as it defines them. The Trust asserts
that
there is a “heavy presumption” in favor of such a definitional construction.
See
id.
Nike’s approach requires more explanation. Nike acknowledges the
importance of plain meaning. It also relies, however, on the history
of the
reexamination of the ‘754 patent: particularly, the Trust’s representation
s and
citations of prior art to the PTO. According to Nike, in the reexamination
the
Trust narrowed its claims to distinguish its claimed invention from prior
art,
particularly the Air Bear and Hogan H40. See Def. Opening Br. at 4—5.
Nike maintains that a hypothetical PHOSITA considering this patent,
particularly during reexamination, would have been aware of the Air Bear
and
Hogan H40 prior art, and would have “understood that the purported purpos
e
of the c-shaped slot of these [prior art] clubs was to improve aerody
namic
performance and to provide the same alleged advantages as the ‘754
patent.”
Id. at 8. The PHOSITA, moreover, would have known of “other prior
art clubs
with c-shaped slots in their bottom surfaces that the PTO never consid
ered
during examination or reexamination of the ‘754 patent,” such as the Bio-M
ech
II and the Fairway Devil, both of which have a c-shaped slot and skid
surface
intended to create “an aerodynamic dual tunnel bottom surface.” Id.
at 9. This
is all relevant, Nike submits, because “the PHOSITA’s knowledge of the
prior
art frames the context within which the ‘754 patent claims must be constru
ed.”
The Trust’s claim constructions are overbroad, says Nike, “because they
ignore
not only the Trust’s prosecution disclaimers, but also the crowded field
within
which the patent was issued.” Id. at 10.
Nike submits two “Illustrations” of the possible orientation of the
“aerodynamic configuration” claimed by the ‘754 patent. They are
taken, says
Nike, from the Figures in the ‘754 patent itself. The first, see Def. Openin
g Br.
at 6 (“Illustration 3”), reproduces Patent Figures 1-5, which “teach about
the
‘aerodynamic configuration’ relative to other parts of the club head.
.
.
.“ Id.
These Figures depict the “c-shaped slot” as being “formed on and substan
tially
parallel with the bottom surface,” with the open ends of the c-slot
facing
forward “toward the ball striking face.” Id. The second, see Def. Openin
g Br. at
7 (“Illustration 4”), reproduces ‘754 Patent Figures 9 and 10, which “teach
an
alternative orientation for the claimed aerodynamic configuration,” wherei
n the
c-slot is “substantially parallel with the bottom surface” of the club
head, but is
rotated either toward the toe or the hosel of the club, so that it is “offset
from a
virtual centerline that passes transversely through a heel-to-toe axis of
the club
head.”
Much of the debate boils down to (1) the shape of the aerodynamic
c
shaped slot (or “c-slot”), and (2) whether the c-slot is confined to the
bottom
surface of the golf club head, or may extend to the sidewalls. Some
of these
terms are interrelated; for example, some limitations to the shape of
the c-slot
12

or the concept of “substantially parallel” might imply that it cannot extend to
the side wall. When possible, I will address interrelated aspects together.

A. “Substantially parallel with/to” and “c-shaped slot”
The dispute here is whether, in the context of this patent, “substantially
parallel” refers only to the relationship between flat surfaces, as Nike argues, or
whether it can also “encompass parallelism between curved surfaces,” as the
Trust suggests. (Compare P1. Opening Br. at 10 with Def. Opening Br. at 12—
18.)
If Nike is right, then the ‘754 patent covers only club heads where the c
slot has a “flat bottom surface” that is substantially parallel to the flat plane of
the bottom surface of the club head. See Joint Statement Ex. B. In other words,
the patent’s claims would be limited to club heads wherein the bottom surface
of the c-shaped slot and the bottom surface of the club head are both flat
planes, and those two planes are substantially parallel.
On the other hand, if the Trust is right, then the ‘754 patent may also
encompass club heads where the bottom surface of the c-slot is curved, and is
“substantially parallel with” the bottom surface of the club head, which may
also be curved. Depending on the meaning of “substantially parallel,” the
Trust’s construction might include a wide variety of c-shaped slots. See Joint
Statement Ex. B ¶2 (“Any generally c-shaped channel”).
1. The Trust’s proposed construction
Before addressing the construction of these claim terms, I must address
a preliminary argument. According to the Trust, the adverb “substantially,”
which modifies “parallel,” cannot be construed in a Markman hearing; it is
“relative,” not “absolute,” and it therefore presents an issue of fact for the jury.
See P1. Opening Br. at 10. I disagree.
First, the Trust itself relies heavily on the term “substantially” to impute
“flexibility” to the word “parallel,” which might otherwise require an
unattainable mathematical precision. Thus, for example, the Trust argues that
the word “substantially” “provides flexibility to the manner in which the entire
phrase may be construed, and, as such, is clearly supportive of Plaintiff’s
argument . . . that the phrase substantially parallel certainly includes
parallelism between curved surfaces . . . .“ P1. Opening Br. at 10. The Trust
cannot have it both ways.
Second, the Trust’s proposed bifurcation of issues between judge and
jury would undermine the well-settled rule that claim construction is for the
court. The “purpose of a Markman hearing is for the court and the parties to
settle conclusively on the interpretation of disputed claims. Indeed, the need
13

for uniformity of claim construction and concerns about fairness to competitors
inform the policy of reserving the claim construction function to the trial
judge.” Novartis Corp., 565 F. Supp. 2d at 603 (internal citation omitted). I find
no support for the notion that such claim construction issues should be
allocated piecemeal to the judge or jury. And the cases cited by the Trust do
not so hold. Accordingly, as part of that claim construction process, I will
6
construe the phrase “substantially parallel with” in its entirety.
The Trust maintains that “substantially parallel’ is not a complicated
term that requires construction or an expert opinion. It is undisputed that
primarily ‘parallel’ means ‘everywhere’ equidistant. The ordinary meaning of the
phrase ‘substantially parallel’ envisions some amount of deviation from exactly
parallel.” P1. Opening Br. at 11. “Substantially,” then, tolerates a limited
degree of deviation from an otherwise precise term or concept. The Court of
Appeals for the Federal Circuit has explained:
[W]ords of approximation, such as “generally” and “substantially,”
are descriptive terms “commonly used in patent claims ‘to avoid a
strict numerical boundary to the specified parameter.” Ecolab, Inc.
v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (quoting
Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir.
1995)); see, e.g., Andrew Corp v. Gabriel Elecs. Inc., 847 F.2d 819,
821-22 (Fed. Cir. 1988) (noting that terms such as “approach each
other,” “close to,” “substantially equal,” and “closely approximate”
are ubiquitously used in patent claims and that such usages,
when serving reasonably to describe the claimed subject matter to
those of skill in the field of the invention and to distinguish the
claimed subject matter from the prior art, have been accepted in
patent examination and upheld by the courts). And, while ideally,
See P1. Opening Br. at 10, citing Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75
F.3d 1545, 1551 (Fed. Cir. 1996) abrogated by Festo Corp. v. Shoketsu Kinzoku Kogyo

6

Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000) (considering the term “relatively
small,” and fmding that “[o]rdinarily a claim element that is claimed in general
descriptive words, when a numerical range appears in the specification and in other
claims, is not limited to the numbers in the specification or the other claims.
It is
usually incorrect to read numerical precision into a claim from which it is absent,
particularly when other claims contain the numerical limitation.”) (internal citations
omitted), and Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298,
1310—11 (Fed. Cir. 2003) (noting that words of approximation, such as “generally” and
“substantially,” are descriptive terms that are “commonly used in patent claims ‘to
avoid a strict numerical boundary to the specified parameter. “) (quoting Ecolab, Inc. v.
Envirochem, Inc., 264 F.3d 1358, 1367 (Fed.Cir.2001)). In none of these cases did the
court find that the modifying adverbs “relatively” or “generally” presented questions of
fact for a jury. Rather, these cases stand for the proposition that modifiers like
“relatively,” “generally,” and “substantially” envision some amount of deviation from
what otherwise could be read as a term of precision.
.

