United States Court of Appeals
for the Federal Circuit
__________________________
INNOVENTION TOYS, LLC,
Plaintiff-Appellee,
v.
MGA ENTERTAINMENT, INC.,
WAL-MART STORES, INC., AND TOYS “R” US, INC.,
Defendants-Appellants.
__________________________
2010-1290
__________________________
Appeal from the United States District Court for the
Eastern District of Louisiana in Case No. 07-CV-6510,
Judge Martin L.C. Feldman.
____________________________
Decided: March 21, 2011
____________________________
JAMES C. OTTESON, Agility IP Law, of East Palo Alto,
California, argued for plaintiff-appellee.
MICHAEL A. NICODEMA, Greenberg Traurig, LLP, of
Florham Park, New Jersey, argued for defendants-
appellants. With him on the brief were MARK R. GALIS and
KEVIN J. O’SHEA, of Chicago, Illinois.
__________________________
INNOVENTION TOYS v. MGA ENTERTAIN 2
Before RADER, Chief Judge, LOURIE, Circuit Judge, and
WHYTE, District Judge. ∗
LOURIE, Circuit Judge.
MGA Entertainment, Inc.; Wal-Mart Stores, Inc.; and
Toys “R” Us, Inc. (collectively, “MGA”) appeal from the
summary judgment decision of the United States District
Court for the Eastern District of Louisiana that the
asserted claims of U.S. Patent 7,264,242 (“the ’242 pat-
ent”) were infringed and were not invalid for obviousness.
Innovention Toys, LLC v. MGA Entm’t, Inc., 665 F. Supp.
2d 636 (E.D. La. 2009). Because the district court cor-
rectly found no genuine issues of material fact regarding
infringement based on its construction of the claim term
“movable,” we affirm the court’s grant of summary judg-
ment of literal infringement. The district court, however,
erred in several of its factual findings underlying its
nonobviousness determination. We therefore vacate the
court’s grant of summary judgment of nonobviousness and
remand.
BACKGROUND
I.
Innovention Toys, LLC (“Innovention”) brought suit
against MGA for infringement of the ’242 patent, which
claims a chess-like, light-reflecting board game and
methods of playing the same. The disclosed game in-
cludes a chess-styled playing surface, laser sources posi-
tioned 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. See
∗
The Honorable Ronald M. Whyte, United States
District Court for the Northern District of California,
sitting by designation.
3 INNOVENTION TOYS v. MGA ENTERTAIN
’242 patent col.2 l.64–col.3 l.35. To play the game, players
take turns either moving a playing piece to an unoccu-
pied, adjacent square or rotating (reorienting) a piece
within a square. Id. col.3 ll.21-24; col.8 l.49–col.9 l.12.
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. Id. col.3 ll.26-30; col.9 ll.13-17. To win the
game, a player must direct his laser beam to strike, or
illuminate, his opponent’s non-mirrored key playing piece,
ending the game. Id. col.3 ll.17-20; col.6 ll.44-47.
All the asserted claims, claims 31-33, 39-41, 43-44, 48-
50, and 53-54, include a “key playing pieces” limitation in
which the key pieces are “movable.” Claim 31 is represen-
tative:
A board game for two opposing players or teams of
players comprising:
a game board, movable playing pieces having at
least one mirrored surface, movable key playing
pieces having no mirrored surfaces, and a laser
source,
wherein alternate turns are taken to move playing
pieces for the purpose of deflecting laser beams,
so as to illuminate the key playing piece of the
opponent.
Id. claim 31 (emphasis added).
MGA counterclaimed, denying infringement and al-
leging, inter alia, that the ’242 patent was invalid under
35 U.S.C. § 103. In making its obviousness argument,
MGA relied on the combination of (1) two articles describ-
ing computer-based, chess-like strategy games, Laser
Chess and Advanced Laser Chess (collectively, “the Laser
Chess references”); and (2) U.S. Patent 5,145,182 (“the
INNOVENTION TOYS v. MGA ENTERTAIN 4
Swift patent”) describing a physical, chess-like, laser-
based strategy game.
