In BALL AEROSOL v. LIMITED BRANDS, INC., (DECIDED: February 9, 2009) the prior art contained all the elements to prevent a candle from scorching the surface on which it is placed. The invention claimed a cover to a candle that could then be used as a seat for the candle preventing the heat from being transferred to where the candle is being used (i.e. a table). The district court sua sponte held the patent valid because Limited did not give a reason to combine the references. Even when KSR was issued the district court maintained the ruling noting that KSR requires the reason to combine to be explicit and found that Limited used only conclusory statements. The Federal Circuit reversed. They found that the scorching problem was well known and the elements were also known and all that was needed was to combine the elements. "The resulting, and desired, decreased heat transfer between the candle holder and the supporting surface from the combination would have been entirely predictable and grounded in common sense."
The Federal Circuit, more importantly, reprimanded the court for requiring an explicit motivation to combine references. In reviewing the KSR decision the Federal Circuit stated, "the analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court's analysis."
As to whether Limited's candles infringed the patent the district court found infringement because Limited candle "is reasonably capable of being configured in such a way that its holder is supported by the cover when the cover is placed open end down on a surface." The Federal Circuit reversed. The standard is not "reasonably capable" instead "infringement requires "specific instances of direct infringement or that the accused device necessarily infringes the patent in suit."" Since the plaintiff did not provide any evidence of direct infringement the Federal Circuit reversed and remanded with instructions for finding non-infringement.
Case can be found here
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