Monday, March 21, 2011

Innovention vs. MGA: errors in obviousness

The conclusion of the case:

For the foregoing reasons, we affirm the district
court’s grant of summary judgment of literal infringe-
ment, and we vacate and remand the district court’s grant
of summary judgment of nonobviousness.

As to analogous art,

A reference qualifies as prior art for a determination
under § 103 when it is analogous to the claimed invention.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two
separate tests define the scope of analogous art: (1)
whether the art is from the same field of endeavor, re-
gardless of the problem addressed, and (2) if the reference
is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is
reasonably pertinent if . . . it is one which, because of the
matter with which it deals, logically would have com-
mended itself to an inventor’s attention in considering his
problem.” Clay, 966 F.2d at 659. “If a reference disclo-
sure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact
supports use of that reference in an obviousness rejec-
tion.” Id. Whether a prior art reference is “analogous” is
a question of fact. Id. at 658.
Innovention argues that the Laser Chess articles are
non-analogous art because the ’242 patent’s inventors
were concerned with making a non-virtual, three-
dimensional, laser-based board game, a project that
involves mechanical engineering and optics, not computer
programming. The district court appears to have agreed,
finding that the Laser Chess references were non-
analogous art since each discloses “an electronic version of
the ’242 patent.” Innovention Toys, 665 F. Supp. 2d at
653. (...)

In this case, the district court clearly
erred in not finding the Laser Chess references to be
analogous art based on this test as a matter of law. See
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010) (holding as a matter of law that prior art padlock
seals were analogous since directed to the same problem
of preventing the ingress contaminants into the locking mechanism).

Of level of skill for the obviousness inquiry:

In this case, the district court found that MGA had
failed to provide any evidence of the level of skill in the
art, and thus concluded that MGA’s obviousness argu-
ment could be pursued only on the basis of what is obvi-
ous to a layperson. Innovention Toys, 665 F. Supp. 2d at
654. In so concluding, the district court erred. While
MGA is permitted to argue that any level of skill, and
thus the skill of a layperson, would suffice to support a
holding of obviousness, the factual record in this case does
not support such a finding. Here, Innovention conceded to
the district court that the level of ordinary skill in the art
was greater than that of a layperson. Specifically, Inno-
vention asserted that the development of a three-
dimensional game would not, in fact, be easy for the
average layperson, as it took Innovention’s game creators,
a Ph.D. in mechanical engineering and two mechanical
engineering students, a year and a half to develop and
finalize Innovention’s game, J.A. 1884 n.10, and that
Innovention’s patent reveals that the claimed invention
requires an understanding of geometrical optics, J.A.


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