The Laser Chess game is described in an article enti-
tled “Laser Chess™ First Prize $5,000.00 Winner Atari
ST Programming Contest,” published in the April 1987
edition of Compute!. J.A. 1775-78. Advanced Laser Chess
is described in an article published in the Summer 1989
edition of Compute!’s Amiga Resource. J.A. 1784-87.
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. In
Laser Chess, a player’s king piece may move squares
during game play: “[The king] can capture any opposing
piece by moving onto its square.” J.A. 1776. Similarly, in
Advanced Laser Chess “Kings possess the ability to
capture other pieces [by moving on top of them].”
J.A.1784.
The Swift patent discloses a physical (rather than
electronic) 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. The
scoring modules are mounted to the frame of the game
board, see Swift patent col.2 ll.51-56, and thus are not
physically capable of movement on the game board.
MGA’s accused game, Laser Battle, is a physical
board game for playing a chess-like strategy game.
5 INNOVENTION TOYS v. MGA ENTERTAIN
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. According to the rules of Laser Battle, in “Classic
Game Play,” the Tower pieces are placed on the board at
the beginning of the game at one of various standard
positions. J.A. 1986. Although the Towers are physically
capable of movement on the game board, the rules provide
that they “should always remain in their original posi-
tions on the board.” J.A. 1985. However, the standard
starting configuration illustrated in the rules show that
the Tower pieces can be placed at different locations on
the board, and the rules state that during “Advanced
Game Play,” the Towers need not remain in their stan-
dard positions. J.A. 1986.
II.
On October 14, 2009, the district court ruled on the
parties’ cross-motions for summary judgment of infringe-
ment and invalidity. Innovention Toys, 665 F. Supp. 2d
636. The district court granted Innovention’s motion for
summary judgment of literal infringement. Id. at 647.
The court first construed the claim term “movable” in
light of the term’s plain meaning as “capable of movement
as called for by the rules of the game or game strategy.”
Id. at 644-45. In so holding, the court rejected MGA’s
more “cramped” construction that the movement must be
“from space to space or by rotation within a single space.”
Id. at 643-45; see also id. at 644 n.15. The district court
also rejected Innovention’s broader construction of “mov-
able” to mean “able to be moved, or possible to move,”
without any tie to the rules or strategy of the game. Id. at
642-43.
Based on its construction, the district court then
found that the accused Laser Battle game’s Tower pieces
INNOVENTION TOYS v. MGA ENTERTAIN 6
met the “movable” claim limitation, the only disputed
limitation. The court found that those key pieces were
“moveable” when the players selected and “set up the
game pieces in various start formations and layouts.” Id.
at 647 n.18. The court reasoned that even if “the instruc-
tions to Laser Battle suggest that its key pieces, the
Towers, are not supposed to be moved during game play,”
they “are capable of movement . . . in that they fit into the
recessed spaces on the board like the other pieces, and are
capable of rotation within whatever recessed space a
player may choose to place the Tower in for the start of
game play.” Id. at 646-47. The court also observed that
although the instructions to Laser Battle note that “[t]he
Towers should always remain in their original positions
on the board,” id. at 647 n.18, they also explain that
“[e]xcept for Advanced Game Play, the Target Tower and
the Laser Guns will remain in their standard positions in
all formations,” see id. at 647 n.18 & 19; J.A. 1986. This
instruction suggests that the Tower pieces could be moved
in Advanced Game Play because they fit in and are ro-
tatable in the recessed spaces on the board.
The district court also granted Innovention’s motion
for summary judgment of nonobviousness. Id. at 655.
The court first found that the Laser Chess references
were non-analogous art because they described electronic,
rather than real-world, laser games. Id. at 653. The
district court then held that, because MGA had provided
no evidence to support a finding as to the level of ordinary
skill in the art, MGA’s obviousness argument could be
pursued only on the basis of what would have been obvi-
ous to a layperson. Id. at 654. The court then decided
that because MGA had not provided any evidence that a
layperson would have known of the Laser Chess articles
or would have had any reason to modify the teachings of
7 INNOVENTION TOYS v. MGA ENTERTAIN
the Laser Chess references, MGA had failed to state a
prima facie case of obviousness. Id.
