Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper No. 36
`Entered: May 3, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOPGOLF INTERNATIONAL, INC.,
`Petitioner,
`
`
`
`
`
`v.
`
`AMIT AGARWAL,
`Patent Owner.
`____________
`
`Case IPR2017-00928
`Patent 5,370,389
`____________
`
`Before LORA M. GREEN, MICHELLE N. WORMMEESTER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`

`

`IPR2017-00928
`Patent 5,370,389
`
`
`A conference call was held on Thursday, April 26, 2018, between Patent
`Owner, Amit Agarwal; counsel for Petitioner, Dorothy Whelan and K. Nicole
`Williams; and Administrative Patent Judges Green, Wieker, and Wormmeester.
`Mr. Agarwal arranged for a court reporter to be present on the call, and agreed to
`file a copy of the transcript as an exhibit. 1 Mr. Agarwal requested the call to seek
`authorization to file a sur-reply to Petitioner’s Reply accompanied by a new expert
`declaration, as well as to file additional briefing based on the United States
`Supreme Court’s decision in Oil States Energy Services, LLC v. Greene’s Energy
`Group, LLC, 2018 WL 1914662 (U.S. Apr. 24, 2018) (“Oil States”).
`
`Specifically, as to the request for authorization to file a sur-reply, Mr.
`Agarwal asserted that it was improper for us to change obviousness theories mid-
`stream, during oral argument. According to Mr. Agarwal, we changed our
`construction of “significantly lower” from the construction of that term in our
`Decision on Patent Owner’s Request for Rehearing. Paper 14, 10. In particular,
`Mr. Agarwal stated that during the oral hearing in this proceeding we stepped away
`from that construction.
`
`Mr. Agarwal contended further that Petitioner asserted a new obviousness
`theory for the first time during oral argument. Mr. Agarwal maintained that new
`theory was that the inner-most section of the target of Bertoncino could be
`stretched to the full size of the target. Petitioner responded that was not a new
`argument, but that argument had been made at page 50 of the Petition, as well as
`discussed at page 13 of the Reply.
`
`Mr. Agarwal argued also that he should be allowed to respond to our
`questions at the oral hearing regarding friction. We responded that those questions
`
`
`1 This order summarizes the statements made during the conference call. A more
`detailed record may be found in the transcript.
`
`
`
`2
`
`

`

`IPR2017-00928
`Patent 5,370,389
`
`came up in the context that both the challenged patent (Ex. 1001, 5:29‒42) and
`Bertoncino (Ex. 1004, 6:33‒14) teach the use of a material that reduces the
`momentum of the ball, that is, a material that absorbs the impact of the ball to
`prevent the ball from bouncing out of the target. The questions related to whether
`those teachings had been considered by his expert. In response to our question on
`the call as to whether Mr. Agarwal was aware of those teachings of the use of a
`shock absorbing material before the oral hearing, Mr. Agarwal stated he was.
`
`Finally, Mr. Agarwal stated that he should have an opportunity to respond to
`a reference that Petitioner had filed with its Reply, Meikle (Ex. 1015). In
`particular, Mr. Agarwal stated that he should have had the opportunity to swear
`behind that reference. In response to our question as to why he had not requested a
`sur-reply after Petitioner had filed its Reply, but waited until after the oral hearing
`had been held, Mr. Agarwal agreed that it would have been preferable to have
`requested the sur-reply to respond to the Meikle reference shortly after Petitioner
`had filed its Reply. Mr. Agarwal responded further that he had to at least request a
`sur-reply to preserve arguments on appeal. In addition, Mr. Agarwal asserted that
`due process necessitated that we authorize the sur-reply, as well as an
`accompanying expert declaration.
`
`We noted that we are required by statute to issue a final written decision
`within one year from institution. See 35 U.S.C. § 316(a)(11). We observed that if
`Mr. Agarwal were to be allowed to file a sur-reply and an additional expert
`declaration, Petitioner would then be entitled to cross-examination of that expert,
`and then may also aver that due process requires it the opportunity to file a sur-sur-
`reply. Under those circumstances, we remarked that we most likely would not be
`able to meet our one-year statutory deadline. Mr. Agarwal maintained that the
`requirement for due process outweighed our requirement to meet our statutory
`
`
`
`3
`
`

