PXG vs. TaylorMade: TRO From Tom Stites

Case 2:17-cv-03125-JJT Document 5-8 Filed 09/12/17 Page 1 of 511
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF ARIZONA
Parsons Xtreme Golf, LLC )

)
Plaintiff, )
v. ) Civil Action No. ______________
)
Taylor Made Golf Company, Inc., )
)
Defendant.
)
)
DECLARATION OF JOHN THOMAS STITES, III, IN SUPPORT OF PXGS MOTION

FOR TEMPORARY RESTRAINING ORDER
I, John Thomas Stites, III, declare as follows:
1. I offer the following opinions based on my own personal experience and
knowledge, and if called and sworn as a witness, I could and would competently testify thereto.
2. In preparing this declaration, I have reviewed and am familiar with the following:
a. U.S. Patent No. 8,961,336 (the 336 Patent) (Ex. 1) to Parsons, entitled
Golf Club Heads and Methods to Manufacture Golf Club Heads, as well as the prosecution
history of the 336 Patent (Ex. 2);
b. U.S. Patent No. 9,346,203 (the 203 Patent) (Ex. 3) to Parsons, entitled
Golf Club Heads and Methods to Manufacture Golf Club Heads, as well as the prosecution
history of the 203 Patent (Ex. 4);
c. Various articles describing the TaylorMade P790 irons (Ex.5); and
d. Various pictures and renderings of the TaylorMade P790 Irons (Ex. 6).
1
3. I have been asked to interpret certain terms appearing in claim 16 of the 336
Patent and claim 15 of the 203 Patent, as they would have been understood by a person of
ordinary skill in the art.
4. I have also been asked to determine whether the TaylorMade P790 irons contain
each and every term of claim 16 of the 336 Patent and claim 15 of the 203 Patent.
Background
5. I received a B.S. degree in agricultural engineering from Oklahoma State
University in 1979. At Oklahoma State, agricultural engineering is a degree offered by the
college of engineering.
6. I am a professional golf club designer. Attached at Ex. 7 to this declaration are
true and correct copies of pages from various publications that demonstrate my accomplishments
as a golf club designer.
7. I have been designing golf clubs since 1987.
8. I was trained by and worked closely with the legendary golfer and club designer
Mr. Ben Hogan, and I ultimately became the Director of Research and Development of the Ben
Hogan Company, in Ft. Worth, TX.
9. I have designed and engineered golf club lines for more than twenty-three golf
club companies and more than two-hundred touring professionals, including Jack Nicklaus, Gary
Player, Nick Price, Nick Faldo, Tiger Woods, Justin Leonard, and David Duval. Golfers using
clubs designed by me or my company have won over two-hundred times on the PGA, Senior,
and European Tours, including over twenty times at the Major golf championships (U.S. Open,
British Open, Masters, and PGA).
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10. From 2001 to 2013, I was the Director of Research and Product Development for
the golf division at Nike. In 2013, I stepped down as the Director of Research and Product
Development, but stayed on in a consulting role until Nikes golf division dissolved in 2016. I
continue today to be actively engaged in the design of golf clubs.
11. I currently reside in Sallisaw, OK and oversee engineering work in the oil and gas
industry.
12. I am a named inventor on at least 275 issued United States patents, including 181
design patents and 94 utility patents, all related to golf clubs.
13. From my many years of experience and the positions I have held, including my
experience conducting research and development in the design of golf equipment and
supervising others in those efforts, I am very familiar with the subject matter of the 203 and
336 Patent claims.
14. I am being compensated at an hourly rate of $195 per hour. If I appear for a court
proceeding or deposition, I will be compensated at an hourly rate of $250 per hour. My
compensation does not depend in any way on the outcome of this case.
15. I have not provided any expert witness testimony within the past 5 years.
Legal Standards
Ordinary Skill in the Art
16. I am informed that in patent law many issues are assessed from the perspective of
a person of ordinary skill in the art. I understand that the term art refers to the field to which
the subject matter of the claims of the patent relates.
17. I am informed that the person of ordinary skill in the art is a hypothetical person
working in the field at the time of the invention. I understand that the factors that may be
considered in determining the level of ordinary skill in the art include the: (i) educational level of
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the inventor; (ii) type of problems encountered in the art; (iii) prior art solutions to those
problems; (iv) rapidity with which innovations are made; (v) sophistication of the technology;
and (vi) educational level of active workers in the field. I understand that in a given case, every
factor may not be present, and one or more factors may predominate.
Patent Claims
18. I understand that the claims of a patent are the numbered paragraphs at the end of
the patent that define in words the legal scope of the patent rights. Each claim defines a separate
