Intellectual Property Directions

Would 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.

I’m not much of a seamstress, so I can’t testify to how many stitches are saved by repairing a tear as soon as it happens, but I do know that investing in a prior art search can easily save you from wasting ten or more times as much on an application for an un-patentable invention. And the ROI can be much much greater if prior art search saves you from infringing someone’s broad but not widely known patent.

In the past couple of weeks I’ve had essentially identical discussions with two clients. In both cases my clients had the foresight (okay, at my urging) to have me do a prior art search to see what was out there BEFORE we started pulling together patent disclosure to send to the patent attorney. In both cases I discovered some prior art that would have made getting a patent difficult at best and, if allowed, would have been quite limited in scope. In both cases we concluded that the business value of such a limited patent, three of four years from now, did not justify the investment today.

 When should you initiate a prior art search? The different circumstances of my two clients may help you make that decision. One client - Client “X” - recognized a need in the marketplace, identified a solution and was hoping to develop a product to meet that need. He asked me to take a quick look at the patent prior art, since he wanted to feel comfortable that he had the freedom to build the type of device he imagined, and a second, deeper look to see if there was prior art of any sort that would limit his ability to obtain a reasonably broad patent to protect his market. The good news/bad news is that I found a recently published patent application that disclosed most, if not all, of what he wanted to do. Whether or not that application ever turns into a patent, its prior publication meant that my client would not be able to get a patent to protect his device and he dropped the project (and the patent work for me!). Bad news: no product and no patent; good news: saving the cost of filing a patent application that would probably never give him a return on investment.

The second client - Client “Y” - had already developed a novel image processing approach as an off-shoot of his main business thrust. He wanted to get a patent on the invention to increase its potential licensing value, since he does not need the invention in his core business. Again, as a preliminary step to preparing a patent disclosure, I did a prior art search, extending the search beyond the areas for which Client “Y” had developed the technology. Again the good news/bad news is that I uncovered a large collection of academic papers that disclosed perhaps 95% of my client’s approach. Together we decided that, at best, we might be able to get a narrow patent covering that last 5%; that competitors could probably work around that 5% anyway; and that it would be a long and painful fight with the examiner to surmount the certain-to-come obviousness objection. And of course we would not know if the patent would issue for 3 years or more. And the whole of the invention would be made public. So we decided that he would be better off pursuing license agreements based on keeping his approach as a trade secret. At least he saved the cost of trying to obtain the patent.

So are you like these clients - willing and wanting to invest in a prior art search to save an order of magnitude more money if the patent would not make sense? Or are you doing so well that you’ll throw money down the drain?

Greg Aharonian of the Internet Patent News Service (patnews@ns1.patenting-art.com) wrote yesterday about a CEO of a reasonably sized technology company who asked of/lamented to his patent attorney about the futility/waste/high-risk of seeking and asserting patents. Here, in a slightly edited form, is that lament.

1. We file a patent application and eventually get it allowed ($5000 to $10000 plus)

2. We sue someone and are subjected to a Markman analysis, which redefines claims and may change the meaning of the words.

• How can we prevent this from having a significant effect during the patent prosecution?
• This process redefines the patent claims to mean something different than what we intended.
• Can we be so specific in the patent specification that removes any latitude from the judge in interpreting the claim language? Define every word in the claim in the specification?

3. Then the claims can be put up for reexamination which seems to disallow most if not all of the claims and takes years to resolve.

• It is outrageous that you go through the process of getting a patent and assume that it is valid and then after years and extreme expense some idiot in the USPTO says “oh sorry but my colleague should not have allowed the patent”!

4. The patent’s validity is then challenged.

• How do we prevent our patents from being declared invalid by some non-scientific judge?

5. How do we file a patent that eliminates these and other problems assuming that infringement is taking place?

• How do we do this at the earliest point in the process?

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These are great questions to discuss with your patent attorney during the patent prosecution process, which is the earliest point in the process where these issues can be forestalled. As a general rule, I suggest instructing him or her to:

• Do a reasonable prior art search (including non-patent prior art). Re-examinations kill patents when new prior art results in an obviousness or anticipation problem.
• Don’t try to be too “cute” with the “patentese”. Writing in straight forward language limits misinterpretation.
• Don’t try to obscure the invention with circumlocutions (see above point). The purpose of the patent specification is to teach; hold up our end of the deal. We’ll live with fact that our competitor understands our invention if it means our patent is strong.
• Write claims that match the breadth of our invention. And write the specification to match the claim wording.

You patent attorney may object; don’t be intimidated or find someone who can be your interface with the patent attorney.

Is your patent attorney unintentionally planting a time-bomb in your patent application? Ever so often in the news these days we hear about the bomb squad being called in, detonating a “suspicious package”, only to declare it was just somebody’s lunch left unattended. So too the strength and validity of your patent is only tested when someone tries to blow it up in court, long after you can make any changes.

Patent attorneys are faced with several conflicting requirements when they draft your patent application. On the one hand, for example, there must be “support” for every part of every claim somewhere in the specification; on the other hand, if there is something in the specification that is not included in a claim, then that element can be deemed “dedicated to the public”.

As another example, a patent specification must teach society the details of your invention in order for you to obtain your temporary “monopoly”, but if your patent never issues, or issues with a limited set of claims, your secrets are now in the public domain.

In response to these conflicting requirements many patent attorneys have adopted certain defensive tactics. One trend I’ve noticed recently is the elimination of any meaningful discussion of how the invention at hand fits into the current state of the art. If you look at patents from a decade ago, they usually started out with introductory material that included the background for the invention (usually a discussion of the limitations of prior patented systems) and an “English-language” description of the invention. After this stage setting, the specification moved into the legalistic, patent-language description of the invention. As a substitute, and to address the “support” requirement, attorneys now essentially parrot back the claims, calling them a “Summary Description” or some such.

I think these patent attorneys are unintentionally building in time bombs.

First, if these paraphrased claims are the only support in the specification for a particular claim then I have to believe that claim will never stand up in court. “Support” for a claim has to mean something that explains or teaches the claim, something which a simple paraphrase cannot do. Attorneys who think they are providing a final defense for an unsupported claims are likely fooling themselves and you in the process.

Second, by not discussing the relative position of the new invention vis-a-vis the prior art you may have made it easier to get your patent allowed… but when push comes to shove - when the bomb squad shows up in the court room - the expensive litigation attorneys will blow your patent up in your face if you “snuck one by” the patent examiner. It’s much better to lay the prior art issues out on the table during examination than to find out years later that you’ve got a whole lot of nothing.

While it is true that an allowed patent has a presumption of validity it is also true that every patent that has been tossed out in court had that same presumed validity; if the patent is protecting a valuable invention, overturning that presumed validity will be worth a lot of legal fees to your infringer/competitor.

Always remember that your goal is (usually) NOT getting a patent. It is getting a competitive advantage in the marketplace. The expense of finding your patent in shreds in the courtroom far exceeds the cost of creating a well crafted and complete patent application.