Court Finds Sports Memorabilia Patents Obvious in View of Nonsports Prior Art in View of Secondary Objective Evidence
March 01, 2010
Last Month at the Federal Circuit - April 2010
Judges: Mayer (author), Lourie, Rader (dissenting)
[Appealed from: C.D. Cal., Senior Judge Stotler]
In Media Technologies Licensing, LLC v. Upper Deck Co., No. 09-1022 (Fed. Cir. Mar. 1, 2010), the Federal Circuit affirmed the district court’s grant of SJ of invalidity based on obviousness.
Media Technologies Licensing, LLC (“Media Tech”) owns U.S. Patent Nos. 5,803,501 (“the ’501 patent”) and 6,142,532 (“the ’532 patent”), which are directed to memorabilia cards created by combining a piece of memorabilia with a photograph or card of the famous person associated with the memorabilia. For example, a player’s trading card might be combined with a small piece of that player’s jersey inset on the card. The claims of the ’501 patent generally cover a piece of memorabilia attached to a trading card near where the actual item would typically appear in an image that depicts the item’s relationship to the person shown on the card. The ’532 patent claims generally require attaching a tiny piece of a particular sports memorabilia item, such as a shard of wood from a baseball bat or piece of a baseball, to a trading card. The ’501 patent matured out of U.S. Patent Application No. 356,481 (“the ’481 application”) and the ’532 patent matured out of a continuation of the ’481 application.
In 2001, Media Tech sued The Upper Deck Co. (“Upper Deck”) for infringement. The district court granted SJ on the basis of res judicata, which the Federal Circuit reversed. Upper Deck then filed requests for reexamination of both the ’501 and ’532 patents, and the district court stayed the case pending the reexaminations. A reexamination certificate issued for the ’501 patent confirming the claims in their original form. A reexamination certificate issued for the ’532 patent that added new claims 16-29. In 2008, the district court issued a claim construction order and granted Upper Deck’s motion for SJ, ruling that the patents were obvious. Media Tech appealed.
On appeal, the Federal Circuit specifically cited four pieces of prior art in its obviousness analysis: (1) a trading card with a picture of Marilyn Monroe and a diamond attached to the card (“Monroe”); (2) 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”); (3) 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 (4) a greeting card fashioned to look like a novelty item that ostensibly includes a piece of jeans material belonging to James Dean (“Dean”).
Media Tech argued that several differences existed between each of the four pieces of prior art and the claims at issue. Media Tech first argued that the diamond in Monroe is neither “a piece,” as opposed to a whole item, nor “memorabilia” as taught by the patent. The Court rejected the argument as to memorabilia, defining it as an object valued for its connection with historical events, culture, or entertainment, and cited Whittier, Eckert, and Dean as all providing an example of a piece of memorabilia, as opposed to the entire item of memorabilia. Second, Media Tech argued that Whittier does not teach using “a card,” and the Court rejected this argument since Monroe teaches a card. Third, Media Tech argued that Dean does not teach memorabilia, and the Court again rejected this argument based on its definition of memorabilia, also relying on Whittier and Eckert as teaching “authenticity,” as the claims require. With respect to the claims citing specific pieces of memorabilia, such as a piece of a baseball bat or a baseball, the Court stated that these claims would have been equally as obvious because they only differ in recitation of a type of memorabilia.
Finally, Media Tech argued that none of the prior art references teaches a “sports trading card.” The Court accepted that none of the references teaches such a card, but the Court relied on expert testimony submitted by Upper Deck in concluding that a person of ordinary skill would apply the teachings of Whittier, Eckert, and Dean to a “sports trading card.”
The Court found that secondary objective evidence also failed to establish nonobviousness. Media Tech argued that long-felt but unsolved need and failure of others, initial skepticism, commercial success, unexpected results, and industry recognition all weighed against a finding of obviousness.
The Court first found that Media Tech’s “long felt but unsolved need” of “stimulating demand” suffered two deficiencies. First, the Court found that the need of “stimulating demand” did not correspond to the asserted claims because it was overbroad. Second, the Court found that Media Tech advanced “an exceedingly narrow definition of success that requires a trading card insert to raise demand to levels achieved by the alleged-infringing products.” Slip op. at 7-8.
Regarding “skepticism,” Media Tech relied on its own expert’s statement that commentators believed memorabilia cards to be a short-lived phenomenon. The Court rejected this argument as not supported by the record. Media Tech also argued that public outrage at the idea of destroying whole valuable sports memorabilia weighs against the success of the cards.
With regard to “commercial success,” the Court concluded that Media Tech did not establish a nexus between the commercial success of the allegedly infringing cards and the claimed invention. From the record, the Court concluded that “whatever success was enjoyed came from celebrity, not invention.” Id. at 9.
Finally, regarding “unexpected results,” the Court found that Media Tech improperly sought to recycle its commercial success arguments as arguments related to unexpected results. The Court reminded that “[a]n unexpected result must arise from combining prior art elements,” and does not arise from commercial success, even if unexpected. Id.
Because it found no secondary indicia of nonobviousness, the Federal Circuit affirmed the grant of SJ of invalidity.
In a dissenting opinion, Judge Rader stated that the Court substituted its judgment on patentability for that of a jury, relied on irrelevant prior art, and ignored significant secondary indicia of nonobviousness. Judge Rader also detected in the Court’s decision “a bias against non-technical arts.” Rader Dissent at 1.
In Judge Rader’s view, because all of the prior art suggested that the value of an item of memorabilia depended on its condition, “the notion of cutting up an authentic player’s jersey into numerous pieces and attaching it to a trading card seemed sure to destroy far more value than it could ever create.” Id. at 3. Judge Rader noted that none of the prior art references is related to the sports trading card industry. Moreover, Judge Rader found each of the prior art references distinctly different from the claimed invention and lacking in much of the uniqueness and novelty of the claimed invention. Judge Rader also disagreed that the evidence showed that a person with skill in the art would consider, let alone combine, the four prior art references.
Summary authored by Justin R. Lowery, Esq.