Candle Holder Cover and Base Patent Invalid as Obvious

limited brands, inc., bath & body works, inc., henri bendel, inc., and bath & person of ordinary skill has good reason to pursue the known options within his or her between the cover and holder when the holder is seated on the cover."). thus, because conclusion art attempting to address the problem of scorching. thus, limited contends that under 2008-1333 8 holder and extending therefrom, the protrusions resting upon the closed end of the 724 f.2d 1567, 1573 (fed. cir. 1984)). supports the district court's conclusion of nonobviousness. we disagree. the minimal the candle having a wick for the candle to burn when the wick is lit, the lit 2008-1333 3 substantial modification in the manner recited in the claim. thus compels the grant of summary judgment of obviousness. 127 s.ct. at 1745-46 obviousness based on wright and marchi. patent shows an engagement between the candle holder and the cover. in response, 2008-1333 10 noninfringement. in response, basc argues that claims 1 and 5 are apparatus, not united states court of appeals for the federal circuit scorching problem and thus taught away from combining references in the manner reconsideration. see ball aerosol & specialty container, inc. v. limited brands, inc., 2008-1333 17 judgment of invalidity of claims 1 and 5 for obviousness and thus vacate the court's claimed in the '969 patent, with the candle holder resting on top of the cover, minimizes surface, the holder and cover being cup shaped with the cover placed district court for the eastern district of michigan. the case was transferred to the judgment of anticipation because a genuine issue of material fact existed regarding combination cover-stand and includes a figure showing the invention configured with the two days later, on june 30, 2006, the district court issued a sua sponte order 2008-1333 2 05-cv-3684 (n.d. ill. june 28, 2006) (document 139) ("infringement opinion"); u.s. northern district of illinois on may 31, 2005. basc ultimately limited its allegations of grounded in common sense. matter as a whole would have been obvious at the time the invention was made to a support the holder above the surface whereby the heat generated by the of the embodiment shown in figure 1c, which shows the feet merely resting upon the derives from the fact that the thermally conductive nature of metal frequently allows analysis should be made explicit. see in re kahn, 441 f.3d 977, 988 accused product, dictates whether an infringement has occurred"). here, the language can co. v. limited brands, inc., no. 05-cv-3684, 2006 wl 1049581 (n.d. ill. apr. 19, the claim is drawn to capability. see fantasy sports props., inc. v. sportsline.com, inc., we therefore reverse the district court's denial of limited's motion for summary defendants-appellants. and grants of summary judgment on the issues of patent validity, infringement, and holder resting on top of the cover. the court reasoned that because not all of the which may be damaged by the heat."); marchi col.1 ll.39-43 (when "the candle burns that because the "technology is simple and easily understandable," the level of ordinary plaintiff-appellee, that is clearly the situation here. the combination of putting feet on the bottom of the supported a finding that the candle tin need only have "a cover that is simply capable of stated that if a combination of known elements was "obvious to try" to address a motivation to combine analysis "should be made explicit." id. at 1-2. a broader look at based on wright and marchi alone, we do not address the other prior art discussed by patent col.5 l.57-col.6 l.2 ("the candle tin of claim 1 in which the closed end of the cover misplaced, since that line of cases is relevant only to claim language that specifies that because we find claims 1 and 5 of the '969 patent to have been obvious judgment motion for a declaration of invalidity was under consideration. furthermore, contends that there was no clear disavowal in the '969 patent or its prosecution history protrusions formed on the closed end of the holder and extending upon the surface open end down so a closed end of the cover supports protrusions required that they lock in, or engage, the closed end of the cover in some ball aerosol and specialty container, inc., claims in issue, and we render no judgment on any other claims. to the extent that the when removed, being placed upon the surface with the holder being set brands, inc., 514 f. supp. 2d 1051 (n.d. ill. 2007); ball aerosol & specialty container, inferences and creative steps that a person of ordinary skill in the art marchi figs.1 & 2. it is also undisputed that the problem of scorching caused by the base to prevent heat damage from the candle holder when the candle is lit. similarly, every infringement analysis, the language of the claims, as well as the nature of the respect to contested claims necessarily implicates others, a situation that has not been rejection of limited's obviousness argument in the infringement opinion on a finding district court's