No one could rightly accuse me of being biased against patents. As a patent prosecutor for over 32 years, most would say I’m the exact opposite. But I do find certain patented inventions that don’t rise to the level of being unobvious under 35 U.S.C. § 103to one of ordinary skill in the art. Such is the patented memorabilia card in Media Technologies Licensing, LLC v. The Upper Deck Company that was deemed obvious on summary judgment, a judgment which was affirmed by a majority of a Federal Circuit panel.
Normally, I find Judge Rader, the heir apparent for Chief Judge of the Federal Circuit, to write cogently and persuasively, even in dissent. Witness his withering blast in In re Bilski where he rightly takes the majority to task for the nonsensical “machine or transformation” test. But unfortunately, like the line from Hamlet, Judge Rader “doth protest too much, methinks” without case law support in his dissent in Media Technologies.
As described by the majority opinion in Media Technologies, U.S. Pat. No. 5,803,501 (the ‘501 patent) and U.S. Pat. No. 6,142,532 (the ‘532 patent) relate to memorabilia articles (e.g., sports trading cards) which “provide an actual piece or portion of an item in combination with a photograph or the like of a famous figure having a relationship to the item.” Interestingly, the four pieces of prior art asserted as rendering the claimed invention obvious weren’t patents, printed publications or sports trading cards, but instead were:
a. a trading card with a picture of Marilyn Monroe and a diamond attached to the card (“Monroe”);
b. a piece of a sheet purportedly slept on by one of the Beatles attached to a copy of a letter on Whittier Hotel stationery declaring authenticity (“Whittier”);
c. a piece of fabric purportedly belonging to a Capuchin Friar named Stephen Eckert attached to paper stock including a picture of the friar (“Eckert”); and
d. a greeting card fashioned to look like a novelty item that ostensibly includes a piece of jeans material belonging to James Dean (“Dean”).
The Federal Circuit majority acknowledged that none of these four pieces (literally) of prior art were a “sports trading card.” Instead, the focus of the obviousness determination became whether one of ordinary skill in the art would have applied these four pieces of prior art to “sports trading cards.” Put differently, were these four pieces of prior art sufficiently analogous that they would be relevant to “sports trading cards?”
The District Court for the Central District of California answered “yes,” granting summary judgment of invalidity of the ‘501 and ‘532 patents based on obviousness to the accused infringer (Upper Deck). On appeal, the patentee (Media Tech) argued that one of ordinary skill in the art would wouldn’t have combined or applied these pieces of prior art for two reasons: (1) an inability to predict that a trading card would convey memorabilia authenticity; and (2) the trading card field contained an infinite number of identified and unpredictable solutions.
Neither of these arguments was persuasive to the Federal Circuit majority. As Media Tech acknowledged, consumer acceptance already came from the credibility associated with the 90-year old trading card industry, and thus not from consumers accepting the authenticity of memorabilia combined with a conventional trading card. Regarding the asserted “infinite number of identified and unpredictable solutions,” the Federal Circuit majority disagreed with Media Tech. Instead, the Federal Circuit majority observed that “[c]ontent solutions are significantly limited by the theme and physical confines of the card, and the finite number of available solutions were predictable.”
Media Tech also asserted objective secondary evidence of “long felt but unsolved need,” “skepticism in the industry,” and “commercial success.” None of this asserted secondary evidence was considered convincing by the Federal Circuit majority. The Federal Circuit majority found Media Tech’s “long felt but unsolved need” argument created the unacceptable paradox of an overbroad “unsolved need” stimulating demand with “an exceedingly narrow definition of success that requires a trading card insert to raise demand to levels achieved by the alleged-infringing products.” The Federal Circuit majority also found no support in the record for the asserted “skepticism in the industry.” Finally, the Federal Circuit majority found the usual fatal flaw in the assertion of “commercial success,” namely no showing of any nexus between the claimed invention and the alleged “commercial success.”
