Ball Aerosol and Spec. Container v. Limited Brands

• Decision Date: 09 February 2009
• Docket Number: No. 2008-1333.,2008-1333.
• Citation: 555 F.3d 984
• Parties: BALL AEROSOL AND SPECIALTY CONTAINER, INC., Plaintiff-Appellee, v. LIMITED BRANDS, INC., Bath & Body Works, Inc., Henri Bendel, Inc., and Bath & Body Works, Inc. (doing business as The White Barn Candle Co.), Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

555 F.3d 984

BALL AEROSOL AND SPECIALTY CONTAINER, INC., Plaintiff-Appellee, v. LIMITED BRANDS, INC., Bath & Body Works, Inc., Henri Bendel, Inc., and Bath & Body Works, Inc. (doing business as The White Barn Candle Co.), Defendants-Appellants.

No. 2008-1333.

United States Court of Appeals, Federal Circuit.

February 9, 2009.

McPherson D. Moore, Polster, Lieder, Woodruff & Lucchesi, L.C., of St. Louis, MO, argued for plaintiff-appellee. With him on the brief were Douglas D. Churovich and William B. Cunningham, Jr.

Gregory A. Castanias, Jones Day, of Washington, DC, argued for defendant-appellant. With him on the brief were Luke, A. Sobota and Marc S. Blackman,

Jones Day, of Chicago, IL; and John F. Ward, David M. Hill and Michael J. Zinna, Ward & Olivo, of New York, NY.

Before LOURIE, CLEVENGER, and LINN, Circuit Judges.

LOURIE, Circuit Judge.

Limited Brands, Inc., Bath & Body Works, Inc., Henri Bendel, Inc., and Bath & Body Works, Inc. doing business as The White Barn Candle Co. (collectively, "Limited") appeal from the final judgment of the United States District Court for the Northern District of Illinois granting summary judgment of validity and infringement of U.S. Patent 6,457,969 ("the '969 patent"), awarding damages, and denying a motion for reconsideration. See Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 553 F.Supp.2d 939 (N.D.Ill.2008); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 514 F.Supp.2d 1051 (N.D.Ill.2007); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 05-CV-3684, 2006 WL 6178978 (N.D.Ill. June 28, 2006) (document 137) ("Validity Motion"); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 05-CV-3684 (N.D.Ill. June 28, 2006) (document 139) ("Infringement Opinion"); U.S. Can Co. v. Limited Brands, Inc., No. 05-CV-3684, 2006 WL 1049581 (N.D.Ill. Apr. 19, 2006) ("Claim Construction Opinion"). Because the court erred as a matter of law in failing to find claims 1 and 5 of the '969 patent to have been obvious and in finding infringement of those claims, we reverse.

BACKGROUND

Ball Aerosol and Specialty Container, Inc. ("BASC") owns the '969 patent by assignment from former employee Jivan Kumar Kholsa. The '969 patent claims a candle tin with a removable cover that also acts as a base for the candle holder. When a candle holder is placed directly on a table or other surface, the heat of the lit candle can cause scorching or damage to the surface. Putting a candle tin in the configuration claimed in the '969 patent, with the candle holder resting on top of the cover, minimizes this scorching by removing the candle holder from direct contact with the underlying surface. The '969 patent also claims protrusions, or feet, on the closed end of the candle holder that rest on top of the closed end of the cover when it is used as a base, as depicted in the figure below.

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

'969 patent fig.1 B.

In 2003, Limited designed the accused Travel Candle, which is a square-shaped candle tin with a removable cover and four protrusions on the closed end of the candle holder. On October 25, 2004, BASC sued Limited for infringement in the United States District Court for the Eastern District of Michigan. The case was transferred to the Northern District of Illinois on May 31, 2005. BASC ultimately limited its allegations of infringement to claims 1 and 5 of the '969 patent, which read as follows:

1. A candle tin comprising:

a hollow candle holder closed at one end in which a candle is disposed, the candle having a wick for the candle to burn when the wick is lit, the lit candle producing heat a portion of which is transferred through the holder to a surface upon which the candle tin is placed; a cover sized to fit over the holder and removably placed over an open end of the holder to cover the candle when the candle is not lit, the cover, when removed, being placed upon the surface with the holder being set upon the cover for the cover to support the holder above the surface whereby the heat generated by the burning candle does not damage the surface, the holder and cover being cup shaped with the cover placed upon the surface open end down so a closed end of the cover supports the holder above the surface, a closed end of the holder being adjacent the closed end of the cover; and, protrusions formed on the closed end of the holder and extending therefrom, the protrusions resting upon the closed end of the cover to seat the holder on the cover.

