Not Just a Hole in One, Court Finds Holes in All the Arguments

Agarwal v. Topgolf Int’l (Fed. Cir. 2020)

Writing about golf in the midst of a national health crisis it a bit misguided, but the invention at issue is still interesting. Amit Agarwal is a former patent litigator and current assignee of U.S. Patent No. 5,370,389 (1994 patent – expired).

As Agarwal explained in his patent infringement complaint, the invention “revolutionized the boring, slow sport of golf by infusing the golf driving range experience with technology.” The technology here is to individually track the balls hit and award points for distance and alignment.  The infringement lawsuit was filed in 2016.  TopGolf responded with a petition for inter partes review (IPR), which resulted in the claims being cancelled as obvious.  On appeal, the Federal Circuit has affirmed — effectively tagging Agarwal with a double bogie.

Agarwal’s likely best argument – that the invention wasn’t obvious – was hampered by the substantial deference given to the PTAB factual determinations that underlie an obviousness conclusion.  The court explained:

The simple fact that some contradictory evidence exists in the record does not demonstrate that the Board’s findings are unsupported by substantial evidence.

Slip Op.; citing Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354 (Fed. Cir. 2018).

Agarwal also raises the issue of unconstitutional takings, which the Federal Circuit again rejected:

Agarwal argues that a finding of unpatentability of a patent filed before November 29, 1999 in inter partes review is an unconstitutional taking. This court has already held that “the retroactive application of IPR proceedings to pre-AIA 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).

Note that Celgene’s petition is on this issue is pending before the U.S. Supreme Court with the following question presented:

Petitioner’s Question: Whether retroactive application of inter partes review to patents issued before passage of the America Invents Act violates the Takings Clause of the Fifth Amendment

US Gov’t Restatement of Question: Whether the cancellation, following inter partes review, of petitioner’s pre-AIA patent violates the Just Compensation Clause.

Petition.

112 thoughts on “Not Just a Hole in One, Court Finds Holes in All the Arguments

  1. 7

    It’s kind of funny that copy and paste of the title of this particular blog post will get the GC filter.

    GC = George Carlin

  2. 6

    Anti-Alice partisans such as myself have long maintained that >90% of §101 cases really deal in matters more properly belonging in §§ 103 or 112. This case is exhibit A for that contention.

    I think that we can all see that if this patent had been challenged in court, it would have been decided on an Alice challenge, but here the challenger wanted the convenience of an IPR (which does not permit the adjudication of eligibility). The challenger was obliged to make the obviousness argument straightforwardly.

    Guess what. The law worked just as it was supposed to work. The genuinely unpatentable claims were pronounced unpatentable, but on the correct legal basis—instead of bending subject matter eligibility law out of all recognition in order to reach a desired legal end.

    More of this please, and less of the Alice chicanery.

    1. 6.1

      Maybe it was obvious. Not sure. I would have to spend some real time looking at it. I am suspicious, though, as it did transform an industry.

      I have actually worked in consumer electronics and know first hand that what appears to be obvious in hindsight was not obvious at all. And when you really are an inventor like me you learn this.

    2. 6.2

      What I can tell you is that if something makes a lot of money or transforms an industry that it is almost never obvious when it is finally figured out. And yet people that use hindsight are convinced it is obvious.

    3. 6.3

      >>I think that we can all see that if this patent had been challenged in court, it would have been decided on an Alice challenge

      Are you saying this based on the flowchart or the claims?

      The claim is a bit more than what’s presented in the flowchart. There’s a long description of the “target green”, that could easily be (and probably would be under current PTO policy) an additional element making the claim eligible.

      1. 6.3.1

        There’s a long description of the “target green”, that could easily be (and probably would be under current PTO policy) an additional element making the claim eligible.

        No Art. III court would give even a gnat’s weight to the current USPTO guidances on this point. Those claims would go down in fifty out of every fifty one US district courts under Alice, and four out of every five CAFC panels would affirm that tanking.

