Trials@uspto.gov Paper No. 40
`571.272.7822 Filed: June 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`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 Judge.
`
`GREEN, Administrative Patent Judge.
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`
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`FINAL WRITTEN DECISION
`Determining That Claims 1 and 6 Have Been Shown to Be Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571.272.7822 Filed: June 13, 2018
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`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 Judge.
`
`GREEN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Determining That Claims 1 and 6 Have Been Shown to Be Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2017-00928
`Patent 5,370,389
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`I.
`INTRODUCTION
`TopGolf International, Inc. (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1 and 6 of U.S. Patent No. 5,370,389
`(Ex. 1001, “the ’389 patent”). Paper 2 (“Pet.”). Mr. Amit Agarwal (“Patent
`Owner”), acting pro se, filed a Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”); see also Paper 7, 2 (suggesting that Mr. Agarwal
`seek the services of a registered patent attorney who is familiar with the inter
`partes review process). We determined that the information presented in the
`Petition and the Preliminary Response demonstrated that there was a
`reasonable likelihood that Petitioner would prevail in challenging claims 1
`and 6 as unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C.
`§ 314, the Board instituted trial on July 19, 2017, as to all of the challenged
`claims of the ’389 patent. Paper 8 (“Institution Decision” or “Dec. Inst.”).
`Patent Owner filed a Response1 (Paper 23, “PO Resp.”), and
`Petitioner filed a Reply (Paper 27). Oral hearing was held on April 17,
`2018, and a transcript of that hearing has been entered into the record.
`Paper 37 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`of proving unpatentability of the challenged claims, and that burden never
`shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish
`
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`1 Patent Owner originally filed a Patent Owner Response at Paper 22, which
`was not in compliance with the word count required by 37 C.F.R.
`§ 42.24(b). Patent Owner than filed a redacted copy of the Patent Owner
`Response that was in compliance with the required word count as Paper 23.
`After oral hearing, in which we inquired whether either party he had any
`objections to our expunging the non-compliant Patent Owner Response, and
`both parties stated that they did not, we expunged Paper 22. Tr. 4.
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`facts supporting its challenge by a preponderance of the evidence. See 35
`U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Based on the record before us, we conclude that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1 and 6 of the
`’389 patent are unpatentable.
`Related Proceeding
`A.
`According to the parties, the ’389 patent is at issue in one pending
`litigation: Agarwal v. TopGolf International, Inc., Case No. 8:16-cv-02641-
`VMC-JSS (M.D. Fl.). Pet. 1; Paper 3, 1.
`B.
`The ’389 Patent (Ex. 1001)
`The ’389 patent issued on December 6, 1994, with Douglas J. Reising
`as the listed inventor. Ex. 1001. The ’389 patent relates to a golfing game
`which allows a player to practice both long-range and close-
`range shots while aiming for different target greens located at
`varying distances from the teeing area. If the player lands a ball
`on one of the greens, he receives a score on a visual display that
`is located near the teeing area so the player can easily see his
`score. Each of the greens is sloped so that a ball that lands
`upon the greens’ surface will roll into a hole located at the
`lowest point of the surface. Each ball has a distinctive marking,
`either a color code or a bar code, so that it can be determined
`from which tee the ball was hit. After the ball rolls into the
`hole of a green, a sensor scans the ball and identifies from
`which tee the ball was hit. After the ball rolls into the hole of a
`green, a sensor scans the ball and identifies from which tee the
`ball came. A score is then added to the visual display at the
`corresponding tee. Each green can have a different point value,
`depending upon the difficulty of the golf shot required to land
`on that green.
`Id., Abstract. In particular, the ’389 patent teaches that the “invention will
`be specifically disclosed in connection with such a range in which the target
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`greens are sloped so that a golf ball landing on each green will roll into a
`hole containing a sensor that can identify from which tee the ball was hit.”
`Id. at 1:11‒15.
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`The ’389 patent teaches that “[e]xisting driving ranges often have
`small greens that include target flags at which to aim.” Id. at 1:48‒49.
`According to the ’389 patent, the greens may be located from as little as 100
`to more than 250 yards from the tee. Id. at 1:49‒52. Such ranges, however,
`“do not . . . include any type of automatic scoring capabilities.” Id. at 1:55‒
`56.
