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.

Dennis Crouch, a associate professor of law at University of Missouri has compiled a table of the time to first office action for a variety of technology centers. That is, how long does it take the patent office to get back to you with their (no doubt obviousness-based) rejection of most or all of your claims.

For the technology centers he lists the time ranges from a low of 1.7 years for Manufacturing Devices to a high of 3.7 yearsfor a couple of un-important technologies - fuel cells, batteries, and solar. Now remember, this is the time between filing and your first office action. It can easily take another year before your patent issues and during all that time you have been unable to enforce your patent rights. Heck, you didn’t even know if you were going to have any patent rights.

Mind you, if you filed a provisional application first, then your patent application has been public after 0.5 years from the filing date of the regular application, so you fuel cell companies out there have had your proprietary information hanging around the street, so to speak, for a little over 3 years and counting.

I always tell my clients that the patent system is supposed to be a deal between the inventor and society. You get limited time control over your invention in exchange for teaching the rest of us all those juicy details. This bargain breaks down, I think, when your teaching is published 3 or 4 years before you know that you have control over your invention, if you ever do get that control. During that time your competitors have had the chance to build on your proprietary information to your disadvantage.

It makes one wonder if it’s still worthwhile applying for a patent in a fast moving technology area.

In April I mentioned that there was a constitutional challenge facing the PTO; that many of the Board of Patent Appeals and Interferences decisions might be nullified because many of the administrative judges sitting on that panel were, arguably, appointed unconstitutionally.

Apparently Congress and the President think they can wave a magic wand and retroactively make unconstitutional appointments okay. Wilmer-Hale reports:

On August 12, 2008, President Bush signed into law a statute intended to fix a perceived constitutional flaw in a 1999 statute governing the appointment of administrative law judges… Both the 2008 statutory fix and the 1999 statute raise constitutional questions of potential significance to those relying on BPAI or TTAB decisions issued over the past several years.

Wilmer-Hale further explains that the statue has 3 major provisions: first, giving the Secretary of Commerce the authority to appoint the administrative judges; second, giving the S of C the right to retroactively appoint a judge who had been appointed [arguably unconstitutionally] by the Director of the USPTO, effective on the date of the Director’s action - essentially waving a magic wand to make the unconstitutional appointments suddenly constitutional AND the decisions of the past 10 years valid; third, adding explicitly that the judges were de facto acting as judges and therefore their rulings can be accepted as valid (essentially because everyone at the time accepted the rulings as valid and it would be chaotic to go back and retry every case, given that the results would be the same, just with a now constitutionally appointed judge).

Don’t you wish you could solve your problems so easily! BTW, the 2nd and 3rd major provisions of this statute will probably also be challenged, so the PTO has only won this round.

Marcia Coyle of The National Law Journal is reporting that a new problem is brewing at the USPTO. It is possible that nearly 2/3 of the judges on the Board of Patent Appeals and Interferences - your first judicial appeal when an obstinant examiner rejects all your claims - may have been appointed unconstitutionally! If the Supreme Court so rules, then 8 years worth of rulings may be called into question.

Without going into details, the law defining the appointment process for these judges changed in 2000 and an analysis by Prof John Duffy (see http://www.patentlyo.com/lawjournal/files/Duffy.BPAI.pdf) suggests that the law is unconstitutional.

Of course, at this point we only know that a petition has been filed at the Supreme Court - let’s wait to get excited until they agree to hear the case.