      2. 6.3.2

        that could easily be (and probably would be under current PTO policy)

        Ben, is this the same current PTO policy that seems to rankle you so much?

    4. 6.4

      >>instead of bending subject matter eligibility law out of all recognition in order to reach a desired legal end.

      At this point, who is “bending” the law, the PTO with the Iancu test or the CAFC?

      1. 6.4.1

        Your question is not as asinine as it appears at first blush.

        But clearly, had you been paying attention, the score board being broken is the point “of the bending” (which is actually more aptly termed: breaking/rendering asunder/destruction and the like).

      2. 6.4.2

        At this point, who is “bending” the law, the PTO with the Iancu test or the CAFC?

        The two are not really mutually exclusive. Both can be distortions.

        1. 6.4.2.1

          It’s true that they are not mutually exclusive, but only one of those two bodies is following the lead of the lead of the supreme court.

          I can understand being against Alice, but I don’t understand expecting the CAFC to “fix” it. At this point the choice is to pass legislation that resolves the problem or to wait for the pendulum to swing the other way.

          Did you see the resounding consensus at the Watchdog place regarding senator Tillis’ comments about the need for compromise on 101 to get anything passed? In 35 years or so, things will get back to normal.

          1. 6.4.2.1.1

            I can understand being against Alice, but I don’t understand expecting the CAFC to “fix” it.

            Agree 100%. The CAFC did not start this problem, and they lack the ability to fix any more than a tiny portion of it (as, for example, they have done in Vanda).

            At this point the choice is to pass legislation that resolves the problem or to wait for the pendulum to swing the other way.

            Also agreed 100%.

            Did you see the resounding consensus at the Watchdog place regarding senator Tillis’ comments about the need for compromise on 101 to get anything passed?

            Very disheartening. I agree with Mr. Quinn’s call for compromise. Half a loaf is better than none. Sadly, it does not appear that there is a lot of consensus behinds Mr. Quinn’s position.

            1. 6.4.2.1.1.1

              You will NOT get “half a loaf” in that fake compromise, Greg — as has been made abundantly clear.

          2. 6.4.2.1.2

            following the lead of the lead of the supreme court

            The Supreme Court is not charged under our Constitution with writing patent law.

            Further, ANY ‘following’ is at BEST problematic given that the Supreme Court’s own writings create a Gordian Knot of contradiction.

            This is EASILY seen in the fact that the CAFC has added layer after layer after layer of additional contradictory “Common Law” law writing to what the Supreme Court started.

            Come now Ben, if you are going to speak of these things, then speak both intelligently and be inte11ectually honest.

        2. 6.4.2.2

          The two are not really mutually exclusive. Both can be distortions.

          The REAL elephant in the room with such a comment is that the single largest distortion — and the root cause of ALL this trouble — is the Supreme Court itself.

          It is no surprise though that neither Greg ‘I Use My Real Name” DeLassus nor Ben have picked up this point.

  3. 5

    Funny how something that can be transformative to an industry is considered to be so obvious by the judges in their back chambers. A joke even.

    When you design a real product, you realize that what others think is obvious once they see it, is not so obvious before it is known.

    I could give you list of things that you all use daily and I am sure think are not worthy of patenting that were not obvious to do and where many very smart people could have made millions had they thought of it first.

    1. 5.1

      >>Funny how something that can be transformative to an industry is considered to be so obvious by the judges in their back chambers. A joke even.

      Funny how people make judgements about obviousness determinations without looking at the prior art. A joke even.

      1. 5.1.1

        I agree and even would go one step further: determining whether something is appropriate to be considered prior art in the first place is a necessary pre-cursor to your “even looking at.”

      2. 5.1.2

        Mr. Cheapshot.

        1. 5.1.2.1

          Meh, he makes a decent point.