14

.

.

all terms in a disputed claim would be definitively bounded and
clear, such is rarely the case in the art of claim drafting. In this
case, exact parallelism is sufficient, but not necessary, to meet the
limitation of the claim term “generally parallel.”
Anchor, 340 F.3d at 1310—11 (Fed. Cir. 2003).
Thus, while “exact parallelism” is not necessary to meet the limitation of
the claim term “substantially parallel,” there will always be a question as to the
permissible degree of deviation. The c-slot and the bottom surface of the club
head need not be exactly, mathematically parallel, but the Patent indicates
some degree, that is, a substantial degree, of parallelism between the c-slot and
the bottom surface of the club head. See Claim 1 (“An aerodynamic
configuration on, and substantially parallel with, said bottom surface adjacent
said rear surface in the form of a c-shaped slot.”).
When does a deviation from perfect parallelism exceed the bounds of
being “substantially” parallel? The Trust does not suggest, for example, how
many degrees of tilt would be too many, or how much curvature would
preclude treatment as a straight line. Instead, “substantially” is interpreted to
mean, more or less, “close enough.” Perhaps not much more can be said
7
without reference to a specific claim of infringement against a particular
accused device. Suffice it to say, as the Federal Circuit did, that this is a “word
of approximation.”
Of course, we cannot define “substantially parallel” unless we know what
“parallel” means. On that score, the Trust suggests that, because there is no
limitation on the general definition of “parallel,” it should be construed broadly
to include curved, as well as flat, surfaces:
Since the patent does not include any limitation on the manner in
which the planes of the parallel surface are defined, the patent
allows a broad interpretation that the general plane of the slot and
the plane of the bottom surface may be substantially parallel
regardless of the center of the club head. Likewise, the patent
broadly allows the plane of the c-shaped slot to be defined relative
to the plane of the bottom surface.
The patent does not include
the Defendant’s proposed limitation that the bottom surface of the
slot and the bottom surface of the golf club both be flat. In fact, the
patent never uses the term “flat” or the like. As is known in the art
of golf club design, the bottom surfaces of golf clubs typically are
not flat.
.

.

.

The Merriam-Webster Online Dictionary defmes “substantial” in this context as
“being largely but not wholly that which is specified.” See www.merriam-webster.com.
15
7

P1. Opening Br. 10—11. The Trust points to several of the ‘754 patent’s
drawings, which represent various embodiments of the Patent. Those drawings
have shading or contour lines which, according to the Trust, depict c-slots
“whose bottom is not flat.” Id. at 13; ‘754 patent, Figures 1, 2, 6, 9, 10.
The Trust also relies on statements made during the Patent’s re
examination by John P. Gillig (“Gillig”), a professional golfer and club designer
who was “retained by [the] Trust as a consultant for the purpose of assisting in
the licensing of the many patents of Antonious which were still unexpired at
the time of his passing.” See Declaration of John P. Gillig under 37 CFR 1.1328
in Support of Re-Examination Respondent / Patentee, April 20, 2009, Ex. B to
P1. Opening Br., ECF No. 38 (“Gillig Deci.”) ¶ 5. Gillig discusses the shape and
positioning of the c-slot in the Antonious club in relation to the “Air Bear 1
driver golf club.” The Air Bear, manufactured by the Nicklaus Golf Company
and designed by Thomas Stites, a Nike employee, is considered prior art of
record for the ‘754 patent. See id. ¶ 7. Gillig explains:
The concept of the Air Bear was to reduce so-called airflow
separation (AFS) distance because the greater the AFS, the greater
the resultant drag force at the toe of the club.
[t]he heel-to-toe
aerodynamic channel of the Air Bear was formed within the
sidewalls of the club which
possessed a very small bottom or
bottom surface plate. Further, the curvature of the aerodynamic
channel of the Air Bear was not parallel to either the bottom surface
plate or the crown of the club.
[T]he heel end of the Air Bear
channel tails upward, away from the face plate and toward the
hosel, while the toe end of the Air Bear channel is larger and tails
downward toward the face plate. As such, the channel of the Air
Bear is not substantially parallel to either the bottom surface plate
or the crown of the club. In distinction, the structure of all
embodiments of the club taught in the Antonious ‘754 patent was
very different.
Antonious sought to reduce aerodynamic drag
by providing a smoother, so-called laminar type of front-to-rear
airflow around the club head to enable a golfer to hit the ball
longer and straighter. Antonious also sought to increase
aerodynamic stability of the club head to provide increased control
of club head position to the golfer during club swing and to provide
more consistent ball strikes and therefore launches. Antonious
sought to achieve the above by providing a c-shaped aerodynamic
slot adjacent to the rear surface of the club and upon the bottom
.

.

.

.

.

.

.

.

.

.

.

.

“When any claim of an application or a patent under reexamination is rejected
or objected to, any evidence submitted to traverse the rejection or objection on a basis
not otherwise provided for must be by way of an oath or declaration under this
section.” 37 C.F.R § 1.132.
8

16

surface at a position generally following the contour of the club
[The c-shaped slot] is common to all embodiments of the
body.
‘754 patent regardless of whether or not a venturi opening, such as
opening 232 (shown in Figs. 6 & 7), was included as part of the c
As may be noted in Fig. 5, the aerodynamic slot
shaped slot.
above noted is common to all embodiments) defines
130 (which as
a plane which is substantially parallel to both the bottom surface, or
bottom surface plate, and the crown of the club. Therein, the
aerodynamic slots 330 and 430 shown in Figs. 9 and 10
[respectively] occupy the same plane as the slot shown in Fig. 5,
i.e. a plane substantially parallel with the bottom and top surfaces
of the club.
.

.

.

.

Gillig Deci.

¶

.

.

10-19 (emphasis added).

Gillig clearly relies on the nature of the c-slot as being “substantially
parallel to both the bottom surface, or bottom surface plate, and the crown of
the club” to distinguish the ‘754 patent from the Air Bear. He also indicates
that this “substantially parallel c-shaped slot” is “common to all embodiments.”
The Trust, while relying on Gillig’s opinion, has one reservation about it.
Because the claims at issue do not anywhere reference “the crown of the club,”
says the Trust, “Gillig’s comments relative [to the crown] do not relate to any
issue of claim construction.” P1. Opening Br. at 14; Gillig Deci. ¶ 19. The
required parallelism in Claims 1 and 9, according to the Trust, relates only to
9
the bottom surface, not the crown. Setting that aside, the Trust maintains
that Gillig’s Declaration generally supports the Trust’s view “that any limitation
of ‘flatness’ to either the bottom surface of the club, the plane of the c-shaped
slot, or the base of the c-shaped slot, is without basis in the specification or
PTO file histories.” P1. Opening Br. at 14—15.
In short the ‘754 patent’s requirement that the c-slot and the bottom
surface be “substantially parallel” refers to their general orientation; it does not
imply that those surfaces must be flat. Or so says the Trust.
2. Nike’s proposed construction

In other words, neither Claim 1 nor Claim 9 describes the position of the c-slot
relation to the “crown of the club.” Gillig’s description of the c-slot as being
in
positioned on a plane that is “substantially parallel to both the bottom surface, or
bottom surface plate, and the crown of the club” therefore contains surplusage that
should be disregarded. While perhaps not fatal, this imparts some awkwardness to the
Trust’s absolute reliance on Gillig’s remarks “to the effect that the C-shaped
aerodynamic slot adjacent to the rear surface of the club and upon the bottom surface
generally follows the contour of the club body.” P1. Opening Br. at 14.

