Federal Circuit Rejects Narrow View of Analogous Arts Test

by Dennis Crouch

Innovation Toys v. MGA Entertainment and Wal-Mart (Fed. Cir. 2011) Download 10-1290

Panel Judges Rader, Lourie, and Whyte

The patent in suit are directed to a strategy board game that uses lasers and movable mirrored playing pieces. The winner is the first to illuminate opponent’s “key playing piece.”  See U.S. Patent No.  7,264,242. Defendant MGA’s Laser Battle board game seemed to fit the bill, and the district court granted summary judgment of literal infringement.

On summary judgment, the district court also held the patent non-obvious.  The keystone of the district court’s analysis was that  element of the district court judgment to exclude prior art related to the 1989 Atari Laser Chess video game. In particular, the district court held that the video game was not analogous art to the patented board game.

Analogous Art: Prior art is not considered in the obviousness analysis unless it can be classified as analogous art. In his treatise, Donald Chisum defines analogous art as “prior art [that] includes both references in the art in question and references in such allied fields as a person with ordinary skill in the art would be expected to examine for a solution to the problem.”  The Federal Circuit has traditionally followed a two step analysis to determine whether a reference is analogous: “(1) whether the art is from the  same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular.”  In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).  The court treates the question of whether art is analogous as a question of fact.

In KSR v. Teleflex, the Supreme Court ruled that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining [prior art] elements in the manner claimed.”  While that holding addressed a slightly different doctrinal aspect of the nonobviousness analysis, the bases for the Supreme Court’s ruling in KSR would apply for the analogous arts test. This appellate decision does not discuss KSR. However, in Wyers v. Master Lock, 616 F.3d 1231 (Fed. Cir. 2010) (Dyk, J.), the Federal Circuit opined that KSR “directs [the court] to construe the scope of analogous art broadly.”  In Wyers, Judge Dyk points to the KSR statement that “familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.”

Here, the court did not need to use KSR to expand upon the traditional doctrinal limits of analogous arts. In reviewing the lower court decision, the Federal Circuit held that the lower court

failed to consider whether a reference disclosing an  electronic, laser-based strategy game, even if not in the same field of endeavor, would nonetheless have been reasonably pertinent to the problem facing an inventor of a new,  physical, laser-based strategy game.  In this case, the district court clearly erred in not finding the Laser Chess references to be analogous art based on this test as a matter of law.

On remand, the district court will be asked to reconsider the obviousness question after including the Laser Chess video game reference.

42 thoughts on “Federal Circuit Rejects Narrow View of Analogous Arts Test

  1. Since this be Euro-stuff, I be nice and make the observation regarding

    that would (not simply could, but would) have prompted the skilled person

    Here in the States with KSR, the “would” and the “could” are indistinguishable. An examiner merely has to make something up regarding market conditions or design desire to move the ‘could’ into the land of the “would.” KSR’s sharp sword amplified the ability to use “common sense” to obliterate any difference between the two words.

    Or put another way, the fact that someone did endeavor to purposely make the invention means that there was some impetus to so do so. The only thing that KSR doesn’t cover is accidental oopsie types of inventions.

    Mind you – this is expressly against the written law as captured in 103 (which we done already commented on in another thread).

    Me being nice here is not saying anything derogatory abou the EP laws.

  2. Quoting:
    Guidelines for Examination – PART C – CHAPTER IV – 11.7.3 Could-would approach

    “In the third stage the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves (see IV, 11.4).

    In other words, the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83, OJ 6/1984, 265). This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.”

    The magic words are:
    “but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83, OJ 6/1984, 265)”

    How’s that for ammo?

  3. Max,

    I think US practitioners don’t like CIT claims because it’s a wonderful way of NOT looking at the claim as a whole.

    With respect to your assertion that, effectively, without a TSM, an inventive step attack fails, I can only comment on my own experience, which is that EPO examiners are willy nilly in combining references in an absence of TSM. It happens in many of my cases, and I have never heard this assertion from any of my foreign counterparts.

    Do you have any statutory, case law, or EPO examination guideline proof of this? It’s not that I don’t trust you — it’s that I’d love to be able to use this as ammunition in my EPO cases. While I’ve made the lack of TSM argument many times, the examiners seem to not care one whit, so some proof that this is the law would be very helpful to include.

  4. “automobile headlight”

    Don’t you mean radiant energy beam shaping means?

    Try and find that in a word search…..

    Of course, it the days of “bins” it would have been a piece of cake.

  5. Just to reiterate, I believe the district court had based its holding (of lack of analogous art) on its view that the invention primarily was the directed to mechanical and optical aspects of implementing the game. This was the “skill” proffered by the patent owner and not rebutted by the infringer.

