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.

If you’ve tried to get a patent recently you know you are sure to get an obviousness objection. Greg Aharonian, a patent gadfly who publishes a newsletter (subscribe by email to: Internet Patent News Service) has argued that since Congress declined to define what “obvious” means the law is so vague as to be unconstitutional. Further, he argues, any attempt to define it, including the Supreme Court “KSR” ruling, is legislating from the bench by judges who have no expertise to define what obviousness means in a techno/patent sense. Greg is backing up his position with a planned Constitutional legal challenge.

While my clients share the obviousness-objection problem with Greg I have a fundamental disagreement with him. What Greg perceives as vagueness, I perceive as inherent subjectiveness. When legislating about a subjective property Congress can do no better at providing an objectively measurable definition than you, me or the Supreme Court. Instead, Congress passes a law that indicates a desire and it is left to the Court to interpret what that intent translates to in specific situations.

Greg believes the Court should have refused to rule on obviousness issues and wants to sue to make that happen; I believe that the proper check and balance, if one is needed, comes from the Congress, which can pass an amended law effectively telling the Supreme Court that their interpretation is on the wrong track.

Greg believes there can be a measure of obviousness based on how “close” one invention is to another. This attempt to quantify obviousness is doomed to failure. It is like saying a partly bare breast is okay if, say, only the top is exposed, or if no part of the nipple is exposed (hence pasties for strippers).

The whole “obviousness” question boils down to the question “Is the described system worthy of being given a limited time of exclusive right to earn money from, in exchange for teaching other practitioners how to build the system?” It is my sense, and I think the sense of most other people, that this test of worthiness can be paraphrased as “Given a statement of the problem to be solved, would a majority of people in the field come up with the same solution?” If we say yes, then the system is essentially not an “invention” - it’s just a design solution. If the answer is no we are saying that we believe there was something special going on inside the inventor’s head and it deserves a patent.

Taking an example from my technical field, consider lens design. With today’s lens design programs an ordinarily skilled engineer can develop dozens of lens designs that meet a given set of performance requirements in a matter of hours. Yet, a highly skilled engineer will intuitively understand how to tweak the software to greatly improve the final result in accordance to some figure of merit. The actually differences in the lens elements may be small but the result in the former case are design solutions while in the latter case it is an invention.

What do you think? Can an object test for “obviousness” be defined, at least one that will meaningfully allow the PTO to sort the wheat from the chaff? Comment with your thoughts.

In the last post I explained how a single prior art reference could describe all the elements in your invention but still not “anticipate” it, although it might make your invention obvious. In a recent court ruling it now seems the converse might also be possible - that an invention ruled non-obvious given the totality of the prior art might still be anticipated by a single prior art reference!

Just to make the terminology clear:

Anticipated = completely described in a single reference = not novel;
Obvious = insubstantively different from an existing invention or
                 a non-inventive combination of existing inventions.

In the case of Cohesive Technologies v. Waters, Waters was sued for infringing several patents. As part of its defense Waters alleged that the asserted claims were both anticipated (not novel) and obvious (trivially different). The trial court, in an unusual move…

…concluded that “the contentions that the defendant is making [are] best captured by obviousness,” rather than anticipation [and] commented that, “[u]nder a strict reading, [it did not] see the proof of anticipation in any of the prior art publications,” that Waters’s anticipation case was “iffy,” and that its “gut response is that none of [the prior art references] are winners.”

Moreover, the district court commented that declining to charge on anticipation would not cause “any real harm to the defendant,” and would not “make very much difference because it comes in in obviousness”.

The district court expressly stated that it did not understand, as a matter of “strategic judgment,” why a defendant “would want [a] charge on anticipation when they get one on obviousness.”

Acting on it’s opinion, the district court did not let the jury address the anticipation defense and instead provided a directed verdict against Waters. On appeal to the CAFC Waters won a reversal on this matter. In its written opinion the CAFC really wanted to make two legal points, neither of which are really likely to help Waters.

First, the CAFC wanted to correct the trend to conflate novelty and obviousness in so far as they apply to single prior art references. As exemplified by the district court’s thinking, many people feel that “anticipation…comes in in obviousness”. And it’s certainly true that an anticipating prior art reference will almost always support an obviousness defense (if the invention is not new/novel surely it’s at most trivially different). The CAFC, however, wanted to remind the district courts that novelty and obviousness are two independent sections of the patent law are should be treated as such (”We cannot conclude…that the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.”)

Second, the CAFC wanted to chastise the district court for replacing Waters’ preferred legal strategy with the court’s preference. As the CAFC said:

A court cannot refuse to submit the issue of anticipation to the jury simply because the accused infringer has also asserted an obviousness defense. It is for the litigants—not the court—to make the strategic decision as to whether to assert one, both, or neither of these defenses in a jury trial.

As a practical matter the CAFC’s ruling that a non-obvious claim might be anticipated by a prior art reference will have little impact on 99+% of all cases. The only situation the CAFC could envision was when the prior art reference “inherently” anticipates the invention in question. [Inherent anticipation is when a reference does describe the invention but in an indirect manner.] An anticipated claim can be non-obvious when, unlike Sherlock Homes with the perloined letter, a person of ordinary skill in the art does not recognize the inherently anticipated invention in the prior art, even though it’s there.

As an indication of how arcane this circumstance is, the CAFC turned to a rather odd example:

Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.

I’m not sure what it says about the court that we need to call in Merlin to find anticipation, but it does suggest that the real point of the CAFC’s decision was to ensure that every defendent is allowed to set his own legal strategy and to chastise a legally sloppy district court.

While patent examiners have many tools with which to crush your hopes for a patent, their two most used grounds for rejection are anticipation and obviousness. It’s usually the case that anticipation means that all the elements of your claim are included in a single prior art reference and obviousness means that the elements of your claim are in more than one reference (but it’s “obvious” to merge those references). But always keeping us on our toes, the court of appeals turned that rule-of-thumb on its head.

In the case of Net MoneyIN v. Verisign, the CAFC ruled that a single prior patent that DID included all of NMI’s claim elements DID NOT anticipate NMI’s claim. What the CAFC said was that the prior patent, while including all the elements somewhere in the documents, never described a system that used all the elements in NMI invention in the combination that NMI did.

Another way to think about what this ruling means is that, not surprisingly, to anticipate your invention the prior art reference must actually describe your invention, not just somewhere in the document describe all the parts of your invention. Think of the many different dishes that can be cooked using the same basic ingredients list.

In the particular prior art reference in this case it appears that one embodiment used one subset of NMI’s elements and other embodiments used another subset, but nowhere was NMI’s invention described as a single entity.

But don’t send congratulations to NMI quite yet. With all the elements of their invention included in one prior patent they should be anticipating a new challenge from Verisign that their patent is invalid on the basis of obviousness.