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March 3, 2010


Media Technologies sued Upper Deck for infringing two memorabilia patents: 5,803,501 & 6,142,532. After a trip to the CAFC on district court summary judgment over res judicata (reversed), trial court proceedings were stayed pending reexamination. Both patents made it through reexam unscathed. Then, based on claim construction, Upper Deck got the upper hand by summary judgment over obviousness.

Media Technologies v. Upper Deck et al (CAFC 2009-1022) precedential

The facts supposedly uncontested, the decision was a treated as a matter of law.

Whether an invention would have been obvious at the time the invention was made is a question of law, which we review de novo, based on underlying factual determinations, which we review for clear error, Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir. 2007), unless, as is the case here, no material facts are in dispute.

A patent may not be obtained "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). An obviousness analysis is based on several factual inquiries. A court must examine the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). At that point, a court may consider secondary objective evidence of nonobviousness, such as commercial success, long felt but unsolved need, failure of others, and the like. Id.

A patchwork of prior art was called upon.

The prior art here includes: (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").

Media Tech argued unpredictability.

Media Tech asserts that a person of ordinary skill would not have combined the references--or applied them to a sports card--based on: (1) an inability to predict that a trading card would convey memorabilia authenticity; and (2) the trading card field containing an infinite number of identified and unpredictable solutions.

That went over like a lead balloon.

The "inability to predict" argument alleges that "combin[ing] . . . trading cards with a piece of a memorabilia item . . . result[ed in] . . . consumers automatically accept[ing] as authentic a piece of otherwise unidentifiable material." However, as Media Tech itself acknowledges, consumer acceptance comes from the credibility already associated with the 90-year old trading card industry. As such, Media Tech has not shown that the combination of memorabilia with a conventional trading card resulted, or would result, in consumers accepting authenticity.

Regarding the infinite number of identified and unpredictable solutions, the presentation and content characteristics of trading cards are not infinite. These characteristics are limited by the cards' physical characteristics. Moreover, while presentation involves varying parameters (color, typefaces, layout, etc.) to produce distinctive products, the asserted claims are unrelated to presentation. Instead, they relate to content. Content solutions are significantly limited by the theme and physical confines of the card, and the finite number of available solutions were predictable. Defendants need only show that it would have been obvious to one skilled in the art to attach a sports-related item instead of those items attached in the prior art references. Defendants have met this burden, and Media Tech's assertion that a person of ordinary skill would not have combined the references--or applied them to a sports card--must fail.

Secondary considerations were treated like old news.

Secondary objective evidence also fails to establish non-obviousness. Media Tech argues long felt but unsolved need and failure of others; initial skepticism; commercial success; unexpected results; and industry recognition.

Media Tech's "long felt but unsolved need" of "stimulat[ing] demand" suffers two deficiencies. First, the need does not correspond to the asserted claims because it is overbroad. Second, "stimulat[ing] demand" is applied too narrowly to trading card inserts.

With respect to "skepticism," Media Tech's expert states that "[n]umerous articles and commentators, including myself, originally predicted that memorabilia cards would be a short lived phenomenon and many trading card companies such as Fleer and Topps were skeptical of the concept and reluctant to introduce memorabilia cards." But this is not supported by the record. Media Tech also relies on outrage at the idea of "destroying valuable sports memorabilia." Alleged outrage over destroying sports memorabilia, however, does not demonstrate a belief that the trading-card beneficiary of that destruction would fail.

Regarding commercial success, Media Tech has established that the alleged infringing memorabilia cards sold by appellees are commercially successful; however, it has not established the required nexus between the claimed invention and commercial success. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) ("if the commercial success is due to an unclaimed feature of the device, the commercial success is irrelevant"). It attempts to rely on the "presum[ption] that the commercial success is due to the patented invention." Id. To do so it must show "that the successful product is the invention disclosed and claimed in the patent." Id. (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997)).

In arguing unexpected results, Media Tech returns to its argument that a person of ordinary skill would not have predicted commercial success. This is an attempt to recycle its commercial success arguments by making similar arguments under the "unexpected results" heading. Commercial success, however, even if unexpected, is not part of the "unexpected results" inquiry. An unexpected result must arise from combining prior art elements; commercial success is a separate inquiry from unexpected results, and in any event has not been shown here to be a result of the invention as opposed to other factors.