    In reversing, the Feds looked at the invention both claimed and described in the specification. The claims and the description were directed primarily to the game itself — the game architecture — as opposed to any particular mechanical engineering problem solved by the inventors in implementing a 3-dimensional board game using lasers.

    So understood, we see the district court’s error and why the Feds reversed. This case should not be taken as anything really new on “analogous” arts. Rather, it is a case where the district court fundamentally erred in its determination of the field of endeavor and the resulting skill of the ordinary artisan.

  6. Where,7? In that little word “would”. If the published written prior art you rely upon lacks any such hint or suggestion you are not going to prevail at the EPO with your obviousness attack.

    As to your “nebulous” I infer you are expecting EPO Examiners in their civil (Roman) law environment to have the same relationship to “evidence” as USPTO Examiners are required to follow, in their English common law environment. For me it is not “nebulous” at all, but then, I’m on my home patch so I would say that, wouldn’t I?

    The “characterized in that” form of claim powerfully exposes the noveltyof the claimed subject matter over D1. And it also reveals when that novelty is banal. And it also reveals when the banal novel feature is a difference without any substance. It is painful and embarrassing when an EPO Examiner re-arranges the features of a one part claim into a two part (c-i-t) claim that exposes the claimed subject matter as novel by virtue of nothing more than a trivial feature. I guess this explains some American indignation about the ways of examination for obviousness at the EPO.

  7. Ok, then you totally discount the testimony that it took a PhD and other team members more than a year to actually build the device.

    The problem that I see is that difficulties involved in 3 dimensional games involving “rules” relate to matter not claimed. The claims seem rather directed to the game rules.

  8. Perhaps you miss what I liked about the TSM test — it limited you to the four corners of the document. There was no nebulous “anyone familiar in the widget arts would know to add component X to a widget to solve problem Y, so even though you have novelty, you have no inventive step.” Was there a direct teaching, suggestion, or motivation in the document to add X to the widget? No? Then it’s non-obvious.
    ___________
    Harry

  9. Excessive reliance on word searching will cause patent attorneys to coin new words or use existing words in creative ways. For instance, For instance, the automobile headlight lens referred to elsewhere here could be called a “transparent lampshade”. This will stymie the mindless word search that Ping and Slonecker refer to, at the cost of polluting the commons by making it harder to understand patents. Soon, patents will not be for novel inventions, but for novel ways to describe obvious devices.

  10. Here is a similar story

    A federal judge in New York City has rejected the expansive amended settlement agreement between Google, U.S. authors and publishers more than a year after the court heard from a wide variety of interested parties in hearings on the fairness of the settlement of a class action lawsuit.

    “The question presented is whether is whether the [amended settlement agreement] is fair, adequate, and reasonable. I conclude that it is not,” wrote Second Circuit Judge Denny Chin, who was a federal district court judge for the Southern District of New York when the case landed in his lap.

  11. I “field of endevor” is does not have a simple answer in this case. There are the “game” aspects requiring skill in game design regardless of platform; and there are implementation aspects requiring mechanical engineering skill with some familiarity with optics.

    Yeah, right. We’re talking about mirrors, miniature flashlights, and an eight-by-eight grid on a gameboard. The “mechanical engineering skill” and “familiarity with optics” you’re talking about is at the level you’d expect from a college-bound eleventh-grader who has taken geometry and physical science.

    I only skimmed the case, but my take-away was that the obviousnessness issue comes down to whether it was obvious to pull a a game piece out of its snug-but-not-secure hole and put it into an identical snug-but-not-secure hole in an adjacent square. Boy, that’s a tough one, given the teachings away in three or four dozen other “strategy” board games.

  12. Paulie,

    I done already told you – PHOSITA power – broadly – pertinent to the problem (no such thing as “reasonable” when dealing with an omniscient legal contstruct).

    If ya can explain it… – like that is a problem with the use of the applicant’s work as a road map (or a jigsaw puzzle if ya be a member of the juciary) – ya be in the clear

  13. PTO 2010 Obviousness Guidelines: “The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.”

  14. OMIGOD! AS IF THE PHYSICS OF LIGHTS APPLIES TEH SAME TO BOTH HEADLIGHTS AND MICROSCOPIC FEATURES LIKE A HUMANOID EYE!!!@!

  15. The panel won’t address the non-analogous arguments and will find some other grounds on which to reverse. The only time the BPAI addresses the non-analogous art argument is when they agree with the examiner that it is analogous.

  16. Currently being tested (or will be tested, after the long, long pendency period) before the BPAI is whether an automobile headlamp cover (referred to by its Japanese corporate assignee as “an automobile lens”) is really, truly analogous art to a surgically implantable intra-ocular lens of the sort used after a person’s crystalline lens is removed in cataract surgery.

