by Dennis Crouch
Innovation Toys v. MGA Entertainment and Wal-Mart (Fed. Cir. 2011) Download 10-1290
Panel Judges Rader, Lourie, and Whyte
The patent in suit are directed to a strategy board game that uses lasers and movable mirrored playing pieces. The winner is the first to illuminate opponent's "key playing piece." See U.S. Patent No. 7,264,242. Defendant MGA's Laser Battle board game seemed to fit the bill, and the district court granted summary judgment of literal infringement.
On summary judgment, the district court also held the patent non-obvious. The keystone of the district court's analysis was that element of the district court judgment to exclude prior art related to the 1989 Atari Laser Chess video game. In particular, the district court held that the video game was not analogous art to the patented board game.
Analogous Art: Prior art is not considered in the obviousness analysis unless it can be classified as analogous art. In his treatise, Donald Chisum defines analogous art as "prior art [that] includes both references in the art in question and references in such allied fields as a person with ordinary skill in the art would be expected to examine for a solution to the problem." The Federal Circuit has traditionally followed a two step analysis to determine whether a reference is analogous: "(1) whether the art is from the same field of endeavor, regardless 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." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The court treates the question of whether art is analogous as a question of fact.
In KSR v. Teleflex, the Supreme Court ruled that "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining [prior art] elements in the manner claimed." While that holding addressed a slightly different doctrinal aspect of the nonobviousness analysis, the bases for the Supreme Court's ruling in KSR would apply for the analogous arts test. This appellate decision does not discuss KSR. However, in Wyers v. Master Lock, 616 F.3d 1231 (Fed. Cir. 2010) (Dyk, J.), the Federal Circuit opined that KSR "directs [the court] to construe the scope of analogous art broadly." In Wyers, Judge Dyk points to the KSR statement that "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle."
Here, the court did not need to use KSR to expand upon the traditional doctrinal limits of analogous arts. In reviewing the lower court decision, the Federal Circuit held that the lower court
failed to consider whether a reference disclosing an electronic, laser-based strategy game, even if not in the same field of endeavor, would nonetheless have been reasonably pertinent to the problem facing an inventor of a new, physical, laser-based strategy game. 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.
On remand, the district court will be asked to reconsider the obviousness question after including the Laser Chess video game reference.