Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc.

United States Court of Appeals for the Federal Circuit

2008-1333

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.

McPherson D. Moore, Polster, Lieder, Woodruff & Lucchesi, L.C., of St. Louis,
Missouri, 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, Illinois; and John F. Ward, David M. Hill and Michael J. Zinna, Ward &
Olivo, of New York, New York.

Appealed from: United States District Court for the Northern District of Illinois

Judge Samuel Der-Yeghiayan
 United States Court of Appeals for the Federal Circuit

2008-1333

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.

Appeal from the United States District Court for the Northern District of Illinois in
Case No. 05-CV-3684, Judge Samuel Der-Yeghiayan.
____________________

DECIDED: February 9, 2009
____________________

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 (N.D. Ill. June 30, 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.

2008-1333 2
’969 patent fig.1B.

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,

2008-1333 3
 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.

5. 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

2008-1333 4
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. 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

2008-1333 5
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., 127 S.Ct. 1727 (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 previous

finding of patent validity was a proper application of the clear and convincing standard,

and consistent with KSR. The court also found that its finding of willful infringement was

consistent with In re Seagate Techology, LLC, 497 F.3d 1360 (Fed. Cir. 2007).

On April 23, 2008, Limited timely appealed the district court’s claim construction

and grants of summary judgment on the issues of patent validity, infringement, and

2008-1333 6
damages. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

A. Validity

1. Claim Construction

As a preliminary matter, we first determine whether the district court properly

construed the term “to seat” to mean “to either rest on or fit into the cover,” thus not

requiring any engagement between the candle holder and the cover. Claim

Construction Opinion, 2006 WL 1049581, at *2. We review claim construction de novo.

Phillips v. AWH Corp., 415 F.3d 1303, 1328 (Fed. Cir. 2005) (en banc).

Limited argues that the district court’s construction is inconsistent with the text,

context, and history of claims 1 and 5. Limited asserts that every figure in the ’969

patent shows an engagement between the candle holder and the cover. In response,

BASC states that the ordinary and customary meaning of “to seat” is “to rest on.” BASC

contends that there was no clear disavowal in the ’969 patent or its prosecution history

of the embodiment shown in figure 1C, which shows the feet merely resting upon the

cover. BASC also argues that the principle of claim differentiation dictates the

construction given by the district court because claim 2, which is dependent on claim 1,

expressly requires engagement with the cover.

We agree with BASC that the district court did not err in construing the term “to

seat” as not requiring an engagement between the feet and the cover. The relevant

portions of claims 1 and 5 are identical: “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.54-56; id. col.6 ll.27-30. This

2008-1333 7
language makes clear that the protrusions, or feet, are what cause the candle holder to

be “seat[ed]” on the cover. Thus, Limited’s argument that every figure in the ’969 patent

shows an engagement between the candle holder and the cover misses the point

because even if engagement were required, the claim language dictates that the

engagement would be between the feet and the cover. Similarly, Limited’s argument

regarding the prosecution history of the ’969 patent is unpersuasive. The language

regarding the protrusions was added to claims 1 and 5 to overcome a rejection based

on prior art that depicted a candle holder that could lock together with its cover when the

cover was used as a base. Nothing in the language added concerning the protrusions

indicates that BASC intended the feet to lock into the cover; rather, the language

indicates an intent to distinguish BASC’s claimed invention from the prior art by the

presence of feet on the bottom of the candle holder.

Furthermore, “claims must be read in view of the specification, of which they are

a part.” Phillips, 415 F.3d at 1315 (internal quotation marks and citation omitted).

Figure 1C clearly depicts the feet merely resting atop the cover, in contrast to figure 5B,

which depicts the feet locking into recesses in the cover. In addition, claim 2 specifically

requires some engagement between the feet and a recess in the cover. See ’969

patent col.5 l.57-col.6 l.2 (“The candle tin of claim 1 in which the closed end of the cover

has a recess formed therein for seating the protrusions, there being a gap formed

between the cover and holder when the holder is seated on the cover.”). Thus, because

the specification illustrates feet both resting on the cover and locking into recesses in

the cover, and also in light of the prosecution history, we conclude that the correct

construction of the term “to seat” does not require an engagement between the feet and

2008-1333 8
the cover.

