Patent Law

Blown Candle

By Gary Odom and Jordan Kuhn

Ball Aerosol sued Limited Brands and Bath & Body Works for infringing 6,457,969, which claims "a candle tin with a removable cover that also acts as a base for the candle holder." Ball won a summary judgment verdict of infringement, which included a sua sponte finding of validity. That was pre-KSR. Afterwards, the court reaffirmed its determination that "no reasonable trier of fact could find other than" validity. Appeal found something other than a "reasonable trier of fact."

Ball Aerosol (BASC) v. Limited Brands and Bath & Body Work (CAFC 2008-1333)

How the CAFC weighs in -

"We review summary judgment decisions de novo, reapplying the standard used by the district court." Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1356 (Fed. Cir. 2005). Summary judgment is appropriate "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). "On summary judgment, the evidence must be viewed in the light most favorable to the party opposing the motion . . . with doubts resolved in favor of the nonmovant." Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002) (citations omitted).

The applied case law.

Obviousness under 35 U.S.C. § 103 is a question of law, with underlying factual considerations regarding (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). A claimed invention is invalid for obviousness "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 (2000).

The solution is found in the problem, as anyone could plainly see.

Here, it is undisputed that the prior art discloses all the limitations of the claims... It is also undisputed that the problem of scorching caused by the bottoms of hot candle holders was known and had been addressed by others... Finally, BASC did not dispute the district court's adoption of Limited's argument that because the "technology is simple and easily understandable," the level of ordinary skill in the art was that of an ordinary layman of average intelligence. Infringement Opinion, No. 05-CV-3684, slip op. at 10 (citing Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984)).

The Supreme Court in KSR stated that "[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." 127 S.Ct. at 1740. That is clearly the situation here. 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.

KSR thus compels the grant of summary judgment of obviousness. 127 S.Ct. at 1745-46 ("Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate."). Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of "the inferences and creative steps," or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art.

Before the coming of Obzilla, motivation was not to be taken for granted. How times change in the great swamp of prior art. Motivation in the form of meeting each and every need fills the very air we all breathe, necessity being the mother of all invention, and making all before mom obvious. Mom is a bit frightening in knowing so much and being so clever. Maybe KSR should be nicknamed Momzilla. Sounds more homey than Obzilla. Not so Tokyo (the home of Godzilla).

As explained in KSR, "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." 127 S.Ct. at 1742. The Court 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. Id.

Although the court quoted KSR at length, it misconstrued the language that the motivation to combine analysis "should be made explicit." Id. at 1-2. A broader look at this portion of KSR sheds light on the proper inquiry:

Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.

127 S.Ct. at 1740-41 (emphases added). Thus, the analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court's analysis.

Secondary considerations are no match for primary consideration.

Finally, BASC asserts that the secondary consideration of commercial success supports the district court's conclusion of nonobviousness. We disagree. The minimal indications of commercial success argued by BASC do not outweigh the clear indication of obviousness apparent from the prior art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).

Oh, and because the candle isn't sold in the way it's intended to be used, no infringement.

BASC contends that an apparatus patent claim with functional elements is infringed if the accused product is reasonably capable of being used without substantial modification in the manner recited in the claim.

The claim language clearly specifies a particular configuration in which the protrusions must be "resting upon" the cover. '969 patent col.5 l.55; id. col.6 l.29. Thus, BASC's reliance on cases that found infringement by accused products that were reasonably capable of operating in an infringing manner is misplaced, since that line of cases is relevant only to claim language that specifies that the claim is drawn to capability. See Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117-18 (Fed. Cir. 2002) (clarifying that infringement is not proven per se by a finding that an accused product is merely capable of infringing because "in every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred"). Here, the language of claims 1 and 5 of the '969 patent specifies that infringement occurs only if the accused product is configured with the cover being used as a base underneath a candle holder with feet. That the Travel Candle was reasonably capable of being put into the claimed configuration is insufficient for a finding of infringement. See Acco Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (rejecting a "reasonably capable" standard for direct infringement). Rather, infringement requires "specific instances of direct infringement or that the accused device necessarily infringes the patent in suit." Id. BASC concedes that it has no proof that the Travel Candle was ever placed in the infringing configuration, and it is clear that the Travel Candle does not necessarily have to be placed in the infringing configuration.

Reversed, vacated, and remanded to declare the patent dead and not doing anything to anybody. Ever.

Full post as published by The Patent Prospector on February 09, 2009 (boomark / email).