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Summary judgment of validity reversed; predictable variation of prior art obvious as a matter of law
March 30, 2009
In a decision last month, the Federal Circuit reversed a district court's summary judgment to the plaintiff. The district court had awarded damages after granting summary judgment of "validity" and infringement. While the Federal Circuit agreed with the district court's construction of a disputed claim term, the court held the asserted claims were obvious as a matter of law. Specifically, it was undisputed that all elements of the claim were present in two prior art references—the only dispute was whether sufficient motivation to combine the prior art existed. The court, quoting KSR, observed "if a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. That is clearly the situation here." The combination of the features of the two references, according to the Federal Circuit, would produce results that were "entirely predictable and grounded in common sense."More regarding Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc. after the jump.Ball Aerosol and Specialty Container, Inc. ("BASC") owns a patent claiming a candle tin with a removable cover that also acted as a base for the candle holder. The configuration of the patent minimized scorching, which occurs when a candle holder with a lit candle inside is placed directly on a table or other surface, as illustrated below. Figure 1B The patent requires feet (36 in the figure) that protrude on the closed end of the candle holder that rest on top of the closed end of the cover when it is to be used as a base. BASC sued Limited Brands, Inc. ("Limited"), accusing Limited's Travel Candle of infringement of claims 1 and 5 of the patent. Those claims read:
1. A candle tin comprising:a hollow candle holder closed at one end in which a candle is disposed, the candle having a wick for the candle to burn when the wick is lit, the lit candle producing heat a portion of which is transferred through the holder to a surface upon which the candle tin is placed;
a cover sized to fit over the holder and removably placed over an open end of the holder to cover the candle when the candle is not lit, the cover, when removed, being placed upon the surface with the holder being set upon the cover for the cover to support the holder above the surface whereby the heat generated by the burning candle does not damage the surface, the holder and cover being cup shaped with the cover placed upon the surface open end down so a closed end of the cover supports the holder above the surface, a closed end of the holder being adjacent the closed end of the cover; and,
protrusions formed on the closed end of the holder and extending therefrom, the protrusions resting upon the closed end of the cover to seat the holder on the cover.5. A candle tin comprising:a cup shaped holder in which a candle is disposed, the candle having a wick for the candle to burn when the wick is lit, the lit candle producing heat a portion of which is transferred through the holder to a surface upon which the candle tin is placed;
a cup shaped cover sized to fit over an open end of the holder and removably placed over the open end of the holder to cover the candle when the candle is not lit, the cover, when removed, being placed upon the surface and the holder being set upon the cover for the cover to support the holder above the surface whereby the heat generated by the burning candle does not damage the surface, the cover being placed upon the surface open end down for the closed end of the cover to support the holder above the surface; and,
protrusions formed on the closed end of the holder and extending therefrom, the protrusions resting upon the closed end of the cover to seat the holder on the cover.

The Travel Candle was a square-shaped candle tin with a removable cover and four protrusions on the closed end of the candle holder. The district court first found that the term "to seat" of the claims in question to mean "to either rest on or fit into the cover." Even though the Travel Candle was not made to rest on its cover, the court agreed with BASC and held that because the candle could sit on the cover, it infringed the '969 patent. The court also issued a sua sponte order declaring the patent was "valid" as a matter of law, largely because Limited did not describe the specific motivation to combine the prior art to produce the claimed invention. The district court reassessed the question of validity post-KSR, but came to the same conclusion. The district court stated that KSR held that the analysis of a motivation to combine "should be made explicit," and here, defendant Limited only used "conclusory statements" suggesting the patent should be found obvious. Therefore, the court granted BASC's motion for summary judgment of "validity" and infringement, awarding a reasonable royalty and enhanced damages. Limited appealed.The Federal Circuit reversed. The court first held that the district court had not erred in construing the term "to seat" to mean "to either rest on or fit into the cover," and that the term did not require an engagement between the feet and the cover. The court then went into an extensive analysis of obviousness, in light of KSR. It was undisputed that all the claim elements were present in two prior art references. The only disputed issue was whether one of ordinary skill in the art would have reason to combine those references to produce the claimed invention. The court held the claims in question were obvious as a matter of law. Specifically, the Federal Circuit held the district court erred in finding an absence of motivation to combine the prior art. The court, quoting KSR, stated "that if a combination of known elements was 'obvious to try' to address a recognized problem, the combination may have been obvious under § 103." Applying that passage to the case, the court noted that the problem of scorching caused by the bottoms of hot candles was known and had been addressed by others by the time the inventor began to work on the patent. The court, again quoting KSR, stated that "if a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. That is clearly the situation here." The court noted that a prior art taught the use of feet on the bottom of a candle holder to prevent scorching and that the combination of putting feet on the bottom of the candle holder and using the cover as a base for the candle holder was a predictable variation. In an interesting conclusory paragraph as to obviousness, the court lectured the district court on its responsibilities in patent infringement actions. The Federal Circuit noted that "[a]side from the fact that courts do not declare patents to be valid, and only declare that they have not been proved to be invalid, if such is the case, courts should not adjudicate claims not put in issue by the parties, unless a holding with respect to contested claims necessarily implicates others, a situation that has not been argued to be the case here." The district court had arguably declared the patent as a whole "valid," even though only claims 1 and 5 were at issue.

Finally, the court held that the district court erred by granting BASC's motion for summary judgment as to infringement. The district court relied on the fact that Limited's Travel Candle was "reasonably capable" of being used in a way which would infringe the patent. Because claims 1 and 5 specifically required a configuration with the cover being used as a base underneath a candle holder with feet, infringement required specific instances of direct infringement or that the accused device necessarily infringed the patent in suit. Because this was not the case, the court reversed the district court on the issue of infringement as well.To read the full decision in Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., click here.

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