      3. 5.1.3

        I wonder if Ben looked at the prior art or just proclaimed it as good.

        1. 5.1.3.1

          I did not read his comment as any type of proclaiming that the prior art WAS good, let alone that it was to be understood that it had been looked at.

          May I suggest that you simply lay down the shovel?

          Ben rarely has comments that are not flawed. This happens to be one of them (even if it does have a bit of snark).

  4. 4

    Is it normal for an IPR patentee to say that a term in their claim is purposely vague?

    1. 4.1

      Can’t you read, Ben? Anon said there will be no discussion of the merits.

      1. 4.1.1

        But realistically, that’s an example of why you shouldn’t go pro se. Even if you’re a former patent litigator.

      2. 4.1.2

        Try again – I said that I was not going to make any comments on the merits.

        Others? No problem here.

        1. 4.1.2.1

          “Try again – I said that I was not going to make any comments on the merits.”

          Ok, we’ll try again. Where did you say that? If it’s in the written record, quote verbatim. If it is not, pound the table and make some more stuff up.

          1. 4.1.2.1.1

            You do not know how to think, do you?

            Let me provide a little emphasis:

            Having said that, I am just not moved enough by the particulars of this case <to dig into it,

            the word next: “so” is a transition word.

            Figure out how the statement follows the transition yet?

            Another one of your gotcha attempts going the way ALL of your gotcha attempts go.

            1. 4.1.2.1.1.1

              As we expected, option II. You left out what comes after “so.”

              — “so, it is not likely to see much ‘on point’ commenting.”

              Are you the “it,” Snowflake?

              1. 4.1.2.1.1.1.1

                Thank you both, for the entertainment.

                The way I understand anon’s “it”, at 1.1.1, what he is referring to is the thread. Anon is doing us all a favour, telling us that because he personally is not “moved” to comment there will be not “much” comment in the thread that is “on point”.

                1. My first 732 replies caught in the George Carlin filter.

                  Anon types that I “seriously misstate” your (correct) interpretation of his earlier typing. He types it with capital letters and carriage returns and what not, so it must be true. See below.

                  Have you a theory regarding why he runs away, whenever challenged, from whatever it is that he has typed?

                2. And he types “I have provided far more intelligent, far more creative answers that you simply cannot handle.”

                  So many favours! Why is he not more appreciated?

                3. “i think MD works somewhere in Europe. be kind.”

                  Sorry, MD. That was in response to his expunged comment.

                4. Yes MaxDrei, Shifty was — yet again — projecting a comment clearly intended for him to someone else. In this case, you.

                  He owes an apology to more than just you.

                5. Well, perhaps Snowflake did not want to repeat his expunged comment. Or
                  M
                  A
                  Y
                  B
                  E
                  It got expunged again.

                6. The expungement most likely (but one never knows because rules are NOT applied consistently) was due to the attempt to use a George Carlin banned word.

                  Since you seem a bit slow on blog commenting tricks, these automatic filters can be defeated in a couple of ways.

                  One way is to exchange numbers for letters.
                  One way is to induce spaces (this one does not always work – “a” and “hole” with a space is still auto-blocked, even if one is talking about the hole.
                  One way is to type a letter of the word per line.

                  This last technique ALWAYS works – but here (apparently) drew enough ire to rouse the editor.

                  Meh, you are still consistently taken to the woodshed, and it’s just not that big a deal Shifty.

                  With Malcolm apparently gone for good (now a longer absence than Kim Jong-un – more than two months since his last outbreak), maybe the editor was just getting itchy fingers.

                7. Snowflake, YOU have a post expunged so you explain to ME how to avoid having a post expunged?

                  YOU are a very strange person.

                8. Is this your new game – repeat and add a [sigh]…?

                  not very exciting or original.

                9. By your own “use,” “Ding” and “tells” are themselves tells of yours.

                  What is that that these things might be telling?

                  That Shifty has suffered too many anvils to the noggin?