Judge Rader’s dissent voiced outrage at the Federal Circuit majority opinion for “[r]elying on wholly irrelevant prior art and ignoring significant objective indicia of non-obviousness” and for the “substitute[ing] its judgment on patentability for that of a jury.” The latter statement from Judge Rader is startling, as well as puzzling, as the Federal Circuit majority affirmed the obviousness determination of a district court judge on a motion for summary judgment.
Also surprising was Judge Rader’s next statement which got very personal (and accusatory) with the Federal Circuit majority:
Lurking just beneath the surface of this court’s blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts. No doubt, the invention of the transistor or of the polio vaccine came from more scientific fields and contributed more to the welfare of humanity. This court, however, cannot overlook that many individuals invest vast energies, efforts, and earnings to advance these non-technical fields of human endeavor. Those investments deserve the same protection as any other advances.
Perhaps the Federal Circuit majority did dismiss the claimed memorabilia cards as being a “lightweight” invention. But Judge Rader’s dissent (consumed by a lengthy exposition on the history of trading cards) sounds shrill, especially in asserting that the Federal Circuit majority gave only a “cursory review” of the objective secondary evidence for the unobviousness of the claimed memorabilia cards.
Judge Rader’s dissent is admirable for its passion but might have been more persuasive (and less shrill) if it contained at least some citation to case law in support of the points made. Glaringly absent in Judge Rader’s dissent is any case law citation in support of his arguments, including why it is legally relevant that “none of the prior art references are remotely related to the sport trading card industry.” In fact, Judge Rader greatly weakens the persuasiveness of his dissent by failing to directly rebut (or even distinguish) any of the case law cited and relied upon by the Federal Circuit majority.
In a parting shot, Judge Rader pointed another accusatory finger at the Federal Circuit majority for why it gave more weight to Upper Deck’s expert versus Media Tech’s expert: “Is this an indication that this court views this field of art and this invention as unworthy of the full processes of the law?” But Judge Rader might have done better to take a cue from Hamlet, and discuss more case law supporting his factual points, not simply point fingers at the perceived bias in the Federal Circuit majority’s opinion.
*© 2010 Eric W. Guttag
Join the Discussion
23 comments so far.
Patrick AndersonMarch 4, 2010 11:31 am
As I noted to you in our conversation, your criticism regarding the lack of citation is well taken. However, my non-lawyer (i.e. normal) colleagues have all found Rader’s dissent very accessible.
Frankly, I would have appreciated more citation to the record in BOTH opinions. As I noted in my article, the majority offers no support for their conclusion that the Monroe diamond meets the “memorabilia” limitation when viewed in the light most favorable to the non-moving party, and drawing all reasonable inferences in favor of the non-moving party.
Also, Adam Mossoff was a professor of mine, and the (very tough) faculty adviser on my law review paper. His work is certainly well researched, and if he would require the same level of research and citation from counsel that he does from his students, god help us all if he gets on the bench some day…
EGMarch 4, 2010 08:44 am
Now you’ve got me started on what a miserable decision Graham is. There’s another passage in Graham that makes me see “red” which talks about the Patent Clause imposing some constitutional standard for patentability that Congress may not fall below. What a bunch of rhetorical nonsense or as my late uncle would call it, “malarkey.”
That passage makes extensive reference to Jeffersonian quotes which Adam Mossoff (“WHO CARES WHAT THOMAS JEFFERSON THOUGHT ABOUT PATENTS?”) has astutely and correctly observed have unfortunately created the myth of the “Jeffersonian story of patent law.” Jefferson wasn’t even an architect of our Constitution (he in fact despised it) but James Madison definitely was. Madison wrote in Federalist Paper No. 43 the only exposition on what the Patent and Copyright Clause means, and it’s an “eye-opener” for how wrong SCOTUS gets the “story” about what this Clause means in Graham. BTW, Mossoff’s article is in the 2007 Cornell Law Review, Volume 92 starting at page 953. Unilike SCOTUS in Graham, Mossoff did his “historical homework.”