finding of infringement, and we remand to the court with instructions to and liquefied candle wax which heat passes through the can base to a support surface 3. motion to strike construction of the term "to seat" does not require an engagement between the feet and on april 19, 2006, the district court construed the term "to seat" to mean "to method, claims. basc contends that an apparatus patent claim with functional appealed from: united states district court for the northern district of illinois candle tin with a removable cover and four protrusions on the closed end of the candle any material fact and that the movant is entitled to judgment as a matter of law." fed. wright discloses "bumps that further space the candle can from the surface that we agree with limited that the district court erred in granting summary judgment v. ball aerosol and specialty container, inc., enhanced damages. on march 27, 2008, the court denied limited's motion for candle holder and using the cover as a base for the candle holder was a predictable either rest on or fit into the cover." claim construction opinion, 2006 wl 1049581, at the specification illustrates feet both resting on the cover and locking into recesses in whereby the heat generated by the burning candle does not damage the and u.s. patent 3,285,694 ("marchi"). infringement opinion, no. 05-cv-3684, slip op. filed in this court. because we do not rely upon the arguments made by limited in that denial of limited's motion for summary judgment of obviousness--is whether a end of the holder to cover the candle when the candle is not lit, the cover, remand to the court with instructions to grant summary judgment that claims 1 and 5 are 6,398,544 ("wright"). the court also denied limited's motion for summary judgment of by a person having ordinary skill in the art, all in order to determine opinion. validity motion, no. 05-cv-3684, slip op. at 1. the court found that "no a cup shaped holder in which a candle is disposed, the candle having a ____________________ the surface and the holder being set upon the cover for the cover to basc asserts that even if notice had been lacking, limited suffered no prejudice term "to seat" did not require an engagement between the holder and the cover. the flexible inquiry set forth by the supreme court, the district court therefore erred by 2008-1333 6 an inventor would employ and by failing to find a motivation to combine related pieces when the candle is not lit, the cover, when removed, being placed upon court's discretion and that the court recognized that basc had simply overlooked phillips v. awh corp., 415 f.3d 1303, 1328 (fed. cir. 2005) (en banc). removably placed over the open end of the holder to cover the candle inc., 485 f.3d 1157, 1162 (fed. cir. 2007). because we conclude that the district court and had an opportunity to respond regarding the issue of validity because its summary formally moving for a validity determination. basc argues that limited was on notice therefrom, the protrusions resting upon the closed end of the cover to seat transmission of harmful quantities of heat from not only the flame but from the heated limited brands, inc., construction given by the district court because claim 2, which is dependent on claim 1, placed in the infringing configuration, and it is clear that the travel candle does not when the cover is placed open end down on a surface." infringement opinion, no. 05- section of its reply brief, basc's motion is denied as moot. and notes that limited had argued that there was no genuine issue of material fact, figures in the patent showed the feet on the bottom of the candle holder fitting into '969 patent col.5 ll.35-56; id. col.6 ll.10-30. infringement to claims 1 and 5 of the '969 patent, which read as follows: district of illinois granting summary judgment of validity and infringement of u.s. patent 2:05-cv-3684, slip op. at 1-2 (n.d. ill. june 22, 2007) (document 191) ("ksr analysis necessarily vacate the holdings on damages and willfulness. skill in the art was that of an ordinary layman of average intelligence. infringement case no. 05-cv-3684, judge samuel der-yeghiayan. 2008-1333 7 (fed. cir. 2005). summary judgment is appropriate "if the pleadings, the discovery and indicates that basc intended the feet to lock into the cover; rather, the language missouri, argued for plaintiff-appellee. with him on the brief were douglas d. churovich holder. on october 25, 2004, basc sued limited for infringement in the united states basc also states that the court properly exercised its discretion in determining that innovation but of ordinary skill and common sense." 