Joshua Fruchter, Esq. is a member of the New York Bar Association, and a former attorney at a large NYC
firm. He is currently the principal of eLawMarketing,
a leading provider, since 2002, of website development, email marketing, blogging, search engine optimization
(SEO), and social media services to law firms of all sizes. A graduate of NYU School of Law, Joshua combines
his legal background and marketing technology expertise to help law firms generate leads and business from Internet
marketing. Joshua has published articles on legal marketing technologies in numerous law-related periodicals,
and has presented on legal marketing technologies before various bar and legal marketing associations. Joshua
is also the editor of LawyerCasting, a blog covering "best practices" in online marketing for lawyers and law
Reprinted with permission.
ExpertServices periodically sends me e-mails that highlight recent key court cases that can significantly affect
the effectiveness of expert testimony, both for the plaintiff and for the defendant. You need only scan the headlines
I post daily to know the importance of effective legal representation when intellectual property (IP) is being contested.
This article by
IMS ExpertServices, reviews a recent patent infringement lawsuit and the contortions used by legal 'experts'
to argue whether the designers of a laser-equipped board game knowingly used features of a pre-existing game as
a springboard for their product. As pointed out by Mr. Fruchter, the rationale used by the judge in his ruling illustrates
the often fine line separating malicious intent from ignorance. Even in the appeal, the final ruling is a case study
(pun intended) of subjectively arrived-at conclusions versus objectively arrived-at conclusions. Definitions of
"a skilled artisan," "prior art" (a very familiar patent term), and "obviously" seem to be largely at the discretion
of the sitting judge. That helps explain why "judge shopping" is so popular in difficult cases.
May 16, 2015
Board game enthusiasts among our readership may be familiar with
Khet, a chess-like board game, formerly known
as Deflexion, that uses lasers. Players move pieces with mirrored surfaces around a board and fire lasers in an
attempt to strike an opponent's key pieces on their non-mirrored sides. The inventors, a professor and two students
at Tulane University, secured a patent on the game, one which they assigned to
Innovention Toys, LLC, an entity formed to manufacture and market
Innovention's fun and games ended when another toy company, MGA
Entertainment, began selling a competing game called Laser Battle, which it sold through Wal-Mart and Toys "R"
Us. Innovention played hard ball and sued MGA for infringement. After several years of litigation, a jury rejected
MGA's defense that Khet was "obviously" based on similar existing game concepts and found MGA liable for willful
infringement and damages. After the trial court adopted the jury's findings, MGA appealed. See Innovention Toys,
LLC v. MGA Entm't., Inc., 2015 WL 1917997 (Fed. Cir. Apr. 29, 2015).
To invalidate a patent on the ground of obviousness, a defendant must prove that "a skilled artisan would have
had reason [i.e., motivation] to combine the teaching of the prior art references to achieve the claimed invention
. . . and a reasonable expectation of success from doing so." In the Khet litigation, the "prior art" consisted
of an existing patent describing a laser board game with pieces that—critically—did not move during the game and
of two game magazine articles describing a video game in which players manipulate images of pieces that fire lasers.
While MGA's expert opined that these other games demonstrate certain concepts that made Khet obvious, the Federal
Circuit disagreed. Specifically, the court concluded that there was no known "problem" in the board game field at
the relevant time that would have motivated a skilled artisan (defined as an individual with a bachelor's degree
in mechanical engineering) to combine the concepts of a board game—one that features pieces fixed during play and
a video game consisting of images of lasers—into a new game (i.e., Khet)—one that employs real lasers and regularly
moving and rotating game pieces on a physical board.
More persuasive was Innovention's expert, who criticized MGA's expert testimony as analysis by hindsight. Specifically,
Innovention's expert observed that MGA's expert assumed Khet's existence and then worked backward to determine whether
the prior art could have supplied the idea for Khet. Innovention's expert also testified persuasively that, in his
opinion, a skilled artisan could not have figured out, based on the prior art, how to develop a board game with
real lasers and regularly moving pieces. Based on this testimony, the Federal Circuit affirmed the finding of non-obviousness.
However, while rejected as a basis to establish obviousness, MGA's expert testimony saved the company from a
finding of willful infringement. When testifying at trial, MGA's expert admitted on cross-examination that the prior
game magazine articles did not disclose key elements of Innovention's patent—i.e., physical pieces on a physical
board. Apparently, this admission had a dramatic effect in the courtroom and seemingly contributed to the finding
of willful infringement. However, on appeal, the Federal Circuit observed that, while insufficient to establish
obviousness, MGA's expert testimony had established meaningful overlap between the elements of the existing game
concepts and those of Khet. Given the small gap between those prior concepts and Khet's, the Federal Circuit held
that MGA's defense of obviousness was reasonable and, thus, did not support a finding that MGA had acted willfully
(i.e., had "acted despite an objectively high likelihood that its actions constituted infringement of a valid patent").
Do you agree with the Federal Circuit's conclusions? It's striking that the gap between the existing game concepts
and Khet's concepts was large enough to preclude a defense of obviousness but small enough to prevent a finding
of willful infringement. Quite hard, it seems, to know where to draw the line — which makes patent litigation itself
akin to a game of chess.
This article was originally published in
BullsEye, a newsletter distributed
by IMS ExpertServices™. IMS Expert Services is
the premier expert witness search firm in the legal
industry, focused exclusively on providing custom expert witness searches to attorneys. To read this and other legal
industry BullsEye publications,
please visit IMS Expert Services' recent articles. For your next expert witness search, call us at 877-838-8464
or visit our website.
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Posted June 9, 2015