Batting 1000 Against an Obvious Patent?
Posted by: Bruce in Obviousness, PTO problems, Patentablility, Validity, infringement, tags: media technologies, Obviousness, Upper DeckWould you be more likely to buy a package of sports cards - you know, like you used to get with Fleer bubble gum - if there was a chance it included a splinter of Ted “Splendid Splinter” Williams’ baseball bat and a certification that it was authentic? Well, would you?
How about a trading card with a piece of someone’s uniform? More importantly, would you grant a patent to the first person to attached a piece of an article of authenticated memorabilia to a trading card? The USPTO did.
Although I don’t understand the business model, there appears to be a big business in sports cards these days - sans bubble gum. Manufacturers insert a limited number of special items into the card packages as an enticement to sell more cards. These special items include “signature cards” “rookie redemption cards” and now “memorabilia cards”.
At the end of 1994, Adrian Gluck filed for and ultimately was issued a patent for a “memorabilia card” comprising:
a substrate in the form of a card and having an image surface,
the image surface including a background image and a foreground image, and wherein the foregoing image is of a famous figure,
a piece of a memorabilia item being adhered to the card adjacent to where an image of the actual item normally would appear, and
the card including a certificate attesting to the authenticity of the item.
Further, the patent claims defined one example of a memorabilia item as being:
a first member, and
a portion, but not the entirety, of an authentic memorabilia item used by a popular sport or entertainment personality or during a memorable event, said portion attached to said first member wherein the authentic item is a baseball bat, and said portion comprises a tiny piece of wood taken from that bat.
A typical memorabilia card is shown in this link.
Mr. Gluck sold his rights to Media Technologies Licensing, LLC who, in 2001, sued Upper Deck Co., a major producer of sports cards, for infringement. The District Court granted summary judgment to Upper Deck, but the Court of Appeals for the Federal Circuit (CAFC) reversed on procedural grounds. Upper Deck then asked the PTO to re-examine the patent, which it did, affirming Gluck’s patent’s validity. The District Court then performed claim construction and issued a summary judgment that the patent was not anticipated but was obvious. Media Tech appealed to the CAFC. The CAFC, in a 2-1 split, upheld the obviousness decision.
The whole discussion in the CAFC’s opinion is bothersome to me. The courts, when discussing obviousness, are forced to put a glossy coat of objective argument on the inherently subjective question. They are forced to work from the prior art in evidence rather than their innate knowledge of what an average person knows.
It should be clear to everyone involved that it did not take any “aha” moment, any inspired inventive spark, to “invent” the trading-card-with-bat-splinter. In creating a trading card with a piece of a memorabilia object, Mr. Gluck perhaps realized that P.T. Barnum was right but he sure didn’t come up with anything that “promote[s] the Progress of Science and useful Arts“; at best he came up with a method of promoting the sale of sports trading cards; a business method, perhaps.
And in fact his strongest defense against obviousness was that all the experts in the field didn’t expect it to “work”, meaning they didn’t expect commercial success. But commercial success is, at best, a secondary indication of non-obviousness and cannot overcome the weight of many primary indicators.
So the courts have now, twice, given an obviousness dope slap to the PTO which twice said this was a valid patent. Perhaps Mr. Gluck and Media Technologies will realize that this patent wasn’t ready for the big leagues.
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