  17. cannot tell who was right without actually reviewing the prosecution history. But on its face, it seems the claim is primarily directed to game architecture where the invention, if any, was really in the science and engineering needed to implement the game.

    Perhaps we have a failing here by the scrivenor.

    Without that “failing”, of course, the patentee would have had no case to bring. Maybe there’s a continuation pending …?

  18. Maxie,

    Locate the differences between your claims and the closest prior art document. Identify the technical problem to be solved with respect to D1 by your claims. If one of skill in the art would arrive at your claims by modifying the closest prior art document, absent “inventive activity,” there is no inventive step.

    Where does a hint or suggestion come into it? Where is that in the test?

    Perhaps you miss what I liked about the TSM test — it limited you to the four corners of the document. There was no nebulous “anyone familiar in the widget arts would know to add component X to a widget to solve problem Y, so even though you have novelty, you have no inventive step.” Was there a direct teaching, suggestion, or motivation in the document to add X to the widget? No? Then it’s non-obvious.

  19. I “field of endevor” is does not have a simple answer in this case. There are the “game” aspects requiring skill in game design regardless of platform; and there are implementation aspects requiring mechanical engineering skill with some familiarity with optics.

    While it might be “obvious” to design a game, regardless of platform based on the prior art software implementation, it may not be so obvious to as to how to actually build a physical device that requires skill in mechancial design and optics.

    Of course, it is the claim that counts. If all that is claimed is the game, the novelty is in the game elements. The mechanical engineering skill aspects of the game can then be ignored and the prior art software game showing the same basic game architecture would be perfectly good prior art.

    Likewise, if the novelty is really in the mechancial aspects and the optics, then the game architecture elements have nothing very much to do with the invention.

    It seems to me that the lower court was convinced that the novelty lay in the mechanical engineering aspects of the claim, while the Feds essentially held that the novelty was in the game architecture.

    This, I believe, was the major disagreement with between the two courts.

    I cannot tell who was right without actually reviewing the prosecution history. But on its face, it seems the claim is primarily directed to game architecture where the invention, if any, was really in the science and engineering needed to implement the game.

    Perhaps we have a failing here by the scrivenor.

  20. Wait a minute. If the ordinary skill in the art of board games is that of an average mechanical engineer, but it took a team of engineers some of whom had PhDs a couple of years to actually develop the inventive board game, skill far beyond the skill of the ordinary mechanic, are we not saying that we have proved the invention to be non obvious?

    The Feds seem to want to define the skill level in terms of the inventor himself. I think that is what they said here.

    As to analogous art, the video game seems so far afield as to be equivalent to watching a transporter in operation on Star Trek. How in the fricken world does that make the actual reduction to practice of a transporter obvious? There is no relation whatsoever.

  21. But 7. EPO-PSA IS TSM, European style. It is 100% objective. You have to find the hint or suggestion in the state of the art. For the time being, I am going to assume you haven’t a clue how EPO-PSA , by reference to just two specific pre-existing documents (one of them the app as filed), fixes the “objective technical problem” (which is the prerequisite for the further steps of the analysis). Will you tell me where you have acquired your intimate and expert knowledge of how correctly to operate EPO-PSA?

  22. Max,

    As much as you love the PSA, it’s still a subjective test. How do you determine whether the skilled person, in light of his common general knowledge and the state of the art, would have been motivated to arrive at the claimed subject matter to solve the given problem? THAT prong is purely subjective, which makes the PSA as much gobbledygook as the US approach.

    I like nice, easy, brightline tests. TSM, MOT, etc. Easy to understand, easy to apply, not hugely subjective in nature.

  23. Here’s an interesting question to ponder…the prior art in question is essentially a software-implemented board game (click on the link above for “laser chess” to see what it was all about).

    What if the facts were flipped around–the claimed invention was a video game and you were trying to determine if a similar board game was analogous art. To me, that seems like an easy question–yes, it would be analogous art. Should the reverse be any different? Shouldn’t the answer be the same–if they are analogous in one direction, they are also analogous going the other direction.?

  24. So even a computer programmer may look to the bio arts for answers.

    Shocking! Of course, they may also look at any other aspect of the non-virtual world to see how a “problem” was “solved” in and then “automate” the solution using a POWERFUL COMPUTER BRAIN.

    I don’t think many valid patents result from this approach to patenting, but the PTO issues them by the bucketload.

  25. Paulie,

    I done observe many times now: KSR super empowers “in the art” cause all arts that may provide an answer are open for inclusion in the obvious determination.

    So even a computer programmer may look to the bio arts for answers. Yeah I know, who would ever look to the “grown-up” arts for answers, right?

