The Federal Circuit has refined the standard for what constitutes Section 103 analogous art in Innovention Toys, LLC v MGA Entertainment, Inc (No 2010-1290 (Fed Cir 21st Mar 2011). In an opinion by Judge Lourie, the court held that references outside of an applicant's field of endeavour are still reasonably pertinent, and therefore analogous art, if they have the same purpose as that of the claimed invention. This decision may well increase the amount of prior art assertable against a patent holder or applicant.
The case involved an obviousness challenge to Innovention's patent, which describes a chess-like board game having lasers and moveable pieces provided with mirrors. Players move these pieces around the board in an effort to strike an opponent's target piece with a laser beam reflected by the mirrors. Innovention filed suit in the Eastern District of Louisiana accusing MGA of infringing its patent.
During summary judgment proceedings at the district court, MGA presented several pieces of prior art that it claimed rendered the Innovention patent obvious. First, MGA presented a pair of articles ("the laser chess references") describing a computerised chess-like game that involved positioning pieces on a digital board and striking an opponent's target with a virtual laser reflected by the pieces. MGA also put forth a patent ("the Swift patent") directed to a table-top, chess-like game involving mirrored pieces and laser beams. Although the Swift patent did not describe moveable target pieces, as required by Innovention's claims, MGA alleged that the laser chess references disclosed this feature, albeit in the context of a computer game. Innovention responded by arguing that the laser chess references were non-analogous art because they, unlike the Innovention patent's claims, were directed to virtual, not real-world, games. The district court agreed and ruled Innovention's patent non-obvious. MGA appealed.
On appeal, the Federal Circuit held that the district court did not properly consider both prongs of the test for analogous art – that the cited reference be either:
Within the applicant's field of endeavour.
Reasonably pertinent to the particular problem with which the inventor was involved (In re Bigio, 381 F 3d 1320, 1325 (Fed Cir 2004)).
A reasonably pertinent reference is one that "logically would have commended itself to an inventor's attention in considering his problem" (In re Clay, 966 F 2d 656, 659 (Fed Cir 1992)).
In rejecting the district court's analysis, the Federal Circuit elaborated on the second prong of the analogous art test. Specifically, the court held that a reference will be reasonably pertinent, and therefore analogous art, if directed to the same purpose or goal as that of the claimed invention. In its ruling, the Federal Circuit has, implicitly, rejected a narrow application of the test for analogous art.
In making its determination as to the claimed invention's purpose, the Federal Circuit noted the Innovention patent's description of game components, rules and distinctions over prior patents not directed to striking playing pieces with a laser beam. Similarly, the court held that the laser chess references "likewise describe specific playing pieces, rules, and objectives to create a chess-like, laser-based strategy game" (id at 14). These common descriptions in both the Innovention patent and the laser chess references supported the Federal Circuit's holding that the laser chess references were analogous art. Ultimately, the court concluded that both the Innovention patent and the laser chess references each dealt with the problem of game design. It further reasoned that:
"[b]asic game elements remain the same regardless of the medium in which they are implemented: whether molded in plastic by a mechanical engineer or coded in software by a computer scientist." (Id at 15.)
The application of the 'same purpose' standard necessarily depends on how narrowly (or broadly) a party interprets the purpose of a claimed invention or reference. In Innovention, the Federal Circuit appears to construe the purpose rather broadly: "detailing the specific game elements comprising a chess-like, laser-based strategy game" and "designing a winnable yet entertaining strategy game" (Innovention, slip op at 13-14). However, had the purpose been to create specific game elements for a chess-like, laser-based physical strategy game, the outcome may well have been different. While the game mechanics of both may share some common similarities, electronic and physical games each hold unique challenges, present unique problems and require different skill sets. On the other hand, the development of game rules, overall layout and similar mechanics may not differ substantially between virtual and real-world strategy games.
Going forward, the Federal Circuit and district courts will doubtless provide greater guidance to practitioners on how to determine the purpose of a particular invention or reference for analogous art purposes. For now, patent applicants should take care in defining and framing the goals of their inventions in applications and during prosecution, as well as the manner in which they distinguish prior art in their applications, as they may be inadvertently increasing the volume of prior art that can be used to invalidate their patents.