2. Obviousness

On appeal, Limited argues that the district court erred in declaring, sua sponte,

that the ’969 patent was “valid.” Limited claims that BASC never moved for a

determination of validity, nor did the court put Limited on notice that the patent might be

declared “valid” without trial. As a result, Limited argues, the court precluded Limited

from presenting its pled defense of indefiniteness and having factual questions of

inherency relating to its anticipation defense decided by a jury.

Substantively, Limited asserts that claims 1 and 5 of the ’969 patent would have

been obvious under KSR. Limited states that all the claim limitations of claims 1 and 5

and information as to how to configure these elements are in the prior art. Limited

argues that the ’969 patent would have been obvious to a person of ordinary skill in the

art attempting to address the problem of scorching. Thus, Limited contends that under

the reasoning of KSR with respect to any motivation to combine, the district court erred

as a matter of law in failing to find claims 1 and 5 of the ’969 patent obvious.

BASC responds that granting summary judgment sua sponte is within the district

court’s discretion and that the court recognized that BASC had simply overlooked

formally moving for a validity determination. BASC argues that Limited was on notice

and had an opportunity to respond regarding the issue of validity because its summary

judgment motion for a declaration of invalidity was under consideration. Furthermore,

BASC asserts that even if notice had been lacking, Limited suffered no prejudice

because it failed to present any additional evidence of a viable claim for invalidity.

BASC also states that the court properly exercised its discretion in determining that

2008-1333 9
Limited had waived its indefiniteness defense because of evasive and untimely filings

and notes that Limited had argued that there was no genuine issue of material fact,

including any relating to inherency, in its failed summary judgment motion on

anticipation.

With respect to obviousness, BASC argues that the district court applied KSR

correctly. BASC asserts that the cited references provided other solutions for the

scorching problem and thus taught away from combining references in the manner

described in the ’969 patent. BASC further contends that the commercial success of its

candle tin and the fact that no prior art contained the claimed limitations for the required

shapes and configuration of the candle tin further support a finding of nonobviousness.

“We review summary judgment decisions de novo, reapplying the standard used

by the district court.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1356

(Fed. Cir. 2005). Summary judgment is appropriate “if the pleadings, the discovery and

disclosure materials on file, and any affidavits show that there is no genuine issue as to

any material fact and that the movant is entitled to judgment as a matter of law.” Fed.

R. Civ. P. 56(c). “On summary judgment, the evidence must be viewed in the light most

favorable to the party opposing the motion . . . with doubts resolved in favor of the

nonmovant.” Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir.

2002) (citations omitted).

Obviousness under 35 U.S.C. § 103 is a question of law, with underlying factual

considerations regarding (1) the scope and content of the prior art, (2) the differences

between the prior art and the claimed invention, (3) the level of ordinary skill in the art,

and (4) any relevant secondary considerations. Graham v. John Deere Co., 383 U.S. 1,

2008-1333 10
17-18 (1966). A claimed invention is invalid for obviousness “if the differences between

the subject matter sought to be patented and the prior art are such that the subject

matter as a whole would have been obvious at the time the invention was made to a

person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C.

§ 103 (2000).

We agree with Limited that claims 1 and 5 of the ’969 patent are invalid for

obviousness based on Wright and Marchi. ∗ Because we conclude that the district court

erred substantively in failing to grant summary judgment on this basis, we do not

address the procedural propriety of the district court’s sua sponte order.

The disagreement between the parties—and the sole basis for the district court’s

denial of Limited’s motion for summary judgment of obviousness—is whether a

motivation to combine the prior art existed. We think there clearly was such a

motivation. As explained in KSR, “[w]hen there is a design need or market pressure to

solve a problem and there are a finite number of identified, predictable solutions, a

person of ordinary skill has good reason to pursue the known options within his or her

technical grasp. If this leads to the anticipated success, it is likely the product not of

innovation but of ordinary skill and common sense.” 127 S.Ct. at 1742. The Court

stated that if a combination of known elements was “obvious to try” to address a

recognized problem, the combination may have been obvious under § 103. Id.

