Clubfitting caseAugust 31, 2017

Clubfitting industry spared headaches as Cool Clubs, Worldwide Golf win appeals case, have patents invalidated

Two patents at the center of a lawsuit that could have fundamentally altered the process and cost of clubfitting were invalidated Wednesday by the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office.

The patents stem from a lawsuit filed in July 2015 by Max Out Golf, a clubfitting company established by 1991 U.S. Amateur champion Mitch Voges. Max Out Golf sued leading retail and clubfitting brands Cool Clubs and Worldwide Golf (owners of Roger Dunn Golf Shops, Edwin Watts Golf Shops, Golfers’ Warehouse, and several other retail chains), claiming that their process of clubfitting with launch monitors and computers was in violation of several of its patents.

During the course of the lawsuit, Cool Clubs and Worldwide Golf petitioned the USPTO last year for an Inter Partes Review to invalidate the patents at the heart of the lawsuit. While the original lawsuit ended up being settled for an undisclosed amount last August, Cool Clubs and Worldwide Golf and co-petitioners Golftec and Golfsmith pursued the patent review because, as Cool Clubs’ Mark Timms explained, “it was the right thing to do for the industry. These patents were ridiculous and could have done a lot of damage.”

Essentially, the patents focused on describing a clubfitting process that involved the use of launch monitors and an “optimization engine” for determining the ideal launch conditions and the ideal equipment recommendations for a particular golfer. In its review, the USPTO’s board determined that Max Out’s arguments were “unpersuasive” and found that "a preponderance of the evidence supports the conclusion" that the the specific Max Out patent dealing with the use of an "optimization engine" is “unpatentable.”

Lawyers from Michael Best and Friedrich, the Chicago-based law firm which represented the petitioners against Max Out, used several prior examples to make the case that the clubfitting process Max Out was attempting to patent actually was commonly understood. Among the examples in its petition to invalidate the Max Out patents was a Golf Digest article from 2001, six years before the Max Out patents were originally filed. Ultimately, the USPTO board focused on a previously existing patent, as well as a 1995 technical paper from the American Journal of Physics and noted clubmaker and club fitting expert Ralph Maltby’s 1995 book, Golf Club Design, Fitting, Alteration & Repair. Those documents predate the specific Max Out patent in question by more than a decade.

The USPTO’s decision was an individual win for Cool Clubs, Worldwide Golf, GolfTec and Golfsmith, but it may be an even bigger one for the entire clubfitting business, given that clubfitting with launch monitors and computers is now commonplace from small-town driving ranges to large-scale golf retail chains. While two patents have been invalidated, Max Out still has several other clubfitting patents. Lawyers at San Diego-based Procopio, Cory, Hargreaves & Savitch LLP, which represented Max Out in the patent review case, declined to comment.

“I wish there was a way for the whole industry to give them a big thank you,” said Arthur Gollwitzer III, the lead attorney for Cool Clubs, Golfsmith and GolfTec, specifically citing the significant cost to Mark Timms and Worldwide Golf’s president Al Morris. “The thing is in cases like this, most people just give up and pay to make it go away. It’s often cheaper and easier than fighting it to the end. These guys didn’t. They said, ‘Heck, no.’ They had the wherewithal and the stubbornness to stick with it.

“I don’t want to overstate it, but they really kind of made the world safe by doing this. The recipe for winning [against Max Out’s patents] is now sitting there in the public record.”