`The ’389 patent teaches further that available golfing games that
`
`provide an automatic score are designed for putting or short distance
`chipping. Id. at 1:61‒64. Moreover, in such games, the ’389 patent notes,
`“the targets are so small and at such a distance that it would be very difficult
`to obtain any score whatsoever.” Id. at 1:64‒67. In addition, the ’389 patent
`states that “each of the games available at the present time requires
`construction of a special facility and could not be easily retrofitted into an
`existing driving range.” Id. at 1:67‒2:2. The ’389 patent teaches also that
`“[n]one of the prior art games are intended for use as a driving range to
`practice driving skills at realistic distances.” Id. at 2:2‒4. Thus, a primary
`object of the invention of the ’389 patent is “to provide a golfing game
`which can be retrofitted into an existing driving range in which the golfer
`attempts to place his ball upon one of several target greens,” wherein “a
`score is indexed at a distance near the golfer’s location.” Id. at 2:7‒12.
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`Figure 3 of the ’389 patent is reproduced below:
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`Figure 3 “is a plan view of an entire driving range constructed in accordance
`with the principles of the present invention.” Id. at 3:21‒23. As can be seen
`in Figure 3, a driving range 28, which may be bordered by trees 32, has a
`number of target greens 30 that are positioned at various distances and
`locations from the teeing area 20. Id. at 4:13‒18. According to the ’389
`patent, “[e]ach target green contains a graded rear portion which allows the
`player to see his ball hitting the green before the ball rolls down into a
`receptacle hole.” Id. at 2:51‒53.
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`Figure 4 of the ’389 patent illustrates a target green according to the
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`invention. Figure 4A is reproduced below:
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`Figure 4A shows “a plan view of one of the target greens of the driving
`range” of Figure 3. Id. at 3:24‒25.
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`As shown in the Figure, a target green 30 includes a target flag 40, as
`well as a receptacle hole 36. Id. at 4:29‒30. The receptacle hole 36 is
`located near the front portion of the green and the green is sloped downhill
`such that the receptacle hole 36 is at the lowest point of the green. Id. at
`4:30‒35. The arrows 38 show the direction of slope on the target green. Id.
`at 4:35‒36. As taught by the ’386 patent, “[t]arget green 30 is sloped
`downhill, having the general shape of a concave surface, so that the
`receptacle hole 36 is at the lowest portion of target green 30.” Id. at 4:32‒
`35. The target flag 40 may be located at any position on the green. Id. at
`4:55‒56.
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`Figure 4B is reproduced below:
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`Figure 4B “is an elevational view of the target green as viewed from the
`bottom” of Figure 4A. Id. at 3:26‒27.
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`The ’389 patent teaches that as shown in the above Figure, “[t]arget
`green 30 would appear to the golfer at the teeing area 20 to have a sudden
`drop off near the front portion of the green, and then a gradual slope
`upwardly toward the back of the green.” Id. at 4:37‒40.
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`Figure 4C is reproduced below:
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`Figure 4C shows “a cross-sectional view of the target green of FIG. 4B,
`taken along section line 4C‒4C.” Id. at 3:28‒29. As can be seen in the
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`Figure, the target green “contains a graded rear portion which allows the
`player to see his ball hitting the green before the ball rolls down into a
`receptacle hole, which is located at the lowest point of [the] green.” Id. at
`2:51‒54.
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`The ’389 patent teaches that the surface of the green is preferably a
`heavy duty, high performance fabric, wherein the material “has sufficient
`compliance to absorb the impact of a golf ball . . . such that the ball . . . will
`not bounce away from the target green.” Id. at 5:29‒32. The use of such a
`material, the ’389 patent teaches, “allows a person playing the game to have
`a higher score by ‘trapping’ balls which otherwise would bounce off the
`green.” Id. at 5:32‒34.
`
`Illustrative Claim
`C.
`Petitioner challenges claims 1 and 6 of the ’389 patent. Claim 1 is the
`only independent challenged claim, is representative, and is reproduced
`below (formatting and emphasis added):
`
`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,
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`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 it 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 forward most end located at the forward portion
`of the target green having an elevation that is significantly
`lower than 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.
`Ex. 1001, 9:24‒68.
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`Dependent claim 6 adds the limitation of “wherein the step of
`indexing the score of said scoring device provides a different score value for
`each of said target greens.” Id. at 10:18‒21.
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`Instituted Challenge
`D.
`We instituted trial based on the sole ground of unpatentability
`presented in the Petition (Dec. Inst. 22; Pet. 3):
`References
`Basis
`Bertoncino2 and Foley3
`§ 103
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`Claims Challenged
`1 and 6
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`Petitioner relies also on the Declaration of Richard Robbins
`(Ex. 1003).