Here, it is undisputed that the prior art discloses all the limitations of the claims.

Most relevant to our analysis, the Wright patent discloses “protuberances” or “bumps”

∗
Because we find claims 1 and 5 of the ’969 patent to have been obvious
based on Wright and Marchi alone, we do not address the other prior art discussed by
the parties and by the district court.

2008-1333 11
on the bottom of a candle can, Wright col.3 ll.35-36, and the Marchi patent discloses a

combination cover-stand and includes a figure showing the invention configured with the

candle holder resting on top of the stand.

Marchi figs.1 & 2. It is also undisputed that the problem of scorching caused by the

bottoms of hot candle holders was known and had been addressed by others by the

time Kholsa began to work on the ’969 patent. See, e.g., Wright col.1 ll.41-48 (“The

downside of using metal cans to accommodate burning candles is well known and

derives from the fact that the thermally conductive nature of metal frequently allows

transmission of harmful quantities of heat from not only the flame but from the heated

and liquefied candle wax which heat passes through the can base to a support surface

which may be damaged by the heat.”); Marchi col.1 ll.39-43 (When “the candle burns

2008-1333 12
near the bottom of the vessel, the vessel walls grow hot and there is a danger of the

heat scorching or marring wood or painted surfaces on which the vessel may have been

set.”). Finally, 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. Infringement

Opinion, No. 05-CV-3684, slip op. at 10 (citing Union Carbide Corp. v. Am. Can Co.,

724 F.2d 1567, 1573 (Fed. Cir. 1984)).

The Supreme Court in KSR stated that “[i]f a person of ordinary skill can

implement a predictable variation, § 103 likely bars its patentability.” 127 S.Ct. at 1740.

That is clearly the situation here. The combination of putting feet on the bottom of the

candle holder and using the cover as a base for the candle holder was a predictable

variation. Both Marchi and Wright involve raising the bottom of a candle holder away

from the supporting surface to avoid or minimize scorching. In fact, the parties agreed

that Marchi discloses a candle container with a cover that was designed to be used as a

base to prevent heat damage from the candle holder when the candle is lit. Similarly,

Wright discloses “bumps that further space the candle can from the surface that

supports the candle can” and “diminish the area of contact.” Wright col.3 ll.36-37; id.

col.5 l.15. The combination of a cover-stand and feet on the bottom of the candle

holder was obvious to try in an effort to minimize scorching, as the combination would

further raise the bottom of the candle holder above the supporting surface. 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.

2008-1333 13
 In addition, the district court erred in finding a requirement in KSR of an explicit

motivation to combine. The court faulted Limited for using what the court deemed

“conclusory statements in lieu of an explanation of a motivation to combine.” KSR

Analysis Order, No. 2:05-CV-3684, slip op. at 2 (quoting the Infringement Opinion).

Although the court quoted KSR at length, it misconstrued the language that the

motivation to combine analysis “should be made explicit.” Id. at 1-2. A broader look at

this portion of KSR sheds light on the proper inquiry:

Often, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community
or present in the marketplace; and the background knowledge possessed
by a person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988
(C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art
would employ.

127 S.Ct. at 1740-41 (emphases added). Thus, 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. Here, all the limitations of claims 1 and 5 of the ’969 patent were in the

prior art, as was the claimed configuration and a known problem of scorching. KSR

thus compels the grant of summary judgment of obviousness. 127 S.Ct. at 1745-46

(“Where, as here, the content of the prior art, the scope of the patent claim, and the

level of ordinary skill in the art are not in material dispute, and the obviousness of the

claim is apparent in light of these factors, summary judgment is appropriate.”). Under

the flexible inquiry set forth by the Supreme Court, the district court therefore erred by

2008-1333 14
failing to take account of “the inferences and creative steps,” or even routine steps, that

an inventor would employ and by failing to find a motivation to combine related pieces

from the prior art.

