Mcginley V. Franklin Sports, Inc.

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

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