`Patent Owner relies on the Declarations of Michael Hurdzan, Ph.D.
`(Ex. 2012) and James Bertoncino (Ex. 2013).
`II. ANALYSIS
`Claim Construction
`A.
`Petitioner asserts, and Patent Owner does not contest, that the ’389
`patent expired as of September 2012. Pet. 9. The Board’s review of the
`claims of an expired patent is similar to that of a district court’s review. In
`re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). We are, therefore, guided
`by the principle that the words of a claim “are generally given their ordinary
`and customary meaning” as understood by a person of ordinary skill in the
`art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc) (internal citation omitted). “In
`determining the meaning of [a] disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
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`2 Bertoncino, U.S. Patent No. 5,439,224, issued August 8, 1995 (Ex. 1004).
`3 Foley, U.S. Patent No. 5,163,677, issued November 17, 1992 (Ex. 1006).
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`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy
`presumption,” however, that a claim term carries its ordinary and customary
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`Cir. 2002) (citation omitted).
`In the Institution Decision, we determined that none of the terms in
`the challenged claims required express construction at that time. Dec. Inst. 7
`(citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`2011) (“[C]laim terms need only be construed ‘to the extent necessary to
`resolve the controversy.’”) (quoting Vivid Techs, Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, we
`determine that only the following claim term requires express construction.
`“providing a plurality of target greens which are remotely located from the
`plurality of golfing tees”
`Patent Owner contends that the above phrase should be construed as
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`“providing a plurality of target greens at realistic distances so as to enable a
`golfer to practice driving skills.” PO Resp. 3 (emphasis removed). Patent
`Owner cites Liberty Ammunition, Inc. v. U.S., 835 F.3d 1388, 1395 (Fed.
`Cir. 2016), Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014),
`and Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014), to
`support that construction. PO Resp. 3‒5. Those cases, Patent Owner
`asserts, support the proposition that “[c]laim construction of terms of degree
`requires identification of an objective boundary in the intrinsic record.” Id.
`at 4.
`In particular, Patent Owner states that the Federal Circuit held, in the
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`context of a firearm projectile, that “the term ‘reduced area of contact’ was a
`term of degree because it necessarily called for a comparison against some
`objective baseline.” Id. at 3‒4. Thus, Patent Owner asserts, the claim term
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`“remotely,” is also a term of degree, and it too requires “calling for a
`comparison against some objective baseline.” Id. at 4.
`In Liberty Ammunition, Patent Owner avers, the claims did not specify
`the comparison, but the specification disclosed that the projectile had a
`reduced area of contact as compared to conventional projectiles, and the
`only conventional projectile taught by the specification was a M855 round.
`Id. (citing Liberty Ammunition, 835 F.3d at 1396). Patent Owner asserts that
`the “Federal Circuit had to squint to ascertain the objective baseline the
`Liberty Ammunition patentee intended for the claimed invention to improve
`upon,” and “went so far as considering the title of a fact section in the
`patentee’s appellate brief, ‘Background: The Army’s M855 Standard Rifle
`Round – Its Deficiencies and the Quest to Replace It.’” Id. at 5 (citing
`Liberty Ammunition, 835 F.3d at 1396).
`
`The patent challenged in the instant proceeding, Patent Owner asserts,
`“could not have been more explicit and pointed” as to the improvement
`provided—to provide a driving range to allow a player to practice driving
`skills at realistic distances, which is also supported by expert testimony. Id.
`at 5‒6 (citing Ex. 1001, 2:2‒5, 1:21‒23, 1:33‒38, 1:44‒47, 1:60‒67, 2:2‒5,
`2:7‒17; Ex. 2012 ¶¶ 12‒15; Ex. 2013 ¶ 12).
`
`In addition, Patent Owner asserts, if “remotely” were to be construed
`as “at a distance,” that construction
`could implicate a point-scoring game which does not (i) enable
`a player to hit any club other than the pitching wedge;
`(ii) enable a player to practice driving skills at a realistic
`distance; (iii) allow retrofitting into a driving range. That is, the
`construction “at a distance” would untether the claim from
`anything within healing distance of the invention described in
`the ’389 patent.
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`Id. at 14.
