Innovention Toys, LLC v. MGA Entertainment, Inc.
637 F.3d 1314
Fed. Cir.2011Background
- Innovention sued MGA for infringement of the '242 patent, which covers a chess-like laser-based board game with movable key pieces.
- The asserted claims require movable key playing pieces with no mirrored surfaces and a laser source to illuminate the opponent's key piece.
- The district court granted Innovention summary judgment of literal infringement, construing 'movable' as capable of movement per game rules, including setup and Advanced Game Play.
- The court held Laser Battle's Tower pieces meet the 'movable' limitation and that the invention was nonobvious, issuing a permanent injunction.
- On appeal, the Federal Circuit affirmed infringement, but vacated and remanded for reconsideration of nonobviousness due to factual errors, and vacated the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement construction | Innovention: Tower pieces are movable under the court's construction because they can be positioned and rotated per rules. | MGA: Construction expanded to include setup movability; otherwise would render 'movable' superfluous. | Infringement affirmed under proper construction; no genuine issue as to movability during set up or play. |
| Analogous art for obviousness | Laser Chess references are non-analogous because they are electronic, not physical; but may be reasonably pertinent. | Laser Chess and Swift should teach the claimed invention when combined; nonanalogous art should not bar obviousness. | District court erred in ruling Laser Chess non-analogous; remand to reassess obviousness under correct analogia. |
| Level of ordinary skill in the art | Higher skill (mechanical engineering/optics) is appropriate; layperson view is too low. | If the art is considered at a higher skill level, more likely obviousness. | District court erred in using layperson level; remand to establish proper level of skill and recalculate obviousness. |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (framework for obviousness analysis with underlying facts)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998 (en banc)) (claim construction is reviewed de novo)
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (claims construction as a matter of law)
- In re Clay, 966 F.2d 656 (Fed. Cir. 1992) (analogous art tests in obviousness analysis)
- In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (analogous art and reasonable pertinence considerations)
- KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (U.S. 2007) (common sense and combining prior art in obviousness)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (analogous art determination can be a matter of law)
- Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1574 (Fed. Cir. 1986) (level of ordinary skill impacts obviousness analysis)
- Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567 (Fed. Cir. 1984) (level of ordinary skill and obviousness framework)
- Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001) (presumption of validity and standard of proof)