                  Beep Beep.

              2. 4.1.2.1.1.1.2

                First reply caught in the George Carlin filter….

                The point, my dear Shifty was not the second part of what came after the ‘so’ transition.

                That clearly was comments on the subject provided by the thread.

                The point instead was the link before that ‘so’ — this really is not that difficult, and you really have to work hard to get this so wrong in your attempt at gotcha (which, like usual, misses badly).

                You just can’t help yourself, can you?

                1. MD’s interpretation is correct. Whenever challenged, you run away from whatever it is you typed. Why is that? You’re not very good at this, are you?

                2. Y
                  A
                  W
                  N

                  You seriously misstate what MD has said here.

                  Maybe try less spin (and more originality).

                3. You also have a rather odd notion of “run away.” For example, not only have I answered your druck, I have provided far more intelligent, far more creative answers that you simply cannot handle.

                  Ever.

                4. Pretty much every exchange that we have had has at least one.

                  I am not as 0bsess1ve about these things as you are, so I do not give them their own names.

                  But since you do 0bsess over me, you might have given them names.

                  I think that you the term “tell” (goodness knows that you are not using that term correctly).

                5. You are asking the wrong questions – of the wrong person.

                  As typical, you want to project your own inadequacies.

                  You are the one that cannot tell the difference between a meme and a tell.

                  Can you at least try to be original?

                6. [sigh]

                  There was a time when we thought your clueless act was just your way of keeping a “conversation” going ad infinitum. Later we found, it’s not an act.

                7. The tell if slipping into talking of yourself in the plural.

                  The meme of the false premise.

                  Tell me Shifty, are you still beating your wife twice a day?

                8. By the way, conversation takes two people engaging on topic.

                  It is you that does not engage on topic, but instead play the odd games of attempted gotcha and then digging a very large hole for yourself.

                  The “ad infinitum” (almost — you always tucker out) is your insistence on attempting to dig yourself out of the hole.

                9. Yes, Snowflake, a conversation requires at least two people. That’s why I placed the word in quotation marks when referring to your nonsense.

                  But wait!

                  Ding Ding Ding!! “games”!!!

                  And there it is! He just can’t help it with the tells!!

                10. Not sure why it seems to you that describing — accurately — what you do as games would make you use the word “tell.”

                  Also, you should note that YOUR posts (to a point well exceeding 95%) are NOT to any legal topic, but are instead to your game of attempting to play gotcha.

                  May I suggest yet another ‘historical’ pseudonym for you: H. Caufield.

                  Enjoying your fields of rye?

                11. Ding Ding Ding!! “games” !!!

                  Again with the tells!! And he combined it with the clueless thing!!

                  Maybe, just maybe, Is he gonna go for the trifecta ? !!!

                12. I am torn between my two new suggestions for you.

                  W. E. Coyote certainly describes the results.
                  H. Caufield certainly describes a possible ‘mind’set.

                  Which do you like better?

                13. there it is

                  And what exactly do you think “it” is?

                  Or did you have your silly little game ‘ready’ no matter what I posted?

                  Way to go Holden.

                14. I do wonder if you do not get, or perhaps simply do not care, just what an arse you make yourself out to be.

                15. Another admission!

                  There are many things you do not understand, Snowflake. Awareness of your shortcomings may be the first step in your path of understanding.

                16. The ‘admission’ is not what you think it to be.

                  Your post was completely untethered to the post you were responding to.

                  The ‘fault’ here is YOU and your rambling.

                17. Awareness of your shortcomings…

                  One massive heed your own advice is in order here.

                18. “Your post was completely untethered [sic] to the post you were responding to.”

                  What post do you think I was responding to, Snowflake?

                19. My post that proceeded your post.

                  Were you responding to something else? Something random?

                20. You do enjoy your false premises, don’t you?

                  You appear to feel the need to take a reference to a comment (which answers your question directly) and somehow make it into a “my world”….?