Finally, BASC asserts that the secondary consideration of commercial success

supports the district court’s conclusion of nonobviousness. We disagree. The minimal

indications of commercial success argued by BASC do not outweigh the clear indication

of obviousness apparent from the prior art. See Leapfrog Enters., Inc. v. Fisher-Price,

Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).

Because BASC alleged infringement of only claims 1 and 5, those are the only

claims in issue, and we render no judgment on any other claims. To the extent that the

district court declared the patent “valid,” or all the claims of the patent “valid,” we vacate

that declaration. Aside from the fact that courts do not declare patents to be valid, and

only declare that they have not been proved to be invalid, if such is the case, courts

should not adjudicate claims not put in issue by the parties, unless a holding with

respect to contested claims necessarily implicates others, a situation that has not been

argued to be the case here.

We therefore reverse the district court’s denial of Limited’s motion for summary

judgment of invalidity of claims 1 and 5 for obviousness and thus vacate the court’s

subsequent holding that the ’969 patent was “valid” as a matter of law. We remand to

the court with instructions to grant summary judgment invalidating claims 1 and 5 of the

’969 patent for obviousness.

3. Motion to Strike

On November 14, 2008, BASC moved to strike portions of Limited’s reply brief

2008-1333 15
filed in this court. Because we do not rely upon the arguments made by Limited in that

section of its reply brief, BASC’s motion is denied as moot.

B. Infringement

We next turn to the district court’s grant of summary judgment of infringement.

The district court found infringement because the accused Travel 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.” Infringement Opinion, No. 05-

CV-3684, slip op. at 19. On appeal, Limited argues that the court erred in reading the

claims to cover any product “reasonably capable” of being configured in the same

manner. Limited asserts that because claims 1 and 5 only read on a candle tin actually

placed in the claimed configuration and because there is no evidence of the Travel

Candle ever being so configured, Limited is entitled to a summary judgment of

noninfringement. In response, BASC argues that claims 1 and 5 are apparatus, not

method, claims. BASC contends that an apparatus patent claim with functional

elements is infringed if the accused product is reasonably capable of being used without

substantial modification in the manner recited in the claim.

We agree with Limited that the district court erred in granting summary judgment

of infringement of claims 1 and 5. The claim language clearly specifies a particular

configuration in which the protrusions must be “resting upon” the cover. ’969 patent

col.5 l.55; id. col.6 l.29. Thus, BASC’s reliance on cases that found infringement by

accused products that were reasonably capable of operating in an infringing manner is

misplaced, since that line of cases is relevant only to claim language that specifies that

the claim is drawn to capability. See Fantasy Sports Props., Inc. v. Sportsline.com, Inc.,

2008-1333 16
287 F.3d 1108, 1117-18 (Fed. Cir. 2002) (clarifying that infringement is not proven per

se by a finding that an accused product is merely capable of infringing because “in

every infringement analysis, the language of the claims, as well as the nature of the

accused product, dictates whether an infringement has occurred”). Here, the language

of claims 1 and 5 of the ’969 patent specifies that infringement occurs only if the

accused product is configured with the cover being used as a base underneath a candle

holder with feet. That the Travel Candle was reasonably capable of being put into the

claimed configuration is insufficient for a finding of infringement. See Acco Brands, Inc.

v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (rejecting a “reasonably

capable” standard for direct infringement). Rather, infringement requires “specific

instances of direct infringement or that the accused device necessarily infringes the

patent in suit.” Id. BASC concedes that it has no proof that the Travel Candle was ever

placed in the infringing configuration, and it is clear that the Travel Candle does not

necessarily have to be placed in the infringing configuration. We thus reverse the

district court’s finding of infringement, and we remand to the court with instructions to

issue a summary judgment of noninfringement.

Because we reverse the district court on the issues of patent validity and

infringement, the parties’ remaining arguments need not be considered. In addition, we

necessarily vacate the holdings on damages and willfulness.

CONCLUSION

For the foregoing reasons, we reverse the judgment of the district court and

remand to the court with instructions to grant summary judgment that claims 1 and 5 are

invalid and not infringed.

2008-1333 17
 REVERSED, VACATED, AND REMANDED

2008-1333 18