Docket No. 2014-1731
Lourie, Plager, Taranto
April 29, 2015
Brief Summary: Wilfullness determination reversed because “the gap between the prior art and Innovention’s claims, while large enough to allow the jury to find that MGA did not successfully establish the required motivation to combine…was not particularly large” (“sufficiently small that MGA’s defense was reasonable”).
Summary: The DC initially granted SJ that MGA infringed the asserted claims of US 7,264,242 (Light-Reflecting Board Game, sold by Innovention as “Deflexion” and “Khet”), and had not created a triable issue regarding obviousness. The FC affirmed the infringement decision but vacated and remanded on nonobviousness because the DC did not “recognize that key prior-art reference were pertinent prior art and had incorrectly found the level of ordinary skill in the art to be that of a layperson” (Innovention, FC 2011). On remand, the jury rejected the obviousness challenge, found MGA’s infringement to be willful and awarded damages to Innovention from the time the patent issued and when the patent application was published (35 USC § 154(d)) (over $1.5 million), which the DC trebled under 35 USC § 284. MGA’s primary argument was that the patent is invalid in view of the prior art. The FC opinion explained that “[a] party asserting that a patent is obvious ‘must demonstrate by clear and convincing evidence that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so” (PAR Pharm., FC 2014) and that “MGA presented little evidence on motivation to combine with a reasonable expectation of success” (thus, the motion was properly denied). MGA argued the pre-issuance award was improper because the claims changed from the published application to the issued patent. The FC explained that is “must discern whether the scope of the claims are identical, not merely whether different words are used” and the ultimate legal conclusion is reviewed de novo (Teva, US 2015). It concluded “the movability of key pieces was already present in the claims of the published application” and “[a]t least some of the claims found to infringe here retain their original scope, and MGA has not contended that any of the infringing acts here infringed only the broadened claims” (“consisting of” amended to “comprising”). The DC was therefore found to have correctly awarded pre-issuance damages. But the FC also found that the DC erroneously gave MGA’s expert witness testimony regarding whether a physical game piece was required too much effect since “the gap between the prior art and Innovention’s claims, while large enough to allow the jury to find that MGA did not successfully establish the required motivation to combine…was not particularly large” (“sufficiently small that MGA’s defense was reasonable”). Thus, it concluded “MGA cannot be said to have ‘acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and reversed the wilfullness determination.