McGinley v. Franklin Sports, Inc.

Federal Circuit Court of Appeals

262 F.3d 1339 (Fed. Cir. 2001)

Key Search Terms: patent infringement, obviousness, invalid patent

Facts
McGinley charged Franklin Sports, Inc. (FSI) with wilful infringement of various
claims of U.S. Patent No. 5,407,193 (the 193 patent). The 193 patent claims
an instructional pitching device in the form of a regulation baseball with
specific finger placement indicia for teaching students how to grasp a baseball
for throwing different types of pitches. The District Court granted McGinley’s
motion for partial summary judgment on the issue of infringement, and denied
FSI’s motion for partial summary judgment on validity, finding disputed issues
of material fact with respect to the obviousness issue. At trial, the jury
returned a verdict in favor of McGinley, finding the 193 patent valid and
wilfully infringed. FSI appealed the decision.

Issue
Could a reasonable jury find that there was no clear evidence of obviousness,
thus upholding the protection of McGinley’s patent?

Holding
The Federal Circuit upheld McGinley’s summary judgment motion on the issue
of infringement. A patent is invalid for obviousness if “differences between the
subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” Specifically, the four factors of obviousness are: (1) the
scope and content of the prior art; (2) the differences between the claims and
the prior art; (3) the level of ordinary skill in the pertinent art; and (4)
secondary considerations, if any, of nonobviousness. The Federal Circuit held
that that no reasonable juror could have ruled that FSI failed to make out a
case of obviousness by clear and convincing evidence. The court reasoned that
McGinley did present sufficient evidence to counter FSI’s argument that it
would have been obvious to place three sets of marks on the Morgan ball in
light of the teaching of Pratt (two previous models). Rather, the Federal Circuit
held that a reasonable juror could have ruled that there was no clear evidence
of obviousness.

Summarized by: Leslie Adams