127 s.ct. at 1742. the court variation. both marchi and wright involve raising the bottom of a candle holder away cover was used as a base. nothing in the language added concerning the protrusions court quoted ksr as stating that the analysis of a motivation to combine "should be therefrom, the protrusions resting upon the closed end of the cover to seat upon the cover for the cover to support the holder above the surface 127 s.ct. at 1740-41 (emphases added). thus, the analysis that "should be made 2008-1333 5 disclosure materials on file, and any affidavits show that there is no genuine issue as to v. aba locks mfr. co., 501 f.3d 1307, 1313 (fed. cir. 2007) (rejecting a "reasonably obviousness under 35 u.s.c. � 103 is a question of law, with underlying factual (c.a.fed.2006) ("[r]ejections on obviousness grounds cannot be patent validity, the district court reaffirmed its earlier determination that limited had that declaration. aside from the fact that courts do not declare patents to be valid, and downside of using metal cans to accommodate burning candles is well known and burning candle does not damage the surface, the cover being placed upon and information as to how to configure these elements are in the prior art. limited a cup shaped cover sized to fit over an open end of the holder and defendants-appellants. which the candle tin is placed; multiple patents; the effects of demands known to the design community on prior art that depicted a candle holder that could lock together with its cover when the and (4) any relevant secondary considerations. graham v. john deere co., 383 u.s. 1, "conclusory statements in lieu of an explanation of a motivation to combine." ksr claim is apparent in light of these factors, summary judgment is appropriate."). under been obvious under ksr. limited states that all the claim limitations of claims 1 and 5 olivo, of new york, new york. conclusion of obviousness"). as our precedents make clear, however, the be "seat[ed]" on the cover. thus, limited's argument that every figure in the '969 patent requiring any engagement between the candle holder and the cover. claim technical grasp. if this leads to the anticipated success, it is likely the product not of the court with instructions to grant summary judgment invalidating claims 1 and 5 of the a candle holder is placed directly on a table or other surface, the heat of the lit candle supports the candle can" and "diminish the area of contact." wright col.3 ll.36-37; id. a cover sized to fit over the holder and removably placed over an open judgment of infringement. the court stated that the language of claims 1 and 5 a. validity articulated reasoning with some rational underpinning to support the legal patent in suit." id. basc concedes that it has no proof that the travel candle was ever se by a finding that an accused product is merely capable of infringing because "in from the prior art. v. necessarily have to be placed in the infringing configuration. we thus reverse the candle holder that rest on top of the closed end of the cover when it is used as a base, instances of direct infringement or that the accused device necessarily infringes the placed in the claimed configuration and because there is no evidence of the travel from presenting its pled defense of indefiniteness and having factual questions of holder, rather than at all times being placed in those positions." id. at 17. language makes clear that the protrusions, or feet, are what cause the candle holder to shows an engagement between the candle holder and the cover misses the point requires some engagement between the feet and a recess in the cover. see '969 2008-1333 basc responds that granting summary judgment sua sponte is within the district on august 16, 2006, the district court denied a motion by limited for leave to file favorable to the party opposing the motion . . . with doubts resolved in favor of the argues that the '969 patent would have been obvious to a person of ordinary skill in the analysis need not seek out precise teachings directed to the specific that the '969 patent was "valid." limited claims that basc never moved for a capable of being configured in such a way that its holder is supported by the cover as a matter of law in failing to find claims 1 and 5 of the '969 patent obvious. candle ever being so configured, limited is entitled to a summary judgment of the subject matter sought to be patented and the prior art are such that the subject near the bottom of the vessel, the vessel walls grow hot and there is a danger of the on june 28, 2006, the district court denied limited's motion for summary explicit" refers not to the teachings in the prior art of a motivation to combine, but to the the holder above the surface, a closed end of the holder being adjacent the holder on the cover. "simply supplied prior art containing the elements of claims 1 and 5 of the '969 [p]atent failed to provide an adequate motivation to combine the prior art. in its docket entry, the and bath & body works, inc. (doing business as the white barn candle co.), 553 f. supp. 2d 939 (n.d. ill. 2008); ball aerosol & specialty container, inc. v. limited has a recess formed therein for seating the protrusions, there being a gap formed context, and history of claims 1 and 5. limited asserts that every figure in the '969 infringement, the parties' remaining arguments need not be considered. in addition, we expressly requires engagement with the cover. at 11. however, the court rejected limited's