Intercontinental Great Brands v. Kellogg North America Company , 869 F.3d 1336 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
INTERCONTINENTAL GREAT BRANDS LLC,
Plaintiff-Appellant
v.
KELLOGG NORTH AMERICA COMPANY,
KELLOGG USA, INC., KEEBLER COMPANY,
KEEBLER FOODS COMPANY, KELLOGG SALES
COMPANY,
Defendants-Cross-Appellants
______________________
2015-2082, 2015-2084
______________________
Appeals from the United States District Court for the
Northern District of Illinois in No. 1:13-cv-00321, Judge
Matthew F. Kennelly.
______________________
Decided: September 7, 2017
______________________
KATIE CROSBY LEHMANN, Ciresi Conlin LLP, Minne-
apolis, MN, argued for plaintiff-appellant. Also represent-
ed by MICHAEL V. CIRESI.
RICHARD DANIEL HARRIS, Greenberg Traurig LLP,
Chicago, IL, argued for defendants-cross-appellants. Also
represented by MATTHEW J. LEVINSTEIN, JAMES J. LUKAS,
JR.
______________________
2 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
Before PROST, Chief Judge, REYNA and TARANTO, Cir-
cuit Judges.
Opinion for the court filed by Circuit Judge TARANTO.
Opinion dissenting in part filed by Circuit Judge
REYNA.
TARANTO, Circuit Judge.
Kraft Foods Global Brands LLC (now called Intercon-
tinental Great Brands) owns U.S. Patent No. 6,918,532,
which issued in 2005 and was supplemented with addi-
tional claims on reexamination in 2011. The ’532 patent
describes and claims a food package that, after opening,
can be resealed to maintain the freshness of the food
items inside. Kraft brought this patent-infringement suit
against Kellogg North America Co., Keebler Foods Co.,
and affiliates (collectively, Kellogg) in the Northern
District of Illinois. The district court held that Kellogg
was entitled to summary judgment of invalidity for obvi-
ousness of the asserted claims of the ’532 patent. Inter-
continental Great Brands LLC v. Kellogg N. Am. Co., 118
F. Supp. 3d 1022, 1027–42 (N.D. Ill. 2015). The court also
held that Kraft was entitled to summary judgment reject-
ing Kellogg’s counterclaim of unenforceability of the
patent due to alleged inequitable conduct by Kraft, chiefly
in an ex parte reexamination proceeding. Id. at 1044–45.
We affirm.
I
The ’532 patent describes a combination of two known
kinds of packaging. One, common for cookies, uses a
frame surrounded by a wrapper. The other, common for
wet wipes, uses a package on which the label may be
pulled back to access the contents, then put back in place
to reseal the package to preserve the items remaining
inside.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 3
Thus, the background section of the patent begins:
“Containers for food products such as cookies and other
snacks typically include a frame surrounded by an outer
wrapper. The frame acts as a tray to hold the food prod-
uct and to protect the food product from damage.” ’532
patent, col. 1, lines 12–15. A person wanting to consume
some but not all of the items in the package “normally”
does so “by opening one end of the wrapper, withdrawing
the tray from the inside thereof, and then removing the
food product from the tray.” Id., col. 1, lines 15–18.
“[T]hese containers,” however, “generally do not provide a
convenient opening and reclosing arrangement. For
example, reclosing of the wrapper, once opened, generally
includes simply folding or rolling the end down and clip-
ping the end to keep the wrapper closed.” Id., col. 1, lines
19–23.
At the same time, “[r]eclosable seals have been used
for dispensing bags for wet tissue or disposable cleaning
wipes.” Id., col. 1, lines 24–25. “The label on these bags
can be pulled back thereby exposing an opening, allowing
access to the wet tissues or wipes inside.” Id., col. 1, lines
25–27. “Typically,” however, “these dispensing bags” lack
a rigid internal structure, i.e., “are completely flexible,
formed exclusively of a plastic or other suitable flexible
material which closely surrounds the pack of wet tissues
or wipes.” Id., col. 1, lines 27–30. Lacking an internal
rigid structure, “such known dispensing bags are not well
suited for containing food products as these containers fail
to provide adequate protection for storing food products.”
Id., col. 1, lines 34–36.
The patent then introduces the invention:
The purpose of the present invention is to provide
a new and improved container for food products
such as rigid food articles, for example cookies and
the like, which container provides adequate pro-
tection for the contents thereof, while concurrent-
4 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
ly facilitating opening of the container wrapper
and resealing the seal to protect the contents
thereof until the contents are fully consumed.
Id., col. 1, lines 39–46.
