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Under KSR, It Is a Court’s Analysis That Must Be Made Explicit, Not Any Teaching in the Prior Art of a Motivation to Combine

February 09, 2009

Decision icon Decision

Last Month at the Federal Circuit - March 2009

Judges: Lourie (author), Clevenger, Linn

[Appealed from: N.D. Ill., Judge Der-Yeghiayan]

In Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 08-1333 (Fed. Cir. Feb. 9, 2009), the Federal Circuit overturned the district court’s SJ on validity and infringement of U.S. Patent No. 6,457,969
(“the ’969 patent”).

Ball Aerosol and Specialty Container, Inc. (“BASC”) owns the ’969 patent, which is directed to a candle tin with a removable cover that also acts as a base for the candle holder. Putting the candle tin in the configuration disclosed in the ’969 patent, with the candle holder resting on top of the cover, minimizes problematic scorching that occurs when the candle holder is in direct contact with the underlying surface. BASC brought suit against Limited Brands, Inc., Bath & Body Works, Inc., and Henri Bendel, Inc. (collectively “Limited”) for the sale of a candle tin with a removable cover and four protrusions on the closed end of the candle holder.

After construing the claims, the district court granted BASC’s motion for SJ on infringement. In the same motion, the district court denied Limited’s motion for SJ for invalidity based on anticipation and obviousness. Further, the district court declared sua sponte that the ’969 patent was valid as a matter of law.

On appeal, the Federal Circuit first reviewed the district court’s claim construction of the term “to seat,” which the district court had determined to mean “to rest on or fit into the cover.” While Limited argued that the term “to seat” required engagement between the candle holder and the cover, the Court agreed with the district court’s construction. From the plain language of the claims, the Court found that the feet are what cause the candle holder to be seated on the cover. This differentiated the claims from the figures of the ’969 patent, which showed the candle holder engaged with the cover. Additionally, the Court noted that the specification illustrates feet both resting on the cover and locking into the recesses in the cover. Accordingly, the Court affirmed the district court’s claim construction.

The Federal Circuit next considered the district court’s determination that the ’969 patent was valid. With regard to obviousness, the sole issue in dispute was whether there was motivation to combine the prior art references. The Court reminded that under KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), “[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.” Slip op. at 11 (alteration in original) (quoting KSR, 127 S. Ct. at 1742). As it was undisputed that the prior art disclosed all the limitations of the claims, the problem of scorching was well known in the art, and the level of skill in the art was that of an ordinary layman of average intelligence, the Court concluded that the solution, i.e., the claimed invention, was entirely predictable and grounded in common sense. As such, the Court concluded that claims 1 and 5 were obvious under § 103.

The Court further found error in the district court’s determination that KSR requires an explicit motivation to combine from the references. The Court clarified that it is the court’s analysis that should be made explicit and not any teaching in the prior art of a motivation to combine. Accordingly, the Court reversed the district court’s SJ on validity and remanded with instruction to grant SJ invalidating claims 1 and 5 of the ’969 patent.

Finally, the Federal Circuit overturned the district court’s grant of SJ of infringement. Specifically, the Court held that it was improper to find infringement of the claims where the accused product was only “reasonably capable” of being configured in such a way that would meet the claim limitations. Id. at 16. While case law supports infringement where a product is reasonably capable of meeting the claim limitation, the Court recognized that such cases are limited to claim language that specifies that the claim is drawn to a capability. In contrast, the ’969 patent claims specify that infringement only occurs if the accused product is configured with the cover being used as a base underneath a candle holder with feet. Since there were no facts indicating the accused device necessarily has to be placed in the infringing configuration, the Court overturned the grant of SJ of infringement.