## Facts

- Innovention Toys, LLC owned U.S. Patent No. 7,264,242 covering a chess-like physical board game that uses a laser beam and reflective (mirrored) playing pieces to capture an opponent’s piece.
- MGA Entertainment, Inc. and retailers sold a competing physical laser-based strategy board game with a board, mirrored pieces, and a laser source whose beam reflects off pieces during play.
- Innovention sued for patent infringement in the Eastern District of Louisiana; MGA denied infringement and counterclaimed that the asserted claims were invalid as obvious under 35 U.S.C. § 103.
- MGA relied in part on a prior computer strategy game known as “Laser Chess,” which used virtual lasers and virtual mirrors but similar gameplay concepts.
- The district court granted summary judgment that MGA literally infringed and that the asserted claims were not obvious, reasoning that the computer game was not analogous art because it was electronic rather than a physical board game.
- MGA appealed the infringement and validity rulings to the Federal Circuit.

## Issues

1. Whether the prior computer game “Laser Chess” qualifies as analogous art for the § 103 obviousness analysis of a physical laser board game patent.
2. Whether, with “Laser Chess” treated as prior art, genuine disputes of material fact precluded summary judgment of nonobviousness.
3. Whether the accused MGA products literally infringed the asserted claims under the correct claim constructions.

## Decision

- The Federal Circuit affirmed summary judgment that MGA’s accused game literally infringed the asserted claims.
- The Federal Circuit reversed summary judgment of nonobviousness and remanded for further proceedings on obviousness.
- The court held that “Laser Chess” is analogous art and must be considered in evaluating obviousness.
- Because the prior art created triable factual disputes relevant to the obviousness inquiry, judgment of nonobviousness as a matter of law was improper.

## Legal Principles

- A reference is analogous art if it is (1) from the same field of endeavor, regardless of the problem addressed, or (2) reasonably pertinent to the problem faced by the inventor.
- The field-of-endeavor inquiry looks to the patent’s description of the invention (including embodiments, function, and structure), not merely the inventor’s labels or characterizations.
- A categorical physical-versus-electronic distinction does not, by itself, exclude a reference from analogous art when the subject matter and problem addressed are sufficiently related.
- Obviousness is a legal conclusion based on underlying factual determinations, including the scope and content of the prior art, differences between the prior art and the claims, the level of ordinary skill, and objective indicia.
- Summary judgment is improper where material factual disputes exist on the underlying obviousness factors; all reasonable inferences must be drawn for the nonmovant.
- Literal infringement may be resolved on summary judgment where, under the correct claim construction, the record shows no genuine dispute that the accused product contains every claim limitation.

## Conclusion

The Federal Circuit held that a computer-based laser strategy game could be analogous art to a patented physical laser board game, requiring consideration of that reference and precluding summary judgment of nonobviousness, while leaving intact summary judgment that the accused products literally infringed under the adopted claim constructions.


Innovention Toys, LLC v. MGA Ent. Inc., 637 F.3d 1314 (Fed. Cir. 2011)