So far, unremarkable in the post-Obzilla regime. But this was a 2-1 decision, penned by Judge Mayer, joined by Lourie, with a scathing dissent by Judge Rader, the next Chief Judge of the Federal Circuit Court of Appeals. The Pooh-bah-to-be:

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. 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. The incentives for improvement and the protection of invention apply as well to the creator of a new hair-extension design as to a researcher pursuing a cure for cancer. In either case, the PTO and this court are charged with assessing the invention disclosure to determine its worthiness to receive a valuable, but temporally limited, exclusive right. Because this court dismisses this case so readily, I respectfully dissent.

Delving into history, Judge Rader paints a vastly different portrait of invention.

As mentioned, this invention does not advance rocket science or cancer medicine. Still, for many individuals, this avocation wins vast devotion. The trading card industry was born in the late 19th century when tobacco companies began inserting images of baseball players into cigarette packs. Soon thereafter the trading card concept spread to other industries, most notably gum companies. Over the next century, the cards became standardized and sold in stand-alone packs without any tandem product, such as gum or peanuts. By the early 1990s, with competition intensifying, trading card companies introduced limited edition insert cards -- e.g., autographed cards or holographic cards -- to spark sales with the hope of acquiring a scarce and valuable asset.

The '501 patent was filed in 1994. Up until that point, not a single reference in over a century of history disclosed attaching a cut-up piece of a memorabilia item to a baseball card. The concept behind the invention was initially met with much skepticism. The major trading card companies, including the named defendants in this case, rejected Adrian Gluck, the inventor of the '501 patent. They reasoned, quite logically at the time, that the value of a particular memorabilia item depended on its physical preservation. Indeed, all the prior art suggested that the value of an item of memorabilia hinged on its condition. In better condition, the item brought maximum value; in worse condition, far less. Thus, 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. According to the standard wisdom in this field, the dismembered jersey could not enhance the value of either the jersey or the card.

A year after Gluck approached Upper Deck with his idea, however, the company undertook an experiment and began selling limited edition cards with accompanying cut-up jersey pieces affixed adjacent to the player's image. The new card product quickly became a hit with collectors and received praise throughout the formerly skeptical industry.

Without even so much as a cursory review of these unexpected results, the skepticism of experts, the commercial success, the flattery of copying, or any other objective facts, this court concludes in a rather passing fashion that the claimed invention would have been obvious at the time of invention based on the prior art references. But viewed in the context of the record as a whole, the prior art does not support that judgment as a matter of law.

Most important, none of the prior art references are remotely related to the sport trading card industry. The defendants' failure to proffer any reference in the relevant field of invention is telling given the century-old history of this industry. Perhaps claim 1 can fairly be interpreted to include memorabilia items beyond the sporting world, but other asserted claims are expressly limited to sports trading cards. Thus, this court ought to seek at least some prior art in the primary field of its application and use. And the absence of any prior art in that area ought to speak volumes.

Setting aside the sports versus non-sports issue, each of the prior art references in this case is still distinctly different from the claimed invention.

Whereupon Rader incisively shines daylight between the patented invention and each of the cited prior art references, concluding with joke prior art.

The Monroe reference discloses a diamond attached to a photo of Marilyn Monroe on a card. Unlike an authentic jersey worn by an athlete during a game or a match, the diamond itself has no inherent value derived from its "connection with historical, events, culture, or entertainment" as required by the district court's construction for "memorabilia item." Rather, the diamond itself attains cultural significance only when attached to a picture of Marilyn Monroe. In addition, the '501 patent teaches cutting a "memorabilia item" into "pieces." The Monroe diamond is not a "piece" of any "memorabilia item" within the context of the '501 patent.

The Whittier reference discloses a cut-up piece of a bed sheet once graced by one of the Beatles. The Whittier prior art reference attaches the scrap of cloth to a stationery paper with a statement of authenticity. It bears the date 1964. Besides the defendant's admission that the bed sheet in one of its proffered exhibits is a fake, the reference also does not disclose any "trading card" or "photo" as those terms are used in the '501 patent. This reference has many differences besides its distant removal in time.

