No one could rightly accuse me of being biased against patents. As a patent prosecutor for over 32 years, most would say I’m the exact opposite. But I do find certain patented inventions that don’t rise to the level of being unobvious under 35 U.S.C. § 103to one of ordinary skill in the art. Such is the patented memorabilia card in Media Technologies Licensing, LLC v. The Upper Deck Company that was deemed obvious on summary judgment, a judgment which was affirmed by a majority of a Federal Circuit panel.
Normally, I find Judge Rader, the heir apparent for Chief Judge of the Federal Circuit, to write cogently and persuasively, even in dissent. Witness his withering blast in In re Bilski where he rightly takes the majority to task for the nonsensical “machine or transformation” test. But unfortunately, like the line from Hamlet, Judge Rader “doth protest too much, methinks” without case law support in his dissent in Media Technologies.
As described by the majority opinion in Media Technologies, U.S. Pat. No. 5,803,501 (the ‘501 patent) and U.S. Pat. No. 6,142,532 (the ‘532 patent) relate to memorabilia articles (e.g., sports trading cards) which “provide an actual piece or portion of an item in combination with a photograph or the like of a famous figure having a relationship to the item.” Interestingly, the four pieces of prior art asserted as rendering the claimed invention obvious weren’t patents, printed publications or sports trading cards, but instead were:
a. a trading card with a picture of Marilyn Monroe and a diamond attached to the card (“Monroe”);
b. a piece of a sheet purportedly slept on by one of the Beatles attached to a copy of a letter on Whittier Hotel stationery declaring authenticity (“Whittier”);
c. a piece of fabric purportedly belonging to a Capuchin Friar named Stephen Eckert attached to paper stock including a picture of the friar (“Eckert”); and
d. a greeting card fashioned to look like a novelty item that ostensibly includes a piece of jeans material belonging to James Dean (“Dean”).
The Federal Circuit majority acknowledged that none of these four pieces (literally) of prior art were a “sports trading card.” Instead, the focus of the obviousness determination became whether one of ordinary skill in the art would have applied these four pieces of prior art to “sports trading cards.” Put differently, were these four pieces of prior art sufficiently analogous that they would be relevant to “sports trading cards?”
The District Court for the Central District of California answered “yes,” granting summary judgment of invalidity of the ‘501 and ‘532 patents based on obviousness to the accused infringer (Upper Deck). On appeal, the patentee (Media Tech) argued that one of ordinary skill in the art would wouldn’t have combined or applied these pieces of prior art for two reasons: (1) an inability to predict that a trading card would convey memorabilia authenticity; and (2) the trading card field contained an infinite number of identified and unpredictable solutions.
Neither of these arguments was persuasive to the Federal Circuit majority. As Media Tech acknowledged, consumer acceptance already came from the credibility associated with the 90-year old trading card industry, and thus not from consumers accepting the authenticity of memorabilia combined with a conventional trading card. Regarding the asserted “infinite number of identified and unpredictable solutions,” the Federal Circuit majority disagreed with Media Tech. Instead, the Federal Circuit majority observed that “[c]ontent solutions are significantly limited by the theme and physical confines of the card, and the finite number of available solutions were predictable.”
Media Tech also asserted objective secondary evidence of “long felt but unsolved need,” “skepticism in the industry,” and “commercial success.” None of this asserted secondary evidence was considered convincing by the Federal Circuit majority. The Federal Circuit majority found Media Tech’s “long felt but unsolved need” argument created the unacceptable paradox of an overbroad “unsolved need” stimulating demand with “an exceedingly narrow definition of success that requires a trading card insert to raise demand to levels achieved by the alleged-infringing products.” The Federal Circuit majority also found no support in the record for the asserted “skepticism in the industry.” Finally, the Federal Circuit majority found the usual fatal flaw in the assertion of “commercial success,” namely no showing of any nexus between the claimed invention and the alleged “commercial success.”
Judge Rader’s dissent voiced outrage at the Federal Circuit majority opinion for “[r]elying on wholly irrelevant prior art and ignoring significant objective indicia of non-obviousness” and for the “substitute[ing] its judgment on patentability for that of a jury.” The latter statement from Judge Rader is startling, as well as puzzling, as the Federal Circuit majority affirmed the obviousness determination of a district court judge on a motion for summary judgment.
Also surprising was Judge Rader’s next statement which got very personal (and accusatory) with the Federal Circuit majority:
Lurking just beneath the surface of this court’s blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts. No doubt, the invention of the transistor or of the polio vaccine came from more scientific fields and contributed more to the welfare of humanity. This court, however, cannot overlook that many individuals invest vast energies, efforts, and earnings to advance these non-technical fields of human endeavor. Those investments deserve the same protection as any other advances.
Perhaps the Federal Circuit majority did dismiss the claimed memorabilia cards as being a “lightweight” invention. But Judge Rader’s dissent (consumed by a lengthy exposition on the history of trading cards) sounds shrill, especially in asserting that the Federal Circuit majority gave only a “cursory review” of the objective secondary evidence for the unobviousness of the claimed memorabilia cards.
Judge Rader’s dissent is admirable for its passion but might have been more persuasive (and less shrill) if it contained at least some citation to case law in support of the points made. Glaringly absent in Judge Rader’s dissent is any case law citation in support of his arguments, including why it is legally relevant that “none of the prior art references are remotely related to the sport trading card industry.” In fact, Judge Rader greatly weakens the persuasiveness of his dissent by failing to directly rebut (or even distinguish) any of the case law cited and relied upon by the Federal Circuit majority.
In a parting shot, Judge Rader pointed another accusatory finger at the Federal Circuit majority for why it gave more weight to Upper Deck’s expert versus Media Tech’s expert: “Is this an indication that this court views this field of art and this invention as unworthy of the full processes of the law?” But Judge Rader might have done better to take a cue from Hamlet, and discuss more case law supporting his factual points, not simply point fingers at the perceived bias in the Federal Circuit majority’s opinion.
*© 2010 Eric W. Guttag