NOTE: This disposition is nonprecedential.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., Minneapolis, 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 intervenor. 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 Written 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 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. 

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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(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 

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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.

’389 patent col. 9, ll. 23–68 (emphasis added to indicate disputed 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 several 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 different 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” 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. Additionally, the Board found that a person of ordinary skill in the art would have known to combine Foley 

and Bertoncino to place scoring devices at each tee, 

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satisfying the “indexing” limitation. 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 appeals from the Board’s Final Written Decision, asserting that the Board improperly held the ’389 patent unpatentable and challenging the constitutionality of 

inter partes review. We have jurisdiction to decide the appeal under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

Obviousness is a question of law with underlying findings 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 findings of the Board for substantial evidence. Id. A factual 

finding is supported by substantial evidence “if a reasonable 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 unconstitutional taking where a patent application was filed before 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 written decision that were not argued by TopGolf in its Petition 

or Reply with regard to the “significantly lower” limitation. 

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The Board is limited to considering contentions raised in 

the Petition, and “the petitioner’s contentions, not the Director’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 standalone target meeting the limitations of the claim, “such a 

green would be obvious to a skilled artisan based on Bertoncino’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 addresses 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 substantial evidence. The Board found that Bertoncino taught 

sloped target greens where the frontmost point was significantly lower than the rearmost point. It supported this 

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finding with language in Bertoncino and the figures in Bertoncino. 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 “significantly 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 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. 

The Board found that the ’389 patent was obvious both 

on the grounds that Bertoncino explicitly taught the “significantly lower” limitation and on the grounds that a person 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 patent was obvious. Because we find that the Board’s findings 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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motivation to slope the greens are also supported by substantial 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 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. 

Agarwal’s challenge to TopGolf’s assertions in its Petition 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 evidence 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 Final Written Decision.

IV

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-[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). 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 reexamination was not established until that date. Celgene, however, 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 expectation 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.

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