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February 9, 2009

Blown Candle

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.

Posted by Patent Hawk at February 9, 2009 4:55 PM | Prior Art


Shame that sister WO 02/12789 never made it into the EPO regional phase. There are a great many candles in Germany. Then we could have seen the claims performing, under the cosh of the EPO's 30 year old, long-established TSM test.

Posted by: MaxDrei at February 10, 2009 5:13 AM

Good thing patent decisions don't have to follow rules of logic... (he said sarcastically!) My college logic professor would have a field day with this.

Legal principle: IF an invention is unpatentable if someone of "ordinary skill" could have invented it, THEN someone of ordinary skill can never invent anything.

So an insight leading to a valid invention can NEVER happen to one of ordinary skill?

Or perhaps the logic can be pushed the other way: If I HAVE invented something, then I am by definition not a person of ordinary skill? (Even if I am in all other respects just like 15,000 of my ordinary colleagues?)

I wonder exactly how much special insight it takes to rise above "ordinary skill"? And must I only be mentally capable of insight, or must I experience it?

Wow. What a slippery slope we find ourselves on!

Posted by: Carl Strathmeyer at February 10, 2009 2:21 PM

It seems that the Flash of Genius is re-emerging from its long slumber.

On the other hand, the purpose of the 35 USC 103 clause: "Patentability shall not be negatived by the manner in which the invention was made." should be made more explicit as to why this phrase is in the law in the obviousness section.

Any new thoughts from the crowd?

Posted by: breadcrumbs at February 10, 2009 2:36 PM

Yet another patch on the Statute, that confuses more than enlightens. To the whole "means plus function" fiasco we can add the "manner" provision noted above. Both unique tweaks in the US Statute that you don't find anywhere in the cleaner patent statutes used in the rest of the world. Oh, and Best Mode too. To implement, a total shambles. Oh, and First to Invent too. Talk about giving the nation unnecessary problems, on top of all the unavoidable ones.

Posted by: MaxDrei at February 11, 2009 12:35 AM

Thanks MaxDrei,

I was rather hoping for comments that might illuminate, not more naysaying.

Can anyone move the topic forward rather than backward?

Posted by: breadcrumbs at February 11, 2009 5:28 AM

Excuse the earlier rant. On a more serious note:

We can lament the current state of things, but Mr. P/Hawk's advice in other blog articles still makes sense.

I had a quick look at the patent cited in this article. The claims only describe very broad design principles, essentially: "Let's put bumps on the bottom of the candle holder, thereby creating an airspace so heat is not transferred to the table." Well yes, pretty obvious. Even if later claims add: "Wow, we can alternatively put bumps on the candle lid instead!" Not exactly flash of genius.

But the alleged inventor could have gone further by clearly identifying what was novel in his design. He could have discovered a way to provide enough reliable air space to meet fire or insurance codes or to protect certain specific types of table surfaces. He could have invented a novel shape for the bumps so the parts would nest more securely or were easier to form during manufacturing. He could have figured out a way to make the bumps from a non-obvious material that would not transmit heat yet be cheap, durable and easy to manufacture.

Take, for example, the screwdriver. The basic idea of a screwdriver is well known. But the Torx screwdriver, with a novel and more reliable way of mating the driver and the screw being driven, is non-obvious and thus patentable.

Of course, we are still left with the question of "How non-obvious must my invention be?" Obzilla is not a rational beast, it seems, at least at present.

Posted by: Carl Strathmeyer at February 11, 2009 5:48 AM

More on the TORX screwdriver:

According to the Wikipedia article, the TORX screwdriver was novel because it was designed not to torque out of the screw if tightened too hard. Prior art taught that a screwdriver should slip out of the screw under high load so that the fastener would not fail.

However, advances in the torque control of power screwdrivers made driver slippage unnecessary and it became desirable for a screwdriver not to slip out of its screw under any load. The TORX screwdriver/screw system was a response to this perceived market need (US patent 3,584,667.

While this original patent has expired and the basic 6-lobed driver design has fallen into the public domain, the current assignee, Camcar LLC, continues to invent and patent improved versions.

It seems to me that this series of patents would likely survive an attack by our friend Obzilla.

Opinions on that?

Posted by: Carl Strathmeyer at February 11, 2009 8:57 AM