Finally, the court found that Innovention had demon-
strated several secondary considerations of nonobvious-
ness. These included (1) commercial success based on the
sale of 140,000 games by Innovention, 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. Id.
at 654-55. In light of its summary judgment rulings, the
district court granted Innovention’s motion for a perma-
nent injunction on January 13, 2010.
MGA appealed. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
DISCUSSION
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).
I. Infringement
A determination of infringement involves two steps:
First, the court determines the scope and meaning of the
asserted patent claims. The court then compares the
properly construed claims to the allegedly infringing
INNOVENTION TOYS v. MGA ENTERTAIN 8
device to determine whether all of the claim limitations
are present, either literally or by a substantial equivalent.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.
Cir. 1998) (en banc). The first step, claim construction, is
a question of law, reviewed de novo. Id. (citing Markman
v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995) (en banc)). In contrast, infringement, whether
literal or under the doctrine of equivalents, is a question
of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353
(Fed. Cir. 1998). Accordingly, a court may determine
infringement on summary judgment “when no reasonable
jury could find that every limitation recited in the prop-
erly construed claim either is or is not found in the ac-
cused device.” Id.
On appeal, MGA does not argue that the district court
erred in construing “movable” to mean “capable of move-
ment as called for by the rules of the game or game strat-
egy.” Rather, MGA argues that the court improperly
broadened its construction during the second step of the
infringement analysis by adding capable of move-
ment “during game set up,” and thus erred in finding that
Laser Battle’s Tower pieces meet the “movable” limita-
tion. Under the court’s original construction, MGA as-
serts, Laser Battle’s instructions definitively show that
the Tower pieces are not to be moved, either from space to
space or by rotation within a space, as part of the game’s
rules or strategy. Rather, MGA urges, the only way that
the Tower pieces can be “movable” during game play or
strategy is if the players ignore the game’s rules and
cheat. Moreover, according to MGA, because all the
pieces must be moved onto the game board at some point,
the district court’s altered construction renders every-
thing “movable” and the “movable” limitation superfluous.
Innovention responds that Laser Battle’s Tower pieces
are clearly “capable of movement”; each Tower piece is a
9 INNOVENTION TOYS v. MGA ENTERTAIN
separate component that can be placed at any space on
the game board and afterwards rotated within that space
or moved to another space. In other words, Innovention
argues, the Towers are “movable” since they are not
permanently mounted to the game board as are the key
playing pieces (scoring modules) disclosed in the Swift
patent. Furthermore, according to Innovention, Laser
Battle’s instructions do not require the Tower pieces to
remain stationary during all game play; the rules invite
players to create “more intricate games” and tell players
that the Towers “remain in their standard positions in all
formations” except during “Advanced Game Play.”
J.A.1986-87.
We agree in main with the district court's infringe-
ment analysis, 1 and we affirm the district court’s decision
holding that MGA’s Laser Battle game literally infringes
the asserted claims of the ’242 patent. During claim
construction, the district court rejected MGA’s narrower
construction of “movable” in which “movable” was limited
to the movements explicitly permitted by the rules of the
game during game play, i.e., movable from space to space
or by rotation within a single space. Innovention Toys,
665 F. Supp. 2d at 642-43. Rather, the court embraced a
definition that distinguished “movable” from “mounted”
by contrasting the “movable key playing pieces” of the
’242 patent with the fixed scoring modules of Swift. In
1 The district court stated that even if the instruc-
tions suggest that the key pieces should not be moved, the
capability existed, and this was dispositive of the in-
fringement question. Innovention Toys, 665 F. Supp. 2d
at 646-47. To the extent that this analysis implies that
there would be infringement regardless of rules requiring
particular placement of key pieces during game set up
and prohibiting movement of those pieces regardless of
the type of play, the analysis goes beyond that required
for the disposition of the infringement question here.
