Federal Circuit Invalidates Ball Aerosol’s Candle Tin Patent for Obviousness

Holding:

Citing court precedent, the U.S. Court of Appeals for the Federal Circuit invalidated for obviousness Ball Aerosol and Specialty Container, Inc.’s (“BASC”) patent that claims a candle holder with a removable cover that also acts as a base for the holder. In so doing, the Federal Circuit reversed the U.S. District Court for the Northern District of Illinois’ summary judgment of validity and infringement against defendants-appellants led by Limited Brands, Inc. (“Limited”). 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, the Federal Circuit wrote, applying KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007). Finally, the Federal Circuit rejected BASC’s assertion that the secondary consideration of commercial success supports the district court’s conclusion of nonobviousness. The Federal Circuit held that minimal indications of commercial success do not outweigh the clear indication of obviousness apparent from the prior art.

Detailed Summary:

Limited Brands, Inc., Bath & Body Works, Inc., Henri Bendel, Inc., and Bath & Body Works, Inc. doing business as The White Barn Candle Co. (collectively, “Limited”) filed the instant appeal from the final judgment of the district court granting summary judgment of validity and infringement of U.S. Patent 6,457,969 (“the ’969 patent”), awarding damages, and denying a motion for reconsideration. Opinion, p.2, citing Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 553 F. Supp. 2d 939 (N.D. Ill. 2008); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 514 F. Supp. 2d 1051 (N.D. Ill. 2007).

BASC owns the ’969 patent by assignment from former employee Jivan Kumar Kholsa. The ’969 patent claims a candle tin with a removable cover that also acts as a base for the candle holder. When a candle holder is placed directly on a table or other surface, the heat of the lit candle can cause scorching or damage to the surface. Putting a candle tin in the configuration claimed in the ’969 patent, with the candle holder resting on top of the cover, minimizes this scorching by removing the candle holder from direct contact with the underlying surface.

In 2003, Limited designed the accused Travel Candle, which is a square-shaped candle tin with a removable cover and four protrusions on the closed end of the candle holder. On October 25, 2004, BASC sued Limited for infringement in the United States District Court for the Eastern District of Michigan. The case was transferred to the Northern District of Illinois on May 31, 2005.

On September 4, 2007, the district court granted BASC’s motion for summary judgment on damages and determined, also on summary judgment, that Limited had willfully infringed the ’969 patent. The court awarded BASC a reasonable royalty and enhanced damages. On March 27, 2008, the district court denied Limited’s motion for reconsideration in its entirety by again concluding, inter alia, that the district court’s previous finding of patent validity was a proper application of the clear and convincing standard, and consistent with KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007). Id., p. 6.  Limited thus filed this appeal.

On appeal, Limited argued that the district court erred in declaring, sua sponte, that the ’969 patent was “valid.” Limited argued that BASC never moved for a determination of validity, nor did the court put Limited on notice that the patent might be declared “valid” without trial.

Substantively, Limited asserted that patent claims would have been obvious under KSR. Limited stated that all the claim limitations of claims 1 and 5 and information as to how to configure these elements are in the prior art. Id., p. 9.

On the other hand, BASC argued that granting summary judgment sua sponte is within the district court’s discretion and that the court recognized that BASC had simply overlooked formally moving for a validity determination. BASC asserted that Limited was on notice and had an opportunity to respond regarding the issue of validity because its summary judgment motion for a declaration of invalidity was under consideration.

In resolving these contentions of the parties, the Federal Circuit agreed with Limited that claims 1 and 5 of the ’969 patent are invalid for obviousness based on prior art (“Wright” and “Marchi”).

And because the Federal Circuit concluded that the district court erred substantively in failing to grant summary judgment on this basis, it did not address the procedural propriety of the district court’s sua sponte order.

According to the Federal Circuit , the disagreement between the parties—and the sole basis for the district court’s denial of Limited’s motion for summary judgment of obviousness—is whether a motivation to combine the prior art existed. The Federal Circuit believed there clearly was such a motivation.

Citing KSR, the Federal Circuit held that “[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.” Id., p.11 citing KSR at 127 S.Ct. at 1742.

Here, it is undisputed that the prior art discloses all the limitations of the claims.

The Supreme Court in KSR stated that “(i)f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id., p. 13, citing KSR at 127 S.Ct. at 1740. That is clearly the situation here, the Federal Circuit wrote.

Specifically, 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. Both Marchi and Wright involve raising the bottom of a candle holder away from the supporting surface to avoid or minimize scorching. In fact, the parties agreed that Marchi discloses a candle container with a cover that was designed to be used as a base to prevent heat damage from the candle holder when the candle is lit.

In addition, the Federal Circuit found that the district court erred in finding a requirement in KSR of an explicit motivation to combine. Although the district court quoted KSR at length, the Federal Circuit explained that the district misconstrued the language that the motivation to combine analysis “should be made explicit.” Id., p. 14, citing KSR Analysis Order, No. 2:05-CV-3684, slip op. at 1-2.

What KSR actually meant is that, clarified the Federal Circuit, 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. Here, all the limitations of claims 1 and 5 of the ’969 patent were in the prior art, as was the claimed configuration and a known problem of scorching.

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. Id., p. 15.

Finally, the Federal Circuit rejected BASC’s assertion that the secondary consideration of commercial success supports the district court’s conclusion of nonobviousness. The Federal Circuit held that minimal indications of commercial success argued by BASC do not outweigh the clear indication of obviousness apparent from the prior art. Id., citing Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).

On the basis of the foregoing, the Federal Circuit reversed the district court’s denial of Limited’s motion for summary judgment of invalidity of claims 1 and 5 for obviousness and thus vacated the district court’s subsequent holding that the ’969 patent was “valid” as a matter of law. The Federal Circuit remanded to the district court with instructions to grant summary judgment invalidating claims 1 and 5 of the ’969 patent for obviousness.

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