invention.
19. I understand that a claim is a single sentence that contains all of the features that
are required to practice the invention as claimed. A typical claim consists of a preamble, a
transition phrase such as comprising, and a body.
20. I understand that the preamble of a claim is an introductory phrase that may
summarize the invention, its relation to the prior art, or its intended use. The preamble must be
read in the context of the entire claim, and whether the preamble limits the claim can only be
resolved upon a review of the entirety of the record to gain an understanding of what the
inventors actually invented and intended to encompass by the claim. However, when the
preamble recites essential structures or steps that are necessary to give life, meaning, and vitality
to the claim, the preamble is a limitation of the claim.
21. I understand that the transition phrase comprising means including or
having. In other words, a claim reciting the transition phrase comprising reads on any
apparatus or method, as the case may be, that includes at least the features recited in the body of
the claim. In general, a claim is not avoided by an apparatus or method having more features
than recited in the body of the claim.
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22. I understand that each of the features recited in the body of the claim is referred to
as an element or a limitation of the claim. I will refer to these claim features as claim
elements. Generally, all claim elements are required for a claim to read on an apparatus or
method.
23. I understand that before considering the issue of infringement, it is important to
first determine how the words of a claim should be interpreted. I am told that the process of
interpreting patent claims is also referred to as claim construction.
24. I understand that in district court proceedings, claims should be construed
according to the ordinary and customary meaning standard. This means that claims should be
analyzed from the perspective of a person of ordinary skill as of the effective filing date of the
patent application, and that terms of the claims should be interpreted according to their ordinary
and customary meaning, as understood by a person of ordinary skill, in the context of the patent
under consideration.
25. I understand that there are two basic forms of direct infringement: literal
infringement and infringement under the doctrine of equivalents.
26. I understand that an accused product or process literally infringes an asserted
patent claim if it comes precisely within the terms of an asserted patent claim.
27. I understand that an accused product or process infringes an asserted patent claim
under the doctrine of equivalents if the differences between the patent claim and the accused
product are merely insubstantial.
28. I understand that direct patent infringement, both literal and under the doctrine of
equivalents, is a two-step process comprising: (1) interpretation of the patent claims; and (2)
comparison of the properly interpreted claims with the accused product.
5
29. I understand that the second step of the patent infringement analysis requires an
application of each element of the properly construed claim to the accused product or method.
Infringement may only be present if each claim element is found in the accused product or
process, either literally or equivalently. I also understand that this comparison must be
performed on a element-by-element basis. I understand that this means that it is inappropriate to
compare the claims and the accused device as a whole. Because each element of a patent claim
is material, if even a single element is not found in an accused product or process (either literally
or equivalently), then there cannot be infringement.
Analysis
The 336 and 203 Patents and Prosecution Histories
30. PXGs counsel has informed me that the 203 Patent is a continuation of the 336
Patent, which means that both patents share the same specification. Accordingly, when
providing specific reference (or citations) to the specification of the 336 and 203 Patents, I
will simply provide the citation to the 336 Patent specification for convenience.
31. I have reviewed the specification, claims, and prosecution history of the 336
Patent. Ex. 1 and 2.
32. I have reviewed the claims and prosecution history of the 203 Patent. Ex. 3 and
4. Because the 336 and 203 Patents share the same specification, I have reviewed the
specification of the 203 Patent by way of my review of the specification of the 336 Patent.
The Level Of Ordinary Skill In The Art
33. The claims of the 336 and 203 Patents are directed to golf club heads and
methods to manufacture them. Ex. 1, 2:24-25. The field of the invention is golf club design.
6
34. I understand from PXGs counsel that the time of invention of the 336 and 203
Patents is at least as early August 25, 2014, the effective filing date of the original patent
application that eventually issued as the 336 and 203 Patents.
35. For the first factor (the educational level of the inventor), PXGs counsel provided
me with information regarding the educational levels and work experience for each of the three
