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A Sign of Things To Come?

March has arrived, and along with it a remarkable (both for its content and style) dissenting opinion by soon-to-be-Chief Judge Rader at the Federal Circuit. The three Judge panel (consisting of Judges Mayer and Lourie along with the aforementioned Rader) considered patentability of U.S. Patent Nos. 5,803,501 and 6,142,532 (link to patent tools). Media Tech asserted the ’501 and ’532 Patents against Upper Deck, which had already been held invalid for obviousness by C.D. Cal. in view of four different pieces of prior art. Media Technologies v. Upper Deck

Generally speaking, the inventions were directed to providing pieces or portions of memorabilia items (examples include clothing or sporting equipment) in combination with memorabilia cards. As always, the claims describe the metes and bounds of the actual inventions. Claim 1 of the ’501 is directed to a memorabilia card including an image of a famous figure, a piece of a memorabilia item adhered to the card, and certificate of authenticity. Claim 23 specifically claims using pieces of a wooden bat as the memorabilia item:

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.


Memorabilia was construed as an object valued for its connection with historical events, culture or entertainment.

The four pieces of prior art were:

  1. a Marilyn Monroe trading card with a diamond attached;
  2. a piece of a bed sheet used by a member of the Beatles attached to Hotel stationery declaring its authenticity;
  3. a piece of fabric attached to a picture of a Friar; and
  4. a greeting card attached to a piece of jeans material asserting (in jest, apparently) that the jeans had belonged to James Dean.

In deciding that Media Tech’s patents were invalid as a matter of law, the Federal Circuit was obligated to view the evidence in a light most favorable to the party opposing the motion with doubts resolved in favor of the opponent. However, as amply demonstrated by Judge Rader, the majority only paid lip service to this requirement.

The majority summarily concluded that the diamond on the Monroe card satisfied the requirement of a memorabilia item without offering any citation to the record. However, Rader astutely points out that, “[u]nlike 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.’” Indeed, a diamond may have intrinsic value, and may have cultural significance by virtue of being attached to the card, but the construction of memorabilia implies that the item should already have cultural significance when attached to the card. Neither the majority, nor dissent provide any evidence that the diamond had any prior association with Monroe, and was, apparently, just a diamond. While reasonable minds might ultimately disagree about whether the Monroe diamond is a memorabilia item, Rader indisputably takes the proper approach by examining the diamond and the claim construction in the light most favorable to Media Tech. The majority, it seems, took the exact opposite approach, by apparently concluding that the only acceptable inferences was to view the diamond as memorabilia. However, Judge Rader’s analysis demonstrates the possibility of alternative reasonable interpretations, leading inevitably to the conclusion that the majority simply substituted its own judgment rather than let this issue go to the jury. In similar vein, Judge Rader makes quick work of the remaining prior art references, explaining how the Beatles bed sheet was admitted to be a fake, the “holy card” would not have been treated like memorabilia, and that a logical interpretation of the James Dean jeans taught away from the claimed invention “for the very fact that it was a joke, a fake (not a ‘memorabilia item’)” and thus seemed to imply that such combinations (of a piece of a memorabilia item and the image of famous figure) could only be taken in jest as discussed further below.

However, perhaps equally egregious, the majority gave short shrift to the evidence of secondary considerations. First, Rader notes that contemporary wisdom for a company in the memorabilia industry holds that “the value of a particular memorabilia item depend[s] on its physical preservation.” Indeed, it is difficult to think of any one concept that the memorabilia industry literature would teach away from more than “cutting up an authentic player’s jersey into numerous pieces.” After all, who hasn’t thought of the riches and fortune we’d have if only our parents had stopped us as children from opening the package?

In addition, the majority appears to completely ignore evidence that Upper Deck began test marketing the concept a year after being approached by the inventor! Rader details a small sampling of trade magazines proclaiming the brilliance of Upper Deck’s great original idea infringement of the ’501 and ’531 Patents, lamenting the familiar “Why didn’t I think of that?”. These experiments were apparently enough of a success to prompt Upper Deck to continue with the concept.

So what, then, does Judge Rader think of his colleagues? Accusing them of having “a bias against non-technical arts,” he reminds his readers that, so far as patentability is concerned, all inventions are created equal:

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.


As a parting shot, Rader takes issue with the majority’s apparent adoption of Upper Deck’s expert over that of Media Tech, and fires again:

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?


As another attorney commented to me, such accusations aren’t going to win Judge Rader any allies… But where he’s headed, I wonder if his desire is to start setting the tone for his tenure as Chief Judge, and maintaining his reputation for holding everyone’s feet to the fire (i.e. inventors, attorneys, damages experts, and apparently fellow jurists) on precision, consistency and clarity when administering justice.

Additional coverage at: ipwatchdog

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