INNOVENTION TOYS v. MGA ENTERTAIN 10
particular, the district court stated that while the “key
pieces disclosed in the Swift reference are permanently
fixed to the game board and, therefore, cannot be moved
prior to or during game play,” the key pieces of the ’242
patent “may be positioned in different spaces at the
beginning of each game and can also be moved during
game play.” Id. at 644; see also id. at 644 n.15. Thus, the
court’s construction of “movable” includes the capability of
being positioned in different spaces during set up (i.e., at
the beginning of each game) and the capability of being
moved during Advanced Game Play. In other words, the
Tower pieces “are capable of movement as called for by
the rules of the game or game strategy.”
Accordingly, MGA is incorrect when it argues that the
district court expanded its construction of “movable”
during the second step of the infringement analysis. The
court’s construction, not just its application, encompasses
movement during game set up. Moreover, such a con-
struction does not render “movable” superfluous, as MGA
asserts, since it distinguishes the ’242 patent’s key pieces
from the mounted scoring modules disclosed in Swift.
Laser Battle’s Tower pieces thus meet the “movable”
limitation under the district court’s consistent construc-
tion based on the pieces’ undisputed ability to be physi-
cally positioned in different squares on the game board.
No reasonable jury could find otherwise.
Although MGA contends that it does not dispute the
district court’s construction, implicit in MGA’s argument
is its disagreement with the construction of “movable” to
mean “capable of movement.” Because MGA does not
challenge the district court’s claim construction directly,
but rather indirectly based on its application to the ac-
cused product, we will not review the district court’s
construction of “movable” to encompass the capability of
movement. Accordingly, we affirm the district court’s
11 INNOVENTION TOYS v. MGA ENTERTAIN
decision granting summary judgment of literal infringe-
ment.
II. Obviousness
Under the Patent Act, “[a] patent may not be ob-
tained . . . if the differences between the subject matter
sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a). Although the ultimate determination
of obviousness under § 103 is a question of law, it is based
on several underlying factual findings, including (1) the
scope and content of the prior art; (2) the level of ordinary
skill in the pertinent art; (3) the differences between the
claimed invention and the prior art; and (4) evidence of
secondary factors, such as commercial success, long-felt
need, and the failure of others. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). A patent is presumed valid,
35 U.S.C. § 282, and this presumption can be overcome
only by clear and convincing evidence to the contrary.
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1374 (Fed. Cir. 2001).
MGA argues that, rather than being nonobvious, the
asserted claims would have been obvious based on the
combination of the Laser Chess references, which teach
the claimed game in electronic form, and the Swift patent,
which teaches a physical laser-based game. According to
MGA, the district court erred both (1) in concluding that
because the ’242 patent relates to a physical game, the
Laser Chess articles were non-analogous art; and (2) in
assuming that a person of skill in the art was a layperson
rather than, as put forth by Innovention, a mechanical
engineer with knowledge of optics. Finally, MGA argues,
Innovention’s unsupported and conclusory assertions of
INNOVENTION TOYS v. MGA ENTERTAIN 12
secondary considerations fail to overcome MGA’s prima
facie case of obviousness.
Innovention responds that the Laser Chess references
in combination with the Swift patent fail to teach or
suggest every limitation of the asserted claims, and thus
MGA has failed to state a prima facie case of obviousness.
Specifically, Innovention argues that Swift, as MGA
admits, fails to disclose movable key pieces and that the
Laser Chess references fail to disclose any physical, non-
virtual game components. Accordingly, Innovention
argues that the Laser Chess references are non-analogous
art because they are neither within the inventors’ field of
endeavor, i.e., a non-virtual, three-dimensional, laser
board game, nor reasonably pertinent to it. Innovention
also argues that because MGA offered no evidence as to
the level of skill in the art, the skill level defaults to that
of a layperson, and that its evidence of secondary consid-
erations provides further evidence that the claimed inven-
tion would not have been obvious.
We conclude that the district court clearly erred in
several of the factual findings underlying its obviousness
analysis. The district court erred in finding that the
Laser Chess references fail to qualify as analogous art.
The court also erred in concluding that the level of skill in
the art is that of a layperson. We address each in turn.
