Case: 18-2270   Document: 61     Page: 1   Filed: 05/11/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                   AMIT AGARWAL,
                      Appellant

                            v.

         TOPGOLF INTERNATIONAL, INC.,
                   Appellee

                   UNITED STATES,
                       Intervenor
                 ______________________

                       2018-2270
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00928.
                  ______________________

                 Decided: May 11, 2020
                 ______________________

    AMIT AGARWAL, Tampa, FL, pro se.

      JOHN A. DRAGSETH, Fish & Richardson P.C., Minneap-
 olis, MN, for appellee. Also represented by OLIVER
 RICHARDS, KELLY NICOLE WILLIAMS, San Diego, CA.

    DENNIS FAN, Appellate Staff, Civil Division, United
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 2                   AGARWAL   v. TOPGOLF INTERNATIONAL, INC.



 States Department of Justice, Washington, DC, for inter-
 venor. Also represented by JOSEPH H. HUNT, SCOTT R.
 MCINTOSH; THOMAS W. KRAUSE, JOSEPH MATAL, FARHEENA
 YASMEEN RASHEED, Office of the Solicitor, United States
 Patent and Trademark Office, Alexandria, VA.
                 ______________________

     Before DYK, CLEVENGER, and HUGHES, Circuit Judges.
 CLEVENGER, Circuit Judge
     Amit Agarwal (“Agarwal”) appeals from a Final Writ-
 ten Decision of the Patent Trial and Appeal Board (the
 “Board”) holding that U.S. Patent No. 5,370,389 (“the ’389
 patent”) is unpatentable as obvious. See TopGolf Int’l, Inc.
 v. Agarwal, No. IPR2017-00928 (P.T.A.B. Jun. 13, 2018).
 For the reasons set forth below, we affirm.
                        BACKGROUND
                               I
     Agarwal is the owner of the ’398 patent, which is di-
 rected to a method of playing a point-scoring golfing game
 at a driving range. Golfers take aim at various target
 greens and receive points when the balls land on the
 greens. The greens are sloped downward towards a hole in
 the green so that a ball landing in the green will roll into
 the hole. The balls each have a barcode or color code to
 identify which tee the ball came from and the ball is
 scanned after entering the hole to identify which target the
 ball landed on. After the ball is scanned, the golfer’s score
 is updated and displayed on computers at the tee.
    Claim 1 of the ’389 patent, the sole independent
 method claim, is representative and is reproduced below.
      1. A method for playing a point-scoring game at a
      golfing range comprising the steps of:
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 AGARWAL   v. TOPGOLF INTERNATIONAL, INC.                     3



    (a) providing a plurality of golfing tees, each of
    which has an associated scoring device and a plu-
    rality of golf balls:
    (b) providing each golf ball with an identifying
    characteristic which makes it possible to determine
    from which tee the golf ball originated;
    (c) striking one of said golf balls at one of the plu-
    rality of golfing tees;
    (d) providing a plurality of target greens which are
    remotely located from the plurality of golfing tees,
    each target green having a front portion and a rear
    portion, providing each target green with a recep-
    tacle hole and sloping the surface of each target
    green in a manner to cause said golf ball, once it
    lands upon the target green, to roll into said recep-
    tacle hole, said sloped surface forming an asym-
    metrical concave shape, said sloped surface having
    said receptacle hole located at its lowest point, said
    sloped surface having a profile, as viewed from the
    side of said target green, which is greatest in eleva-
    tion at its rearmost end located at the rear portion
    of the target green furthest from said golfing tees,
    said profile continuously sloping downward, to-
    ward the front portion of the target green nearest
    to said golfing tees, until arriving at said receptacle
    hole, said downward slope travelling substantially
    more than one-half the distance between the front
    and rear portions of the target green, said profile,
    as it continues forward from said receptacle hole,
    continuously sloping upward toward the front por-
    tion of the target green, said profile's forwardmost
    end located at the forward portion of the target
    green having an elevation that is significantly lower
    than that at its rearmost end, said upward slope
    travelling substantially less than one-half the
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 4                   AGARWAL   v. TOPGOLF INTERNATIONAL, INC.