EGMarch 4, 2010 08:30 am
You make some very astute observations about Media Technologies, and especially Rader’s dissent. I’m trying hard to avod the “lightweight” art trap that Rader may well be correct that the majority fell into. But this memorabilia card subject matter has more the “look and feel” of something that would be covered by a design patent or even copyright. Going back to the ‘531 patent, what is meant by “authentic” is something like a minature bat in the case of a baseball card. So your view about the relevancy of the Marilyn Monroe card with the “diamond” to these claimed memorabilia cards makes sense to me. Again, thanks for the comment.
BenjieMarch 3, 2010 08:13 pm
The first thought that popped into my head in reviewing this decision was an argument that the sports trading card patent was invalid because the “sports trading card” element is non-functional descriptive material in light of the cited prior art. It is basically a card depicting a famous person with a piece of memorabilia attached. Whether it is a sports person, an actor, an actress, a rock star, or an historical figure, the functional aspect is the attachment of the memorabilia to the article identifying the famous person it belongs to. It’s like prior art of a website search engine that indexes auto parts wickets. You can’t then get a subsequent patent for a website search engine that indexes flower arrangement wickets or appliance part wickets in the same manner as the auto part wicket indexing search engine. For the purpose of the patent, the type of wicket that is indexed is immaterial. I’m surprised that Judge Rader found the memorabilia-attached sports trading card patentably distinct from the memorabilia-attached Marilyn Monroe trading card simply because Marilyn Monroe didn’t play sports. He also places too much emphasis on commercial success. There is a considerable difference between a patentable idea and a marketable idea, and, in this case, the commercial success is not enough to overcome the obviousness rejection.
His opinion in the dissent seems to follow his dissent in Bilski in defending the patent rights of the non-technological arts. I applauded his dissent in Bilski, because I feel that the purpose of the patent system is to spur/reward innovation, regardless of whether it is technology based. I have used Judge Rader’s dissent in responding to 101 rejections of business method applications. They were unpersuasive with the Examiners, which was not unexpected, but the purpose was to set up the arguments for appeal, expecting Bilski to be overturned by the Supreme Court. However, I do think that Judge Rader did miss the forest for the trees in this case.
darrylMarch 3, 2010 06:54 pm
Haha! My apologies.
step backMarch 3, 2010 05:45 pm
Graham v. Deere was very conservative.
All it did was mouth some of the obvious necessary steps that arise from the language of 35 USC 103 itself. The only thing not in 103 are the secondary considerations.
step backMarch 3, 2010 05:43 pm
“KSR took us several steps back. ”
Please don’t mix my good name in same breath with mention of KSR 😉
EGMarch 3, 2010 03:59 pm
You’re most welcome adn thanks for the additional comment. I can remember when patent attorneys used to rave about Graham v. John Deere. I couldn’t understand why as SCOTUS still deemed the invention (an agricultural drill) obvious over the prior art. I guess Graham was a change of view from the A&P case and others that seemed to suggest “synergy” was required in a “combination of old elements” (which as the late Chief Judge Markey would tell you is true of any invention, including a new chemical element generated by an atom smasher).
The obviousness standard described in Graham is so fuzzy that unless you’ve got the luxury of a full blown trial (which a non-legally trained patent examiner certainly doesn’t have), as well as the wisdom of Solomon, you can’t even do the”famous” factual inquiries justice, much less render “Solomon-like” judgment of what is, or is not, obvious.
As you suggest, KSR Interantional may be a step backward and is certainly not a step forward. After 40 years, SCOTUS did notthing significant to clarify the fuzziness and “mystery” of Graham. All I can say based on KSR Interantional is that claim 4 of the particular patent was deemed obvious. How to apply that reasoning to any other case is a “jurisprudential trade secret” which SCOTUS continues to keep away from us “mere mortals.”
darrylMarch 3, 2010 03:20 pm
No argument with you on KSR. Like “negligence,” “good cause,” “reasonableness” and other fuzzy concepts, obviousness inherently involves some degree of subjectiveness. But rather than clarify the standard, KSR took us several steps back.
Thanks again for a thought-provoking article.
EGMarch 3, 2010 03:20 pm
Thanks for the perspective on Gluck. What you say adds quite a bit of texture (not neessarily saavory) to the story here.