named inventors: Parsons, Nicolette, and Schweigert. As for the other factors two through six, I
am generally familiar with each of these based on my experience in the field.
36. Based on my understanding of the Patents and the six factors, a person of ordinary
skill in the art pertaining to the 336 and 203 Patents, as of August 2014, would have a
bachelors degree in engineering or physics, and at least about two years of experience designing
golf clubs. In addition, a person of ordinary skill in the art would consult a materials engineer or
expert should any difficult questions arise relating to the composition of materials used in the
golf clubs.
37. My opinions in this declaration address what would have been known and
understood by a person of ordinary skill as of August 2014. My opinions in this declaration
would remain the same if the effective filing date was three years earlier or later than August
2014 (i.e., +/- three years).
Claim Interpretation
38. I discuss below the meaning of certain claim terms appearing in claim 16 of the
336 Patent and claim 15 of the 203 Patent, as they would have been understood by a person of
ordinary skill in the art at the time of the invention. PXGs counsel has informed me that to
determine the meaning of a claim term, I must first determine the ordinary and customary
meaning of the claim term, examine the claim term in the context of the claim itself, consult the
7
specification, and then consult the prosecution history for any inconsistencies with the meaning
that I have determined. I have provided a chart of the proposed interpretations as Ex. 8.
toe portion
39. Claim 16 of the 336 Patent recites a toe portion. Ex. 1, 14:7-28. Claim 15 of
the 203 Patent recites a toe portion. Ex. 3, 14:25-45.
40. Based on my review of the claims, specification, and prosecution history of the
336 and 203 Patent, a person of ordinary skill in the art would interpret the claim term toe
portion to mean the entire portion of the club head extending away from the hosel from a plane
that (a) is perpendicular to the ground plane and the front surface of the strike face of the club
head; and (b) extends through the middle of the club head.
41. A person of ordinary skill in the art at the time of the invention would have
understood that, in the golf club design art, toe portion refers to the sum of its parts: toe and
portion. The term toe, by itself, can refer to a number of different things including a point
on the clubs face furthest from the hosel or the furthest most point of the club head from the
golfer, or the area opposite the hosel. Common to all of these concepts, however, is that a toe
is associated with a direction generally opposite a heel/hosel. The hosel is where the club head
body meets the shaft. A toe and a heel can be analogized to other directional concepts such
as East and West and right and left. The term portion means an individual part or share of
something, here the entire club head body. Putting toe and portion together, a person of
ordinary skill in the art would understand that a toe portion means the entire portion of the club
head that is not part of the heel portion.
42. The claim language of the 336 and 203 Patents provide support for my
interpretation. To start, the language of claim 16 of the 336 Patent uses the word portions in
reference to an iron-type golf club head. Ex. 1, 14:8-11. But, the same term, i.e., portions, is
8
used, for example, in claim 1 of the same patent with reference to a golf club head. Ex. 1,
12:19-45. And, turning to the 203 Patent, claim 15 also recites a golf club head. Ex. 3,
14:25-45. Thus, a person of ordinary skill would understand that the term portions applies
equally to all golf club heads, including but not limited to irons (e.g., including woods, irons, and
putters).
43. Next, the claims require that the three-dimensional club head body have at least 5
portions: a toe portion, back portion, front portion, top portion, and sole portion. Ex. 1, 14:8-11;
Ex. 3, 14:25-29. In other words, the context and usage of the term toe portion in the claim
does not change the plain and ordinary meaning of the term toe region as the entire portion of
the club head that is not part of the heel portion.
44. Turning to the rest of the Patents, the specification teaches the 6th portion of the
three-dimensional club head body that is not claimed: the heel portion 150. In particular,
Figures 1-14 depict (and the corresponding portions of the written description teach) a golf club
head 100, which has a body portion 110. Ex. 1. The same aspects of the specification further
depict and teach a body portion 110 with a toe portion 140, a heel portion 150, a front
portion 160, a back portion 170, a top portion 180, and a sole portion 190. Ex. 1, 2:33-36.
Finally, figures 1-10, 14, and 18 in particular depict a heel portion 150 that is is opposite a toe
portion 140, a front portion 160 is opposite a back portion 170, and a top portion 180 is opposite
a sole portion 190. Figures 1 and 6 (as annotated below in red) are particularly illustrative of this
concept:
9