The Eckert reference is a "holy card" used to familiarize the public with a particular religious figure to promote that candidate for sainthood. A picture of a friar named Stephen Eckert appears on paper stock next to fabric represented as a piece of his clothing. As with the Monroe reference, it is a far stretch at best to say that Eckert discloses a "memorabilia item" as contemplated by the district court's construction. Nor were "holy cards" purchased, traded, or valued like typical trading cards or "memorabilia items." Their sole purpose was to increase the fame of the particular religious figure featured.

Finally, the James Dean reference features a picture of James Dean on a greeting card next to an undisputedly fake piece of the celebrity's jeans. It is entitled, "Rebel's Cause Lives: Ecstatic discovery! James Dean's Jeans!" Despite defendants' general admission that the prior art reference itself was intended as a joke, they still maintain that the reference would have motivated a skilled artisan to cut up a memorabilia item for a sports card. Quite the opposite, a reasonable inference could be made -- which this court must credit on summary judgment -- that the James Dean reference teaches away from the claimed invention for the very fact that it was a joke, a fake (not a "memorabilia item"), and, in many other ways, different from the claimed invention. In sum, the prior art references of record are each inherently different and lack much of the uniqueness and novelty of the claimed invention.

The combination that Obzilla so easily uses to unlock novelty into the mundanely obvious is turned on its head by Judge Rader.

Finally, the record is dubious at best -- particularly at this summary judgment stage -- in suggesting that a person with skill in this art would even consider the four prior art references relied on by defendants, much less combine them. In that vein, this court cites primarily to defendants' expert Scott Kelley to make the vast leap from these sketchy and different references taken in isolation. Mr. Kelly's declaration, to my eyes, resounds with conclusory statements that lack any convincing reference to the actual record. To rely on such "expertise" without considering the countervailing factual evidence on record contravenes the role of a court at the summary judgment stage and gives accused infringers a free pass to avoid a jury's judgment on the facts -- in a sense, a get-out-of-jail-free card (no pun intended).

Plaintiff also proffered an expert, Henry Taylor, with credentials similar to those of Mr. Kelly but with opposite conclusions on obviousness. Why, on summary judgment, would this court give Mr. Kelly's opinions more weight than those of Mr. Taylor? Is this an indication that this court views this field of art and this invention as unworthy of the full processes of the law?

In addition, this court's analysis about the finite number of solutions in the art is unconvincing. Under this rationale, no party could receive a patent in the trading card industry because the solutions are "limited by the cards' physical characteristics," "theme," and "physical confines." In fact, as noted above, the trading card industry heralded this invention. Thus, the industry that best evaluates advances in its own field seems to question this court's summary conclusion.

I'm sold. Judge Rader convinces.

The bottomless abyss of kneejerk obviousness created by the courts in the wake of Obzilla, already desolation to many inventions, should be filled with careful logical analysis based on fact, especially context, as in this dissent. This was not that beginning, at least for majority opinion. That Judge Rader was unable to convince his colleagues is telling in the moment, but this dissent may resonate through time more than the majority ruling. Only time will tell.

Posted by Patent Hawk at March 3, 2010 2:44 PM | Prior Art



I'm a major fan of Judge Rader (as I am Judge Newman). His dissent in Bilski correctly blasts the "machine or transformation" test as nonsensical.

But as I've pointed out on other patent blogs, the major problem with Rader's dissent is that it's strident about the facts, but doesn't underpin the arguments with case law support. If you read Rader's dissent, there's not one case cited to support Rader's factual contentions. That's not the way to persuade your fellow judges, including those judges who might be with you if a request for rehearing en banc is made. Also, making a very thinly veiled accusatory attack on the majority won't win you necessary brownie points either.

Rader's dissent also doesn't directly address the key legal vulnerability of the majority's opinion: a genuine dispute of material fact that makes a grant of summary judgment improvident. We don't find this out in Rader's dissent until the last 2 pages. That's not good advocacy for your position in my opinion. Newman can also be shrill in dissent, but she at least does her case law homework and uses it to underpin her points. In fact, that's exactly what Rader did in his dissent in Bilski which may be picked up on by SCOTUS.