My all time “poster child” of bad Supreme Court decisions is Kelo v. City of New London. The “takings clause” in our 5th Amendment was intended as a brake on government, but the liberal wing of SCOTUS turned it on its head as a license for private industry to grab private citizens property for private enterprise, such as a shopping mall or in the Kelo case, a research center (I believe) for Pfizer. There are even cases where one compeitor evicted another competitor from a choice location using this ploy. What’s ironic is that the City of New London who pushed this nonsense lost about $78 million when Pfizer later didn’t come. Fortunately for us in Ohio, the Ohio Supreme Court took a dim (and opposite) view of Kelo.
Again, thanks for the comment.
Bob BrillMarch 3, 2010 01:58 pm
The current SCOTUS gets a lot wrong. The Most recent decision involving political spending was just atrocious and while I don’t believe the founding fathers got it all correct, even as businessmen I don’t think they would have agreed with the court on this one.
Getting back to my original argument, Gluck once paid me to speak for him at a convention about one of his “inventions” which he had a patent for. The product died because it was a crappy idea. Then again this is Adrian Gluck. LIke I said a “patent freak” who will patent anything anyone else came up with if it didn’t already have a patent and will hope someone will infringe on “his” patent. This is exactly what happened in this case.
I have testified against Upper Deck in another patent infringement case and as much as I see this company does wrong it got it right in the Gluck case and settled in the case where I testified. As for Gluck he really got what he deserved in this one. He stole an idea from a man of integrity and got a patent hoping everyone would “infringe.” Several companies paid him for the rights to use his “patent” of game used insert cards, Topps, among them. They got taken by Gluck in those instances and he got his money, only to lose here.
EGMarch 3, 2010 10:20 am
Thanks for your comments. If nothing else, I’m glad my article has at least stirred up some debate on what appears to be the disconnect (some have called it “dysfunction”) in the Federal Circuit on how to view the PHOSITA as it relates to the particular art involved. I’m also not going to say the majority’s opinion isn’t vulnerable to attack (it is). I just don’t think Judge Rader did an effective of job in his dissent to point out the legal (not just factual) problems with the majority affirming the district court grant of summary judgment.
If nothing else, Judge Rader could have gone back to the second sentence in 35 USC 103: “Patentability shall not be negatived by the manner in which the invention was made.” This particular sentence should be cited more by those in the Federal Circuit who feel the same bias as Rader. This is also not the first time a Federal Circuit has expressed what appears to be bias against perceived “lightweight” arts. Witness what happened in Leapfrog Enterprises v. Fisher-Price (which came soon after KSR International) where the Federal Circuit panel treated the claimed invention as merely applying modern electronics to an otherwise “old” learning device.
Unfortunately, Rader’s comment about the perceived bias by the majority against “lightweight” arts is somewhat the pot calling the kettle black. What I’m referring to is Rader’s mischaracterization of a key reference in the In re Kubin case that likely led him down the wrong path to finding a “heavyweight” biotech invention obvious. I’m not alone in this view about Rader’s flawed opinion in Kubin. Kevin Noonan on Patent Docs has said as much, and Kevin knows far more about the art in Kubin than either I or Rader.
Understand, 35 USC 103 basically says that all technologies should be judged for obviousness equally by the relevant PHOSITA for that art. But to put it bluntly, in my opinion, the major culprit here is SCOTUS and its absolutely amorphous ruling (and statements) in KSR International. May be the Federal Circuit applied the TSM test too rigidly in KSR International, but what SCOTUS put in its place is completely subjectively “rhetorical nonsense” that no one, be it the Federal Circuit or a USPTO examiner can apply consistently and any degree of objectivity to determine the obviousness of a claimed invention, whatever art it relates to. In fact, SCOTUS completely ignores the implications of the second sentence of 35 USC 103. Witness its oxymoronic statements in KSR International (based on equally nonsensical SCOTUS cases from the 1970’s) about “the improbability of finding patentability in a combination of old elements.”