     distance between the front and rear portions of the
     target green;
     (e) sensing said identifying characteristic of the
     golf ball, and identifying from which of said plural-
     ity of golfing tees the golf ball originated; and
     (f) indexing the score of the scoring device which is
     located at the golfing tee corresponding to the iden-
     tifying characteristic of said golf ball.
 ’389 patent col. 9, ll. 23–68 (emphasis added to indicate dis-
 puted claim limitations).
                               II
      TopGolf International, Inc. (“TopGolf”) filed a petition
 for inter partes review asserting that claims 1 and 6 of the
 ’389 patent are obvious in view of U.S. Patent No.
 5,439,224 (“Bertoncino”) and U.S. Patent No. 5,163,677
 (“Foley”). Bertoncino is directed to a golf range with sev-
 eral independent sloped targets. Bertoncino also teaches a
 scoring system that uses codes on the balls and scanners at
 each target to award scores to players. Additionally, the
 targets in Bertoncino may have several levels with differ-
 ent scanning mechanisms for each level. Foley is directed
 to a golf driving range with several greens and various
 traps with detectors to determine where golf balls land.
     The Board instituted review of both asserted claims. In
 the Final Written Decision, the Board determined that
 TopGolf demonstrated that the claims were unpatentable
 as obvious by a preponderance of the evidence. The Board
 declined to construe the claims, noting the only dispute
 need not be resolved because the “significantly lower” lim-
 itation was taught by Bertoncino, even under Agarwal’s
 proposed construction. The Board agreed with TopGolf
 that the “significantly lower” limitation was taught by Ber-
 toncino. Additionally, the Board found that a person of or-
 dinary skill in the art would have known to combine Foley
 and Bertoncino to place scoring devices at each tee,
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 AGARWAL   v. TOPGOLF INTERNATIONAL, INC.                   5



 satisfying the “indexing” limitation. The Board also con-
 sidered Agarwal’s takings challenge to the constitutional-
 ity of inter partes review and concluded the proceeding was
 constitutional because the ’389 patent was always subject
 to ex parte reexamination.
     Agarwal appeals from the Board’s Final Written Deci-
 sion, asserting that the Board improperly held the ’389 pa-
 tent unpatentable and challenging the constitutionality of
 inter partes review. We have jurisdiction to decide the ap-
 peal under 28 U.S.C. § 1295(a)(4)(A).
                         DISCUSSION
     Obviousness is a question of law with underlying find-
 ings of fact. Idemitsu Kosan Co. v. SFC Co., 870 F.3d 1379,
 1379 (Fed. Cir. 2017). As such, we review an obviousness
 determination de novo, though we review the factual find-
 ings of the Board for substantial evidence. Id. A factual
 finding is supported by substantial evidence “if a reasona-
 ble mind might accept the evidence as sufficient to support
 the finding.” HP Inc. v. MPHJ Tech. Invs., LLC, 817 F.3d
 1339, 1343–44 (Fed. Cir. 2016).
     Agarwal’s appeal presents four issues: (1) whether the
 Board committed a legal error by relying on obviousness
 theories not raised by TopGolf in its Petition, (2) whether
 the Board’s determination that the “significantly lower”
 limitation was met was supported by substantial evidence,
 (3) whether the Board provided adequate analysis of the
 “indexing” limitation, and (4) whether an IPR is an uncon-
 stitutional taking where a patent application was filed be-
 fore 1999 and the creation of inter partes reexamination.
 We address these issues in turn.
                               I
     Agarwal first contends that the Board committed legal
 error by advancing theories of obviousness in its final writ-
 ten decision that were not argued by TopGolf in its Petition
 or Reply with regard to the “significantly lower” limitation.
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 6                   AGARWAL   v. TOPGOLF INTERNATIONAL, INC.



 The Board is limited to considering contentions raised in
 the Petition, and “the petitioner’s contentions, not the Di-
 rector’s discretion, define the scope of the litigation all the
 way from institution through to conclusion.” SAS Institute,
 Inc. v. Iancu, 138 S. Ct. 1348, 1357 (2018). It is improper
 “for the Board to deviate from the grounds in the petition
 and raise its own obviousness theory.” Sirona Dental Sys.
 v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir.
 2018). Agarwal’s argument, however, fails because the
 Board did not rest its decision on a theory of obviousness
 that was not raised in the petition.
     The Board found that “Petitioner demonstrates by a
 preponderance of the evidence that Bertoncino teaches or
 suggests the ‘significantly lower’ limitation under Patent
 Owner’s construction . . .” J.A. 46. In its Petition, TopGolf
 argued that “Bertoncino discloses that the forward most
 end of the target green is significantly lower in elevation
 than the rearmost end.” J.A. 1176. TopGolf also argued
 that even if Bertoncino did not explicitly disclose a stand-
 alone target meeting the limitations of the claim, “such a
 green would be obvious to a skilled artisan based on Ber-
 toncino’s disclosures and the skilled artisan’s general
 knowledge.” J.A. 1177. Agarwal also contends that the
 Board sua sponte raised a theory that the target green
 could consist only of the innermost section 22. This theory,
 however, was also raised in TopGolf’s Petition. There is no
 legal error in the Board’s Final Written Decision, which ad-
 dresses contentions raised in the petition.
                               II
     Agarwal also challenges whether there was sufficient
 evidence to support TopGolf’s obviousness theories. The
 Board considered Agarwal’s arguments and the evidence
 from TopGolf and made factual findings supported by sub-
 stantial evidence. The Board found that Bertoncino taught
 sloped target greens where the frontmost point was signif-
 icantly lower than the rearmost point. It supported this
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 AGARWAL   v. TOPGOLF INTERNATIONAL, INC.                    7



