Innovention Toys, LLC v. Mga Entertainment, Inc.

637 F.3d 1314 (2011)

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Nature of the Case

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Facts

Innovention (P) brought suit against Ds for infringement of the '242 patent, which claims a chess-like, light-reflecting board game and methods of playing the same. P's game includes a chess-styled playing surface, laser sources positioned to project light beams over the playing surface when 'fired,' mirrored and non-mirrored playing pieces used to direct the lasers' beams, and non-mirrored 'key playing pieces' equivalent to the king pieces in chess. Players take turns either moving a playing piece to an unoccupied, adjacent square or rotating (reorienting) a piece within a square. After moving or rotating a piece a player then fires his laser, and if the laser's beam strikes the non-mirrored surface of a playing piece, that piece is eliminated from the game. A player must direct his laser beam to strike, or illuminate, his opponent's non-mirrored key playing piece, ending the game. Ds denied infringement claiming the '242 patent was invalid under §103. Ds relied on the combination of (1) two articles describing computer-based, chess-like strategy games, Laser Chess and Advanced Laser Chess (collectively, 'the Laser Chess references'); and (2) the Swift patent describing a physical, chess-like, laser-based strategy game. The Laser Chess game is described in an article entitled 'Laser Chess™ First Prize $5,000.00 Winner Atari ST Programming Contest,' published in the April 1987 edition of Compute!. Advanced Laser Chess is described in an article published in the Summer 1989 edition of Compute!'s Amiga Resource. Both articles disclose chess-like computer games with virtual lasers and mirrored and non-mirrored pieces, which are moved or rotated by players during alternating turns on a virtual, chess-like playing board. The goal of each game is to manipulate one's laser beam using the various game pieces to eliminate the other player's non-mirrored king piece by striking it with the laser beam. The Swift patent discloses a physical strategy game in which players take turns placing mirrored game pieces onto squares of a chess-styled game board. The players position the pieces so as to direct their laser's beam towards the opposing player's scoring module and away from their own. A player scores when his laser beam, having been deflected around the game board, strikes his opponent's scoring module. Ds' game is a physical board game for playing a chess-like strategy game. Players take turns moving or rotating mirrored playing pieces so as to direct a laser beam to strike the opposing player's non-mirrored Tower playing piece to win the game. The district court granted P's motion for summary judgment of literal infringement. The district court also granted P's motion for summary judgment of nonobviousness. The district court held that, because Ds had provided no evidence to support a finding as to the level of ordinary skill in the art, Ds’ obviousness argument could be pursued only on the basis of what would have been obvious to a layperson. The court found that P had demonstrated several secondary considerations of nonobviousness. These included (1) commercial success based on the sale of 140,000 games, a small company with minimal marketing capabilities, and evidence that fans had started clubs and tournaments around the world; (2) long-felt need based on the game's sudden success and media praise; and (3) industry praise based on, inter alia, the game's nomination for Outstanding Technology of the Year by the International Academy of Science and its being one of five finalists for the Toy Industry Association's 2007 Game of the Year award. Ds appealed.