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.

Like a vampire rising again from the grave, “business method” patents don’t want to go away without a fight.  It was just a year ago that the Court of Appeals [CAFC] ruled that Bilski’s “business method” for hedging commodities was not patentable subject matter. As much as I wished that the matter was dead, there are too many business method zombies, sucking the blood out of the patent system with their “inventions”, to let it go.

Last week the Supreme Court heard arguments in the matter of “Bilski” and it seemed to observers of the Court that Bilski may finally be dead but that the contorted CAFC reasoning may be thrown out as well. As I wrote last November (IP Directions 11/2/08), the very basis of the US patent system is the Constitutional phrase: “Congress shall have power … to promote the progress of science and useful arts…” Frankly, I doubt the founders would consider hedging risk in commodity trading part of science and the useful arts.

But the CAFC didn’t want to use such a subjective criterion in their decisions, so what is the test of process patentability? According to the Bilski decision, there is a two-part “machine-or-transformation test” for eligibility of process claims. First, eligibility may be demonstrated if a claim “is tied to a particular machine or apparatus.” Second, and alternatively, eligibility may be shown if a claim “transforms a particular article into a different state or thing.” Also note that the “tie” to a machine or apparatus must be a meaningful limitation in the claim.

I would have preferred to see methods of performing business/financial operations per se be declared unpatentable as not being part of science or the “useful arts” and damn the subjectivity torpedoes. As with “obviousness”, the courts will never produce a objective definition of an inherently subjective issue, so why try. If a patent applicant feels the patent office has inappropriately reject his or her application over a subjective issue, well, that’s why we pay the justices the big bucks - to apply their “wisdom”.

How about you - any blood-sucking business methods in your patent plans?

While there are many problems with our current patent system, one area that I would like changed is what types of processes qualify as patentable subject matter. As we know, the patentability of software and business methods is fraught with controversy these days. I’d like to throw what I call end-user methods into the mix as well.

My inclination is to look at the purported purpose of the patent system – to reward inventors who help improve society by sharing their inventions – and see which types of processes/methods achieve that purpose. Although it’s not important in this “if I were King” exercise, I like to think this approach harkens back to the Constitutional underpinnings of our patent system, where it is written that Congress can reward inventors for the purpose of “promot[ing] the progress of science and the useful arts”.

Note that the Constitution doesn’t say anything about promoting better business decisions or controlling the actions of individuals who can, with their own heads and hands, engage in an activity.
So how do software, business methods, and end-user methods fit in?

Software: When held up to the template of “Science and the useful arts” clearly some software qualifies and some does not, just as some hardware is patentable and some is not. Thus, I put software into the patentable subject matter category and leave to the examination process what happens to individual applications.

Business Methods: To me, the idea of a “business method” patent is an abhorrence. Transacting business better, faster, cheaper, or whatever is not beneficial to society; it only helps the businessperson make more money. One-click checkout, calculating hedge fund portfolio mixes, etc. are not science nor are they part of the “useful arts” (again, keeping in mind that I am king).  Note that the question isn’t “is this a process”, “is it implemented on a machine”, or “does it transform something”? No, the question is what is the purpose of the process/method; if the purpose is to transact business then it’s not patentable in my book.

End-User Methods: As I’ve discussed in an earlier blog, end-user methods are, generally, processes that don’t “make” anything and that are often performed by the person gaining the benefit of the performance (viz., the end user).  Many of the most laughable patents of recent years are for end-user methods: the method of exercising a cat with a laser pointer and the method of swinging on a swing come to mind.

While those examples are laughable, other end-user method patents cover more serious processes, such as medical procedures. Often these latter patents are a back door way for companies to secure markets for a medical device that otherwise did not qualify for a patent.

There is one more set of “method” claims that I would severely limit. These are methods of doing X, where X is really just using an apparatus, often already claimed in the patent. These method claims are, like the medical procedure patents mentioned above, nothing more than an attempt to provide patent protection for an apparatus that might not be otherwise protected.

Key tip-off words in these claims are “providing” (a such and such piece of equipment), “collecting/recording” (data or information), and “processing” (the data). Steps such as these in a method claim are simply ways to pad out what is really intended: “a method of doing X comprising the step of operating the apparatus described in the patent”. Since that one-step method claim would never be allowed, patent attorneys game the system by breaking the operation of the apparatus down into insignificant steps. They might as well include plugging it in.

That’s what I would do if I were King. How about you?

In Oz, everyone except Dorothy ignored the man behind the curtain. In your patent, ignoring the means by which you implement various claimed functions can leave you without a heart, a brain, courage … or a valid patent. To have a valid patent you must, in effect, prove that you have actually developed a working invention.

“Means-plus-function” [MPF] claims are attractive to many inventors because they have a broader scope, at least in the sense that they cover the function and not the specific hardware implementation for performing that function:”control means for automatically operating said valves”. But when you include MPF claims you must take care that you describe in your specification some structure, some mechanism, some explicit embodiment by which the claimed function is performed. If you don’t include this structure your claims may be deemed invalid for indefiniteness. The risk for many of us is being too close to the technology. What is a given for us may be inadequate to the patent legal process.

In a recent CAFC appeal, Biomedino LLC tried to defend their MPF claim based on a box labeled “Control” in a figure and the statement in the specification that ”[the process] may be controlled automatically by known differential pressure, valving and control equipment”. In the Court’s mind this case begged the question of whether

“…sufficient corresponding structure [is] disclosed when the specification simply recites that a claimed function can be performed by known methods or using known equipment where prior art of record and the testimony of experts suggests that known methods and equipment exists?” [emphasis added]

Answering this question in the negative, the Court pointed out that the law requires the specification to actually disclose at least one way for the function to be accomplished and not leave it to the assumed knowledge of the archetypal person-of-skill-in-the-art.

Many inventors fall into this trap these days when it seems every device is controlled by embedded processors. While software can certainly be the means by which a function is performed, simply referring to “software” is not an adequate description of how you are performing a given function. Yes, it’s probably true that someone could write the software to perform the function, but unless you give more details of what’s inside the software “box” you are likely to find your patent invalidated.

Groucho Marx said, “If we had some eggs we could have eggs and ham, if we had some ham.” The CAFC said, “If you have some functions you can have some means-plus-function claims, if you actually have some means”.