9

17

First, Nike points out that the term “substantially parallel” did not
appear anywhere in the original ‘754 patent. See Def. Opening Br. at 12—13.
That language appeared for the first time during the reexamination, in
amended Claim 1 and newly added Claim 9. Because “no ‘new matter’ can be
added during reexamination,” Nike maintains, the “substantially parallel”
limitation, to be valid, “must have existed somewhere in the original ‘754
patent, even though those words were not used in the patent.” Id. at 13 (citing
35 U.S.C. § 305, 132). The only possible origin for this limitation, says Nike, is
the ‘754 patent’s Figure 5. Figure 5 shows a cross-sectional diagram of a club
head wherein the c-shaped slot has a flat bottom surface that is parallel to the
bottom surface of the club head, which also appears flat. Id.; see also id. at 14,
Illustration 10 of Figure 5. Nike notes that the Trust itself represented to the
PTO during reexamination that the “antecedent support” for the “substantially
parallel” relationship between the aerodynamic configuration and the bottom
surface of the club “appears in Figure 5 of the ‘754 patent which is also
incorporated in the description of Figs. 9 and 10 . . . .“ See Deci. of Erik S.
Maurer in Support of Nike’s Opening Claim Construction Brief, November 7,
2012, ECF No. 39-6 (“Maurer Decl.”) at Ex. 4, N1KE00006685. Nike also relies
on Gillig’s Declaration, which states that “the cross-sectional view of Fig. 5 [is]
controlling with regard to the shape and geometry of the slot that was common
to all embodiments of the invention.” Gillig Deci. ¶ 24.10
Second, Nike maintains that the Trust was compelled to add the
“substantially parallel” limitation to Claim 1 and Claim 9 as a “narrowing
amendment” in order “to overcome a prior art rejection.” Def. Opening Br. at
14, 15. According to Nike, it was to distinguish the ‘754 patent from prior art,
especially the Air Bear club, that the Trust made the following representation:
Claim 1 as amended also makes explicit that the c-shaped slot is
formed within the substantially flat bottom surface. . . . These
amendments, in pertinent portion, express that the aerodynamic
configuration is substantially parallel with the bottom surface of
the club and that said configuration transects a face-to-rear
centerline of the club.
10

The full quotation from paragraph 24 of Gillig’s Declaration is as follows:
In my opinion, Antonious’s objectives of minimizing frontto-rear turbulence and reduction of drag upon that club,
while enhancing club speed and stability, could not have
been achieved if his aerodynamic slot was located within
any of the sidewalls or side surfaces of the embodiments set
forth in the ‘754 patent, or if the slot was not substantially
parallel with the bottom and crown of the club. As such, I
consider the cross-sectional view of Fig. 5 to be controlling
with regard to the shape and geometry of the slot that was
common to all embodiments of the invention.
18

Id. at 15 (citing Maurer Deci. Ex. 4, Nike 00006692—93 (PP. 6-11 of the
“Remarks/Arguments,” submitted by the Trust in connection with
reexamination).
In addition, Nike relies on a number of statements made during
reexamination (including those made by Gillig, discussed above). In those
statements, experts refer to the aerodynamic slot as occupying a plane that is
substantially parallel to the sole or bottom surface of the club head and
attempt to distinguish the ‘754 patent from the Air Bear on that basis. See id.
at 15—16.
Third, Nike submits that the Trust, by stipulating during reexamination
that the “c-shaped slot does not extend into the sidewalls of the club head,”
has “surrendered any interpretation of its claims that would allow the c-shaped
slot to be anything but a flat surface that is ‘substantially parallel’ to a flat
bottom surface. . . .“ Id. at 17 (citing Gillig at ¶J 11, 19, 24).
3. The Court’s construction
The parties’ positions on the construction of substantially parallel and c
shaped slot represent two extremes. The Trust’s construction imposes very
little in the way of limitation; Nike’s construction requires that both the bottom
surface of the club head and the c-slot have a flat surface, that those flat
surfaces be parallel to each other, and that it necessarily follows that the c-slot
cannot extend into the club’s sidewalls. I find that the proper construction lies
in the middle, perhaps tending toward that of Nike. In so finding, I consider the
declaratory statements made during the reexamination process as being part of
the intrinsic patent record that is relevant to the construction of revised Claim
1 and newly added Claim 9.
As the Federal Circuit has said, “generally parallel’ envisions some
amount of deviation from exactly parallel.” Anchor Wall Sys., 340 F. 3d at 1311.
I accept that general principle, and I find the same to be true of “substantially
parallel.” But does “substantially parallel,” or just “parallel,” for that matter,
presuppose two surfaces that are fiat?
Start simple. Two-dimensional lines may, of course, be parallel. / I That
reasoning is easily extended to two fiat surfaces that are everywhere
equidistant. Take, for example, Figure 5. That Figure shows a cross section
wherein the bottom surface of the club head and the bottom surface of the c
slot are both visibly flat. And those two flat surfaces (each extended as a plane)
seem to be substantially parallel, i.e., substantially equidistant from each other
at every point. The parallelism concept, says Nike, can go no further.

19

In many embodiments, however—Figures 9 & 10, for example—one or
more relevant surfaces appear to be curved. The contour lines, for example,
suggest that the c-slot, viewed in cross section, has a curved bottom: a “11’
rather than a “H”. And the Trust suggests that the c-slot may extend up into
the sidewalls of the club. Is it possible to apply the “substantially parallel”
concept there? Yes, says the Trust. No, says Nike— flatness is a requirement.
Again, start from a simple two-dimensional concept. A pair of curved
lines may be equidistant at every point. ) ) It does not torture the meaning of
the term to say they are “parallel.” Similarly, two curved surfaces may be
equidistant at every point. How to apply that concept, however, when one curve
is a cross-sectional side view of a slot that, viewed from the top, resembles a C?
(And when the bottom surface of the club, to which the first curve must be
parallel, might also be a curved surface?)
Gillig’s statements, taken in context, provide some guidance. He
repeatedly refers to the “aerodynamic configuration” (i.e., the c-shaped slot) as
“defining” or “occupying a plane” that is “substantially parallel” to the bottom
(and top) surface of the club.
Regarding the embodiment of Figs. 9 and 10, Antonious employed
a golf club head similar in shape to the golf club head described in
Figs. 1-5 of the ‘754 patent (See Col. 3, Line 24.) As may be noted
in Fig. 5, the aerodynamic slot 130 (which as above noted is
common to all embodiments) defines a plane which is substantially
parallel to both the bottom surface, or bottom surface plate, and the
crown of the club. Therein, the aerodynamic slots 330 and 430
shown in Figs. 9 and 10 [respectively] occupy the same plane as
the slot shown in Fig. 5, i.e., a plane substantially parallel with the
bottom and top surfaces of the club.
Gillig Deci.

¶

19 (emphasis added).

Gillig compares the planes that the aerodynamic slots (130, 330, and
440) occupy, or define, as opposed to the slots themselves. According to this
view, an element that lacks flat surfaces may nevertheless lie in, or define, a

Also parallel are straight lines that are tangent to the corresponding point on
each curve. Parallel surfaces can quickly get us into deep water, mathematically. See,
e.g., www.encyclopediaofmath.org/index.phpIParaiiei_surfaces. There is something,
however, to the notion that a surface, although not itself a plane, may substantially
define a plane, and that one such defined plane may be parallel to another plane. See
id. Or it may be that two congruent curved surfaces may be everywhere equidistant,
and therefore parallel. Those background concepts may assist in the discussion.
11

20

12
plane. And that plane may be “substantially parallel” to other elements in the
figure. In other words, the c-slot itself does not have to have an identifiably flat
bottom, but it may occupy, or be positioned within, a plane that is
“substantially parallel” to the bottom surface (and, says Gillig, the crown) of the
club head. Thus, a c-shaped channel with a rounded bottom that is of uniform
depth with respect to the plane of the club head’s bottom surface might be said
to lie in, occupy or define a plane. 13
By contrast, consider a c-slot with the heel end of the channel cut deep,
tilting the plane upward toward the hosel of the club, and the toe end of the
channel cut shallow, tilting the plane downward toward the face plate. Such a
c-slot might not define a plane parallel to that of the bottom surface of the club
head; it might be tilted with respect to the bottom surface. I believe that Gillig
envisioned a variant of this when he contrasted the Air Bear design thus: “[TJhe
heel end of the Air Bear channel tails upward, away from the face plate and
toward the hosel, while the toe end of the Air Bear channel is larger and tails
downward toward the face plate. As such, the channel of the Air Bear is not

Neither party, by the way, has addressed or defined the term “plane,” and it is
not a term that is subject to construction here. I ignore the theoretical constructs of
plane geometry. A serviceable definition of “plane” as used in this context would
encompass any bounded, flat surface:
12

a: a surface in which if any two points are chosen a straight line joining
them lies wholly in that surface
b : a flat or level surface
See http: / /www.merriam-webster.com/dictionary/plane.

