TopGolf Wins Patent Appeal

Agarwal v. Topgolf Int’l Inc.
No. IPR2018-2270
United States Court of Appeals for the Federal Circuit
Decided May 11, 2020

Amit Agarwal, owner of U.S. Patent No. 5370389 (the “’389 Patent”), has lost his appeal of the Patent Trial and Appeal Board’s (“PTAB’s”) decision that the claims of the ’389 Patent were obvious and unpatentable. The Federal Circuit’s ruling affirms the PTAB’s ruling, which found that the ’389 Patent, directed to a method of playing a golfing game scored by balls landing on greens and rolling into holes to be scanned, scored, and attributed to the tee from which it came, was obvious and unpatentable.

Claim 1 of the ’389 Patent describes:
1. A method for playing a point-scoring game at a golfing range comprising the steps of:
(a) providing a plurality of golfing tees, each of which has an associated scoring device and a plurality 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 plurality 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 receptacle 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 receptacle hole, said sloped surface forming an asymmetrical 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 elevation at its rearmost end located at the rear portion of the target green furthest from said golfing tees, said profile continuously sloping downward, toward 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 portion 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 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 plurality 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 identifying characteristic of said golf ball.

Claim 6 of the ’389 Patent describes:
6. A method for playing a point-scoring game at a golfing range as recited in claim 1, wherein the step of indexing the score of said scoring device provides a different score value for each of said target greens.

Back in 2017, TopGolf petitioned for inter partes review of claims 1 and 6 of the ’389 Patent, arguing that they were obvious in view of U.S. Patent No. 5,439,224 to Bertoncino (“Bertoncino”) and U.S. Patent No. 5,163,677 to Foley (“Foley”). Bertoncino discloses a golf range with multiple targets at a variety of levels. Bertoncino describes that the different levels slope into a hole. Bertoncino also describes a scoring system that scans each ball and attributes a corresponding score to the player that originated the ball. Bertoncino further teaches a scoring system with points assigned based on the target’s size and distance from a player’s tee. Foley, on the other hand, teaches golf greens with detectors to identify where balls land and assign points based on a scoring system.  Foley also describes that those points are later displayed in the booth the ball was hit from. Foley further discloses scoring based on targets’ distance.

The Board, considering these references, concluded that the combination of Bertoncino and Foley rendered claims 1 and 6 of the ’389 Patent obvious.

In his appeal, Agarwal argued that TopGolf did not support its claims with substantial evidence and that the inter partes reexamination of the ’389 Patent was an unconstitutional taking. The Court affirmed the Patent Trial and Appeal Board’s finding that TopGolf proved, by a preponderance of the evidence, that Bertoncino and Foley rendered claims 1 and 6 of the ’389 Patent obvious. The Court also rejected Agarwal’s constitutional taking argument, citing Celgene Corp. v. Peter for the proposition that patent owners such as Agarwal “had the expectation that the PTO could reconsider the validity of issued patents” in procedures such as inter partes review proceedings.

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