Content solutions, such as sports trading cards, are significantly limited by theme and physical confines, meaning that the finite number of available solutions are predictable.

Media Technologies Licensing, LLC v. The Upper Deck Company, No. 2009-1022 (Fed. Cir. Mar. 1, 2010).

On summary judgment, a district court found invalid as obvious two patents covering pieces of sports memorabilia items attached to trading cards.

The Federal Circuit affirmed. The majority rejected the argument that a person of ordinary skill would not have combined the prior art references—or applied them to a sports card—because the trading card field supposedly contained an infinite number of identified and unpredictable solutions. Rather, according to the majority, “the presentation and content characteristics of trading cards are not infinite.” In other words, “Content solutions are significantly limited by the theme and physical confines of the card, and the finite number of available solutions are predictable.” Therefore, “it would have been obvious to one skilled in the art to attach a sports-related item instead of those attached in the prior art references.”

The majority also found the objective evidence of nonobviousness unpersuasive, in particular explaining that whatever commercial success the allegedly infringing memorabilia enjoyed came from celebrity, not by use of the claimed invention.

In dissent, Judge Rader faulted the majority for ignoring significant indicia of non-obviousness and for displaying “a bias against non-technical arts.” Judge Rader also found unconvincing the majority’s analysis about the finite number of solutions in the art because under this rationale, no party could receive a patent in the trading card industry if the solutions are “limited by the cards’ physical characteristics,” “theme,” and “physical confines.”

A copy of the opinion can be found here.