In a case that illustrates the malleable nature of the obviousness standard in patent law, the Federal Circuit recently held that a sports memorabilia trading card that embeds an authentic piece of memorabilia was an obvious extension of the prior art, and invalidated the underlying patents on those grounds.
These now-popular types of trading cards will embed an authentic piece of a player's jersey as part of the card, and typically sell for a premium price as a result.
The case, Media Technologies Licensing, LLC v. The Upper Deck Company, et al., was decided on March 1, 2010. Judges Mayer and Lourie were the majority, with Judge Mayer writing the opinion. Judge Rader dissented. The patents at issue were 5,803,501 and 6,142,532.
What prior art invalidated this invention? As Judge Rader pointed out in a well-reasoned dissent, none of the prior art references were "remotely related to the sport trading card industry," though a number of the patents' claims were. One piece of prior art was a diamond attached to a picture of Marilyn Monroe; the diamond, Judge Rader pointed out, had not been cut into "pieces" as taught by the patent. The second piece of prior art was a piece of a bedsheet attached to a piece of stationery that purported to authenticate it as having been slept on by a one of the Beatles (though Judge Rader noted that the defendants had admitted the item was a fake). The third was a holy card depicting a friar and attaching a piece of his cloak. The final item was a greeting card that attached a piece of blue jean fabric that referenced James Dean, though there was no dispute that the fabric had not been worn by the late Mr. Dean. No sports-related prior art was included.
The majority's opinion is a good example of result-based reasoning. It twists and turns through the various arguments posed by the plaintiff to reach what appears to be a foregone conclusion. It provides little in the way of guidance either to inventors or businesses looking for ways to avoid infringing existing patents.
Judge Rader appeared to recognize this in his dissent when he noted: "Relying on wholly irrelevant prior art and ignoring significant objective indicia of non-obviousness, this court substitutes its judgment on patentability for that of a jury. Lurking just beneath the surface of this court’s blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts."
If you're going to read the short majority opinion, do take a few more minutes to read Judge Rader's dissent.
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