Federal Circuit sends $4.7m toy patent case back to district court
The US Court of Appeals for the Federal Circuit has ruled that MGA Entertainment, the maker of the Bratz doll, did not wilfully infringe a game board patent, which may result in $4.7 million in damages it was ordered to pay Innovention Toys being reduced.
At the centre of the dispute between Innovention and MGA is patent 7,264,242, which covers technology for a laser beam board game.
Innovention first filed the claim in 2007, alleging that MGA’s Laser Battle game released in the same year infringed the patent for technology used in its own Khet board game.
MGA sold the Laser Battle game through retailers Walmart and Toys R Us.
The Federal Circuit ruled that judge Susie Morgan of the US District Court for the District of Louisiana, who presided over the case, was incorrect to rule that MGA wilfully infringed patent ‘242.
In June 2013, Morgan tripled the damages after a jury had originally awarded $1.6 million to Innovention. The jury rejected MGA’s challenge to the validity of the patent that it was obvious and had found its claim to be “objectively unreasonable”.
Last year, Morgan also ruled that the case was “exceptional” and that MGA should pay the legal costs of Innovention. Innovention had requested $2.5 million, but the final total MGA was ordered to pay was $1.8 million.
MGA appealed against this decision. On April 29, the Federal Circuit ruled that the district court was correct to find the patent was valid and that it had been infringed.
But in its judgment, the Federal Circuit has sent the case back to the district court after it judged Morgan’s decision that the infringement was wilful was incorrect. The result means that the total cost of the damages could be reduced from the $4.7 million sum originally awarded.
The Federal Circuit added that because the awarding of the legal fees was predicated on the wilful infringement ruling then it also was likely to be reversed.
Richard Taranto, judge at the Federal Circuit, presiding over the case, said: “We conclude that the district court erred in deeming MGA’s obviousness defence objectively reasonable.
“The wilfulness determination is therefore reversed. It follows that the enhancement of damages must be reversed. It also follows that the district court’s award of attorney fees, which relied in part on the determination of wilfulness, must be vacated,” he added.
Neither MGA nor Innovention responded to a request for comment.
