Innovention Toys, LLC v. MGA Entertainment, Inc.
The Federal Circuit clarified the requirements for references to be “analogous art” for purposes of obviousness in its ruling in Innovention Toys v. MGA Entertainmenton Monday, March 21. To serve as a prior art basis for an obviousness defense, a reference must be analogous to the invention.
In this case, plaintiff Innovention holds a patent for a chess-like game involving a laser for “firing” at an opponent’s moveable, un-mirrored pieces, plus other, mirrored pieces to reflect the laser. Innovention brought suit under this patent against MGA, Wal-Mart, and Toys “R” Us, who denied infringement and asserted an obviousness defense under § 103. The defendants based their obviousness defense on the combination of (1) articles describing “computer-based, chess-like strategy games” with “virtual lasers” and movable key pieces and (2) a U.S. patent’s description of a “physical, chess-like, laser-based strategy game” with an actual laser for “firing” at an opponent’s immovable targets.
The district court granted summary judgment in favor of Innovention for infringement and nonobviousness. Regarding the latter issue, the district court found that the articles describing computer-based games were non-analogous art because they did not describe physical-world games.
The Federal Circuit reversed this conclusion, finding that the articles were in fact analogous art. Analogous art, the court noted, can be either (1) art from the same field of endeavor, regardless of the problem it addresses, or (2) art that is reasonably pertinent to the particular problem of the invention, regardless of the field of the inventor’s endeavor. Furthermore, Federal Circuit precedent states that a reference is related to the same problem if it has the same purpose. The Federal Circuit in this case found that the lower court ruled the articles to be outside the first kind of analogous art, art in the same field of endeavor, but had not considered the second kind of analogous art, art reasonably pertinent to the problem. The Federal Circuit then examined the purposes of the articles and of the claimed invention, finding them both to be “detailing the specific game elements comprising a chess-like, laser-based strategy game.” Therefore, the Federal Circuit remanded the issue of obviousness to the district court so that it could consider the full scope of the prior art, including the articles, and any motivation to combine the articles with the patent reference.
Patent holders must distinguish their inventions not just from other preexisting concepts in the same field, but also from concepts solving the same problems in other fields if those concepts would logically have been considered by one of ordinary skill in the art in addressing the problem. Here, Innovention tried to disqualify the articles as prior art because they allegedly did not deal with games having physical pieces, but the articles nonetheless addressed some of the same game-design problems that Innovention’s game also addressed. Likewise, patent applicants and patent holders defending their patent’s validity should be aware of potentially relevant previous developments outside of their field but with the same purpose. Such developments could render an invention obvious. Conversely, those challenging patent validity should consider potential prior art references directed toward the problem that the patented invention addresses, regardless of the field.