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Memorabilia card found obvious over Rader's dissent

By Lawrence B. Ebert, Esq.

Both the ?501 and ?532 patents are drawn to an invention that ?provide[s] an actual piece or portion of an
item in combination with a photograph or the like of a famous figure having a
relationship to the item.? ?501 patent col.1 ll.58-61; ?532 patent col.1 ll.59-62.

A claim:

Claim 1, for example, recites:

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,
a piece of a memorabilia item being adhered to the card
adjacent to where an image of the actual item normally
would appear, and
the card including a certificate attesting to the authenticity of
the item.

The relevant prior art:

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?).
After determining the scope and content of the prior art, the differences between
the prior art and the claims at issue must be determined. Media Tech argues that
Monroe differs from claim 1 of the ?501 patent because Monroe?s diamond is neither ?a
memorabilia item? nor ?a piece,? as recited by the claim. Based on the construction of
?memorabilia,? ?an object valued for its connection with historical events, culture or
entertainment,? Monroe?s diamond is memorabilia. As for the ?complete? vs. ?piece?
distinction, even if Monroe?s diamond is not a ?piece,? Whittier, Eckert, and Dean teach
using ?a piece? of memorabilia.

Judge Rader, in dissent:

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.

Buried within the Rader dissent:

Another trade magazine clamored:
There was a time when spreading peanut butter and jelly between two
slices of bread may have been an unthinkable combination. Today,
millions of school children, and just as manycelebrated sandwich as a lunch-time staple.

Can you say Smucker?

Of expert witnesses:

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).

Full post as published by IPBiz on March 02, 2010 (boomark / email).