`

`IPR2017-00928
`Patent 5,370,389
`
`deadline, and, moreover, argued that deadline may be extended by six months for
`good cause.
`
`The difficulty with Mr. Agarwal’s argument is that interpretation of the good
`cause exception would essentially read the one-year deadline out of the statute.
`Specifically, the only good cause for extending the statutory deadline articulated
`by Mr. Agarwal during the conference call was due process. That argument could
`be made by virtually every party in virtually every proceeding, and it is unclear to
`us how under those circumstances how any proceedings would then meet the one-
`year statutory deadline.
`
`We noted also in response that we would base the final written decision on
`the arguments and evidence that were of record before the oral hearing, and not on
`any new argument that was made for the first time at oral hearing. We remarked
`further that we had not yet issued a final written decision in this proceeding, and,
`therefore, Mr. Agarwal was basing his request on statements and questions that
`were made during oral hearing but have not been made finally in any written
`decision. In that regard, we noted that oral hearing is an opportunity for the panel
`to test the parties’ arguments, especially around the edges, and is not necessarily
`reflective of any reasoning that will be relied upon in the final written decision.
`
`In view of the forgoing, Mr. Agarwal is not authorized to file a sur-reply to
`Petitioner’s Reply, nor is Mr. Agarwal authorized to file an additional expert
`declaration.
`
`Mr. Agarwal requested also that he be allowed to file briefing based on the
`Supreme Court’s decision in Oil States. In particular, Mr. Agarwal noted that the
`Supreme Court’s decision in Oil States left open the question of whether
`retroactive application of the inter partes review process to those patents for which
`the process was not in place at the time of issue is unconstitutional. Oil States,
`
`
`
`4
`
`

`

`IPR2017-00928
`Patent 5,370,389
`
`2018 WL 1914662 at *11. In order to preserve the argument on appeal, Mr.
`Agarwal asked for five pages of briefing on the issue.
`
`Petitioner, in response, stated it did not, in principle, oppose Mr. Agarwal’s
`request to preserve for appeal the issue of whether application of inter partes
`review retroactively to the patent challenged in the instant proceeding is
`unconstitutional. Petitioner noted, however, that it did not feel extensive briefing
`would be necessary. Rather, Petitioner stated that one page on the issue from
`Mr. Agarwal, as well as a one-page response from Petitioner, would be sufficient.
`Mr. Agarwal agreed.
`We, thus, authorize Mr. Agarwal to file a one (1) page paper, not including
`the title page, addressing the constitutional question left open by Oil States
`regarding the retroactive application of inter partes review to a patent that issued
`before that process was in place, which must be filed within one (1) week of the
`mailing of this Order. Petitioner is then authorized to file a one (1) page response,
`not including the title page, which must be filed within one (1) week of the filing
`of Mr. Agarwal’s paper. Mr. Agarwal is not authorized to file a reply to
`Petitioner’s response, and neither party is authorized to file new evidence.
`
`Accordingly, it is:
`
`ORDERED that Mr. Agarwal’s request to file a sur-reply to Petitioner’s
`
`Reply, as well as a new expert declaration, is denied;
`
`FURTHER ORDERED that Mr. Agarwal’s request to file a paper preserving
`the argument that the application of inter partes review to a patent that issued
`before that process was in place is unconstitutional is granted;
`
`FURTHER ORDERED that Mr. Agarwal is authorized to file a one (1) page
`paper, not including the title page, addressing the constitutional question left open
`
`
`
`5
`
`

`

`IPR2017-00928
`Patent 5,370,389
`
`by Oil States regarding the retroactive application of inter partes review to a patent
`that issued before that process was in place, which must be filed within one (1)
`week of the mailing of this order; and
`
`FURTHER ORDERED that Petitioner is authorized to file a one (1) page
`response, not including the title page, which must be filed within one (1) week of
`the filing of Mr. Agarwal’s paper.
`
`
`Petitioner:
`
`Dorothy P. Whelan
`Mike Kane
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55440-1022
`whelan@fr.com
`kane@fr.com
`
`
`Patent Owner:
`
`Amit Agarwal
`P.O. Box 10354
`Tampa, FL 33679
`Ama7386@gmail.com
`
`
`
`6
`
`