As I’ve stated to Gene, the Federal Circuit has been going down a very strange and weaving path in the last 3 or so years, especially on obviousness determinations. SCOTUS’ inane, almost pathological abuse, of the Federal Circuit recently isn’t helping matters. I’ll be blunt again and state categorically that Congress created the Federal Circuit in 1982 with the intention that the Federal Circuit be the primary arbiter of patent law jurisprudence, not SCOTUS. (If you sense I’ve got a jaded view of SCOTUS, you’re correct and its not just in the patent law area.) If the Federal Circuit isn’t the true keeper of consistent patent law jurisprudence, we’re in for some vey rough days ahead.
darrylMarch 3, 2010 08:47 am
I enjoyed your article and appreciate your views. I had a different take on Rader’s comment that the majority was “substitute[ing] its judgment on patentability for that of a jury.” I read this statement as another way of saying essentially what you suggest Rader should have said, namely that there were material questions of fact that preclude summary judgment. If there are no material questions of fact in dispute, the court (whether disrtrict or CAFC) is not substituting its judgment for that of a jury. It is simply recognizing the absence of a factual dispute. But where material facts exist and the court nevertheless enters summary judgment (or in the case of the CAFC affirms a summary judgment) it is essentially substituting its judgment for that of a jury. Notice Rader said “a” jury, not “the” jury.
One other point. I generally agree with you that positions taken by litigants and judges should be supported by legal authority and not personal views. But I think this situation is somewhat unique. If Rader genuinely feels that certain members of the court are biased against less technical inventions, what case or statute can he cite to make that point? He could argue that the majority is wrong in this specific situation (which he did) but that does not address what he apparently sees as the root cause for the majority’s error: a bias against less technical inventions. Right or wrong I think it is absolutely appropriate for judges to make such observations. Litigants certainly can’t.
step backMarch 3, 2010 04:55 am
PHOSIAAAA (person having ordinary skill in any and all arts)?
Other name for PHOSIAAAA is politician.
Only a PHOSIAAAA can believe the Earth is flat, hot, crowded and full of simpleton voters waiting to be pandered to by telling them that “innovation” will save the day but first we must close down the US Patent Office by means of fair and coalition balanced deform.
Bob BrillMarch 3, 2010 12:52 am
What you have all missed is the following point which was probably not even brought before the court. Adrian Gluck, who is probably the only man to lose money as a board member of the Upper Deck Company in previous years, did not invent the “game used” concept he patented. It was actually invented in 1992 by Victor Shaffer of Press Pass, who I have commonly referred to in my columns as “The father of game used.” He was the first to place such items as pieces of lug nuts and fire suits from racing trading cards and eventually hoods and the most successful was “burning rubber” inserts. Shaffer inserted pieces of race used tires onto cards. Gluck is a patent freak, getting a patent for anything he can get his hands on which he steals from others who wouldn’t even think it was patentable. I’ve know Gluck and Shaffer both for years as well as Richard McWilliam of Upper Deck. Shaffer is the only one with integrity, the other two are idiots who would cheat their mothers if it meant there was a buck attached to it. Unfortunately these are items the court could not consider.
Disability InsuranceMarch 3, 2010 12:05 am
I was totally in the same boat as Gene, but I think that you’re explanation is brilliant. Thanks a ton for the post, and the follow up. Keep up the good work,
Noise above LawMarch 2, 2010 10:05 pm
Interested in the view of what PHOSITA means post KSR, wherein any art is applicable, if it addresses the problem under consideration (commen sense to expand the “art” to encompass any solution from any other art that happens to work).
In addition to the traditional PHOSITA and PHASITACS, do we also have PHOSIAAAA (person having ordinary skill in any and all arts)?
EGMarch 2, 2010 04:49 pm
Ah, the elustive PHOSITA, or if you accept SCOTUS’s nonsensical “common sense” view, the PHOSITACS (Professor Janice Mueller terrm for it not mine). Defining who that PHOSITA is gets glossed over in patent prosecution, and is too little discussed in most litigated cases.