10
45. Of particular importance is how the specification uses each portion term in
relation to the other portions of the body portion 110. See, e.g., Ex. 1, 3:1-2 (The toe portion
140 and the heel portion 150 may be on opposite ends of the body portion 110.); id. at 3:9-11
(The front surface 164 may include one or more grooves 168 extending between the toe portion
140 and the heel portion 150.); id. at 8:10-14 (Referring back to FIGS. 7-9, for example, the
body portion 110 may be a hollow body including the interior cavity 700 extending between the
front portion 160 and the back portion 170. Further, the interior cavity 700 may extend between
the top portion 180 and the sole portion 190.). In other words, the toe portion is a three-
dimensional area of the club head body defined by more than just the very tip of the club head
body opposite the hosel. More broadly, a person of ordinary skill would understand that the toe
portion, heel portion, back portion, front portion, top portion, and sole portion identify the six
different parts of a three-dimensional golf club head.
46. By extension, a person of ordinary skill would also understand that each of the 6
portions, including the toe portion, overlaps with other portions of the club head. The
specification supports this and further teaches that toe, heel, top, sole, back, and front portions
include all three dimensions of the club. For example, the specification teaches that the toe
portion encompasses parts of the front and back portions of the club where it explains that a
weight port can be located on both the back portion and the toe portion, and on both the back
portion and the top portion. See Ex. 1, 3:47-51 (In particular, each weight portion of the first
set 120 (e.g., shown as weight portions 121, 122, 123, and 124) may be disposed in a weight port
located at or proximate to the toe portion 140 and/or the top portion 180 on the back
portion 170.) (emphasis added). Moreover, in one embodiment, I understand that the weight
portions may extend into the body of the club head. See Ex. 1, Figs. 8 and 14; 3:31-37 (teaching
11
weight ports extending deep into the body of the club head). Thus, a person of ordinary skill
would understand that the toe portion overlaps with the front portion and back portion. In other
words, certain areas of the club head can be identified as part of more than one portion just as the
State of Arizona can be described as a state located in both the South portion and the West
portion of the United States.
47. Based on the foregoing and because the six parts make up the whole of the golf
club head, a person of ordinary skill would necessarily understand that the toe portion and the
heel portion must be roughly equal parts of the club head body. Thus, a person of ordinary
skill in the art, would refine the plain and ordinary meaning of toe portion to mean the entire
portion of the club head extending away from the hosel from a plane that (a) is perpendicular to
the ground plane and the front surface of the strike face of the club head; and (b) extends through
the middle of the club head.
48. A person of ordinary skill in the art would have read the prosecution history and
have understood that it does not disclose any use of the term toe portion inconsistent with
those disclosures discussed above in the claims and specification.
49. For illustration, below are images of the toe portion of the 336 Figures
highlighted in green:
12
top portion
50. Claim 16 of the 336 Patent recites a top portion. Ex. 1, 14:7-28. Claim 15 of
the 203 Patent recites a top portion. Ex. 3, 14:25-45.
336 and 203 Patents, a person of ordinary skill in the art would interpret the claim term top
portion to mean the entire portion of the club head extending away from the ground from a
plane that (a) is parallel to the ground plane of the club head; and (b) extends through the middle
of the club head.
52. The same analysis and support from above applies to top portion. See also id.
at 8:10-14 (Referring back to FIGS. 7-9, for example, the body portion 110 may be a hollow
body including the interior cavity 700 extending between the front portion 160 and the back
portion 170. Further, the interior cavity 700 may extend between the top portion 180 and the
13
sole portion 190.); id., 8:14-16 (thickness of the face portion 162 may taper from the sole
portion 190 towards the top portion 180.).
53. A person of ordinary skill would understand that the top portion and the sole
portion are divided in the middle of the club head. Specifically, the top portion is the entire
portion of the club head extending away from the ground from a plane that (a) is parallel to the
ground plane of the club head; and (b) extends through the middle of the club head.
have understood that it does not disclose any use of the term top portion inconsistent with
55. For illustration, below are images of the top portion of the 336 Figures
highlighted in blue:
14
sole portion
56. Claim 16 of the 336 Patent recites a sole portion. Ex. 1, 14:7-28. Claim 15 of
the 203 Patent recites a sole portion. Ex. 3, 14:25-45.
336 and 203 Patents, a person of ordinary skill in the art would interpret the claim term sole
portion to mean the entire portion of the club head extending toward the ground from a plane
