Tuesday, May 12, 2020

Pro se appellant Amit Agarwal loses at the CAFC

Some background on the patent:

Agarwal is the owner of the ’398 patent, which is directed 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.


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” limitation was taught by Bertoncino, even under Agarwal’s
proposed construction. The Board agreed with TopGolf
that the “significantly lower” limitation was taught by Bertoncino.


The Board also considered Agarwal’s takings challenge to the constitutionality of
inter partes review and concluded the proceeding was
constitutional because the ’389 patent was always subject
to ex parte reexamination.


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 unconstitutional taking
where a patent application was filed before 1999 and the creation of inter partes reexamination.
We address these issues in turn.

Of substantial evidence:

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 review 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 unsupported by substantial evidence. Id. The Board’s finding
that Bertoncino taught the “significantly lower” limitation
is supported by substantial evidence.

Of an explanation of reasoning:

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 evidence 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.

Celgene is cited:

This court has already
held that “the retroactive application of IPR proceedings to
pre-[America Invents Act] patents is not an unconstitutional taking under the Fifth Amendment” because patent
owners “had the expectation that the PTO could reconsider
the validity of issued patents” in inter partes reexaminations and ex parte reexaminations. Celgene Corp. v. Peter,
931 F.3d 1342, 1362–63 (Fed. Cir. 2019).


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