  26. Does not KSR essentially say on its facts that the [103 essential legally created fictional] PHOSITA working on car brake pedal systems is presumed to have had enough common sense to look elsewhere for a logical place, such as a pivot axis, to put sensors or wire connections? Is that really a streatch? Does an ME or EE working on a particular part limit his ideas or features to only those known in the art for that particular part?

  27. Somehow I think the time required to make the invention should also play a factor in the obviousness analyis. If an invention is obvious, the solution appears as soon as the problem is presented.

    Also, in the Greenwood case, I think the Supremes were suggesting that the more skill one required to make the invention, the more it deserved patent protection.

  28. The treatment of “level of skill in the art” also has me puzzled.

    “For example, no reversal is necessary where a district court makes a determination that an invention would have been obvious to one having the lowest level of skill, i.e., a layperson, because what is obvious to a lay-person is necessarily obvious to one with a higher level of skill in the field of the invention. Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1574 (Fed. Cir. 1986), over-ruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc). Conversely, no reversal is necessary where a district court makes a determination of nonobvi-ousness based on a finding of the highest possible level of skill in the relevant art, as fewer inventions are obvious to a person with a lower level of skill than to one with a higher level of skill. Id. A less sophisticated level of skill generally favors a determination of nonobviousness, and thus the patentee, while a higher level of skill favors the reverse. See Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984).”

    Doesn’t KSR flip this? If the skill in the art is low (as Malcolm would say is the case with software) wouldn’t a variation be considered to be within the skill of the art?

    Here, PhDs worked for a year on the project and the skill needed was quite high (Malcolm’s argument about biotech). I would argue that this would not make the invention more obvious, but less.

  29. Eurobrit, I found out yesterday that the Japanese Patent Office and the Japanese courts use the same approach to test obviousness. Dah-hah! It is the ex post facto analysis-free EPO Problem and Solution Approach.

    Yet the courts in Europe still decline to have anything to do with it. That’s because they consider EPO-PSA to be “not real world”. But the real world of inventors is subjective, not objective. When testing novelty, that entirely artificial construct, the PHOSITA, knows all the art so using a not-in-the-real-world construct for novelty purposes is banal. Using one also for obviousness, in order to achieve objectivity, ought also to be banal.

    But, if the national courts in Europe cannot yet bring themselves to adopt EPO-PSA, why should we expect the US courts to do it first, in their FtI world in which obviousness is in relation to a conception (rather than in relation to what the inventor has already said about problems and solutions in the specification written before the PTO filing date)?

    When Japan has built a reputation as THE country in which to litigate patents, we might be getting somewhere.

  30. They need to fix this boilerplate when validity is the issue. The Supremes require that the issue of evidence sufficiency under C&C also be addressed on summary judgment in addition to whether there are no undisputed facts.

    “This court reviews a district court’s decision on sum-mary judgment de novo, reapplying the same standard applied by the district court. Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir. 2009). Summary judgment is ap-propriate “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).”

  31. Otherwise known as… dare I say it… the European problem and solution test?

    Identify closest realistic starting point
    Identify the technical problem solved by the invention in light of the closest starting point
    Ask whether the skilled person, in light of his common general knowledge and the state of the art, would have been motivated to arrive at the claimed subject-matter in contemplation of the problem solved.

  32. 103 provides in part:

    “…person having ordinary skill in the art to which said subject matter pertains.”

    Perhaps it would be more beneficial to stop using “PHOSITA”, and start using “PHOSITATWSSMP”.

  33. Analogous art… hmm. The standard we are considering is whether the invention taken as a whole would have been obvious to one of ordinary skill in the art. How about if we consider what references PHOSITA considered relevant? What did those folks know or consult when considering a new problem? How can the prior art make an invention obvious to PHOSITA if PHOSITA did not know the reference or the place where one should look for it, for that matter, existed?

    This is one of the big fallacies of KSR and the hindsight application of the obviousness standard. Sure, looking back you can see that an obscure reference discloses what the analysis says it discloses, but that begs the question of why would PHOSITA have looked at an obscure reference in the first place?

  34. Sloney,

    The only real “use” of the classification system nowadays is to provide a reason for division. Funny how the reasonfor division (more than one area to search) never seems to be mentioned in all of these “key-word” searches that cross those very divisional classification lines…

    Just an observation.

  35. At the risk of repeating myself, cases such as these are hardly “groundbreaking”. The legal standards articulated in the opinion fairly reflect what has been the law going back well before 32 years ago when I fist began practicing 32 years ago.

    The difference back then, as I see it, is that a far greater emphasis was placed on the classification system employed by the USPTO. What seems to have changed in the interim is the ubiquitous use of word searches that have the unerring tendency to “discover” art in subject matter areas having virtually nothing to do with the actual invention.

    To this very day no one to my knowledge has even addressed the significance of the classification system and the role it plays (make that should play) in delimiting the scope of searches in anticipation of preparing Office Actions.

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