It may help in visualization to consider an example, highly simplified for
purposes of illustration only, of a c-slot that has a rounded, not flat, bottom. At least
in one possible embodiment, its interior shape may resemble a quarter of a doughnut.
(I mean one of the four identically shaped pieces that result when a doughnut is cut
lengthwise, then across.) Lay that quarter-doughnut on the table, flat side down. Is it
meaningful to say that the rounded top is parallel to the table? Yes, if we consider the
plane that is defined by the rounded top of the doughnut. For example, if we were to
lay a rigid cardboard square on top of the quarter-doughnut, it would lie parallel to the
table. (Note that the quarter-doughnut’s c-shape helps defme the plane. Although the
slot has a rounded top, it defmes a unique plane, i.e., it supports the cardboard in
only one position.)
13

Now consider a lopsided quarter-doughnut, thick on one side and thinner on
the other. Again, lay it on the table, flat side down. Lay the cardboard on top. That
piece of cardboard is not parallel but tilted with respect to the table.
21

substantially parallel to either the sole plate or the crown of the club.” Gillig
Deci. ¶ 14.14
“Substantially” allows for some wiggle room, both in the concept of the
parallelism and in the acceptable deviation from perfect parallelism. But in
common, not overly technical parlance, the observer should be able to
recognize such substantial parallelism. That is, it should be discernible
whether the slot occupies a plane that is parallel with, or tilted with respect to,
the plane of the bottom surface.
I next consider the issue of whether the c-slot may extend into the
sidewalls. The plain language of the relevant Claims suggests not. Claim 1 (as
amended) states that aerodynamic configuration, which is “in the form of a c
said bottom surface.” Claim 9 states that the c-slot is
shaped slot,” is “on
said bottom surface.” Reexamination Certificate at p. 2, lines 21—23,
“within
45—46. The “substantially parallel” limitation, too, would appear to rule out
many, if not all, embodiments in which the c-slot extends into the sidewalls. Of
key importance, however, is the prosecution history of the reexamination. The
Gillig Declaration, on which the Trust heavily relies, endorses this limitation:
...

...

(a) After noting that the c-slots in Figs. 5, 9 and 10 are
substantially parallel to the top and bottom surfaces of the
club, Gillig states that “the c-shaped aerodynamic slot of
Antonious is separate and apart from the sidewall surfaces.
of the respective embodiments of the invention.” Id. ¶ 19
(emphasis added).
(b) Considering the aerodynamic function of the slot design, Gillig
states that “Antonious’ objectives of minimizing front-to-rear
turbulence and reduction of drag upon the club, while
enhancing club speed and stability, could not have been
achieved if his aerodynamic slot was located within any of the
sidewalls or side surfaces of the embodiments set forth in the
‘754 patent or if the slot was not substantially parallel with the
bottom and crown of the club.” Id. ¶ 24 (emphasis added).
(c) Distinguishing the Air Bear prior art, Gillig states that “the heelto-toe aerodynamic channel of the Air Bear was formed within
the sidewalls of the club,” id. ¶ 11 (emphasis added), and notes
that the aerodynamic objective of the Air Bear slot “could not
That is not to say that the court, in a Markman hearing, should distort its
interpretation to avoid a later fmding of invalidity based on prior art. But prior art is
properly considered here because, in the ‘754 reexamination, the Trust contrasted its
design with prior art, including the Air Bear. That contrast, explicitly embraced by the
Trust, sheds light on the meaning of the terms of the ‘754 patent.
‘

22

have been accomplished if the aerodynamic channel of the Air
Bear was disposed in or upon the bottom or sole plate of the
club,” id. ¶ 13.
a
All of these statements place the c-slot within the bottom surface, and draw
de
sharp distinction between the bottom surface and the sidewalls. I conclu
that the c-slot cannot extend into the sidewalls.
Finally, I consider the club head’s bottom surface (to which the c-slot
s that
must be parallel). Nike, as we have seen, argues that parallelism implie
bottom
the bottom surface must be flat. But even if curved, the club head’s
two
surface may theoretically be substantially parallel to the c-slot, if the
both
curvatures are congruent. (That is to say that Nike’s example, in which
le.)
are flat, is a valid example, but not, as Nike claims, the only possible examp
from
“Substantially” may also encompass some limited degree of departure
perfect flatness. The preceding discussion limits the range of possibilities, but
perhaps one could be imagined.
The question remains, however, whether the Trust, in the course of
As
reexamination, disclaimed any embodiment with a curved bottom surface.
ed
to Claim 1, it did: “Claim 1 as amended also makes explicit that the c-shap
slot is formed within the substantially flat bottom surface. . .“ Nike 00006692—
in
93 (pp. 6-11 of the “Remarks/Arguments,” submitted by the Trust
sis
connection with reexamination, quoted more fully at p. 19, supra) empha
to
added). I see no explicit disclaimer as to Claim 9, but I also see no basis
differently as to these two
construe “substantially parallel” or “c-shaped slot”
claims. (And claim 9, added only on reexamination, could not expand the scope
of the prior claims.)
In sum, then, I find that parallelism does not logically rule out the
relation between curved surfaces, but that the exclusion of slots extending into
ly
the sidewalls (see infra), as well as the nature of the c-slot design, probab
I
leave little if any room for embodiments with parallel curved surfaces. To that,
the bottom surface be
add the concession in the reexamination history that
“substantially flat.” These factors, put together, lead me to the conclusion that
t
a substantially—not perfectly, but substantially—flat bottom surface is inheren
in Claims 1 and 9.
This construction is broader than the one proposed by Nike, but
narrower than the one proposed by the Trust. It has the virtue of common
sense; the thought behind “substantially parallel” seems to be that the
orientation of the slot not be tilted with respect to the bottom surface of the
in
club. It has the virtue of consistency with all of the Figures. The elements
10 do not, but
Figure 5 have flat surfaces, and the elements in in Figures 9 &
the c-slot in each case can still be said to occupy or define a plane that is
“substantially parallel” to the bottom surface of the club head. On the
23

ing, this
assumption that “substantially parallel” must mean someth
Figures.
construction, or something like it, may be the only way to reconcile the
lly the Air
This construction also tends to avoid a conflict with prior art, especia
or sloped
Bear, wherein the aerodynamic channel occupies a plane that is tilted
s into the sidewalls.
with respect to the bottom surface of the club, or extend
Trust in
And it honors the concessions and representations made by the
connection with the reexamination.

Thus, in light of the preceding analysis, I construct these disputed patent
terms, contained in Claims 1 and 9, as follows:
the c
Substantially parallel with/to means that the plane defined by
surface/sole
shaped slot and the plane defined by the substantially flat bottom
does not
of the club are essentially parallel to each other, and the c-shaped slot
extend into the side walls or skirt.
ed
C-shaped slot means an aerodynamic slot characterized by a c-shap
profile, in the sole/bottom surface, not the sidewalls, of the golf club head.
B. “Skid surface” and “Wall separating said skid surface from
said bottom surface” (Claim 1 only)

1. The Parties’ proposed constructions
Plaintiff
Skid surface: A surface of the golf
club head formed on and raised from
the bottom surface so as to extend
bottom
the
from
outwardly
as
and
surface,
surface/bottom
ground
designed to skim across the
when the club head is swung.

Defendant
Skid surface: A surface of the golf
club head formed on and raised from
the bottom surface so as to extend
bottom
the
from
outwardly
surface, separated
surface/bottom
from the bottom surface by the spacer
wall, and designed to skim across the
ground when the club head is swung.