                  And then you state that I am a very strange person — when it is your action that is very strange?

                  This meme of yours appears to be one of your favorites, as you employ it quite a bit.

                  But like W. E. Coyote, the anvil of your deployment always drops on YOUR head.

                  Beep-beep.

                21. Snowflake, YOU are the one who had a post expunged and then felt the need to lecture ME about how to avoid having a post expunged?

                  You do not remember because your world is one post at a time?

                  You’ve already done the clueless thing. Don’t spoil it for you.

                22. You are especially dull-witted today.

                  YOU are the one who had a post expunged and then felt the need to lecture ME about how to avoid having a post expunged?

                  My “lecture” was not about avoiding having a post expunged.

                  My observations were about having a post escape the blocking filters and show up on the blog.

                  Quite literally – ANY post whatsoever can be expunged at the whim of the editor.

                  ANY.

                  Do you grasp the difference, or have you suffered too many anvil falls on your noggin?

                  You do not remember because your world is one post at a time?

                  This time as a question — still asinine.

                23. “Quite literally – ANY post whatsoever can be expunged at the whim of the editor.”

                  In your mind, who is “the editor?”

                24. Your question does not matter to the point at hand.

                  (another anvil drops on W. E. Coyote)

                25. “Your question does not matter to the point at hand.”

                  It was your point, Snowflake.

                  You are a very strange person.

                26. My point was NOT “who” is the editor.

                  Again with the false premise and the “you are a very strange person” – when the strangeness is your own.

                  Another anvil drops on your head.

                  Beep beep.

                27. Anon I: “Quite literally – ANY post whatsoever can be expunged at the whim of the editor.”

                  Anon II: “My point was NOT ‘who’ is the editor.”

                28. Shifty,

                  It is YOU that attempts to make an issue out of the “who” of the editor is.

                  The “what” of the editor’s action was my point.

                  This follows YOUR error of thinking that the “what” of the editor (in being expungement) was the exact same thing as covered in my earlier post on methods to avoid the filter system.

                  Avoiding the filter is not the same as expungement.

                  The Who that may be doing the expungement is not the same as the What of expungement.

                  Your attempted double-down only results in two anvils falling on your noggin.

                  (Talk about ‘living only by the last post’…)

                  Beep beep.

                29. “Avoiding the filter is not the same as expungement.”

                  You are compelled to continue to lecture ME after YOUR post is expunged?

                  YOU are a very strange person.

                30. Compelled?

                  Not at all.

                  Are you still wrong?

                  Absolutely.

                  The question then is why are YOU compelled to keep posting when you are so clearly wrong?

                31. “Are you still wrong?”

                  A general allegation; unable to specify what you think may be “wrong” in your mind.

                  You are a very strange person.

                32. A general allegation; unable to specify what you think may be “wrong” in your mind.

                  There is nothing “general” about it.

                  You are living out your own projection, and paying attention to the single post above you.

                  Try instead going up three posts for several explicit wrongs of yours.

                  In fact, let me make this easy for you and reprint those here:

                  It is YOU that attempts to make an issue out of the “who” of the editor is.

                  The “what” of the editor’s action was my point.

                  This follows YOUR error of thinking that the “what” of the editor (in being expungement) was the exact same thing as covered in my earlier post on methods to avoid the filter system.

                  Avoiding the filter is not the same as expungement.

                  The Who that may be doing the expungement is not the same as the What of expungement.

                  You are welcome. Now remove the anvils from your noggin.

                33. “A general allegation; unable to specify what you think may be ‘wrong’ in your mind.”

                  In your mind, you think you answered somewhere in your 10 paragraphs. You did not.

                  You are a very strange person.

                34. W. E. Coyote,

                  You’ve had too many anvils to your noggin, and you have fixated on this strange projection to me and my mind.

                  The only one that is caught in the “gotcha” is you.