that (a) is parallel to the ground plane of the club head; and (b) extends through the middle of the
club head.
58. The same analysis and support from above with respect to top portion and toe
portion applies to sole portion.
59. Again, a person of ordinary skill would understand that the top portion and the
sole portion are divided in the middle of the club head. Specifically, the sole portion is the
15
entire portion of the club head extending toward the ground from a plane that (a) is parallel to the
ground plane of the club head; and (b) extends through the middle of the club head.
have understood that it does not disclose any use of the term sole portion inconsistent with
61. For illustration, below are images of the sole portion of the 336 Figures
highlighted in orange:
16
set of weight portions
62. Claim 16 of the 336 Patent recites a set of weight portions. Ex. 1, 14:7-28.
Claim 15 of the 203 Patent recites a set of weight portions. Ex. 3, 14:25-45.
336 and 203 Patents, a person of ordinary skill in the art would interpret the claim term set of
weight portions to mean one or more weight portions.
64. A person of ordinary skill in the art at the time of the invention would have
initially questioned whether the plain meaning of set of weight portions as used in the claims
means more than one weight portion or at least one weight portion. After reviewing the
specification, a person of ordinary skill would understand that the term set of weight portions
may be a single piece of weight portion or multiple pieces of weight portions. See Ex. 1, 4:43-51
(While the above examples and figures may depict multiple weight portions as a set of weight
portions, each set of the first and second sets of weight portions 120 and 130, respectively, may
be a single piece of weight portion. In one example, the first set of weight portions 120 may be a
single piece of weight portion instead of a series of four separate weight portions. In another
example, the second set of weight portions 130 may be a single piece of weight portion instead
of a series of seven separate weight portions.).
understood that it does not disclose any use of the term set of weight portions inconsistent with
top-and-toe transition region between the top portion and the toe portion
66. Claim 16 of the 336 Patent recites a top-and-toe transition region. Ex. 1, 14:7-
28. Claim 15 of the 203 Patent recites a top-and-toe transition region. Ex. 3, 14:25-45.
17
336 and 203 Patents, a person of ordinary skill in the art would interpret the claim term top-
and-toe transition region between the top portion and the toe portion to mean the region shared
by the top portion and toe portion.
68. A person of ordinary skill would understand that the top and toe portions overlap,
and thus, share a common area on the club head. Again, just like Arizona is in both the South
and West of the United States. This overlapping region between the top and toe portions would
be understood to be a transition region. This interpretation is consistent with the claims, as well
as the general meaning of the word between as reflected in dictionary definitions. Ex. 9,
Excerpt from Merriam-Webster 2014 Dictionary (in common to : shared by).
69. A person of ordinary skill in the art would have understood that this interpretation
is consistent with the specification, which also teaches that the overlap of the sole and toe
portions is the sole-and-toe transition region. See, e.g., Ex. 1, 3:53-56 (In another example,
the weight portion 122 may be disposed in a weight port 1422 located in a transition region
between the top portion 180 and the toe portion 140 (e.g., a top-and-toe transition region.); id.,
3:62-65 (In another example, the weight portion 136 may be disposed in a weight port 1436
located in a transition region between the sole portion 190 and the toe portion 140 (e.g., a sole-
and-toe transition region))
have understood that it does not disclose any use of the term top-and-toe transition region
between the top portion and the toe portion inconsistent with those disclosures discussed above
in the claims and specification.
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71. For illustration, below are annotated images of the top-and-toe transition region
between the top portion and the toe portion of the 336 Figures:
19
sole-and-toe transition region between the sole portion and the toe portion
72. Claim 16 of the 336 Patent recites a sole-and-toe transition region between the
sole portion and the toe portion. Ex. 1, 14:7-28. Claim 15 of the 203 Patent recites a sole-
and-toe transition region between the sole portion and the toe portion. Ex. 3, 14:25-45.
336 and 203 Patents, a person of ordinary skill in the art would interpret the claim term sole-
and-toe transition region between the sole portion and the toe portion to mean the region
shared by the sole portion and toe portion.
74. The same analysis and support from above applies to sole-and-toe transition
region between the sole portion and the toe portion.
have understood that it does not disclose any use of the term sole-and-toe transition region
20
between the sole portion and the toe portion inconsistent with those disclosures discussed above
in the claims and specification.