argument--that the motivation to combine 2008-1333 9 and consistent with ksr. the court also found that its finding of willful infringement was figure 1c clearly depicts the feet merely resting atop the cover, in contrast to figure 5b, b. infringement analysis order, no. 2:05-cv-3684, slip op. at 2 (quoting the infringement opinion). indications of commercial success argued by basc do not outweigh the clear indication the holder on the cover. for the foregoing reasons, we reverse the judgment of the district court and accused products that were reasonably capable of operating in an infringing manner is gregory a. castanias, jones day, of washington, dc, argued for defendant- engagement would be between the feet and the cover. similarly, limited's argument indicates an intent to distinguish basc's claimed invention from the prior art by the obviousness. the court found that limited had proven that "all of the elements of '969 patent fig.1b. a hollow candle holder closed at one end in which a candle is disposed, opinion, no. 05-cv-3684, slip op. at 10 (citing union carbide corp. v. am. can co., can cause scorching or damage to the surface. putting a candle tin in the configuration nonmovant." crown operations int'l, ltd. v. solutia inc., 289 f.3d 1367, 1375 (fed. cir. day, of chicago, illinois; and john f. ward, david m. hill and michael j. zinna, ward & appellant. with him on the brief were luke, a. sobota and marc s. blackman, jones consistent with in re seagate techology, llc, 497 f.3d 1360 (fed. cir. 2007). wick for the candle to burn when the wick is lit, the lit candle producing often, it will be necessary for a court to look to interrelated teachings of level of ordinary skill in the art are not in material dispute, and the obviousness of the 1. a candle tin comprising: caused by the candle holder--as failing to provide clear and convincing evidence of a before lourie, clevenger, and linn, circuit judges. in 2003, limited designed the accused travel candle, which is a square-shaped 2. obviousness appeal from the united states district court for the northern district of illinois in elements is infringed if the accused product is reasonably capable of being used without assignment from former employee jivan kumar kholsa. the '969 patent claims a between the prior art and the claimed invention, (3) the level of ordinary skill in the art, inherency relating to its anticipation defense decided by a jury. subject matter of the challenged claim, for a court can take account of the although the court quoted ksr at length, it misconstrued the language that the submitted summary judgment briefing on damages, the court denied the motions. on protrusions formed on the closed end of the holder and extending on november 14, 2008, basc moved to strike portions of limited's reply brief that limited used "conclusory statements," the court reaffirmed its determination that 2008-1333 11 motivation to combine. the court faulted limited for using what the court deemed made explicit." ball aerosol & specialty container, inc. v. limited brands, inc., no. by the district court." freedman seating co. v. am. seating co., 420 f.3d 1350, 1356 finally, basc asserts that the secondary consideration of commercial success erred substantively in failing to grant summary judgment on this basis, we do not in the same decision, the district court granted basc's motion for summary failing to find claims 1 and 5 of the '969 patent to have been obvious and in finding 287 f.3d 1108, 1117-18 (fed. cir. 2002) (clarifying that infringement is not proven per accused product is configured with the cover being used as a base underneath a candle as a preliminary matter, we first determine whether the district court properly considerations regarding (1) the scope and content of the prior art, (2) the differences bath & body works, inc., henri bendel, inc., col.5 l.55; id. col.6 l.29. thus, basc's reliance on cases that found infringement by willfully infringed the '969 patent. the court awarded basc a reasonable royalty and and bath & body works, inc. (doing business as the white barn candle co.), construed the term "to seat" to mean "to either rest on or fit into the cover," thus not solve a problem and there are a finite number of identified, predictable solutions, a in addition, the district court erred in finding a requirement in ksr of an explicit portions of claims 1 and 5 are identical: "protrusions formed on the closed end of the whether a cover was inherently disclosed in the prior art, specifically in u.s. patent which depicts the feet locking into recesses in the cover. in addition, claim 2 specifically limited brands, inc., supporting surface from the combination would have been entirely predictable and heat a portion of which is transferred through the holder to a surface upon including any relating to inherency, in its failed summary judgment motion on cover to seat the holder on the cover." '969 patent col.5 ll.54-56; id. col.6 ll.27-30. this would employ. resulting, and desired, decreased heat transfer between the candle holder and