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.

In a seeming paradox, in the magic world of patent filings it is possible to “enable” your invention - that is, explain to someone of skill in your field how to make or use your invention - and yet not fully meet the written description requirement for obtaining a patent (or at least patent coverage for all aspects of your invention). Orlando Lopez, a partner at Burns & Levinson, was kind enough to provide an example where this was an issue:

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” [**15] In re DiLeone, 58 C.C.P.A. 925, 436 F.2d 1404, 1405, 168 U.S.P.Q. (BNA) 592, 593 (1971). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.”

Admittedly it is rarely the case, but it certainly shows an internal, logical inconsistancy. It seems to me, in this case, that compounds B and C, being enabled for one skilled in the art, should at least be covered by the doctrine of equivalents, assuming the patent was covering a process for making A.

Similarly, I would expect that a separate patent application for compounds B and C, made by this process, would be tossed out as either anticipated or obvious in light of the patent in this case.

In the same vein, had the enabling description for making compound A in this patent been presented in a journal more than a year before filing, would compounds B and C run into the prior disclosure bar? Seems to me it all needs to hang together.

And it certainly will depend on what the patent specification in question is actually trying to cover. If I come up with a new paint in which oxidized metallic flakes provide some new and beneficial property and enable the process of incorporating the flakes uniformly, but I only describe red paint based on iron (known to look red), should my patent bar someone from using oxidized copper flakes to make green paint? I would think/hope it would!

[This example begs another question - could someone else get a patent on the green paint that I enabled but didn't describe? Admittedly it would be dominated by my patent, but it would bar me from making green paint.]

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.

Many colleges and universities are back in session now so it only seems fitting to talk about the lesson that Blackboard, Inc. learned last month. Blackboard provides internet/intranet based education-support systems. For example, Universities use Blackboard for professors to post course material, collect assignments and report grades. Recently they sued Desire2Learn for patent infringement over the different roles a user can have with a single login. What Blackboard learned was that they had not fulfilled the teaching role required of them to have a valid patent claim.

If you enroll in “IP101″ at the school of patenting, one of the first things you’ll learn is that a patent is supposed to be a teaching document. I’ve always advocated that you think of the patent system like a contract in which society and the inventor exchange quid pro quo. In return for controlling the use and sale of the invention described in the claims, you, the inventor, must teach society the details of your invention in the specification.

In the case of Blackboard, they claimed, among other items:

“…a server computer… comprising:
…
means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course;
…

The problem for them was their teaching of the “means” for assigning a level of access etc. Both in the specification and in testimony in court, Blackboard essentially said that any hardware or software that assigns levels of access is the “structure” for providing the function. The Court has ruled before, and did so again here, that making a general reference to, say, a general purpose computer with appropriate programming does not provide an adequate description of how to make the invention.

The court noted:

“[t]he point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming.” … Without so limiting a claim, we noted, “the patentee has not paid the price but is attempting to claim in functional terms unbounded by any reference to structure in the specification.”

Teaching how to make or use your invention in definite terms is always a requirement, but it is particularly true for computer based inventions. Blackboard argued that putting together their “access control manager” was well known to someone of ordinary skill in the art, and so it is, but the court pointed out that the question was not one of enablement but of definiteness: “The question before [the court] is whether the specification contains a sufficiently precise description of the “corresponding structure” to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.”

The lesson here is to take your role as teacher seriously and explain the details of your invention carefully to avoid becoming a teacher wearing an invalidity dunce cap.