Media Technologies Licensing, LLC v. Upper Deck Co., 596 F.3d 1334 (Fed. Cir. 2010) (MAYER & Lourie; RADER, dissenting)
MAJOR ISSUES: obviousness; non-technical inventions; secondary considerations; objective evidence; commercial success; lack of nexus; long-felt need
COMMENT: This decision featured a clash between former Chief Judge Mayer and current Chief Judge Rader of the Federal Circuit. At issue was the obviousness patentability standard as applied to a “low technology” invention. Lovers of trivia and memorabilia should enjoy reading this case. Prominent among the prior art is a Marilyn Monroe trading card!
1. SPORTS TRADING CARD WITH ACTUAL PIECE OF MEMORABILIA ITEM RELATING TO CELEBRITY ATTACHED. Two patents concerned a “memorabilia” sports trading card with an actual piece of an item in combination with a photograph of the famous figure depicted on the card. U.S. Pat. No. 5,803,501; U.S. Pat. No. 6,142,532. USPatNo5803501 USPatNo6142532 The Federal Circuit panel majority held that a district court correctly granted accused infringers summary judgment that the patents’ claims were invalid as obvious in view of four prior art products, which were not sports-related items. The infringers met their burden of showing that “it would have been obvious to one skilled in the art to attach a piece of a sports-related item instead of those items attached in the prior art references.”
2. PRIOR ART: MARIYLN MONROE AND FOUR OTHERS. The four products were (i) a trading card with a celebrity (Marilyn Monroe) and an entire related item (a diamond), and (ii) three other non-trading card celebrity items with pieces of memorabilia (authentic and nonauthentic) attached.
3. CARD DESIGNERS LOOK TO OTHER INDUSTRIES. The accused infringers presented evidence that trading card designers routinely looked to “other card industries and could well have “sought, considered, and acted on” the four items “to develop `crossover applications’ for trading cards.”
4. PATENT OWNER: TWO RESPONSES. The patent owner posed two responses.
a. “INABILITY TO PREDICT” THAT COMBINATION WOULD CONVEY AUTHENTICITY? AUTHENTICITY FROM INDUSTRY CREDIBILITY. The patent owner argued that a skilled person would not have combined the references or applied them to sports cards because of “an inability to predict that a trading card would convey memorabilia authenticity.” The argument lacked merit. Consumer acceptance came from the established trading card industry’s credibility.
b. INFINITE POTENTIAL SOLUTIONS? LIMITED CONTENT SOLUTIONS. The patent owner argued that “the trading card field containing an infinite number of identified and unpredictable solutions.” The argument lacked merit. The patent claims concerned “content. “Content solutions are significantly limited by the theme and physical confines of the card, and the finite number of available solutions were predictable.”
5. SECONDARY OBJECTIVE EVIDENCE. The patent owner’s reliance on “secondary objective evidence” was not persuasive.
a. LONG-FELT NEED TO “STIMULATE DEMAND”; FAILURE OF OTHERS: INCONSISTENT DEFINITIONS OF NEED AND SUCCESS. The patent owner’s argument for “long-felt but unsolved need” to stimulate demand was not persuasive. The patent owner offered erroneous and inconsistent definitions of “need” (stimulate demand generally) and “success” (stimulate demand only as did accused infringing cards, not as did successful prior art non-memorabilia cards).
b. SKEPTICISM; SHORT LIVED PHENOMENON? NO SUPPORT IN RECORD; DESTROYING MEMORABILIA. The patent owner’s expert stated that he and other commentators originally and erroneously predicted that memorabilia cards would be “a short lived phenomenon.” The record did not support the statement. Also, that critics decried the destruction of “valuable sports memorabilia” did not show that the trading card-memorabilia concept would fail.
c. COMMERCIAL SUCCESS OF INFRINGER’S PRODUCTS. The patent owner established that the accused infringer’s products were successful but did not establish a nexus between the claimed invention and the success.
i. ACCUSED INFRINGERS’ INNOVATIVE MANUFACTURING AND PACKAGING ESSENTIAL TO SUCCESS BUT UNRELATED TO PATENTS. The accused infringers presented evidence that their cards entailed innovative manufacturing techniques and packaging that were essential to success but unrelated to the patented invention.
ii. PATENT OWNER: NO RESPONSE. The patent owner offered no response.
d. UNEXPECTED RESULTS; RECYCLED COMMERCIAL SUCCESS ARGUMENT. The patent owner argued that an ordinarily skilled person would not have expected the patented trading card’s commercial success. This was merely a recycle of the groundless commercial success argument. Unexpected success, which “must arise from combining prior art elements,” is distinct from commercial success. See § 1532.10, § 1544.40.
6. RADER, DISSENTING. The majority “substitutes its judgment on patentability for that of a jury” by “[r]elying on wholly irrelevant prior art and ignoring significant objective indicia of non-obviousness.” The majority displays “a bias against non-technical arts.”
CROSS-REFERENCES. On application of the obviousness standard to inventions involving simple technologies, see Chisum on Patents 5.04[a]; Chisum Patent Law Digest 1544.20.