Method claims may encompass not only methods of manufacture but also other types of processes, including those performed by a designer of a new product, and therefore must be read reasonably to determine the appropriate context and corresponding actors covered.
Background / Facts: The patent being asserted here is directed to an improvement in the distribution of weight within the head of a golf club. The patent states that “in the typical use of a golf club iron the ball is never intentionally struck near or at the top edge of the club face, but always at the ‘sweet spot’ or below,” and therefore calls for removing material (generally metal or graphite) from the “top edge central portion” of the golf club head and relocating it to a lower position, preferably near the bottom edge of the golf club head. In this regard, the two asserted claims recite “methods” of improving weight distribution in a club head by “removing construction material” from the central portion of the top surface of the club head and “relocating” it to the bottom areas of the toe and heel of the club head.
Issue(s): Whether the method claims are directed to actual methods of manufacture and therefore literally require the removal and relocation of clubhead material during golf club fabrication.
Holding(s): No. Although “the claim language uses the fundamental patent-law language of ‘method,’ which refers to a process of taking specified actions over time, … [it] does not plainly require, however, [] that the actions are steps in a manufacturing process.” To the contrary, “such a construction is unreasonable here.” “[I]n the absence of a description of the physical construct-remove-relocate clubhead- making process that [a manufacturing] interpretation would require, it is evidently undisputed that a skilled artisan would not think of making a golf club that way (instead of making and using a mold in the ultimately desired shape).” Rather, such a “manufacturing-process construction is so surprising in context that it must be rejected where the language does not make it unavoidable. Importantly, an alternative construction is readily available that gives the unmistakable language of ‘method’ its due.” That alternative construction is that the claims are “describing steps taken in designing a golf club head with the physical characteristics described in the [] Patent. In other words, Claims 1 and 2 encompass a design process, not a manufacturing process.”