The U.S. Court of Appeals for the Federal Circuit reversed a district court’s denial of a motion for summary judgment of invalidity, holding that the lower court had misconstrued KSR and failed to take into account inferences and creative steps one of ordinary skill in the art may take.  Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc.,   Case No. 08-1333 (Fed. Cir., Feb. 9, 2009) (Lourie, J.). 

Ball Aerosol and Specialty Container, Inc. (BASC) sued Limited Brands, Inc. (Limited) for infringement of a patent directed to a candle tin with a removable cover that also acted as a base designed to prevent the heat of the candle from scorching a table or other surface.

Applying KSR, the district court denied Limited’s motion for summary judgment of invalidity based on determination that Limited had failed to provide an adequate motivation to combine the prior art.   The court noted that the analysis of a motivation to combine “should be made explicit.”  Limited appealed. 

On appeal, BASC asserted that the prior art references taught away from the patent by providing alternative solutions for the scorching problem.   BASC further noted the commercial success of its candles.

The prior art references cited against the patent disclosed “protuberances” or “bumps” on the bottom of a candle as well as a cover for a candle which doubled as a stand.   Further, the problem of scorching caused by bottoms of hot candles was well known in the art.

The Federal Circuit found that the district court misapplied KSR, noting that the KSR opinion does not require an “explicit” motivation to combine, but only an explicit analysis of obviousness by the court.  The Court quoted from the Supreme Court’s KSR opinion: “[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 in the art has good reason to pursue the known options.”  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.  According to the Court, it was obvious to try to combine the prior art references and the result of this combination was predictable and grounded in common sense.   

Finally, the “minimal indications of commercial success” asserted by BASC do not negate a clear finding of obviousness.   Therefore, the district court’s denial of Limited’s motion for summary judgment of invalidity for obviousness was reversed.