After a Dry Spell, We Have Some Interesting Putter Patent Litigation
Yesterday Evnroll Putters, LLC filed a patent infringement complaint alleging that Karsten Manufacturing Corporation, d/b/a PING, is infringing USPN 9,943,735.
Click HERE to read the full patent infringement Complaint.
After some introductory puffery proclaiming the “inventive genius” of Mr. Rife, the Complaint gets to the specifics of the case:
15. To solve the “miss-hit” problem, Mr. Rife designed a putter face with a ball-contact area that varied in size over the surface of the putter face. More specifically, Mr. Rife designed a putter face where the size of a ball-contact area(s) increase(s) progressively away from its center. Additionally, at the center of Mr. Rife’s putter face, the size of the ball-contact area(s) is (are) smaller than the size of a non-ball contact area(s), i.e., grooves, at the center of the putter face. The result is an “innovative” putter face that, in a given putt, causes a golf ball to roll the same distance regardless of where on the putter face the golf ball is struck.
16. Mr. Rife filed for patent protection on this “innovative” putter face on July 16, 2014 which resulted in the ‘735 Patent issuing to Mr. Rife on April 17, 2018, entitled “Putter Face with Variable Sized Ball Contact Land Areas.”
17. FIG. 1 of the ‘753 Patent, shown below, illustrates an exemplary embodiment of the “innovative” putter face with the ball contact area(s) denoted by element 112, and the non-ball-contact area(s), i.e., groove(s) area denoted by element 114.
18. As also shown above in FIG. 1 of the ‘735 Patent, the ball-contact area(s) of element 112 at the center or middle of the putter face is (are) smaller than the non-ball-contact area(s) of element 114.
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The Introduction of Karsten’s Infringing PING® Cadence TR Putter
22. Consistent with most years, Karsten also attended the 2015 Show to introduce its latest golf clubs and equipment.
23. At the 2015 Show, Karsten introduced the PING® Cadence TR Putter, shown below. Since its introduction at the 2015 Show, Karsten has manufactured, offered for sale, and sold the PING® Cadence TR Putters.
The PING® Cadence TR Putter
24. The putter face of the PING® Cadence TR Putter mimics and includes the elements of the putter face illustrated in FIG. 1 of the ‘735 Patent. As shown below, the putter face of the PING® Cadence TR Putter includes a ball-contact area(s) (blue color) that increases progressively away from the center of the putter face. Additionally, the ball-contact area(s) is smaller than a non-ball-contact area(s) (white color) at the center of the putter face.
25. The PING® Cadence TR Putter thus employs Mr. Rife’s “innovative” putter face and infringes at least Claims 1 and 9 of the ‘735 Patent.
Mr. Rife Contacted Karsten About the “Innovative” Putter Face
26. After attending the 2015 Show and seeing the infringing PING® Cadence TR Putter, Mr. Rife contacted Karsten’s counsel Mr. Paul Jenny (“Mr. Jenny”) with concerns of Karsten’s use of the “innovative” putter face. Mr. Rife informed Mr. Jenny of the “innovative” putter face, the recently filed patent application, and Karsten’s use of the “innovative” putter face in its PING® Cadence TR Putter. Mr. Jenny acknowledged Mr. Rife’s concerns and noted Karsten’s active research and development in putter face technology, and its own patent portfolio. In response, Mr. Rife advise Mr. Jenny he would contact Karsten once his patent application issued or published.
Publication of the Application for the ‘735 Patent
27. In January of 2016, the patent application for the ‘735 Patent published as U.S. Patent Application Publication No. 2016/0016050 (“the ‘050 Publication”). A true and correct copy of the ‘050 Publication is attached as Exhibit 4.
28. The ‘050 Publication included FIG. 1 of the ‘735 Patent, shown above, which is the putter face the PING® Cadence TR Putter mimics. The ‘050 Publication also included FIG. 4 of the ‘735 Patent, shown below.
29. Ironically, and as will be addressed below, many of Karsten’s current PING® putters mimic, and include elements from, the “innovative” putter face design as embodied and illustrated in FIG. 4 of the ‘735 Patent, shown above, and in the ‘050 Publication.
30. Despite the publication of the ‘050 Publication in January of 2016, and Mr. Rife’s communication with Mr. Jenny, Karsten has incorporated, since 2016 the “innovative” putter face in its putters. At the latest, Karsten had notice of the pending application for the ‘735 Patent, and the “innovative” putter face in 2016.
The Introduction of Karsten’s Infringing PING® Vault Putter
31. Despite Mr. Rife contacting Mr. Jenny, Karsten began, and has since, mass-marketed, manufactured, offered for sale, and sold its PING® Vault Putter, shown below.
32. Karsten’s PING® Vault Putter includes the “innovative” putter face where a ball-contact area(s) (dark(er) grey color) increases progressively away from the center of the putter face. Additionally, the ball-contact area(s) is (are) smaller than a non-ball-contact area(s) (light(er) grey color) at the center of the putter face.
33. Upon information and belief, the PING® Vault Putter infringes the ‘735 Patent because it includes the “innovative” putter face claimed in at least Claims 1 and 9 of the ‘735 Patent.
34. Since as early as 2017, the infringing putter face of the PING® Vault Putter has been incorporated in succeeding models of Karsten’s PING® putters. Specifically, Karsten manufactures, offers for sale, and sells models of its PING® putters under one or more of the following brand-names: PING® Sigma 2 Putters; PING® Sigma G Putters; PING® Vault 2.0 Putters; PING® Vault Putters; PING® G Le2 Putters; and PING® G Le Putters. These models of Karsten’s PING® putters, and possibly more, infringe the ‘735 Patent as each include the “innovative” putter face claimed in at least Claims 1 and 9 of the ‘735 Patent.
35. Upon information and belief, to a substantial detriment to Evnroll, Karsten has made substantial sales and profits from its sales of the infringing putters identified in the paragraphs above.
Issuance of the ‘735 Patent and Karsten’s Refusal of Evnroll’s Demand
36. The ‘735 Patent issued on April 17, 2018, and Evnroll has marked each of its putters since then with the number of the ‘735 Patent.
37. In a letter dated April 19, 2018, Mr. Rife in his individual capacity, and in his capacity as a member of Evnroll, notified Karsten of the issuance of the ‘735 Patent and notified Karsten that its manufacture and sale of the PING® putters identified herein infringed the ‘735 Patent. A true and correct copy of the letter is attached as Exhibit 5.
38. Mr. Rife transferred to Evnroll all right, title and interest in the ‘735 Patent in an assignment dated July 12, 2018, which was recorded on July 31, 2018 at the following reel and frame number: 046511 / 0442. A true and correct copy of the Notice of Recordation of Assignment is attached as Exhibit 6.
39. Despite over a year of correspondence between Evnroll and Karsten, Karsten refuses to cease the sale of the infringing PING® putters identified herein, and to compensate Evnroll for Karsten’s infringement of the ‘735 Patent. More specifically, Karsten has asserted that Evnroll’s claims are unfounded.
This should be an interesting case to follow.
Patent infringement litigation can be risky. If one gets a bit over optimistic in their allegations, the entire case can crumble. For instance, the allegations regarding the Cadence TR putter may be plausible but the Vault putter seems like a stretch. It takes only a couple of minutes to find many old designs resembling the pattern of the Vault putter; just consider USPN 1,965,954, which was filed in 1930!
Dave Dawsey – A Golf Litigation Attorney
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