Too obvious
Federal Circuit extinguishes candleholder patent

You might think having a patent means your invention is fully protected from here on out. Think again: In Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., the Federal Circuit reminded us all how easily an issued patent can be invalidated following the Supreme Court decision in KSR v. Teleflex. Precisely why would a court invalidate a patent? The answer is too obvious.

The dispute ignites

Ball Aerosol & Specialty Container (BASC) owns a patent for a candle tin with a removable cover that also acts as a base for the candleholder. Resting the holder on top of the cover minimizes the scorching or damage to the surface below. The patent also claims protrusions on the closed end of the candleholder that rests atop the cover when it’s used as a base.

In 2003, Limited designed a square-shaped candle tin with a removable cover and four feet on the closed end of the holder. And, in 2004, BASC sued Limited for patent infringement. BASC moved for summary judgment that Limited infringed the patent and the patent was nonobvious and valid over the prior art.

The district court found in favor of BASC on both motions but instructed both parties to submit supplemental briefing on the issue of obviousness in light of the Supreme Court’s recent decision in KSR. After reviewing the supplemental briefing, the district court reaffirmed its earlier determination that Limited had failed to demonstrate that an adequate motivation existed to combine prior art in the way depicted in BASC’s patent.

If Limited had been successful in this demonstration, the patent would have been rendered invalid for obviousness. Yet, because it wasn’t invalid, the court concluded that Limited had willfully infringed the patent.

Appeal cites prior art

On appeal, Limited argued that two of the claims of BASC’s patent were obvious under KSR because the claims and information on how to configure the elements already existed in prior art. The so-called “Wright” patent, for example, disclosed “protuberances” on the bottom of a candle can, while the “Marchi” patent disclosed a combination cover-stand. Thus, Limited contended, the BASC patent would have been obvious to a person of ordinary skill in the art attempting to address the scorching issue.

BASC countered that the district court had applied KSR correctly. It argued that the cited references to prior art provided other solutions for the scorching problem and therefore “taught away from combining references in the manner described” in its patent.

Patentholder gets burned

Under Section 103 of the Patent Act, a claimed invention will be invalidated for obviousness if the differences between the invention and the prior art are such that the new invention “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 [the invention] pertains.” The question of obviousness requires consideration of:

• The scope and content of the prior art,

• The differences between the prior art and the claimed invention, and

• The level of ordinary skill in the art (and any relevant secondary considerations).

The district court had held that, though all of the elements at issue existed in prior art encompassed by the Wright and Marchi patents, Limited failed to establish a motivation to combine that prior art into BASC’s invention. Based on that failure, it denied Limited’s motion for a summary judgment of obviousness. The Supreme Court in KSR explained that:

… when 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.

The Federal Circuit found it undisputable that the prior art disclosed the necessary elements and that the problem of scorching was known and had been addressed by others. It concluded that the combination of feet or protrusions on the bottom of the candleholder and using the cover as a base was a “predictable variation” and “obvious to try in an effort to minimize scorching.” The decrease in the heat transfer between the holder and the surface below was “entirely predictable and grounded in common sense.” It held BASC’s patent invalid.

A smoldering issue

The Federal Circuit also found that the district court had misconstrued KSR to require an explicit motivation to combine the prior art. The district court had quoted KSR as stating that the analysis of a motivation to combine “should be made explicit.”

The appellate court clarified that the phrase “should be made explicit” refers to the analysis itself, not to a need for precise evidence in the prior art of a motivation to combine. Rather, as stated in KSR, “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” to find a motivation to combine. •