 finding with language in Bertoncino and the figures in Ber-
 toncino. The Board’s finding is also supported by testimony
 from Agarwal’s expert, Hurdzan, who explained that a
 prior art target green with the same elevation difference
 shown in Figure 4C of the ’389 patent would meet the “sig-
 nificantly lower” claim limitation. Furthermore, the Board
 supported its finding with the declaration and testimony of
 TopGolf’s expert, Robbins, who explained that section 22
 disclosed in Bertoncino directly parallels the target green
 in the ’389 patent. Robbins further testified that relying
 only on the slope in Figure 4 of Bertoncino was a mistake
 because the figure was more useful to see the ball retrieval
 mechanism than the slope of the targets, which was better
 observed in Figure 5.
     Agarwal objects that other evidence contradicted the
 Board’s finding. However, “[i]f two inconsistent conclusions
 may reasonably be drawn from the evidence in record, the
 PTAB’s decision to favor one conclusion over the other is
 the epitome of a decision that must be sustained upon re-
 view for substantial evidence.” Elbit Sys. of Am., LLC v.
 Thales Visionix, Inc., 881 F.3d 1354, 1357 (Fed. Cir. 2018)
 (internal quotations and alterations omitted). The simple
 fact that some contradictory evidence exists in the record
 does not demonstrate that the Board’s findings are unsup-
 ported by substantial evidence. Id. The Board’s finding
 that Bertoncino taught the “significantly lower” limitation
 is supported by substantial evidence.
      The Board found that the ’389 patent was obvious both
 on the grounds that Bertoncino explicitly taught the “sig-
 nificantly lower” limitation and on the grounds that a per-
 son of skill in the art would be motivated to make the target
 greens of Bertoncino sloped based on their knowledge of the
 art. Either conclusion is sufficient to find that the ’389 pa-
 tent was obvious. Because we find that the Board’s find-
 ings that Bertoncino explicitly taught the limitation are
 supported by substantial evidence, we need not consider
 whether the Board’s findings about the skilled artisan’s
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 8                   AGARWAL   v. TOPGOLF INTERNATIONAL, INC.



 motivation to slope the greens are also supported by sub-
 stantial evidence.
                              III
     Agarwal contends that the Board made only cursory
 findings regarding the “indexing” claim limitation and did
 not fully explain its reasoning. The Board must do more
 than summarize and summarily reject arguments made by
 the parties. In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed.
 Cir. 2016). The Board is required to explain its reasoning
 for accepting or rejecting arguments raised by the parties.
 Id. In this case, the Board considered several pieces of ev-
 idence that TopGolf pointed to in its Petition. The Board’s
 Final Written Decision addressed the arguments made by
 TopGolf and Agarwal and acknowledged the evidence cited
 by TopGolf in its Petition and Reply.
      Agarwal’s challenge to TopGolf’s assertions in its Peti-
 tion of how the combination of Bertoncino and Foley taught
 the claimed limitation was to assert that TopGolf had
 failed to present evidence. The Board’s opinion adequately
 points to evidence to the contrary, as it considers the evi-
 dence put forth by TopGolf. The Board’s conclusion that
 TopGolf met its burden to show that the limitation was
 found in the prior art was adequately explained in the Fi-
 nal Written Decision.
                               IV
     Agarwal argues that a finding of unpatentability of a
 patent filed before November 29, 1999 in inter partes re-
 view is an unconstitutional taking. This court has already
 held that “the retroactive application of IPR proceedings to
 pre-[America Invents Act] patents is not an unconstitu-
 tional taking under the Fifth Amendment” because patent
 owners “had the expectation that the PTO could reconsider
 the validity of issued patents” in inter partes reexamina-
 tions and ex parte reexaminations. Celgene Corp. v. Peter,
 931 F.3d 1342, 1362–63 (Fed. Cir. 2019). Although not
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 AGARWAL   v. TOPGOLF INTERNATIONAL, INC.                  9



 explicitly addressed in the opening brief, Agarwal appears
 to assert that patents filed before November 29, 1999
 should be treated differently because inter partes reexami-
 nation was not established until that date. Celgene, how-
 ever, made clear that a patent claiming priority from before
 November 29, 1999 could still be invalidated in an ex parte
 reexamination, and therefore, patent owners had an expec-
 tation that the PTO could reconsider the patent’s validity.
 Id. at 1361–62.
                        CONCLUSION
     For the reasons stated above, we affirm the Board’s
 conclusion that TopGolf demonstrated by a preponderance
 of the evidence that claims 1 and 6 of the ’389 patent are
 unpatentable as obvious in view of Bertoncino and Foley.
                        AFFIRMED
                           COSTS
    No costs.