elastic polymer material
76. Claim 16 of the 336 Patent recites an elastic polymer material. Ex. 1, 14:7-28.
Claim 15 of the 203 Patent recites an elastic polymer material. Ex. 3, 14:25-45.
336 and 203 Patents, a person of ordinary skill in the art would interpret the claim term elastic
polymer material to mean a polymer-like material with elastic properties, which may absorb
shock, isolate vibrations, and/or dampen sound.
78. A person of ordinary skill in the art would have understood that an elastic
polymer material is a polymer-like material with elastic properties that can be used to fill cavities
in a club head. When used as fillers in club head cavities, polymer-like materials with elastic
properties may, among other things, absorb shock, isolate vibrations, and/or dampen sound. This
polymer-like material may help the club head maintain its structural integrity and/or may make
the club feel and sound better to the player when the ball is struck. A person of ordinary skill in
the art would have understood that this interpretation is consistent with the claims 336 and 203
Patents.
79. A person of ordinary skill in the art would have understood that the dependent
claims support my interpretation of elastic polymer material. For example, claim 18 of the
336 Patent recites a thermoplastic elastomer material and claim 18 of the 203 Patent recites
thermoplastic elastomer material and thermoplastic polyurethane material. These collective
disclosures support my interpretation that an elastic polymer material may broadly include
many different polymer materials with elastic properties.
21
80. A person of ordinary skill in the art would have understood that the specification
further supports this interpretation. Indeed, the specification discusses a few different examples
of elastic polymer material and the effect it may have on the club head. Ex. 1, 8:32-44
(Alternatively, the interior cavity 700 may be partially or entirely filled with an elastic polymer
or elastomer material (e.g., a viscoelastic urethane polymer material such as Sorbothane
material manufactured by Sorbothane, Inc., Kent, Ohio), a thermoplastic elastomer material
(TPE), a thermoplastic polyurethane material (TPU), and/or other suitable types of materials to
absorb shock, isolate vibration, and/or dampen noise. For example, at least 50% of the interior
cavity 700 may be filled with a TPE material to absorb shock, isolate vibration, and/or dampen
noise when the golf club head 100 strikes a golf ball via the face portion 162. The apparatus,
methods, and articles of manufacture described herein are not limited in this regard).; id., 8:67-
9:5 (With the support of the back wall portion 1410 to form the interior cavity 700 and filling at
least a portion of the interior cavity 700 with an elastic polymer material, the face portion 162
may be relatively thinner (e.g., T1<0.075 inch) without degrading the structural integrity, sound,
and/or feel of the golf club head 100.); id., 9:23-32 (Without the support of the back wall
portion 1410 and the elastic polymer material to fill in the interior cavity 700, a golf club head
may not be able to withstand multiple impacts by a golf ball on a face portion. In contrast to the
golf club head 100 as described herein, a golf club head with a relatively thin face portion but
without the support of the back wall portion 1410 and the elastic polymer material to fill in the
interior cavity 700 (e.g., a cavity-back 30 golf club head) may produce [an] unpleasant sound
(e.g., a tinny sound) and/or feel during impact with a golf ball.).
22
have understood that it does not disclose any use of the term elastic polymer material
inconsistent with those disclosures discussed above in the claims and specification.
Comparison of the TaylorMade P790 irons to Claim 16 of the 336 Patent and Claim
15 of the 203 Patent
82. PXGs counsel asked me to compare the TaylorMade P790 irons to claim 16 of
the 336 Patent. After completing this task, I have concluded that the TaylorMade P790 irons
satisfy each claim term appearing in claim 16 of the 336 Patent. My analysis is attached as Ex.
10.
83. PXGs counsel asked me to compare the TaylorMade P790 irons to claim 15 of
the 203 Patent. After completing this task, I have concluded that the TaylorMade P790 irons
satisfy each claim term appearing in claim 15 of the 203 Patent. My analysis is attached as Ex.
11.
84. This declaration represents my present opinions. As additional data, information,
testimony, or expert reports and declarations from TaylorMade or others become available to me
or are provided to me, I may consider this information and find it appropriate to revise or
supplement my analysis, opinions, and conclusions. Thus, I reserve the right to modify or
supplement this report and the opinions contained therein.
85. If the Court adopts a modified or different version of my interpretations, then I
reserve the right to comment on those interpretations, and provide additional analysis and
opinions relating to whether the TaylorMade P790 irons satisfy each of the claim terms of claim
16 of the 336 Patent and claim 15 of the 203 Patent.
23
I declare under penalty of perjury that the foregoing is true and correct.
Dated:
John Thomas Stites, III
24

