Motivation to Combine? Capable of Infringing?

In Ball Aerosol & Sepciality Container, Inc. v. Limited Brands, Inc., No. 2008-1333 (Fed. Cir. Feb. 9, 2009), the Federal Circuit reversed the district court’s finding that the asserted claims are not obvious and infringed. Here, BASC’s patent claims a candle tin with a removable cover that also acts as a base for the candle holder. The parties do not dispute that the prior art discloses all the limitations of the claims. The district court had 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.

Key Issues:
• Whether the alleged infringer’s analysis of a motivation to combine “should be made explicit”?
• Whether an accused product that is reasonably capable of operating in an infringing manner infringes the claim that is not drawn to capability?

Holding:
• It is the court’s analysis, not the teachings in the prior art of a motivation to combine, that “should be made explicit” according to KSR.
• “[I]nfringement is not proven per se by a finding that an accused product is merely capable of infringing.” Slip op. at 17.

Commentary:

In this case, Limited appeared to argue simply that the motivation to combine was “self-evident.” The outcome was fortunate for Limited because of the relatively low level of ordinary skill in the art. Slip op. at 13 (“BASC did not dispute the district court’s adoption of Limited’s argument that because the ‘technology is simple and easily understandable,’ the level of ordinary skill in the art was that of an ordinary layman of average intelligence.”)

The lessons are two-fold:
• On the one hand, a patentee should always attempt to argue a higher level of ordinary skill. If an ordinary layman can understand and appreciate the technology, chances are that the accused infringer will find prior art references, which, in combination, may teach all of the claim elements.
• On the other hand, an accused infringer should not merely rely on the argument that the motion to combination is “self-evident.” If it is really “self-evident,” explain it in details. Even though not required under KSR, explicit explanation about the motivation to combine may help you avoid unnecessary appeals (and anxiety that comes with it).