I'm also not going to dispute that Rader is right that the majority regrettably appears to treat memorabilia cards as a "lightweight" art. The trouble is that the Marilyn Monroe card (as another commentator has suggested) is pretty close. In fact, the "look and feel" of these memorabilia cards suggests that protection by design patent or copyright is more appropriate.

Also 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.

Don't get me wrong: I generally like what Rader says, and we all have our "bad days" (me included). No one would also accuse me of being "anti-patent" (some would say the exact opposite). But Rader's dissent comes across too much to me as a "cry in the wind," not cogent expression of disagreement that will be picked up in the future necessarily by other Federal Circuit judges or even SCOTUS.

Also, thanks for posting this case on your blog. Media Technologies is also unfortunately symptomatic of the Federal Circuit's very strange and weaving path in the last 3 or so years, especially on obviousness determinations. 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 subjective “rhetorical nonsense” that no one, be it the Federal Circuit or a USPTO examiner can apply consistently and with 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 that all inventions are to be treated equally, no matter what art they're in. 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.”

SCOTUS’ inane, almost pathological abuse, of the Federal Circuit recently isn’t helping matters in making patentability determinations consistent and objective. 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 and objective patent law jurisprudence, we’re in for some vey rough days ahead.

Posted by: EG at March 4, 2010 7:26 AM

"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."

Does this fall into the category of tugging on Superman's cape and urinating in the wind?

For one branch of the government to attempt to reach over and set up within another branch a part that would have "supreme" authority on a particular subject matter seems like a sure-fire result to end up with chaos and conflict.

Posted by: breadcrumbs at March 4, 2010 9:58 AM

I agree, EG. A first year law student in an appellate practice course would have gotten a "D-" on this opinion. While Radar really only needed one case -- any one of dozens saying that SJ is not appropriate where there are facts in dispute -- the absence of that cite is embarrassing.

The propriety of SJ was the only point here. The argument that there was no obviousness was counterproductive. After all if that call is based on facts in dispute, then Radar has no more basis to resolve it than the others.

BTW, what's with these lame claims that passed reexam?

Claim 1
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 . . .

What? Which image does "the foregoing image"
refer to? Did they mean "foreground image"? If they did they should have said it and because they didn't the claim is a 112 disaster. Did this get through reexam?

Or how about Claim 23, which was ADDED during reexam:

"An article of memorabilia comprising:
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 "tiny piece"?? Since when are applicants allowed to rely on such indefinite statements? Does tiny mean 1 micron or 1/3 the length of the bat.

Finally, this whole case is a screw up -- from the initial application, right through examination, reexamination, summary judgment, opinion and dissent. The patents were pieces of crap -- and not "tiny pieces". Big, stinky pieces. Lourie and Mayer just wanted to flush the case with minimum expense to everyone.

Finally [sic], check Radar's last paragraphs. I can't stand it when people use "finally" to begin the penultimate point and then use it again for the final point. I mean, only one point can be the final point. All of Radar's clerks and secretaries must have been buried in snow.

Posted by: Babel Boy at March 4, 2010 10:00 AM


I hate to tell us this, but Section 1 of Article III gives Congress that authority: "The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish." All this Section says is that the "judicial power" must be "vested" in SCOTUS and whatever "inferior courts" Congress says should be ordained. It doesn't say Congress can't limit what cases these courts can hear or that a particular court (like the Federal Circuit) is the final arbiter of patent law jurisprudentce, although I doubt that Congress could constitutionally prevent SCOTUS from hearing cases involving issues of constitutional interpretation.

I'm also not saying that SCOTUS can't hear patent appeals. But who, after all, was deemed by Congress to have "expertise" in this area of law? It certainly wasn't SCOTUS, and what SCOTUS often says about patent law is their version of the "federal common law of patents" divorced from any real consideration of (or adherence to) the patent statutes in Title 35.

That SCOTUS isn't an expert in patent law (and is technologically-challenged) isn't what bothers me. It's the fact that they know they're not experts, but are too prideful and arrogant to bother to get help from the experts, and do anything other than trounce (not coach) the Federal Circuit which having an adverse (not helpful) impact on patent law jurisprudence.