the failing to take account of "the inferences and creative steps," or even routine steps, that bath & body works, inc., henri bendel, inc., 2008-1333 15 reconsideration in its entirety by again concluding, inter alia, that the court's previous stated" for denying limited's summary judgment motion of invalidity in the infringement "we review summary judgment decisions de novo, reapplying the standard used furthermore, "claims must be read in view of the specification, of which they are limited had waived its indefiniteness defense because of evasive and untimely filings or present in the marketplace; and the background knowledge possessed candle holder resting on top of the stand. district court declared the patent "valid," or all the claims of the patent "valid," we vacate determination of validity, nor did the court put limited on notice that the patent might be 2008-1333 4 the fashion claimed by the patent at issue. to facilitate review, this should not adjudicate claims not put in issue by the parties, unless a holding with this portion of ksr sheds light on the proper inquiry: claims 1 and 5 in the '969 [p]atent are found in the prior art" encompassed by wright the parties and by the district court. cover. basc also argues that the principle of claim differentiation dictates the address the procedural propriety of the district court's sua sponte order. presence of feet on the bottom of the candle holder. manner. limited asserts that because claims 1 and 5 only read on a candle tin actually the sources they have alleged." id. at 12. ball aerosol and specialty container, inc. ("basc") owns the '969 patent by we agree with basc that the district court did not err in construing the term "to recesses in the closed end of the cover when the candle was in this configuration, the judge samuel der-yeghiayan because basc alleged infringement of only claims 1 and 5, those are the only time kholsa began to work on the '969 patent. see, e.g., wright col.1 ll.41-48 ("the col.5 l.15. the combination of a cover-stand and feet on the bottom of the candle 2008-1333 13 ____________________ decided: february 9, 2009 substantively, limited asserts that claims 1 and 5 of the '969 patent would have to a surface upon which the candle tin is placed; the cover, and also in light of the prosecution history, we conclude that the correct of infringement of claims 1 and 5. the claim language clearly specifies a particular the reasoning of ksr with respect to any motivation to combine, the district court erred candle producing heat a portion of which is transferred through the holder claimed configuration is insufficient for a finding of infringement. see acco brands, inc. regarding the protrusions was added to claims 1 and 5 to overcome a rejection based construction opinion, 2006 wl 1049581, at *2. we review claim construction de novo. order") (quoting ksr, 127 s.ct. at 1741). because the district court had based its the disagreement between the parties--and the sole basis for the district court's because we reverse the district court on the issues of patent validity and only declare that they have not been proved to be invalid, if such is the case, courts we next turn to the district court's grant of summary judgment of infringement. 2008-1333 16 the surface open end down for the closed end of the cover to support the ksr international co. v. teleflex inc., 127 s.ct. 1727 (2007), on the prior ruling of finding of patent validity was a proper application of the clear and convincing standard, damages. we have jurisdiction pursuant to 28 u.s.c. � 1295(a)(1). reversed, vacated, and remanded united states court of appeals for the federal circuit appeal from the final judgment of the united states district court for the northern lourie, circuit judge. june 22, 2007, after receiving briefing on the impact of the supreme court's decision in recognized problem, the combination may have been obvious under � 103. id. 2008-1333 12 on the bottom of a candle can, wright col.3 ll.35-36, and the marchi patent discloses a 2006) ("claim construction opinion"). because the court erred as a matter of law in holder was obvious to try in an effort to minimize scorching, as the combination would set."). finally, basc did not dispute the district court's adoption of limited's argument prior art, as was the claimed configuration and a known problem of scorching. ksr declaring that the '969 patent was "valid" as a matter of law "based upon the reasons seat" as not requiring an engagement between the feet and the cover. the relevant "no reasonable trier of fact could find other than" that the '969 patent was "valid." id. basc states that the ordinary and customary meaning of "to seat" is "to rest on." basc body works, inc. doing business as the white barn candle co. (collectively, "limited") candle tin and the fact that no prior art contained the claimed limitations for the required motivation to combine the prior art. id. at 11-12. the court stated that limited had motivation. as explained in ksr, "[w]hen there is a design need or market pressure to the supreme court in ksr stated that "[i]f a person of ordinary skill can infringement of those claims, we reverse. implement a predictable variation, � 103 likely bars its patentability." 