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Case 2:17-cv-03125-JJT Document 5-8 Filed 09/12/17 Page 1 of 511

IN THE UNITED STATES DISTRICT COURT

Parsons Xtreme Golf, LLC )

DECLARATION OF JOHN THOMAS STITES, III, IN SUPPORT OF PXGS MOTION

I, John Thomas Stites, III, declare as follows:

1. I offer the following opinions based on my own personal experience and

history of the 336 Patent (Ex. 2);

history of the 203 Patent (Ex. 4);

c. Various articles describing the TaylorMade P790 irons (Ex.5); and

ordinary skill in the art.

5. I received a B.S. degree in agricultural engineering from Oklahoma State

University in 1979. At Oklahoma State, agricultural engineering is a degree offered by the

6. I am a professional golf club designer. Attached at Ex. 7 to this declaration are

as a golf club designer.

7. I have been designing golf clubs since 1987.

Hogan Company, in Ft. Worth, TX.

British Open, Masters, and PGA).

continue today to be actively engaged in the design of golf clubs.

design patents and 94 utility patents, all related to golf clubs.

336 Patent claims.

proceeding or deposition, I will be compensated at an hourly rate of $250 per hour. My

Ordinary Skill in the Art

the subject matter of the claims of the patent relates.

transition phrase such as comprising, and a body.

to the claim, the preamble is a limitation of the claim.

21. I understand that the transition phrase comprising means including or

than recited in the body of the claim.

23. I understand that before considering the issue of infringement, it is important to

interpreting patent claims is also referred to as claim construction.

24. I understand that in district court proceedings, claims should be construed

infringement and infringement under the doctrine of equivalents.

26. I understand that an accused product or process literally infringes an asserted

product are merely insubstantial.

comparison of the properly interpreted claims with the accused product.

performed on a element-by-element basis. I understand that this means that it is inappropriate to

or equivalently), then there cannot be infringement.

The 336 and 203 Patents and Prosecution Histories

Patent. Ex. 1 and 2.

The Level Of Ordinary Skill In The Art

application that eventually issued as the 336 and 203 Patents.

am generally familiar with each of these based on my experience in the field.

understood by a person of ordinary skill as of August 2014. My opinions in this declaration

2014 (i.e., +/- three years).

the 203 Patent recites a toe portion. Ex. 3, 14:25-45.

head that is not part of the heel portion.

the club head that is not part of the heel portion.

different parts of a three-dimensional golf club head.

portion of the United States.

the middle of the club head.

those disclosures discussed above in the claims and specification.

the 203 Patent recites a top portion. Ex. 3, 14:25-45.

of the club head.

portion 190 towards the top portion 180.).

those disclosures discussed above in the claims and specification.

the 203 Patent recites a sole portion. Ex. 3, 14:25-45.

portion applies to sole portion.

those disclosures discussed above in the claims and specification.

set of weight portions

weight portions to mean one or more weight portions.

of a series of seven separate weight portions.).

those disclosures discussed above in the claims and specification.

by the top portion and toe portion.

Excerpt from Merriam-Webster 2014 Dictionary (in common to : shared by).