The problem with the PHOSITA is that he/she varies depending on what art you’re talking about. The trouble with the memorabilia cards in Media Technologies is that this subject matter doesn’t fall into one of the normal science/engineering categories making that PHOSITA even more “mysterious.” And trying to define who that PHOSITA is a factual issue that makes a grant of summary judgment probematical. Good thought, SB.
step backMarch 2, 2010 04:20 pm
I personally did not take this case too seriously.
However, on reading your observations, you may be on to something.
Maybe the real question of material fact is that “the person having ordinary skill” in this particular art (trading cards?) has not been factually identified. Exactly who is pHOSITA and how did he/she think at the relevant time? Interesting.
EGMarch 2, 2010 01:35 pm
Gene and JV,
Your points are well taken. I too am very concerned with the fact that the summary judgment trigger is pulled far too often now. Reaching a conclusion of obviousness on a summary judgment motion should be the exception (not the rule) because it is “factually intense.” Determinations of inequitable conduct are even more factually intense, and should be even rarer the grant of a summary judgment motion.
My primary beef with Rader in Media Technologies is he could have at least built some case law support for his positions but didn’t. In this regard, Judge Newman does a much better job when she dissents by underpining her points with case law, and more importantly, challenging the majority’s reliance on its particular case law. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. is good example where Newman did her case law homework to make points which the majority never responded.
In fact, that’s the real weakness of Rader’s dissent: he doesn’t get to the key problem with the majority opinion (genuine issues of material fact in dispute making summary judgment inappropriate) until the last 2 pages of his dissent. Instead, as I also noted above, he spends an inordinate amount of his dissent up front on the history of trading cards using a style that doesn’t even make it clear this comes from the record . That might be considered by one of us to be very poor advocacy. By underpinning his dissent early with case law support that summary judgment was improperly granted, Rader could have built a much more forceful argument that the facts he notes scream out “there are geninue issues of fact in dispute that make it legally improper to grant summary judgment.”
One other statement that I noted above that I find very troublesome is where Judge Rader says that the majority was “substitut[ing] its judgment on patentability for that of a jury.” That’s factually incorrect for reasons I noted above in my article. What he should have said is that the grant of summary judgment denied the patentee the right right to trial on the merits of obviousness based on disputed issues of fact, which made summary judgment inappropriate. That he makes such a factually incorrect statement doesn’t help his cause, and again makes his dissent come across as very shrill and personal attack on the majority.
Again, my point is that, if you’re going to write a dissent, underpin your factual contentions with case law support and/or challenge or distinguish the case law relied upon by the majority, and keep the personal attacks out. In my opinion, Rader’s dissent in Media Technologies fails on both these counts.
VisitorMarch 2, 2010 01:20 pm
Thank you for an informative article. I too was originally startled by the dissent’s comment that the court “substitutes its judgment . . . for that of a jury.” However, I think that what he meant was that the court erroneously affirmed summary judgment rather than allowing a jury to resolve the factual issues underlying the obviousness inquiry.
Just visitingMarch 2, 2010 12:06 pm
What we don’t know is what goes on behind closed doors between the judges. What may have ticked Rader off is some comment, made while the Judges conferred, to the effect that “this is just a trading card … this isn’t a real invention” or a statement like “I don’t care what kind of indicia of non-obviousness they present … come on … anybody could have come up with this idea.”
The reason why most of us like Rader is that he doesn’t appear to be a “I know obviousness when I see it” type of judge. He thinks evidence (both for and against) shouldn’t be given short shrift, and that due process shouldn’t be trampled to get the desired outcome.
Too many judges (and Examiners) come up with their conclusion first and then try put together their justification afterwards.
Also, I’m not a big fan of obviousness by summary judgement.
Gene QuinnMarch 2, 2010 11:48 am
I normally agree with what you write, and I do understand where you are coming from on this, but I think I agree with Judge Rader. In a post-KSR world secondary considerations are really the only thing that will allow for patents to be granted, at least if KSR is interpreted literally.
I think I will need to work out my thoughts a little more and write from my perspective. Great article though!