Wall separating said skid surface
from said bottom surface: The only
term in this phrase not otherwise
construed or discussed herein is ‘wall.’
non-horizontal
any
means
Wall
tes the skid
surface that separa
surface from the bottom surface.

Wall separating said skid surface
from said bottom surface A spacer
wall separating the bottom surface
from the skid surface, where the
spacer wall is separate and distinct
from the perimeter walls of the c
shaped slot.

24

The issue here boils down to a dispute as to whether the club head’s skid
5
surface’ must be separated from the bottom surface of the club head by a
standalone or discrete “spacer wall,” or whether the definition encompasses a
wall that is an extension of the perimeter wall of the c-slot.
The Trust proffers the broader interpretation (a), wherein “wall”
encompasses any “non-horizontal surface.” In the Trust’s view, the terms “skid
surface’ and ‘spacer wall’ are defined by their function, as opposed to their
exact location or geometry.” P1. Opening Br. at 21. Nothing in the Claim
language “or otherwise in the intrinsic evidence precludes where the front of
the wall separating the skid surface from the bottom surface can begin and
does not preclude the possibility that such wall may simply constitute an
extension or elevation of the inner wall of the c-shaped slot,” id. at 26. The
Trust proffers hypothetical variations on Patent Figures 5 and 2 to illustrate its
6
point.’ Id. at 22—23, 25.
Nike maintains, more narrowly, that the ‘754 patent requires a discrete
“spacer wall.” In Nike’s view, the language of Claim 1 is inherently structural,
not just functional, and it requires three distinct structural elements: (1) a
bottom surface, (2) a skid surface, and (3) a wall separating the bottom surface
and the skid surface. See Def. Opening Br. at 22. Again, Nike relies on Patent
Figure 5, which shows a distinct separating wall, as the controlling
representation.

2. The Court’s construction
The plain language of Claim 1 defines the crucial features of the skid
surface element:
said aerodynamic configuration further including a skid surface
formed on and raised from said bottom surface; said skid surface
having a wall separating said skid surface from said bottom
surface.

There is no meaningful dispute as to the definition of “skid surface.” The Parties
agree that a skid surface is “a surface of the golf club head formed on and raised from
the bottom surface so as to extend outwardly from the bottom surface/bottom surface
and designed to skim across the ground when the club head is swung.” See Joint
Statement.
16
Nike challenges the Trust’s reliance on these “hypothetical illustrations,” which
are not part of the record. While it is true that these figures do not appear in the
record, I see nothing wrong with the Trust’s offering them as a visual aid to
demonstrate its verbal point.
25
15

Revised Claim 1 (terms in bold are disputed; terms in italics reflect my
emphasis). Thus (a) the skid surface must be raised from the bottom surface of
the bottom surface; (b) the skid surface must have a wall, and (c) the wall must
separate the skid surface from the bottom surface.
Element (a) at least suggests separateness, in that the skid surface is
“raised,” i.e., it must rise from, the bottom surface. While neither party
addresses element (b)—the skid surface “having” a wall—it seems to imply that
the separating wall in some sense belongs to the skid surface. Element (c)—the
requirement that the wall separate the skid surface from the bottom surface—
tends to suggest that the wall must have an independent existence, i.e., that it
must arise from the bottom surface.
I am unconvinced, however, by the Trust’s proffered “functional”
approach. Taken to an extreme, that approach might open the door to any
embodiment that accomplishes the same result, which I find too broad.
Moreover, the plain language of Claim 1 does not describe the skid surface in
terms of its function. To the contrary, the Claim language requires that the
skid surface have a wall that separates the skid surface from the bottom
surface. That description, while perhaps not wholly structural, emphasizes the
physical “what-and-where,” not the functional “how.”
These factors, to me, suggest that a face of the “wall” that is merely an
extension or continuation of the c-slot wall does not arise from the bottom
surface, and does not separate the skid surface from the bottom surface. Any
face, or portion, of the skid-surface wall that is a mere continuation of the c
slot wall, with no break or offset that is identifiable as part of the bottom
surface, does not separate the bottom surface from the skid surface. At least
along that portion of the wall’s width, there is no bottom surface. See P1.
Opening Br. at 26.
The question remains, however, whether it is fatal if part, but not all, of
the wall merges with the wall of the c-slot. The skid-surface wall may have
more than one face or dimension. Suppose, for example, that it merges with the
wall of the c-slot on its trailing side (i.e., the side away from the striking surface
of the club), but arises from an identifiable bottom surface on the other two
sides? Such a wall, I think, could still be said to separate the skid surface from
the bottom surface. Separating the skid surface from the bottom surface is not
the only thing it does along its entire length, but it is one of the things it does.
The definition, then, should include any wall that, for a substantial portion of
7
its length, arises from an actual, physical portion of the bottom surface’ and
separates that portion of the bottom surface from the skid surface.
In saying this, I mean to include the physical bottom surface, but exclude a
mere theoretical extension of the plane of the bottom surface. Remember, too, that the
fourth side of the skid surface—the one near the ball striking surface—there does not
26
17

Accordingly, I modify Defendant’s construction and adopt a limitation
r wall”
that the skid surface and bottom surface must be separated by a “space
of its
that is distinct from the c-shaped slot itself along a substantial portion
the definition of “skid
width. This modification does not require clarification of
said
surface,” but does require clarification of the definition of “wall separating
skid surface from said bottom surface,” as follows:
Skid surface means a surface of the golf club head formed on and
raised from the bottom surface so as to extend outwardly from the
bottom surface/sole, separated from the bottom surface by the
spacer wall, and designed to skim across the ground when the
club head is swung.
[and]
Wall separating said skid surface from said bottom surface means a
spacer wall separating the bottom surface from the skid surface,
where the spacer wall, along a substantial portion of its width, is
separate and distinct from the perimeter walls of the c-shaped slot.
C. “Offset from” (Claim 9 only)
Defendant
Plaintiff
offset
rotationally
ement Substantially,
Existing or disposed at a displac
virtual centerline.
from the virtual centerline of the club relative to the
head.
The parties disagree as to whether the c-slot must be “rotationally” offset
from the virtual centerline of the club head, or whether it can just be “at a
displacement from,” the virtual centerline of the club head. Imagine a c-slot
that is perfectly bisected by the virtual centerline. The “offset” of such a c-slot
might involve a lateral movement, or a rotational movement. The interpretive
it
dispute is whether the displacement must be rotational (Nike), or whether
8
may be either (the Trust).’

seem to be a “wall” at all, but this is not raised as an objection to the notion that the
wall separates the skid surface from the bottom surface.
18
The parties agree that, irrespective of the nature of the offset, the transverse
line must still pass through the c-slot at some point.
27

ILLUSTRATION

assist the reader
The following illustration, taken from Nike’s brief, may
in visualizing the two forms of offset:

-

Example of lateral
offset:

(!;:;(::;)
Virtual
Centerline

Example of
rotationgj offset:

FIGJO

FK19

The relevant language of Claim 9 provides:
•

.

.