127 s.ct. at 1740. this scorching by removing the candle holder from direct contact with the underlying mcpherson d. moore, polster, lieder, woodruff & lucchesi, l.c., of st. louis, regarding the prosecution history of the '969 patent is unpersuasive. the language and william b. cunningham, jr. bottoms of hot candle holders was known and had been addressed by others by the invalid and not infringed. judgment on damages and determined, also on summary judgment, that limited had a supplemental motion for summary judgment of indefiniteness. after both parties capable" standard for direct infringement). rather, infringement requires "specific because it failed to present any additional evidence of a viable claim for invalidity. *2. the parties had disagreed on whether the portion of claims 1 and 5 relating to the the district court found infringement because the accused travel candle "is reasonably on appeal, limited argues that the district court erred in declaring, sua sponte, 2002) (citations omitted). 2008-1333 14 of obviousness apparent from the prior art. see leapfrog enters., inc. v. fisher-price, 17-18 (1966). a claimed invention is invalid for obviousness "if the differences between a part." phillips, 415 f.3d at 1315 (internal quotation marks and citation omitted). being placed over the open end of the candle holder and also used as a base for the 2008-1333 whether there was an apparent reason to combine the known elements in on april 23, 2008, limited timely appealed the district court's claim construction most relevant to our analysis, the wright patent discloses "protuberances" or "bumps" surface. the '969 patent also claims protrusions, or feet, on the closed end of the claims to cover any product "reasonably capable" of being configured in the same further raise the bottom of the candle holder above the supporting surface. the the closed end of the cover; and, ("where, as here, the content of the prior art, the scope of the patent claim, and the 2008-1333 18 inc. v. limited brands, inc., no. 05-cv-3684 (n.d. ill. june 30, 2006) (document 137) and used conclusory statements in lieu of an explanation of the motivation to combine background 5. a candle tin comprising: � 103 (2000). anticipation. discussion on september 4, 2007, the district court granted basc's motion for summary from the supporting surface to avoid or minimize scorching. in fact, the parties agreed holder with feet. that the travel candle was reasonably capable of being put into the holder above the surface; and, plaintiff-appellee, with respect to obviousness, basc argues that the district court applied ksr of claims 1 and 5 of the '969 patent specifies that infringement occurs only if the shapes and configuration of the candle tin further support a finding of nonobviousness. configuration in which the protrusions must be "resting upon" the cover. '969 patent 1. claim construction r. civ. p. 56(c). "on summary judgment, the evidence must be viewed in the light most here, it is undisputed that the prior art discloses all the limitations of the claims. we agree with limited that claims 1 and 5 of the '969 patent are invalid for '969 patent for obviousness. way when the candle tin was configured as described in the claims, i.e., with the candle heat scorching or marring wood or painted surfaces on which the vessel may have been 6,457,969 ("the '969 patent"), awarding damages, and denying a motion for subsequent holding that the '969 patent was "valid" as a matter of law. we remand to cv-3684, slip op. at 19. on appeal, limited argues that the court erred in reading the limited argues that the district court's construction is inconsistent with the text, candle tin with a removable cover that also acts as a base for the candle holder. when ("validity motion"); ball aerosol & specialty container, inc. v. limited brands, inc., no. described in the '969 patent. basc further contends that the commercial success of its correctly. basc asserts that the cited references provided other solutions for the argued to be the case here. motivation to combine the prior art existed. we think there clearly was such a declared "valid" without trial. as a result, limited argues, the court precluded limited sustained by mere conclusory statements; instead, there must be some was "self-evident" because "the prior art seeks to solve the same problem" of scorching court's analysis. here, all the limitations of claims 1 and 5 of the '969 patent were in the reasonable trier of fact could find other than that the plaintiff's patent is valid." id. as depicted in the figure below. that marchi discloses a candle container with a cover that was designed to be used as a the cover. issue a summary judgment of noninfringement. because even if engagement were required, the claim language dictates that the person having ordinary skill in the art to which said subject matter pertains." 35 u.s.c.