Claim 1, which is largely representative for purposes
of this appeal, recites as follows:
1. A polygonal shaped food container comprising:
a frame defining the polygonal shape of the con-
tainer, said container having a top, a bottom[,]
and sides connecting the top and bottom, the
frame containing a food product comprised of dis-
crete food articles;
a wrapper surrounding said frame, said wrapper
forming the top[,] sides[,] and bottom of the con-
tainer;
said top having an access opening sufficiently
large to provide hand access to substantially all of
the discrete food articles contained within the
frame, such that substantially any one of the dis-
crete food articles can be accessed and removed
individually through said access opening; and
a sealing layer, adhesively sealed to said top
around said opening, said sealing layer including
a starter portion located near a side of the top
which can be grasped by a user, said sealing layer
being releasable when said starter portion is
pulled in a direction away from said side to in
turn pull and thereby release at least a portion of
said sealing layer to provide the hand access to
said top access opening and reclosable against
said top to seal said opening when said sealing
layer is moved back against the said top.
Id., col. 5, lines 29–51.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 5
In October 2007, about two years after the ’532 patent
issued, a Swedish company that produces resealable
packages sought an ex parte reexamination of that patent
from the U.S. Patent and Trademark Office. Interconti-
nental, 118 F. Supp. 3d at 1026. The Office initiated the
reexamination, and in April 2010, the examiner (in the
central reexamination unit) rejected all claims except two
of the claims that Kraft added (to which the examiner
objected), relying centrally on a short 2001 article in
Packaging News that displayed and described Re-Seal It
packaging made by a Swedish firm and marketed by
Paramount Packaging. In August 2011, however, the
Patent Trial and Appeal Board reversed all of the rejec-
tions. It relied critically on a particular phrase in the
Packaging News article asserting the conventionality of
the wrapping film to distinguish the Kraft patent
claims—a phrase that does not appear in the descriptions
of Paramount Re-Seal It packaging in the distinct prior-
art articles that became central in the present litigation.
Ex Parte Kraft Foods Global Brands LLC., No. 2011-
005770, 2011 WL 3754634 (P.T.A.B. Aug. 19, 2011). The
resulting reexamination certificate contained the original
claims 1–25 and new claims 26–67.
In 2013, Kraft sued Kellogg for infringement of a
number of claims of the ’532 patent. In particular, Kraft
alleged that Kellogg infringed by making, using, selling,
and offering certain cookies in resealable packages that a
Kellogg document suggested were designed to “‘circum-
vent[] the Kraft patent while maintaining similar proper-
ties.’” Intercontinental, 118 F. Supp. 3d at 1026
(alteration in original). Kellogg responded by, among
other things, alleging that the asserted claims of the ’532
patent were invalid for obviousness and that the patent
was unenforceable due to inequitable conduct by Kraft
before the Board in securing reversal of the examiner’s
rejections during reexamination. Kellogg eventually
moved for summary judgment of invalidity, and Kraft
6 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
moved for summary judgment on Kellogg’s counterclaim
of unenforceability due to inequitable conduct. 1
The district court granted Kellogg’s motion for sum-
mary judgment of invalidity of all of the asserted claims
(1, 3, 4, 6, 26, 32, 33, 34, 35, 36, 37, 39, and 42) under 35
U.S.C. § 103 (2006). 2 As the patent itself makes clear, the
“frame” element is shown by prior art, such as U.S. Pa-
tent No. 3,740,238 issued to Graham, which discloses a
traditional cookie package with a frame to hold the cook-
ies, described as prior art in the ’532 patent. And while
the patent makes clear that non-food prior art showed a
peel-back resealable package without a rigid structure
(packaging for wet wipes), what the patent does not show,
but the record in this litigation reveals, is prior art show-
ing a peel-back resealable package with a rigid tray for
food items (“such as” discrete items like sushi and cana-
pés)—namely, two related articles in the Machinery
Update publication describing and showing a Re-Seal It
package marketed in Britain by Paramount Packaging as
an agent for Real-Seal It Sweden. See Machinery Update,
1
Kellogg also sought summary judgment of non-
infringement, but the district court agreed only as to
literal infringement, concluding that the record presented
a triable issue as to infringement by equivalence. Inter-
continental, 118 F. Supp. 3d at 1042–44. We need not
discuss either half of that ruling, or any issue except the
invalidity and unenforceability issues, as to which we
affirm the district court’s summary judgment rulings.
2 The ’532 patent, which issued from a 2003 appli-
cation, is governed by the version of § 103 that was in
effect before its amendment by the Leahy-Smith America
Invents Act, Pub. L. No. 112-29, § 3(n)(1), 125 Stat. 284,
293 (2011). See Intercontinental, 118 F. Supp. 3d at 1027
n.2.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 7
March/April 2002 at 59–60 (J.A. 4423–24); Machinery
Update, September/October 2001 at 46–47 (J.A. 4708–09).