•

of
said slot offset from, and a portion there

passing
passing through, a virtual centerline
club
transversely through a heel-to-toe axis of said
head.
tion “does not recite or
The Trust maintains that the Patent’s specifica
‘centerline’ that must be
suggest a form of ‘offset’ relative to the term
gh the center of gravity of
accomplished using a vertical axis of rotation throu
mits that “offset” should be
the club head.” P1. Opening Br. at 30. The Trust sub
on’ in the Federal Circuit’s
defined “[i]n accordance with the ‘heavy presumpti
s such as ‘offset’ should be
rules of claim construction [that] simple term
ordinary meaning.” id. The
interpreted according to [their] customary and
lacement.” Any displacement
ordinary dictionary definition of “offset” is a “disp
28

lateral,
from the virtual centerline of the club head, whether rotational or
should therefore satisfy Claim 9, according to the Trust.
the
I accept that either a rotational or lateral displacement would satisfy
in the
9
ordinary definition of “offset.” Nike, however, finds a further limitation
were
Trust’s statements on reexamination, especially those statements that
dictionary definition
20
intended to neutralize the Air Bear prior art. The broad
the Trust’s manifest purpose of adding Claim
of offset, says Nike, conflicts with
9 in reexamination to “save” the Patent from a prior-art invalidation.
The issue is trickier than it looks. The Trust’s broad definition of offset
tric
would appear to encompass any slot except one that is bilaterally symme
, however, the Air
’
2
along the axis of the centerline. As the Trust acknowledges
that exception: that is, it appears to be
Bear slot appears to embody just
whether
bilaterally symmetric along the axis of the centerline. Thus any offset,
this
lateral or rotational, might be sufficient to avoid the Air Bear prior art on
basis.
art.
But that is not the basis on which the Trust did distinguish the prior
offset,
In reexamination, the Trust submitted that the Air Bear channel was not
Air Bear channel
like the claimed invention, because the forward ends of the
That
(i.e., the two free ends of the “C”) were equidistant from the club face.
ement would
configuration rules out a rotational offset; a rotational displac
But
result in one end’s being nearer, and the other farther, from the club face.
y offset with both
it does not rule out a lateral offset; the slot could be laterall
ends of the C still remaining equidistant from the club face.
Nevertheless, I am inclined to be ruled by the broader interpretation, i.e.,
or a
the ordinary definition of offset, which encompasses either a lateral
a
rotational displacement. It appears likely that Gillig subjectively had
ation. But
rotational offset in mind when he penned paragraph 14 of his Declar
in any
he also had in front of him an Air Bear slot that clearly was not offset
19

See www.merriam-webster.com/dictionary/offset. It does not necessarily imply

that
rotation. An offset in a wall, for example, involves a diminution in thickness
creates a sort of ledge. Id.
As noted above, the issue before the Court is patent construction, not patent
s
validity or infringement. But the prior art was very much on the minds of the drafter
and the examiner, and may shed light on the meaning of the patent.
20

“The aerodynamic channel of the Air Bear, while not precisely symmetric about
ine.”
a front to rear centerline of the club, was not significantly offset from the centerl
l “was not
Maurer Deci. Ex. 4, Nike 00006650 (Winfield Deci. ¶ 8). The Air Bear channe
Bear
significantly offset from the centerline. In fact, the forward ends of the Air
end is the same distance from, the plane of
Channel are nearly parallel with, and each
the club face.” (Gillig Deci. ¶ 14).
29

21

manner, whether lateral or rotational. To be sure, Gillig’s reasons for
concluding as he did were incomplete; his statement that the Air Bear slot was
not offset, though correct, was underdetermined. But that, in my view, does
not suffice to displace the ordinary and customary meaning of the word
“offset.” Under the canons of construction set forth above, that plain and
ordinary meaning should control.
This term may legitimately encompass either a lateral or a rotational
displacement from the virtual centerline described in Claim 9. Accordingly, I
adopt the Trust’s construction, which is that “offset from” means “existing or
disposed at a displacement from the virtual centerline of the club head.”
CONCLUSION

For the foregoing reasons, I construct the disputed terms of the ‘754
patent as follows.
(Claims 1 and 9) Substantially parallel with/to means that the
plane defined by the c-shaped slot and the plane defined by the
substantially flat bottom surface! sole of the club are essentially
parallel to each other, and the c-shaped slot does not extend into
the side walls or skirt.
(Claims 1 and 9) C-shaped slot means an aerodynamic slot
characterized by a c-shaped profile, in the sole/bottom surface, not
the sidewalls, of the golf club head.
(Claim 1) Skid surface means a surface of the golf club head
formed on and raised from the bottom surface so as to extend
outwardly from the bottom surface/sole, separated from the
bottom surface by the spacer wall, and designed to skim across the
ground when the club head is swung.
(Claim 1) Wall separating said skid surface from said bottom
surface means a spacer wall separating the bottom surface from
the skid surface, where the spacer wall, along a substantial portion
of its width, is separate and distinct from the perimeter walls of the
c-shaped slot.
(Claim 9) Offset from means existing or disposed at a displacement
from the virtual centerline of the club head.

30

Dated: January 8, 2014

/

I

)

Kevin McNulty
United States District Judge

31

____

mmrnmumuimiiuioiaiiiiiii
US005735754A

United States Patent

[11]

(19]

5,735,754

Patent Number:
Date of Patent:

Antonious

[45)

[54) AERODYNAMIC MFAL WOOD GOLF
CLUB READ

Apr. 7, 1998

D. 364,204 1111995 Un
2,041,676 511936 Gallagher
2,550,846 5/1951 Milhigna
3,841,639 1011974 Werner
5,271,622 12/1993 Rogeason
5,314,185 5/1994 Gonnan
5,456,469 1011995 MacDoagali
5,467,988 11/1995 Heawood
5,524,890 6f1996 Kim

.___...........

..,,....._......._.

L76] Inventor

Anthony 1. Antonlous, 7738 Cafle
Fad, Sarasota. PIn. 34238

[21] AppL No.: 759,924

._............

.._..................

..___.

[22] FiIed
[51]
[52]
[58]

[56]

Dec. 4, [996

A63B53104
473/328; 4731345
U.S. CL
D21/214. 215,
Field of Search
D21/216, 217, 218, 219, 220; 473/327,
328, 324, 228, 286, 345,346

1)211214
473/32*
4731327
473/286
473/327
4731327
4731328
473/328
473/327

Primary Fnamlne,’-.-Sebasdano Passaniti
Auome Agent, or F/rm—Aquilino & Welsh

_._.__..._..

_._.._..——

References Cited
U.S. PAThNT DOCUMENFS

D. 350,116 811994 Antonloes
D. 363,749 1011995 Kcami

D211114
1)211214

ABSTRACT

[57]

A metal wood type golf club head having a c-shaped
aerodynamic configuration foamed Ifl the bottom surface
adjacent a rear surface and having an open end extending
forwardly toward the ball sblkIng face in combination with
a skid surface.
8 ClaIms, 3 Drawing Sheets

