Monday, February 9, 2009, the Federal Circuit continued its struggles with the new obviousness standards for patents announced by the Supreme
Court in its April 2007 KSR decision. This time, the Federal Circuit reversed a sua sponte summary judgment of validity and
remanded with instructions that the district court grant summary judgment that the claims are obvious. Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., No. 2008-1333 (Fed. Cir. February 9, 2009).
While the Federal Circuit appears to be resisting KSR in some technology areas, at least some members of the circuit are applying
KSR to "simple and understandable" technology areas. Here, the patent claimed a candle tin with a removable cover that also acts as a
base to solve the problem of scorching to a table surface. The court had no trouble understanding the technology.
The patent owner did not dispute that all of the elements of the invention were disclosed in two prior art patents. Citing KSR, the
Federal Circuit held that it would have been obvious to try the combination of the two prior art patents to solve the problem of scorching a
table surface.
The Federal Circuit also held that the district court erred in reading KSR as requiring an explicit motivation to combine. According to
the Federal Circuit, KSR requires courts to perform an analysis of the motivation to combine two or more prior art references, but
KSR does not require the references themselves to recite the motivation explicitly.
As is becoming ever apparent, patent applicants and patent owners eying infringers need to take KSR into account in drafting patent claims
and in suing infringers.
If you have any questions regarding this e-Alert, please contact Tom Adolph
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