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.