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Volume XI, Number 294

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Laser Board Game May Be Obvious Based on Laser Computer Game

The U.S. Court of Appeals for the Federal Circuit affirmed a district court’s judgment of infringement of a chess-like laser board game, but vacated the judgment of nonobviousness based on the district court’s narrow view of analogous art and unduly a low view of the level of skill in the art.  Innovention Toys LLC v. MGA Entertainment Inc.   Case No. 10-1290 (Fed. Cir., Mar. 21, 2011) (Lourie, J.).

Innovention’s patent involves a chess-like board game in which opposing players shoot a laser beam at mirrored game pieces in order to reflect the beam in an attempt to strike an opponent’s key playing piece, i.e., the “king.”  The patent disclosed and claimed that the key playing pieces were “movable.” The object of the patented game is to move game pieces so as to eliminate the opponents key piece. MGA introduced a chess-like laser board game titled Laser Battle.  One month after Innovention obtained its patent it sued MGA, alleging infringement (both literal and by the doctrine of equivalents).

The district court interpreted the claim term “movable” according to its plain meaning—“capable of movement” per the rules of the game.   The infringement issue revolved around whether movement was something that occurred during game play (as MGA argued) or also during game setup (as Innovention Toys argued).   On the issue of obviousness the district court also found two pieces of prior art to not be analogous because they were directed to electronic laser chess games rather than physical board games and concluded that the level of a person of ordinary skill was that of a lay person.  After the claims were found to be infringed and not invalid, MGA appealed. 

On appeal, the Federal Circuit affirmed the district court’s literal infringement determination and construction of the claim term “movable.   However, the Federal Circuit determined that the district court erred in finding that the laser chess references failed to qualify as analogous art.   The Court explained that there are two separate tests used to define the scope of analogous art:  whether the art is from the same field of endeavor, regardless of the problem addressed, and 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.  As explained by the Federal Circuit, the district court erred in failing to consider that an electronic, laser-based strategy game, even if not in the same field of endeavor, would have been reasonably pertinent to the problem facing an inventor of aphysical, laser-based strategy game. 

As explained by the Court, the patent and the references are both directed to the same purpose of detailing the specific game elements comprising a chess-like, laser-based strategy game.   If a reference disclosure 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 rejection.   Game designers, as evidenced in numerous prior art patents, contemplate the implementation of their strategy games in both physical and electronic formats.  The Federal Circuit relied on comparing the games components, rules and ultimate objective as opposed to the medium in which they were implemented. 

The Federal Circuit also found fault with the district court inappropriately low level of skill in the art: that of a layperson.  Since Innovention had previously conceded that the level of ordinary skill in the art was greater that of a layperson and the higher level of skill mitigated in favor of a conclusion of obviousness, the error was not harmless.  The Federal Circuit remanded the case back to the district court for a determination of proper level of skill.

© 2021 McDermott Will & EmeryNational Law Review, Volume I, Number 127
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