M5. A candle tin comprising:

a cup shaped holder in which a candle is disposed, the candle having a wick for the candle to burn when the wick is lit, the lit candle producing heat a portion of which is transferred through the holder to a surface upon which the candle tin is placed;

a cup shaped cover sized to fit over an open end of the holder and removably placed over the open end of the holder to cover the candle when the candle is not lit, the cover, when removed, being placed upon the surface and the holder being set upon the cover for the cover to support the holder above the surface whereby the heat generated by the burning candle does not damage the surface, the cover being placed upon the surface open end down for the closed end of the cover to support the holder above the surface; and,

protrusions formed on the closed end of the holder and extending therefrom, the protrusions resting upon the closed end of the cover to seat the holder on the cover.

'969 patent col.5 ll.35-56; id. col.6 ll.10-30.

On April 19, 2006, the district court construed the term "to seat" to mean "to either rest on or fit into the cover." Claim Construction Opinion, 2006 WL 1049581, at *2. The parties had disagreed on whether the portion of claims 1 and 5 relating to the protrusions required that they lock in, or engage, the closed end of the cover in some way when the candle tin was configured as described in the claims, i.e., with the candle holder resting on top of the cover. The court reasoned that because not all of the figures in the patent showed the feet on the bottom of the candle holder fitting into recesses in the closed end of the cover when the candle was in this configuration, the term "to seat" did not require an engagement between the holder and the cover.

On June 28, 2006, the district court denied Limited's motion for summary judgment of anticipation because a genuine issue of material fact existed regarding whether a cover was inherently disclosed in the prior art, specifically in U.S. Patent 6,398,544 ("Wright"). The court also denied Limited's motion for summary judgment of obviousness. The court found that Limited had proven that "all of the elements of claims 1 and 5 in the '969 [p]atent are found in the prior art" encompassed by Wright and U.S. Patent 3,285,694 ("Marchi"). Infringement Opinion, No. 05-CV-3684, slip op. at 11. However, the court rejected Limited's argument—that the motivation to combine was "self-evident" because "the prior art seeks to solve the same problem" of scorching caused by the candle holder—as failing to provide clear and convincing evidence of a motivation to combine the prior art. Id. at 11-12. The court stated that Limited had "simply supplied prior art containing the elements of claims 1 and 5 of the '969 [p]atent and used conclusory statements in lieu of an explanation of the motivation to combine the sources they have alleged." Id. at 12.

In the same decision, the district court granted BASC's motion for summary judgment of infringement. The court stated that the language of claims 1 and 5 supported a finding that the candle tin need only have "a cover that is simply capable of being placed over the open end of the candle holder and also used as a base for the holder, rather than at all times being placed in those positions." Id. at 17.

Two days later, on June 30, 2006, the district court issued a sua sponte order declaring that the '969 patent was "valid" as a matter of law "based upon the reasons stated" for denying Limited's summary judgment motion of invalidity in the Infringement Opinion. Validity Motion, No. 05-CV-3684, slip op. at 1, 2006 WL 6178978. The court found that "no reasonable trier of fact could find other than that the Plaintiff's patent is valid." Id.

On August 16, 2006, the district court denied a motion by Limited for leave to file a supplemental motion for summary judgment of indefiniteness. After both parties submitted summary judgment briefing on damages, the court denied the motions. On June 22, 2007, after receiving briefing on the impact of the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), on the prior ruling of patent validity, the district court reaffirmed its earlier determination that Limited had failed to provide an adequate motivation to combine the prior art. In its docket entry, the court quoted KSR as stating that the analysis of a motivation to combine "should be made explicit." Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 2:05-CV-3684, slip op. at 1-2 (N.D.Ill. June 22, 2007) (document 191) ("KSR Analysis Order") (quoting KSR, 127 S.Ct. at 1741). Because the district court had based its rejection of Limited's obviousness argument in the Infringement Opinion on a finding that Limited used "conclusory statements," the court reaffirmed its determination that "no reasonable trier of fact could find other than" that the '969 patent was "valid." Id.

On September 4, 2007, the district court granted BASC's motion for summary judgment on damages and determined, also on summary judgment, that Limited had willfully infringed the '969 patent. The court awarded BASC a reasonable royalty and enhanced damages. On March 27, 2008, the court denied Limited's motion for reconsideration in its entirety by again concluding, inter alia, that the court's...