Ball Aerosol and Specialty Container Inc. v. Limited Brands Inc. 555 F.3d 984 (Fed. Cir. 2009)

A patent claim on a candle holder was obvious in light of two prior art references whose combination was “obvious to try” under the U.S. Supreme Court’s recent decision in KSR Int’l Co. v. Teleflex Inc., the Federal Circuit held. The Plaintiff-Appellee, Ball Aerosol, holds a patent for a candle holder that combines allowing the cover to be removed and used as a base and putting feet on the bottom of the candle holder, all to protect a resting surface from potential damage. Ball Aerosol sued Limited Brands Inc., claiming that the travel candle it markets in some of its retail stores infringes Ball Aerosol’s patent. After the lower court granted Ball Aerosol’s motion for summary judgment, the Federal Circuit reversed, holding that the claims at issue were obvious as a matter of law. The Court noted that prior art disclosed all of the limitations of the patent, and that the function of preventing damage to the surface below was “well known.” Applying KSR, which stated, “[i]f a person of ordinary skill can implement a predictable variation, [35 U.S.C.] §103 likely bars patentability,” the Federal Circuit found that, “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 faulted the lower court for looking for an “explicit motivation to combine,” adding that it misapplied KSR. Instead, what the U.S. Supreme Court meant in KSR when it said that in determining obviousness, the “analysis should be made explicit,” was that the court’s analysis, not the motivation, must be explicit. The Federal Circuit also concluded there was no infringement because the claimed configuration was not applied in the accused device, even though that configuration was possible.