A. Analogous Art
A reference qualifies as prior art for a determination
under § 103 when it is analogous to the claimed invention.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two
separate tests define the scope of analogous art: (1)
whether the art is from the same field of endeavor, re-
gardless 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
13 INNOVENTION TOYS v. MGA ENTERTAIN
problem with which the inventor is involved.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is
reasonably pertinent if . . . it is one which, because of the
matter with which it deals, logically would have com-
mended itself to an inventor’s attention in considering his
problem.” Clay, 966 F.2d at 659. “If a reference disclo-
sure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact
supports use of that reference in an obviousness rejec-
tion.” Id. Whether a prior art reference is “analogous” is
a question of fact. Id. at 658.
Innovention argues that the Laser Chess articles are
non-analogous art because the ’242 patent’s inventors
were concerned with making a non-virtual, three-
dimensional, laser-based board game, a project that
involves mechanical engineering and optics, not computer
programming. The district court appears to have agreed,
finding that the Laser Chess references were non-
analogous art since each discloses “an electronic version of
the ’242 patent.” Innovention Toys, 665 F. Supp. 2d at
653. The court, however, 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 prob-
lem 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. See
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010) (holding as a matter of law that prior art padlock
seals were analogous since directed to the same problem
of preventing the ingress of contaminants into the locking
mechanism).
The ’242 patent and the Laser Chess references are
directed to the same purpose: detailing the specific game
INNOVENTION TOYS v. MGA ENTERTAIN 14
elements comprising a chess-like, laser-based strategy
game. Specifically, the ’242 patent describes (1) the
game’s components, including the game board, ’242 patent
col.4 ll.45-56, and various types of playing pieces, id. col.6
l.48–col.7 l.24; (2) the game’s specific rules, including how
the pieces may move on the game board during a player’s
turn, id. col.3 ll.21-28, col.8 l.49–col.9 l.17; and (3) the
game’s ultimate objective, namely, illuminating an oppo-
nent’s key playing piece with a laser beam, id. col.6 ll.45-
47. The specification even distinguishes prior art patents
based on these game elements, stating that U.S. Patent
3,516,671 lacks “the unique elements and rules of the
[’242 patent’s] invention,” id. col.1 ll.47-50, and U.S.
Patent 6,702,286 contemplates a game in which the
objective is not to “illuminate playing pieces,” but rather
“to maneuver one’s pieces to flank (or surround) those of
the opposing player,” id. col.2 ll.16-21.
The Laser Chess references likewise describe specific
playing pieces, rules, and objectives to create a chess-like,
laser-based strategy game. Both Laser Chess and Ad-
vanced Laser Chess disclose, for example, (1) various
game pieces, each with unique capabilities, J.A. 1775-77,
1784-85; (2) rules for each player’s turn, J.A. 1777-78,
1785-86; and (3) an ultimate objective of eliminating an
opponent’s king piece, J.A. 1775, 1784.
Accordingly, the ’242 patent and the Laser Chess ref-
erences relate to the same goal: designing a winnable yet
entertaining strategy game. The ’242 patent’s specifica-
tion confirms that game design was one objective facing
its inventors. In particular, the specification states that
“[s]trategy games may differ in a variety of ways,” such as
in board layout, the number and types of playing pieces,
and the manner in which each piece moves on the game
board, and that “[e]ach of these variations affects the
strategy of the play and the degree of skill required to
15 INNOVENTION TOYS v. MGA ENTERTAIN
play the game.” ’242 patent col.2 ll.19-46. The specifica-
tion thus admonishes that if the game elements “are
overly simplistic, the game is too easy, will usually end in
a draw or a predictable manner, and quickly become
uninteresting for the average player.” Id. col.2 ll.49-54.
Conversely, according to the specification, if the game
elements “are overly complicated, the game takes too long
to learn [and] is frustrating and uninteresting for the
average player.” Id. col.2 ll.57-60.
