Candle Tin Patent Torches Limited
2008-1333 Ball Aerosol v. Limited Brands
ND/IL 05-c-3684
Defendants Limited (including Bath & Body Works) appeal from Judge Samuel Der-Yeghiayan's orders granting summary judgment of infringement to plaintiff and, more recently, on damages and willfulness (in the amount of $2.8 million after enhancement). Chicago IP Law covered the case here and here.
Plaintiff Ball Areosol (BASC) sued, asserting 6,4567,969 which is directed to a candle tin with a lid that can be removed and then used as a base. This base provides thermal protection to the surface below by reducing heat transfer. BASC does not make a product practicing the '969.
Claim Construction. First the court construed the disputed terms. "protrusions formed from the closed end of the hold" [36 in the figure] was held to mean from the same piece of metal as the holder rather than, as BASC argued, including separate protrusions affixed to the holder.
The protrusions rested "on the closed end of the cover to seat the holder on the cover." Limited argued that this required some level or fit or engagement (like a depression). However, the court accepted BASC's proposal that it included "resting on," based on claim differentiation.
Lastly, the "cup shaped" cover and holder was construed to cover a wide range of shapes, including circular, rectangular, star, etc., rather the just circular as Limited argued. This was based primarily on the Specification, which described the cup-shaped base as "generall round [even though] it can also be generally rectangular, star-shaped, or another preferred shape."
Invalidity. Limited argued that the claims were invalid under §§ 102 and/or 103. The court rejected the anticipation argument, noting that the asserted prior art clearly did not disclose using the lid as a base onto which the tin could be placed. Limited countered that this was "inherent" in the prior art, which the court dismissed as there was no evidence or suggestion that such use was "required."
As to obviousness, the court noted that, while the various asserted references collectively disclosed all of the limitations, there was no teaching, suggestion or motivation to combine. Additional briefing regarding KSR failed to change the court's view.
Infringement. Infringement turned on the fact that the claims, while apparatus types, included functional language. Limited argued that infringement could only occur if someone actually burned a candle in the tin while using the cover as a base--and claimed BASC had no such evidence. The court analyzed this under Intel and High Tech, finding that the Limited product sufficiently capable of infringing to infringe.
Damages. The parties did not dispute the total sales of the accused products, but Limited argued that the amount should be reduced to 1/7th the total because only 1 configuration in 7 infringed. The court viewed this as rehashing claim construction, and rejected it. The court applied the Georgia-Pacific factors and assessed a 20% royalty for the period after notice. The court then applied the Read factors and doubled damages during the period after notice and before the infringement summary judgment; and trebled damages after the summary judgment order (defendants apparently continued to sell the product through some stores). Defendants suggested that they consulted counsel after receiving notice, but did not produce an opinion.
The court recently affirmed all of the above decisions, denying Limited's motion for reconsiderations.
Documents:
Download 20081333_claim_constr.pdf
Comments