Put it this way, I've yet to read a Federal Circuit decision that wasn't very cogent, thorough and correct in explaining the technology involved. By contrast, the SCOTUS majority's explanation in Microsoft v. AT&T of how software works (like an architectural blueprint) is laughable. If you can't get the law or facts right (like SCOTUS in patent law), you've got an even greater recipe for "chaos and conflict" (like we already have now).

Posted by: EG at March 4, 2010 10:39 AM


My understanding is completely different as I take the "such inferior" to directly mean that that any type of limit (here subject matter) cannot be set in a lower court by Congress.

I think the tendency to trounce is reflected by the fact that our two views cannot mesh. There can be only one top dog, and an inferior court cannot tell the Supreme Court any type of "final" arbitration. The Federal Circuit wants to be the expert and final decider - but that is exactly what is being taken as stepping on the toes of the Supremes imho.

Posted by: breadcrumbs at March 4, 2010 11:46 AM


Take a look a this quote by Felix Frankfurter in Nationa Mut. Ins. Co. V Tidewater Trnsfer Co., Inc. (1948):

"Congress need not give this Court any appellate power; it may withdraw appellate jurisdiction once conferred."

Again, I'm not saying that Congress made the Federal Circuit the final arbiter of patent law jurisprudence. But it could. I rest my case.

Posted by: EG at March 4, 2010 2:59 PM


I think that you may be overeading dicta if you think a matter concerning a diversity concern with the District of Columbia reads on the ascendancy of any inferior court over the Supreme Court.

Do you really want to rest your case with this?

Posted by: breadcrumbs at March 4, 2010 3:28 PM

Two things about this case make me squirm, but I admit I haven't given it lengthy thought yet. Perhaps answers to my two points below will illuminate my further cogitations:

1. The parties addressed "predictability" not in relation to chemistry or biotech but in the context of what to put on a trading card. I don't see any meaningful analysis of "predictable" in the written Decision though.

2. If there is any discussion of predictability then it's in the area of commercial success. Since when was the obviousness issued reduced to "Was it obvious that it would be a commercial success?".

Posted by: MaxDrei at March 5, 2010 5:48 AM


SCOTUS "dicta" carries more weight than others and what Justice Frankfurter has said carries quite a bit of weight in judicial circles, including SCOTUS. In fact, as far back as the 1882 Francis Wright case SCOTUS conceded its "actual jurisdiction is confined within such limits as Congress sees fit to describe."

I certainly wouldn't want Congress to get in the habit of "jurisdiction stripping" (that's what this is called). But it would certainly be helpful if SCOTUS would at least acknowledge (which it doesn't) that Congress created the Federal Circuit for a reason, and one important reason was to render "order" out of the prior "chaos" on patent law jurisprudence. In the past, SCOTUS gave a gentle "nudge" once and a while to the Federal Circuit to "ease up," the Festo case being a good example of a gentle but needed "nudge" on DOE.

What is now happening with SCOTUS in the patent area, post-KSR International in particular, is not a gentle "nudge" but a complete, almost pathological trouncing of Federal Circuit patent law jurisprudence. For SCOTUS (a technologically-challenged and patent law-adverse judicial body) to repeatedly resort to this tactic in such a short span of time comes across to me as a blatant "power struggle," not a principled disagreement with Federal Circuit patent law jurisprudence. In fact, for many of us in the patent law area, KSR International is nothing but amorphous "federal common law of patents" gobbledygook that creates the very "chaos" Congress intended to remedy by creating the Federal Circuit in the first place. It certainly does not raise the esteem of SCOTUS in my eyes, but does the exact opposite for me and many other patent professionals.

To put this in perspective, I once heard the late Justice Powell give a speech at my law school. In response to a question about what SCOTUS would do if Congress or the Executive refused to obey one its decision, Justice Powell responded "well we've got few hundred federal marshalls but that's about it." The clear implication was that SCOTUS needed the confidence and respect of others in it's decisions to make them work. In the area of patent law jurisprudence, the current SCOTUS doesn't have my confidence (or respect), and that is true of many others in the patent law bar.

Posted by: EG at March 5, 2010 7:55 AM


It appears that we agree on the end result - and I am not even sure that we disagree on the path to that end result. I think we also agree on what the object is (order above chaos) and that that is a noble and just desire.