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`Patent Owner asserts further that Petitioner’s expert also rejected the
`construction of “remotely located” as being “at a distance.” PO Resp. 9
`(citing Ex. 2011, 9:58:38). In particular, Patent Owner asserts, Petitioner’s
`expert, Mr. Robbins, testified that “remotely located” should be construed as
`referring to a range of 50 to 300 yards. Id. (citing Ex. 2011, 9:58–38).
`According to Patent Owner, the ’389 patent’s “incremental advance over the
`prior art is curing the prior art’s shortcoming, identified with specificity and
`particularity—enabling players to ‘practice driving skills at realistic
`distances.’” Id.
`
`According to Patent Owner:
`Construing “remotely” to simply mean “at a distance”
`violates Nautilus by neglecting to identify an objective baseline
`for this term of degree and violates Phillips by construing the
`word “remotely” in the abstract with a blind eye to the
`specification which clarifies that the claimed invention
`overcame the prior art’s lack of support for practicing driving
`skills at realistic distances.
`Id. at 10. Moreover, Patent Owner avers, construing “remotely” as “at a
`distance” does not provide any upper bounds, such as 500 yards, 1 mile,
`2 miles, etc. Id.
`
`Petitioner responds that the “ordinary meaning of ‘remote’ is ‘far
`apart’ or ‘distant’ but does not impose any rigid threshold.” Reply 2 (citing
`Ex. 1009, 1139). According to Petitioner, the ’389 patent suggests that the
`greens may be a wide range of distances from the tees, as it notes that
`existing driving ranges may have small greens that are “‘typically located’
`from 100‒250 yards away.” Id. (citing Ex. 1001, 2:7‒9, 1:48‒52).
`Moreover, Petitioner argues, the “’389 patent never adopts a narrower
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`definition nor disavows claim scope.” Id. Petitioner asserts that an object of
`the ’389 patent “is to allow a player to ‘practice his golfing skills at realistic
`distances,’ which encompasses practicing any golf shot.” Id.
`
`According to Petitioner, its expert, Mr. Robbins, testified “that a
`skilled artisan would understand ‘remotely’ to mean that the target is ‘at
`some distance from the place where you are hitting the golf ball, and that
`remote [target] could be any number of distances because typically there’s
`more than one target on a practice range.’” Id. at 3 (citing Ex. 2011, 15:16‒
`20, 158:24‒159:12). Thus, Petitioner argues, Mr. Robbins never limited
`“remotely” to driver shots, but instead testified that remotely would include
`distances from 50 to 300 yards from the tee, as “[g]olfers at practice ranges
`want to practice all kinds of shots, so they may be hitting anything from a
`sand wedge to a driver.” Id. (quoting Ex. 2011, 18:23‒19:10 (alteration
`original)). In addition, Petitioner asserts, neither of Patent Owner’s experts
`argue that “remotely” should be limited to a target green for practicing
`driving skill, noting rather that the term would include such targets. Id. at 3‒
`4 (citing Ex. 2012 ¶ 13; Ex. 2013 ¶ 12).
`
`We decline to adopt Patent Owner’s proposed construction of
`“providing a plurality of target greens which are remotely located from the
`plurality of golfing tees” as “providing a plurality of target greens at realistic
`distances so as to enable a golfer to practice driving skills,” as that
`construction is not supported by the specification of the ’389 patent, nor is it
`supported by any expert testimony as argued by Patent Owner. Moreover,
`we decline to limit the claim as encompassing only those target greens that
`are at a distance for use with just a driver.
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`Specifically, the ’389 patent discloses a golfing range that “allows a
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`player to practice both long-range and close-range shots while aiming for
`different target greens located at varying distances from the teeing area.”
`Ex. 1001, Abstract. The ’389 patent notes that, at the time of invention,
`driving ranges were in existence in which target greens may be located from
`100 to more than 250 yards from the driving tees. Ex. 1001, 1:49‒52. As
`taught by the ’389 patent, the issue with those ranges is that automatic
`scoring was not available. Id. at 1:55‒56.
`We acknowledge that the ’389 patent does state, in the context of
`“presently available golfing games that give a player an automatic score,”
`that “[n]one of the prior art games are intended for use as a driving range to
`practice driving skills at realistic distances.” Id. at 1:61‒2:4. Thus, one of
`the objects of the ’389 patent is “to provide a driving range game in which
`the player can practice his golfing skills at realistic distances and optionally
`have his score indicated on a display.” Id. at 2:13‒16. Additionally, the
`’389 patent teaches that the target green may “be installed at any existing
`driving range.” Id. at 8:59‒60.
