Innovention Toys, LLC v. MGA Entertainment, Inc., et al.
637 F.3d 1314 (2011)
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Rule of Law:
In a patent obviousness analysis, prior art is considered analogous if it is from the same field of endeavor or is reasonably pertinent to the problem the inventor was solving, even if it is from a different medium. A court commits reversible error if it determines non-obviousness based on an improperly low level of skill in the art when the record supports a higher level.
Facts:
- Innovention Toys, LLC holds U.S. Patent 7,264,242 ('242 patent) for a physical, chess-like board game involving lasers and mirrored playing pieces.
- The patent claims require 'movable key playing pieces' which have no mirrored surfaces.
- The object of Innovention's game is to manipulate pieces to direct a laser beam and illuminate an opponent's key piece.
- MGA Entertainment, Inc. produced and sold a physical board game named 'Laser Battle' with similar laser and mirror mechanics.
- In Laser Battle, the key pieces, called 'Towers', are physically capable of being placed in various positions at the start of the game.
- The standard rules for Laser Battle state that the Towers 'should always remain in their original positions on the board' during play.
- However, the rules for 'Advanced Game Play' in Laser Battle permit the Towers to be moved from their standard positions.
Procedural Posture:
- Innovention Toys, LLC sued MGA Entertainment, Inc. in the U.S. District Court for the Eastern District of Louisiana for patent infringement.
- MGA filed a counterclaim alleging the '242 patent was invalid for obviousness under 35 U.S.C. § 103.
- The parties filed cross-motions for summary judgment on the issues of infringement and invalidity.
- The district court granted summary judgment in favor of Innovention, finding MGA's 'Laser Battle' game literally infringed the '242 patent.
- The district court also granted summary judgment of non-obviousness in favor of Innovention, thus finding the patent valid.
- Consequently, the district court granted a permanent injunction prohibiting MGA from selling its game.
- MGA, as appellant, appealed the district court's summary judgment rulings and the permanent injunction to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
In a patent obviousness analysis, is prior art detailing an electronic game 'analogous art' to a patent for a physical board game if both address the same problem of game design, and is it reversible error for a court to base its analysis on the skill of a layperson when the record suggests a higher level of skill is required?
Opinions:
Majority - Lourie, Circuit Judge.
Yes. In a patent obviousness analysis, prior art for an electronic game is 'analogous art' to a patent for a physical board game if both address the same problem of game design, and it is reversible error for a court to base its non-obviousness finding on the skill of a layperson when the record supports a higher level of skill. The court first affirmed the district court's finding of literal infringement, agreeing that MGA's 'Tower' pieces met the 'movable' limitation because they were capable of being positioned in different squares during game setup and could be moved during 'Advanced Game Play,' consistent with the district court's claim construction. However, the court vacated the summary judgment of non-obviousness due to two clear errors by the district court. First, the Laser Chess references (electronic games) were analogous art because they were reasonably pertinent to the problem of designing an entertaining, laser-based strategy game, a problem common to both the patent and the references, regardless of the physical versus electronic medium. Second, the district court erred by defaulting the level of ordinary skill in the art to that of a layperson when the record, including Innovention's own assertions, indicated that a higher skill level (e.g., mechanical engineering and optics) was appropriate. This error was not harmless because a finding of non-obviousness is easier to reach with a lower skill level.
Analysis:
This decision clarifies the scope of 'analogous art' in patent law, establishing that prior art from a different technological medium (e.g., software) is relevant to the obviousness of a physical invention if both address the same underlying problem. It cautions against a superficial analysis that equates the 'field of endeavor' with the physical embodiment of an invention. The ruling also reinforces the critical importance of accurately determining the 'person having ordinary skill in the art' (PHOSITA), as using an improperly low standard can constitute reversible error. This case guides future obviousness analyses to be more expansive in considering prior art and more rigorous in defining the relevant artisan's skill level.
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