Robert Cohn Was Once Middleweight Boxing Champion Of Princeton

Posted on | December 28, 2008 | 1 Comment

2009-1031 Marrin v. Griffin
CD/CA 07-239
Judge George Wu

Patentees' Jeff and Claudia Griffin appeal from Judge George Wu's grant of summary judgment finding claims 1-4 of their 5,154,448 patent invalid under 102 and 103.  The patent relates to a label that allows users to write without using a pen or the like–Marrin is the founder of Etch-It, a company that makes cups and other products with a label on which you can write using your finger.

In this case involving the Griffins I almost went with a photo from Family Guy–e.g.,  Brian scratching something–but I could use a Family Guy shot every day (hmm, now there is a theme for next week).  But how often can you use John Waters, a fellow film maker whose early 1980's Polyester had scratch-and-sniff cards and Divine?

Claim 1, the only independent claim, states:

1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a
coating of scratch-off non-transparent material having a color which
contrasts with the color of the near side of the permanent base, which
coating is applied directly onto the near side of the permanent base
with sufficient thickness so as to obscure the color of the permanent
base, and which when scratched off reveals the color of the near side
of the permanent base.

The court found the claims invalid as obvious and anticipated using several prior art references.  In doing so, however, the court didn't (at least not in its decision) actually read the prior art on the claims–instead, it merely rejects all of the Griffin's arguments and then finds summary judgment essentially uncontested.

The Griffin's tried to use the claim's preamble (about not needing a "marking implement") to differentiate over the prior art.  However, the court found the language not limiting because it was not relied upon for patentability and thus could not now be relied upon to distinguish over the prior art.

Having lost that argument, the Griffin's then lost their expert, whose opinions all required the preamble language to be limiting.  Accordingly, the court found the expert's opinion immaterial.

The court then concludes:

I would have thought that the court should have at least gone through the prior art and identified where in each the claim limitations could be found.

More reading:

Robert Cohn was once middleweight boxing champion of Princeton. Do not
think that I am very much impressed by that as a boxing title, but it
meant a lot to Cohn.

The Sun Also Rises, Ernest Hemingway

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