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5,735,754
1

2

The aerodynamic surfaces of the club head create aero
AERODYNAMIC METAL WOOD GOLF
dynamic effects which mlnhnlze turbulence and increase
CLUB HEAD
laminar air flow to reduce drag resulting in a more stable
BACKGROUND OF THE INVENTION
club head with higher speed fora given application of swing
club heads and In s force by the golfer.
The present invention relates to golf
A primary object of the present invention Is to provide a
particular to a metal wood type golf club head having an
surface on (he bottom rear of the
golf club head having an improved aerodynamic surface on
improved aerodynamic
the bottom sole adjacent the rear of the club head to
sole.
substantially reduce drag and improve swing stability.
wood type golf club heads are used for
Wood and metal
hitting a golf bail a longer distance and are usually used for 10 Another object Is to provide a golf club head which
increases club head speed and lift by concentrating air flow
the first shot of a given golf hole froma tee position. Fairway
are also used “through the green” on
near the rear surface of the dub head where turbulence
clubs of the same type
occurs to reduce drag on the dub head as it is swung.
a golf hole to obtain maximum distance In the direction of
or onto a putting surface. The distance the ball travels is
Other objects andadvantages of the present invention will
determined by the club head speed at the moment of impact
become apparent in the following description of the pre
and the weight of the club head In accordance with well
ferred embodiments taken into conjunction with the accom
known laws of physics. 1rpica1 wood and mctalwood golf
panying drawings which are incorporated in and constitute
club of this type have aerodynamic surfaces, but conven
a part of the specification and together with the description.
tional shapes create substantial air turbulence, which, in
serve to explain the principles of the present Invention.
turn, causes adverse erratic movement and aerodynamIc 20
BR]BF DESCRJP1’ION OF THE DRAWINGS
drag that reduces the club head speed generated for a given
force developed by a golfer for a particular golf swing.
FIG. 1 Is a bottom view of an aerodynamic golf club head
Over the years, club heads have been developed with
In accordance with the present invention.
aerodynamic shapes to Inemase club head speed by reducing
FIG.Zisabottomperspectiveviewofthegolfclubhead
the aerodynamic drag of the club head as It Is swung. Prior
of P10.1.
art examples of these type of golf club heads Include U.S
P30.3 Is a rear elevational view thereof.
Pat. Nos. D275,412 to Simmons, 2,550,840 to Milhigan,
FIG. 4 is an end clcvational view thereof.
3,997,170 to Goldberg, 4,065,133 to Gordos, 4,900,029 to
FiG. 5 Is a sectional view taken along the lines 5—S of
to Murray at at, and 5.467,989 to Good
SIndair 5,203.565
30 FIG. 3.
at aL as well asmy own U.S. Pat. Nos. 4.828265,4,930,783,
FIG. 6 Is a bottom view of a second embodiment of an
5,004.241,5,193,810, 5,221,086 and 5,511.786 among oth
aerodynamic golf club In accordance with the present Inven
ers.
(1011.
SUMMARY OF THE INVENTION
P10.7 Is a bottom perspective view of the golf club head
Improvement over
The present invention represents an
of FIG. 6.
an
known prior art wood type golf club heads by providing
PIG. 8 is rear elevational view thereof.
aerodynamic surface on the bottom sole adjacent the rear
FIG. 9 Is a bottom view of a third embodiment of the
produces greater club head
edge of the club head, which
present Invention.
speed when the club head is swung. This aerodynamic
ofaforthembodimcntofibe
surface reduces undesirable air turbulence which causes 40 RG.l0lsabottomvlew
present Invention.
creates a smoother, laminar type air
aerodynamic drag and
Qow around the club head. A golf dub using this Improve
DESCRIPI1ON OF THE PREFERRED
ment permits a golfer to hit longer and straighter golf shots
EMBODIMENTS
for a given applied swing force. The aerodynamic structure
The detailed embodiments of the present invention are
stability o(the club head
also creates increased aerodynamic
disclosed herein. It should be understood, however, that the
resulting in Increased control of the club head position
disclosed embodiments are merely exemplary of the
swing, especially at impact, thereby producing
during the
invention, which may be embodied in various forms.
more consistent golf shots.
Therefore, the details disclosed herein are not to be intergolf club head of the present invention includes a
The
for the claims and
slot formed on the bottom sole sur so preted as limited, but merely as the basis
c-shaped aerodynamic
as a basis for teaching one skilled in the art how to make
a metal
face of the club head. In a preferred embodiment,
and/or use the invention.
wood type golf dub head, having a smooth upper surface
FIGS. 1-S show a first embodiment of a golf club head
a c-shaped aerodynamic slot
and sloped side walls, Includes
100 In accordance with the present Invention. Thegolf club
surface or
located adjacent the rear surface on the bottom
except for the aerody
sole which generally follows the contours of die peripheral 35 head 100 is conventional In shape, 112, heel 114, toe 116,
namic surfaces and includes a hosel
between the sole and the side walls.
edges of the club head
upper surface 118. rear surface 120, ball striking face 122
The open end ofthe c-shaped slot faces forwardly toward the
and bottom surface 124.The bottom sole 124 Includes a skid
club head may also
front ball striking face of the club The
member 126 which extends outwardly from the bottom sole
Include a raised sole plate on the bottom surface having a
refrombyaspacerwall 128.A
wall which also provides an aerodynamic effect and so I24andlsseparatedthe
spacer
c-shaped aerodynamic slot 130 is formed on the bottom
enabling the dub to skim across the
creates a skid structure
surface 124 and faces forwardly with open ends 132 of the
ground surface when the club head is swung to hit a golf
c-shaped slot 130 being toward the bail striking face 122.
bail.
Preferably, the c-shaped slot 130 extends from a point
In another preferred embodiment, a venturi slot is pro
the rear surface of the 65 adjacent the interface of the bottom surface 124 and rear
vided between the c-shaped slot and
surface 120 across approximately two thirds of the distance
club head to further direct air flow adjacent the rear surface
to the ball strildng face 122.
of the club head where most turbulence occurs.

5,735,754

3

4

surface
an aerodynamic configuration on said bottom
the bail
slot
The aerodynamic slot 130 catches air just behind
adjacent said rear surface in the form of a c-shaped
120
surface
striking face 122 and directs it toward the rear of the club
end facing forwardly toward said ball
having an open
within the curved walls of the c-shaped slot 130 the slot to
striking face; said aerodynamic configuration further
head 100. The air is expelled rearwardly out of
including a skid surface formed on and raised from said
the club head 100
minimize turbulence and reduce drag as
bottom surface; said skid surface having a wall sepa
. At the same time, the skid 126 and spacer walls
Is swung
direct the air flow rearwardly to increase
rating said skid surface from said bottom surface.
128 also serve to
laminar flow in that area of the club head 100.
2. The aerodynamic golf club head of claim 1 further
of a golf
and
FIGS. 6. 7, and 8 show a second embodtiment ion. This
including a venturi opening in fluid cornniunicatlon with
tO
200 In accordance with the presen invent
said c-shaped aerodynamic slot
dub head
extending rearwardly from
to the club head
club head 200 is similar to that described 214. toe 216.
toward said rear surface.
es a hose! 212, heel
n
hereinabove and includ
3. The aerodynamic golf club head of claim I wherei
220. upper toe 230. side
heel of
upper surface 218. rear surface
said slot is further defined by being offset from said
bottom surface 225. a
walls 222. a bail striking face 224.
skid 226 from
said club head.
skid 226 and a spacer wall 238 separating the
head
4. An aerodynamic golf club head including a dub
225. Ac-shaped aerodynamic slot 230 is
the bottom surface
a heel, toe, rear surface, ball striking face. upper
225 adjacent the rear surface
body having
formed on the bottom surface
com
dly toward the
surface and bottom surface, wherein the improvement
220. The open end of the slot 230 faces forwar
striking face 224.
bail
prises:
g 232 whIch
The slot 230 is formed with a venturi openin surface 220 20
an aerodynamic configuration on said bottom surface
ly into the rear
slot
extends rearwardly and upward
adjacent said rear surface in the form of a c-shaped
air flow.
ball
creating an additional air channel to direct the
having an open end facing forwardly toward said
n
present inve
FIG. 9 shows another embodiment of the
striking face; said slot being offset from a center of said
to the club head
di
tion. A golf club head 300 is similar
bottom surface centerline passing through a longilu
es a bottom surface 325.
described in FIGS. 1-S and includ
slot 330 whIch Is 25
nat in a heel-to-toe direction.
a side surface 327 and an aerodynamic
n
bead 300.
5. The aerodynamic golf club head of daim 4 wherei
offset In the direction of the toe 316 of the club
said slot Is offset toward said heel.
r embodiment similar to FIG. 9. A
P10.10 shows anothe
n
425, a side
6. The aerodynamic golf club head of claim 3 wherei
golf club head 400 and Includes a bottom surface offset in
is
said slot is offset toward said toe.
surface 427 antI an aerodynamic slot 430 whIch
slot
400.
7. The aerodynamic golf club of claim I wherein said
the direction of the heel 414 of the club head
aerodynamic slots of
offset from said toe of said club
Is further defined by being
It will be appreciated that the offset
at the heel or
head.
FIGS. 9 and 10 allow greater club head speed modate the
head
8. An aerodynamic golf club head Including a club
toe selectively in order to more effectively accom
whether left
, ball sulking face, upper
swing characteristics of a particular golfer,
35 body having a heel, toe, rear surface
com
handed or right-handed.
surface and bottom surface, wherein the improvement
been shown
While various preferred embodiments have
prises:
Is no intent to
surface
and described, it will be understood that there is intended
an aerodynamic configuration on said bottom
the Invention by such disclosure, but rather,
limit
adjacent saidrear surface In the form of a c-shaped slot
ctions falling
to cover all modifications and alternate constru
having an open end facing forwardly toward said ball
defined In the 4°
within the sphit and scope of the Invention as
striking face; said aerodynamic configuration further
n
appended cms.
including a venturi opening in fluid communicatio
ed
I claim:
with and extending rearwardly from said c-shap
a club head
1. An aerodynamic golf club head Including
aerodynamic slot toward said rear surface.
gfacc, upper
body having a heel, We. rear surface, ball strikin
ement coin- 45
*
*
*
*
surface and bottom surface, wherein the Improv
*
prism:

I11hI1 1111111101111111 1! 111II
US005735754C1

0101

(12) EX PARTE REEXAMINATION CERTIFICATE (7290th)
US 5,735,754 Cl
(lO) Number:
United States Patent
(45)

Antonlous
(54) AERODYNAMIC METAL WOOD GOLF CLUB
HEAD
(75) Inventor: Anthony 3. Antonlous. Sarasota, FL.
(US)
(73) AssIgnee: Anthony .1 Antonlous Irrevocable
Thist. Wanaque. NJ (US)
Reexamination Request
No. 901010.266. Sep. 2,2008
Reexamination Certificate for:
5,735,754
Patent No.:
Apr. 7, 1998
lssued
081759,924
Appi. No.:
Dec. 4, 1996
Filed:

Certificate of Correction Issued Jul. 1,2008.

