Innovention Toys, LLC v. MGA Entertainment, Inc.
Accused infringers seeking a prior art match to the patent-at-issue will likely dig deeper in the PTO deck following the Federal Circuit's opinion in Innovention Toys, LLC v. MGA Entertainment, Inc. In Innovention, the Federal Circuit held that references from outside an inventor's field of endeavor can serve as analogous prior art in a § 103 obviousness determination if the reference is reasonably pertinent to the particular problem with which the inventor is involved. For patent holders trying to fight off an obviousness defense, Innovention makes it harder -and riskier- to answer the question "Got any prior arts?"
The patent claims in Innovention covered a light-reflecting board game and rules for play. The disclosed game uses a static laser light source and movable/rotating mirrored and non-mirrored playing pieces to provide a chess-like experience. The game-marketed as "Khet-The Laser Deflection Game"-was a commercial success and became a top-five finalist for 2007's Game of the Year Award. The patent holder brought suit alleging that the game "Laser Battle" infringed its patent. Accused infringer MGA Entertainment asserted an obviousness defense. MGA supported its defense with reference to a static version of laser chess and two articles describing electronic versions of chess-like computer games with virtual lasers and mirrored and non-mirrored movable/rotating game pieces. The district court found the patent valid and non-obvious, rejecting the prior art references to electronic versions of the game as non-analogous because they did not cover a real-world physical game. The district court also determined that the inquiry around ordinary skill in the art should be set at the level of a layperson.
On appeal, the Federal Circuit found the district court had committed reversible error on both questions. The court first addressed the correct test for deciding whether or not a reference can serve as prior art for purposes of a § 103 obviousness determination. Under § 103, a reference qualifies as prior art when it is analogous to the claimed invention. Two tests define the scope of analogous art depending on whether the reference is from the same field as the inventor's endeavor. When the reference is not from the same field of endeavor, it can still qualify as prior art if it is reasonably pertinent to the inventor's problem. If, because of its subject matter, a reference is one which the inventor would logically have considered in attempting to solve the invention problem, the reference is reasonably pertinent-especially if the reference and the claimed invention "share the same purpose" and "relate to the same goal." Whether a prior art reference is analogous is a question of fact.
The Federal Circuit said that the district court erred by failing to consider whether the prior art reference covering electronic versions of the game would have been reasonably pertinent to the inventors of the game's physical version. Under that test, the court found the electronic game references were analogous because the problem the inventors were engaged in solving involved similar abstract issues of game design and game strategy regardless of the medium of ultimate implementation. The court held no jury could conclude otherwise and ruled that the references were analogous prior art as a matter of law.
The Federal Circuit also determined that the district court's error impacted the rest of its obviousness decision, including its ruling that the prior art had to be obvious to a layman in order to serve as an invalidating reference. The failure to make a correct finding on the necessary level of involved skill constituted reversible error because it affected the district court's ultimate conclusion under § 103. The patent holder conceded that the level of ordinary skill in the art of laser game creation was significantly more than that of layman, requiring knowledge of mechanical engineering and/or optics. In its remand order, the Federal Circuit ordered the district court to assess whether, at that level of skill, it would have been obvious to combine the prior art references asserted by MGA as part of a redetermination regarding MGA's prima facie proof of obviousness.
Innovention changes the prior art game for both sides of the patent bar. Accused infringers will certainly broaden their hunt for analogous prior art to new and diverse fields of endeavor and patent holders will have a harder time with a non-analogous challenge to those references. Courts reviewing prior art offered in support of an obviousness defense will look at the higher level problem to be solved and the goal of the invention, rather than using a more granular analysis of the distinctions between the involved fields of art. The result? Innovention could just be the next way previously compelling patents-and related infringement actions- get transformed into another patent litigation "Old Maid."
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