                  Beep beep.

                35. Ding Ding Ding!! And There It Is!! Vague Smiley Face!!!

                  There’s just no way he can avoid the tells !!

                36. It’s soooo easy to make you do the Ding Dance with the error of meme as “tells.”

                  It’s like you are a little puppet.

      3. 4.1.3

        If you must feed him attention, could you at least not invite him to threads that he had bowed out of?

        1. 4.1.3.1

          LOL – too late (he really cannot help himself).

    2. 4.2

      The reality is that under KSR —ANY—invention can be held as obvious.

      Reality.

      1. 4.2.1

        … even those with a “Flash of Genius?”

        1. 4.2.1.1

          :)

          Yes anon. As a “Flash of Genius” is another term that has no meaning outside the head of the fact finder.

      2. 4.2.2

        Not sure how that’s responsive.

    3. 4.3

      Is it normal for an IPR patentee to say that a term in their claim is purposely vague?

      Ha! Good point.

  5. 3

    That’s some pretty nice prior art.

    1. 3.1

      So just bare statement. How is “pretty nice”? Did you even look at it?

      1. 3.1.1

        Here, it does appear that he HAS looked at it. But the first part of your comment is on point without the second.

        Ben,

        What does “nice” mean?

      2. 3.1.2

        I did, though we all understand why you’d like to suggest that I did not.

        The Bert-something reference closely matched the claim and only really differs in where the game score was reported, which the foley reference cleanly supplied. Also the only real technology in the claim, the golf ball identification was dead-on described in the bert reference.

        I thought that the patent owner’s dust kicking around the “purposely vague” term “significantly lower” and his outright sophistry regarding judging elevation differentials from a figure was weak, but your milage may differ. Even assuming he was right, the art would be quite close to his claimed invention, hence: “pretty nice”.

        1. 3.1.2.1

          Whoops. I just remembered that by NWPA’s standards, I was supposed to only whine about someone asking me to defend, source, explain, or articulate my position. Drat!

          1. 3.1.2.1.1

            ?

        2. 3.1.2.2

          Thanks Ben.

  6. 2

    Of course we all know that the converse deference to a finding of non-obvious based on substantial evidence is not accorded the PTO by the CAFC.

    1. 2.1

      Also there is a complaint about not being given time to amend the claims in the petition.

    2. 2.2

      The same APA standard for reversing administrative fact-finding applies both ways to administrative decisions. 10,774 claims were held non-obvious [and/or non-anticipated] in IPRs per the last report I just found. I am not aware of even half a dozen Fed. Cir. reversals or remands of such pro-patent owner IPR decisions, or that there are more of those than Fed. Cir. reversals of IPR decisions finding claims obvious or anticipated.

      1. 2.2.1

        Yes it would be great to see those statistics and read the cases where they did reverse.

  7. 1

    A former patent litigator and current assignee of an expired patent is proceeding pro se and argues unconstitutional taking. It must be a Monday.

    1. 1.1

      These anti-patent troll comments always drip with attitude and are dry of substance. So a former patent litigator with an expired patent who puts in a hot topic right now of unconstitutional takings, which if not put in there may mean forfeiture of the issue that the Scotus is ripe to decide, is a bad guy why?

      Somehow this guy is a bad guy ’cause, ’cause, an anti-patent judicial activist troll says so.

      1. 1.1.1

        Anti-patent troll comments? You see what you are geared up to see, NW. My comment was agnostic with regard to the merits and to Mr. Agarwal’s strategy. Nor did I allege that he is a “bad guy.” I was merely struck by the unique set of facts.

        1. 1.1.1.1

          You see what you are geared up to see, NW.

          My pal with the shifty historical pseudonyms is projecting again, and quite missing that people are not buying his “I was merely” schtick.

          Having said that, I am just not moved enough by the particulars of this case to dig into it, so, it is not likely to see much ‘on point’ commenting.

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