The specific combination of game elements disclosed
and claimed in the ’242 patent thus deals with the prob-
lem of game design, and game elements from any strategy
game, regardless how implemented, “logically would have
commended itself to an inventor’s attention in considering
[this] problem.” Clay, 966 F.2d at 659. Basic game ele-
ments 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 com-
puter scientist. And, as MGA’s evidence shows, inventors
of numerous prior art patents contemplated the imple-
mentation of their strategy games in both physical and
electronic formats. Innovention Toys, 665 F. Supp. 2d at
650 n.23. For example, the Swift patent states that
“[a]lthough the preferred embodiment is played by two
players, obvious modifications of the game allow for . . . a
single player playing against a computer.” Swift col.2
ll.47-51. Thus, because no reasonable jury could find that
the Laser Chess references do not qualify as analogous
prior art, and the district court erred in not so concluding
as a matter of law.
Because of its error, the district court failed to prop-
erly consider the scope and content of the relevant prior
art as well as the differences between that art and the
claimed invention, including whether one of ordinary skill
in the art would have been motivated to combine the
INNOVENTION TOYS v. MGA ENTERTAIN 16
teachings of the Laser Chess references with the Swift
patent in light of the standard articulated in KSR Inter-
national Co. v. Teleflex, Inc., 550 U.S. 398 (2007). We
therefore remand these factual determinations to the
district court to consider in the first instance. Further-
more, should the district court conclude that MGA has
made out a prima facie case of obviousness based on the
Laser Chess articles and the Swift patent, the court must
then determine whether Innovention’s secondary consid-
erations overcome MGA’s prima facie case.
B. Level of Skill in the Art
A determination of obviousness requires a factual
finding of the level of ordinary skill in the art. 35 U.S.C.
§ 103(a); Graham, 383 U.S. at 17. Yet, a district court’s
failure to make a correct finding on the level of skill
constitutes reversible error only where it affects the
ultimate conclusion under § 103. Custom Accessories, Inc.
v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir.
1986). 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
17 INNOVENTION TOYS v. MGA ENTERTAIN
reverse. See Union Carbide Corp. v. Am. Can Co., 724
F.2d 1567, 1573 (Fed. Cir. 1984).
In this case, the district court found that MGA had
failed to provide any evidence of the level of skill in the
art, and thus concluded that MGA’s obviousness argu-
ment could be pursued only on the basis of what is obvi-
ous to a layperson. Innovention Toys, 665 F. Supp. 2d at
654. In so concluding, the district court erred. While
MGA is permitted to argue that any level of skill, and
thus the skill of a layperson, would suffice to support a
holding of obviousness, the factual record in this case does
not support such a finding. Here, Innovention conceded to
the district court that the level of ordinary skill in the art
was greater than that of a layperson. Specifically, Inno-
vention asserted that the development of a three-
dimensional game would not, in fact, be easy for the
average layperson, as it took Innovention’s game creators,
a Ph.D. in mechanical engineering and two mechanical
engineering students, a year and a half to develop and
finalize Innovention’s game, J.A. 1884 n.10, and that
Innovention’s patent reveals that the claimed invention
requires an understanding of geometrical optics, J.A.
1885. The district court appeared to agree, stating that
“it seems some knowledge of mechanical engineering or
optics is required.” Innovention Toys, 665 F. Supp. 2d at
654. The district court thus clearly erred in basing its
obviousness analysis on what would have been obvious to
a layperson notwithstanding evidence in the record and
its apparent factual finding that one of ordinary skill in
the art would possess a higher level of skill in the art.
Because the district court found nonobviousness
based on an inappropriately low level of skill in the art,
the error was not harmless. Kloster, 793 F.2d at 1574.
Accordingly, on remand, the district court must make a
INNOVENTION TOYS v. MGA ENTERTAIN 18
finding on the level of skill in the art and base its obvi-
ousness analysis on that level of skill.
III. Permanent Injunction
The district court, based on its grant of summary
judgment of infringement and nonobviousness, granted a
permanent injunction to Innovention. Because we vacate
and remand the district court’s decision of summary
judgment of nonobviousness, we also vacate the district
court’s permanent injunction.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s grant of summary judgment of literal infringe-
ment, and we vacate and remand the district court’s grant
of summary judgment of nonobviousness.
AFFIRMED IN PART, VACATED IN PART, and
REMANDED