Digest of INNOVENTION TOYS, LLC. v. MGA ENTERTAINMENT, INC., WAL-MART STORES, INC., TOYS “R” US, INC., No. 2014-1731 (Fed. Cir. April 29, 2015) (non-precedential). On appeal from EDLA. Before Lourie, Plager, and Taranto. CAFC affirmed in part, reversed in part, and vacated and remanded in part.

Procedural Posture: Appellants-defendants appealed the district court’s summary judgment of infringement and nonobviousness of the patent-in-suit, which was directed to a chess-like board game generating laser beams for players. In a prior decision, the CAFC affirmed on infringement but remanded on nonobviousness. On remand, the district court adopted a jury verdict finding the patent nonobvious and defendants’ infringement willful, and awarding damages for post-issuance infringement and provisional rights damages for pre-issuance activity under 35 U.S.C. § 154(d). The district court trebled the damages. The CAFC affirmed on infringement, reversed the finding of willful infringement, and remanded for entry of judgment without treble damages and reconsideration of attorney fees.

  • Obviousness: Substantial evidence supported jury’s determination of nonobviousness, and the jury’s underlying factual findings were not against the weight of the evidence. Appellants did not prove motivation to combine the prior-art references. Also, objective indicia of nonobviousness supported the jury’s conclusion.
  • Willfulness: Willfulness is not established where the defendant has a substantial, objectively reasonable, though ultimately rejected, defense. Even though defendants’ obviousness arguments were rejected by the jury, they were not objectively unreasonable.
  • Provisional Rights: To obtain a reasonable royalty for provisional rights based on pre-issuance activity that would infringe if took place post-issuance, the invention claimed in the patent must be substantially identical to the invention claimed in the published patent application. The district court correctly determined that the scope of the claims remained unchanged, in that the “movability of key pieces” recited in the issued claims was present in the claims of the published application.