Certificate Issued:

Jan. 5, 2010

Golf Digest. Apr. 1994. p. 93. AdvertIsement for Ben Hogan
H40 cast clubs.
Golf Magazine. May 1994. Advertisement for Ben Hogan
H40 cast clubs.
Golf Digest. May 1994. p. 175. Advertisement for Ben
Hogan H40 cost clubs.
Golf Magazine. Jun. 1994, p. 145. Advertisement for Ben
Hogan H40 cast clubs.
Golf DIgest. Jun. 1994. p. 185, AdvertIsement for Ben
Hogan H40 cast clubs.
Nicklaus Golf Equipment. Promotional Materials Issued
Prior to the 1996 PGA Merchandise Show held in Orlando.
PLan Jan. 26-29. 1996.
Petersen’s Golfing. 1996. Test Drive: The Nicklaus air Bear
Driver.
Golf Digest, Apr. 1996. 196 Show PrOdUCES,A titanium sam
pler. Nicklaus Golf’s Air Bear.
Golf Magazine. Mar 1996, Advertisement for Nicklaus Air
Bear.
Golf Magazine. Apr. 1996, Advertisement for Nicklaus Air
Bear.
Golf Magazine, May 1996. Advertisement for Nicklaus golf
. .

(51) InLCL
4638 33104

(2006.01)

4731328; 4731345
(52) US. CL
None
(38) FIeld of Classification Search
See application file for complete search history.
...........

..

..

....

....

References Cited

(56)

U.S. PATENT DOCUMENTS
D350.176 S • 811994 Antonlous
5.456.469 A • 1011995 MacDougall
1)11993 Kizynowek et al
0363.96) S
711996 Hueber
D372.063 S
7l00l Ortiz
6.257.991 81
OTHER PUBLICATIONS
..

Golf MagazIne, Sep. 1996, p.70. SIzing It Up by Rob Sanerhafi.
..

...............

D21fl52
4731328

Golf Magazine. Mar 1994. p. 66. Ben Hogan H40 lions,
H4OWOOCIS.

Golf Digest. Ma,. 1994. p.1 l.Advenlsement for Ben Hogan
H40s.

‘cited by examiner
Primary Examiner—Peter C. English

(57)

ABSTRACT

A metal wood type golf club head having a c-shaped aerody
namic configuration formed in the bottom surface adjacent a
rear surface and having an open end extending fonwardly
IowanS the ball sulking face in combination with a skid sur
face.

US 5,735,754 Cl
1
EX PARTE
REEXAMINATION CERTIFICATE
ISSUED UNDER 35 U.S.C. 307
ThE PATENT IS HEREBY AMENDED AS
INDICATED BELOW.

2
AS A RESULT OF REEXAMINATION. IT HAS BEEN
DETERMINED ThA1’
The patentability of claim 8 Is confirmed.
Claim 4 is cancelled.

Claims 1,3,5.6 and 7 are determined to be patentable as
Matter enclosed In heavy brackets [ Jappeared in the
deleted and Is no longer a part olthe
patent, but has been
patent; matter printed In Italics indicates addWoos made’
Claim 2 dependent on an amended claim. Is determined to
to the patent.
be patentable.
ONLY ThOSE PARAGRAPHS OF THE
SPECIFICATION AFFECTED BY AMENDMENT
New claim 9 Is added and determined to be patentable.
is
ARE PRINTED HEREiN.
1. An aerodynamic golf club head Including a club head
Column 2, lines. 53—67:
body having a heel, toe, rear surface, ball striking face, upper
FIGS. 1—5 show a first embodiment of a golf club head
surface and bottom surface, wherein the Improvement cornlOGIn accordance with the present Invention. The golf club
pases:
the aey.
head 100 is conventional in shape, except for
an aerodynamic configuration on. and substantiallyparal
namic surfaces and includes a hosel 112, heel 114. toe 116,
id with, said bottom surface adjacent said rear surface
upper surface 118. rear surface 120. balI striking face 122
lathe form of a c-shaped slot having an open end facing
and bottom surface 124. The bottom sole 124 Includes a skid
forwardly toward said ball striking face: said aerody
member 126 which extends outwardly from the bottom sole
namic configuration further including a skid surface
124 and Is separated therefrom by a spacer wall 128. A
formed on and raised from said bouom surface; said
c-shaped aerodynamic slot 130 Is formed on, and subsian
skid surface having a wall separating said skid surface
sially parallel with, the bottom surface 124 and faces for
from said bottom surface said c-shaped slot transect.
wardly with open ends 132 of the c-shaped slot 130 being
lag a virtual centerline passing through said ball sink
toward the bail striking face 122. As shown In FIG. I,
Ing face and said rearsurjbce ofsaid club head.
c-shapedaerodynamic slot 130 transects a virtual centerline
3. The aerodynamic golf club head of claim I wherein
that passes ilnough ball striking face 122 and rear swface
said slot Is Lfunher defined by being] offset from said heel of
120 of the club heaS Preferably, the c-shaped slot 130
said club head.
extends from a point adjacent the interface of the bottom
5.Thc aerodynamic golf club head of claim [4] 9 whereIn
surface 124 and rear surface 120 across approximately two
said slot is offset toward said heel.
thirds of the distance to the ball striking face 122.
6.The aerodynamic golf club head of claIm (419 wherein
Column 3. lInes 22—26:
said slot is offset toward said toe.
FiG. 9 shows another embodiment of the present inven
7.The aerodynamic golf club of claim I wherein said slot
tion. A golf club head 300 is similar to the club heed
is [further defined by being] offset from said toe of said club
described in FIGS. 1—5 mid Includes a bottom surface 325. a
side surface 327 and an aerodynamic slot 330 on saidboitom 40 head..
9. An aerodynamic gaff club head including a club head
surface which Is substantially parallel with the bottom
body having a heel. ioe rear surface, ball striking jbce
offset from a virtual centerline that passes
surface. and
uppersuiface and bottom surfacn. in which the improvement
transversely through a heel-to-ice axis of the club head In
comprises:
the direction of the toe 316 of the club head 300, wIth a
portion ofslot 330 passing through the virtual centerline. 45 an aerodynamic configuration within, and subssandally
parallel to. said bottom surface, adjacent said rear
Column 3. lines 27—30:
surface, in the finn of a c-shaped slo, hawing an open
FIG. 10 shows another embodiment similar to FIG. 9. A
end facing fonvardly toward said ball striking face.
club head 400 land] includes a bottom surface 425. a
golf
said slot offset from, and a portion thereof passing
side surface 427 and an aerodynamic slot 430 on said bottom
through, a virtual centerline passing transversely
surface which Is o(fsctfroar a virtual centerline that passes
through a heel-ic-toe axis ofsaid club head.
transversely through a heel-to-toe ar.ss of the club head, in
the direction of the heel 414 of the club head 400, with a
S
*
S
S
S
portion of slot 430 passing through the virtual centerline.