`
`The ’389 patent is, therefore, drawn to a driving range that allows the
`player to practice golfing skills, including both “close-range” and “long-
`range” shots. Ex. 1001, Abstract. The statement of the ’389 patent relied
`upon by Patent Owner to limit the target greens to those for use with a
`driver, that is “[n]one of the prior art games are intended for use as a driving
`range to practice driving skills at realistic distances,” is in the context of golf
`games that provide automatic scoring to the player.
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`We disagree with Patent Owner that the improvement provided by the
`’389 patent is to provide a driving range to allow a player to practice driving
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`skills at realistic distances. Rather, as discussed above, the ’389 patent notes
`that at the time of invention driving ranges were known, and in fact, the
`claimed golfing game could be installed into existing driving ranges. That
`finding is consistent with the Declaration of one of Patent Owner’s experts,
`Mr. Hurdzan. That is, Mr. Hurdzan stated that he agrees “with Mr. Robbins
`that the reason a driving range is called a ‘driving’ range is because
`historically, most people went there for that purpose—to drive the ball as far
`as they could.” Ex. 2012 ¶ 14. We note further that Patent Owner stated
`during the oral hearing that “the claims are not limited to a driver.” Tr. 30:3.
`
`Thus, as taught by the specification of the ’389 patent, the claimed
`target green may be at a distance that allows the golfer to practice golfing
`skills, and may be used with any club, such as a wedge, iron, or driver, and
`is not limited to a game that provides target greens at a distance at which
`only a driver may be used.
`B. Obviousness Over the Combination of Bertoncino and Foley
`Petitioner contends that claims 1 and 6 are rendered obvious by the
`combination of Bertoncino and Foley. Pet. 22‒60. Patent Owner disagrees
`with Petitioner’s contentions, asserting that the Petition fails to demonstrate
`the obviousness of the challenged claims by a preponderance of the
`evidence. PO Resp. 26–69.
`Overview of Bertoncino (Ex. 1004)
`i.
`Bertoncino discloses:
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`A golf range comprising a series of independent targets,
`each of which consists of a sloped area located at a different
`distance from a multiplicity of tee stands. The range is also
`equipped with a scoring system that uses Universal Product
`Codes on each ball, optical scanners located at each target, and
`a programmed computer to identify each ball passing through
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`the target and to record pertinent information and statistics to
`provide golfers with a record of the number and length of shots
`taken.
`Ex. 1004, Abstract. In particular, Bertoncino teaches driving and/or
`chipping ranges that “provide[ ] golfers with entertainment and an
`opportunity to improve their distance and directional skills for driving and/or
`chipping.” Id. at 1:10‒16.
`
`According to Bertoncino, “[t]he golfer’s ability to judge the length of
`his drive or chip is dependent upon his ability to follow visually the path of
`the ball and see the lie (the actual spot where the ball lands after being hit).”
`Id. at 1:26‒30. Bertoncino teaches that factors that may affect the visibility
`of seeing the lie of the ball include
`the golfer’s eyesight; inadequate lighting attributable to natural
`shading, time of day or dim or poorly directed artificial light;
`excessively bright lighting from the sun . . .; natural physical
`obstructions such as trees, bushes, grasses, terrain imperfection;
`and the presence of other balls that have come to lie at
`approximately the same place and are generally
`indistinguishable from each other even at relatively short
`distances.
`Id. at 1:30‒40. Thus, Bertoncino teaches an object of the invention “is to
`provide a means for measuring with a degree of exactness the length of the
`golfers’ drive or chip without depending on his ability to follow visually the
`path of the ball.” Id. at 1:40‒44.
`
`17
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`IPR2017-00928
`Patent 5,370,389
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`
`
`Figure 3 of Bertoncino is reproduced below:
`
`
`Figure 3 of Bertoncino shows a “plan view of a sloped circular target
`including three separate and concentric sections.” Id. at 4:6‒7. According
`to Bertoncino, the target 20 preferably has the “general visual characteristics
`of a golf course green, but not necessarily as large.” Id. at 5:30‒32.
`Bertoncino teaches that the target 20 “comprises a surface generally sloped
`toward the tee stands area.” Id. at 5:37‒39.
`Bertoncino teaches further:
`
`Target 20 and flag 18 optionally simulates a green on a
`golf course. Thus, for example, a target may contain an inner
`section 22 surrounded by a concentric intermediate section 24,
`which is itself surrounded by a concentric outer section 26.