I do think that "jurisdiction stripping" if ever put as a direct and central issue would NOT be accepted by the Supremes in any matter that deals between an inferior court and the Supreme court itself.

Such a decision would not only remove the ability to "nudge" as you describe, it would cause a constitutional issue in that congress, in theory, could create a special court outside the purview of the Supreme's ability to interpret the Constitution and control Congress's actions. Such an inferior court, by definition, would no longer be inferior.

There is simply no way the Supreme's would ever allow that to happen.

The Supremes own the backyard of the judiciary and while Congress can create inferior courts, they will always be inferior and never be fully stripped.

Patent law is just too damn sexy for the Supremes not to put their thumbprint on it. Of course, the result is a power struggle and it is evident in such CAFC decisions that are written, not in a clear decisive manner to achieve the order desired, but written, rather, in a manner begging for the Supremes to come in and make sense of the jurisprudence. To me, anyway, the CAFC has abdicated that order-making role.

Posted by: breadcrumbs at March 5, 2010 10:05 AM


You make an astute observation about why SCOTUS's "common sense" nonsense and "obvious to try" malarkey approach in KSR International is so problematical for mechanical inventions. The reality is that "unexpected results" arguments in the chemical/biotech sense (BTW I'm an undergraduate chemist) simply don't exist in the mechanical arts. The late Chief Judge Markey of the Federal Circuit accurately pointed out why SCOTUS's approach in KSR Interantional is simply unworkable and illogical when applied to mechanical arts and potentially to other arts. Unfortunately what we're seeing in Media Technologies is some of the cumulative abuse being hurled downwardly by SCOTUS on the Federal Circuit manifesting itself as a distortion in the Federal Circuit rationally and objectively considering obviousness determinations under 35 USC 103.

As other commentators have also correctly observed, the alleged art in this case, especially the Marilyn Monroe card with the diamond, is pretty close to anticipatory. For exsmple, the drawings in the '501 patent are of a baseball card which has attached to it minature bat as the "authentic" memorabilia. In fact, that sounds more like aubject matter for design patent and/or copyright protection, not utility patent protection.

Cases like Media Technologies just highlight how "dysfunctional" current obviousness determinations under 35 USC 103 are in the Federal Circuit, which has also created similar dysfunctions in the USPTO. Besides the Federal Circuit realizing (and correcting) how "dysfunctional" it's become, SCOTUS also needs to realize the unnecessary and illogical "chaos" its creating in patent law jurisprudence, and simply back away, or instead gently (not trounce) the Federal Circuit. Unfortunately, for reasons noted above, SCOTUS has never been very friendly to patents since the 1930's and nothing has changed them now that we've reached the 21st Century.

Posted by: EG at March 5, 2010 10:19 AM

EG, thanks but I don't understand your SCOTUS should gently the Federal Circuit remark. SCOTUS visited obviousness recently, in KSR. It's not going to visit again in this generation, is it? What's your best guess, when SCOTUS will next accept an obviousness case?

Meanwhile, parties are stuck with arguing unpredictability in trading card design. As 6 would say: LOL.

Posted by: MaxDrei at March 5, 2010 10:48 AM


It's not just KSR International, it's the cumulative effect of ALL the cases SCOTUS has recently taken from the Federal Circut, and in each instance, reversed with an opinion that is hardly consoling for the Federal Circuit to digest and apply. We in the patent bar are getting ready for another "scolding" by SCOTUS of the Federal Circuit in Bilski (a really unfortunate en banc decision) which will once again undermine the Federal Circuit's confidence to do anything in the patent law area which doesn't carry the mark of SCOTUS dogma. That's not a good way to run the patent law jurisprudence railroad.

Posted by: EG at March 5, 2010 2:20 PM

"To me, anyway, the CAFC has abdicated that order-making role."


Unfortuntely, so true. The late Chief Judge Markey must be rolling over in his grave over the current state of affairs in the Federal Circuit. All we can hope is that patent law eventually gets below the SCOTUS radar screen so that the Federal Circuit can hopefully rectify, in due course, the "chaos" that's been created. I'm afraid that won't happen soon or easily for us who are working in the "patent vineyard." And thanks for the healthy debate

Posted by: EG at March 5, 2010 2:26 PM