1. Media Technologies v. Upper Deck Obviousness Rulings Justin Woo IEOR 190G Spring 2010

2. Obviousness Inventions must be non-obvious in order to be patented

3. Problem-Solution Approach 1) Identify closest prior art 2) Determine objective technical problem that the invention addresses and successfully solves 3) Examine whether or not the solution (invention) is obvious for a skilled person

4. Media Tech v. Upper Deck Case is an appeal of US patents 5803501 and 6142532 (“Memorabilia Card”) Claims for invention by Media Tech (inventor): – Baseball/memorabilia trading card with a piece of memorabilia of that person attached to the card – May also include an authentication certificate

5. Prior Art A Marilyn Monroe trading card with a diamond attached (diamond not owned by her) A piece of bed sheet purportedly slept on by a Beatle, attached to a letter of authenticity A greeting card fashioned to look like a novelty item that includes a piece of jeans material belonging to James Dean. Given the prior art, is the invention obvious?

6. Court Rulings Patents issued TWICE as NOT OBVIOUS by USPTO (once initially, once upon re- examination) Oct. 2008 – Federal District Court ruled that the claims were OBVIOUS. Media Tech appealed to CAFC (Court of Appeals for Federal Circuit) Mar. 2010 – Ruled the claims were OBVIOUS.

7. March 2010 Rulings Media Tech v. Upper Deck (Mar. 2010) 2 out of 3 judges ruled that claims were OBVIOUS 1 judge dissented (Judge Rader), stating the claims were NOT OBVIOUS – “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. Just lurking beneath the surface of this court’s blindness to the underlying facts is a bias against non-technical arts.” (Judge Rader)

8. Conclusion Rulings for obviousness seem to be split and have caused much confusion – NOT OBVIOUS Rulings: USPTO Examiner, USPTO Re- examiner, Judge Rader of CAFC – OBVIOUS Rulings: District Court, Court of Appeals Some say 35 U.S.C. 103 (conditions for non- obviousness) is unconstitutionally vague and needs to be revised – Purpose behind rulings in most recent decision does not specifically refer to 35 U.S.C. 103