`. . . [T]he three inner, intermediate and outer sections (or any
`different number of sections chosen to be included in the target
`area, including only one) can obviously vary in size and shape,
`but are illustrated here as having annular shapes for simplicity.
`
`18
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`Id. at 5:43‒52. That is, Bertoncino teaches that “the target 20 may comprise
`a single section 22 with a single cup 30 connected to the lowest point in its
`surface.” Id. at 6:63‒65.
`
`Figure 4 of Bertoncino is reproduced below:
`
`
`Figure 4 of Bertoncino shows a cross-sectional view of the sloped circular
`target shown in Figure 3, reproduced above, “illustrating the channel
`geometry and the ball-retrieval piping system associated with each section.”
`Id. at 4:8‒11. Bertoncino teaches that the inner section 22 preferably
`comprises a concave structure, and a receiving cup 30 is located at the
`lowest spot in the section, which ensures that any ball that is hit into the
`section will roll into the cup 30 by the force of gravity. Id. at 5:54‒60. In
`addition, Bertoncino teaches that the highest part of inner section 22 is the
`circumferential rim 28, a ball that comes to lie in that section is trapped and
`is unable to move outside the rim—rather, it rolls into the cup due to gravity.
`Id. at 6:17‒23. Bertoncino teaches also that the surface of each section of
`the target may be made or lined with a shock-absorbing material that allows
`the golf ball to remain where it lands. Id. at 6:33‒39.
`
`19
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`IPR2017-00928
`Patent 5,370,389
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`
`
`Figure 5 of Bertoncino is reproduced below:
`
`
`Figure 5 is “a schematic perspective of a sloped driving range” according to
`Bertoncino. Id. at 4:12‒13. Note that Figure 4 is a cross-section along line
`4-4 of Figure 5 (in the upper left corner of Figure 5). Id. at 4:8‒11.
`ii.
`Overview of Foley (Ex. 1006)
`Foley is drawn to a “golf driving-range for driving golf balls from any
`of a series of tee-points grouped together to a single common golf driving
`fairway having a plurality of spaced-apart greens each with a flagged hole.”
`Ex. 1006, Abstract. Foley teaches that on one or more of the golf greens
`there are golf ball percussion devices, such infra-red ray detectors, which
`detect balls that strike or roll across the green. Id. at 4:62‒68. A signal is
`then sent through a computer and digitizer and fed to the booth from which a
`ball was most recently struck. Id. at 4:68‒5:4. According to Foley, higher
`
`20
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`IPR2017-00928
`Patent 5,370,389
`
`values or scores are assigned to particular greens depending on the distance
`or difficulty to hit the green from the teeing area. Id. at 5:6‒21.
`iii. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). “If a person of ordinary skill can implement a predictable variation,
`§ 103 likely bars its patentability.” Id. at 418. The question of obviousness
`is resolved on the basis of underlying factual determinations, including:
`(1) the scope and content of the prior art; (2) any differences between the
`claimed subject matter and the prior art; (3) the level of skill in the art; and
`(4) objective evidence of nonobviousness, i.e., secondary considerations. Id.
`at 406 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The
`Supreme Court has recently emphasized that “the [obviousness] analysis
`need not seek out precise teachings directed to the specific subject matter of
`the challenged claim, for a court can take account of the inferences and
`creative steps that a person of ordinary skill in the art would employ.” Id. at
`418; see also id. at 421 (“A person of ordinary skill is also a person of
`ordinary creativity, not an automaton.”).
`The obviousness analysis requires that “the factfinder should further
`consider whether a person of ordinary skill in the art would [have been]
`motivated to combine those references, and whether in making that
`combination, a person of ordinary skill would have [had] a reasonable
`expectation of success,” even “[i]f all elements of the claims are found in a
`
`21
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`combination of prior art references.” Merck & Cie v. Gnosis S.p.A., 808
`F.3d 829, 833 (Fed. Cir. 2015). We analyze the asserted grounds of
`unpatentability in accordance with the above-stated principles.
`iv.
`Analysis
`Petitioner relies on Bertoncino for teaching every element of claim 1,
`noting that Bertoncino shows receiving the score card at the club house,
`rather than a scoring device located at each tee. Pet. 21. According to
`Petitioner, such scoring devices were well known in the art at the time of
`invention, as exemplified by Foley. Id. at 21‒22. Because of the length and
`mult
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