First, considering independent claims 1 and 34, the
district court concluded that the record put beyond rea-
sonable dispute that all claim elements except the “frame”
element were shown in the Machinery Update articles and
the “frame” element was shown in the prior art of cookie
packaging, such as the Graham patent. Intercontinental,
118 F. Supp. 3d at 1030–34. The court then determined
that the only reasonable inference on the record was that
a relevant skilled artisan would have been motivated to
combine those prior-art references. The court specifically
stressed that the absence of a “convenient opening and
reclosing arrangement” was a “known problem” for cookie
packaging and that the Machinery Update resealable,
tray-included packaging for foods offered a skilled artisan
a solution to the problem simply by replacing the Machin-
ery Update “tray” with a frame, i.e., a tray with higher
sides. More generally, the court considered the simple
and clear teachings of the art, the importance of common
sense and ordinary creativity, and the conclusory charac-
ter of Kraft’s expert’s assertions of nonobviousness. Id. at
1034–38. The court next analyzed the various dependent
claims, finding no basis for a different conclusion about
the art-based portion of the obviousness analysis. Id. at
1038–41.
Finally, the court concluded that Kraft’s evidence of
certain objective indicia, though substantial, was simply
not entitled to such weight in the ultimate legal assess-
ment of obviousness as to produce a bottom-line conclu-
sion of anything but invalidity. Id. at 1041–42. In
particular, the court determined that Kraft had strong
evidence of commercial success tied to the patent-claimed
packaging, industry praise, and copying by Kellogg. Id. at
1041. Nevertheless, the court concluded, “this is a case in
which the secondary considerations do not overcome
Kellogg’s extremely strong prima facie showing that the
8 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
invention was obvious in light of Machinery Update.” Id.
The court explained:
In this case, the prior art references teach all of
the claim limitations—all of the elements could be
found in existing food packaging technology. In
fact, nearly all of the elements were found in one
Machinery Update article, and the rest already ex-
isted in cookie packages. Additionally, the tech-
nology is relatively simple. Based on these
considerations, a person skilled in the art would
have a reason to combine the elements to create
the invention. In sum, the primary considerations
lead to a conclusion that the invention was obvi-
ous in light of the prior art, and [Intercontinen-
tal’s] strong showing of secondary considerations
does not outweigh this determination.
In sum, based on the undisputed facts, all of
the asserted claims are invalid as obvious in light
of Machinery Update when combined with exist-
ing cookie packages.
Id. at 1042.
With regard to Kellogg’s unenforceability challenge to
the ’532 patent, based chiefly on alleged inequitable
conduct by Kraft in the reexamination proceeding, the
court granted Kraft’s motion for summary judgment
rejecting the challenge. Id. at 1044–45. The court ex-
plained that the charge of inequitable conduct during
reexamination did not and could not rest on withholding
by Kraft of material prior art; in particular, “[i]t is undis-
puted that [the 2002] Machinery Update [article] . . . [was]
presented during reexamination.” Id. at 1044. The court
then addressed Kellogg’s key charge—that Kraft’s counsel
did not tell the Patent and Trademark Office (PTO) that
the phrase in the Packaging News article about the con-
ventionality of the wrapping film, on which the Board
came to rely in upholding Kraft’s claims, was actually a
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 9
misprint, as allegedly made evident by the opposite
characterization of the film used in Re-Seal It packaging
in the 2002 Machinery Update article. The district court,
while agreeing that the phrase in Packaging News likely
was a misprint, concluded that Kraft’s counsel “merely
restated the contents of the misprinted article” and
“[t]here is no evidence that the attorney knowingly failed
to identify the inconsistency between the two articles.”
Intercontinental, 118 F. Supp. 3d at 1045. Kellogg thus
had not presented evidence that could meet the standard
for intent to deceive established in Therasense, Inc. v.
Becton, Dickinson & Co., 649 F.3d 1276, 1290–91 (Fed.
Cir. 2011) (en banc). Intercontinental, 118 F. Supp. 3d at
1045. 3
Kraft appeals regarding invalidity. Kellogg cross-
appeals regarding unenforceability. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
3 Kellogg also alleged that Kraft withheld prior art
(the “Fuji Package”) in the original prosecution, but the
district court concluded, for several reasons, that the
evidence offered to support that assertion failed to meet
Therasense’s inequitable-conduct standard. Interconti-
nental, 118 F. Supp. 3d at 1045. In this court, Kellogg
makes only what amounts to a bare assertion of error on
this point, not a meaningful argument for why the district
court erred. Kellogg’s Opening Corrected Br. 56–57. For
record evidence on the point, Kellogg cites only “Sec. V(C),
supra,” which does not exist, and J.A. 4924–26, which
does not address inequitable non-disclosure during prose-
cution. Kellogg has forfeited the point and certainly has
not shown error. We do not further address this aspect of
the inequitable-conduct issue.
10 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
II
We review the district court’s grant of summary
judgment de novo. See Blow v. Bijora, Inc., 855 F.3d 793,
797 (7th Cir. 2017); Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1318 (Fed. Cir. 2011). “The
court shall grant summary judgment if the movant shows
that there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a). A “material fact” is one that
“might affect the outcome” of the case. Anderson v. Liber-
ty Lobby, Inc., 477 U.S. 242, 248 (1986); Williams v.
Brooks, 809 F.3d 936, 941–42 (7th Cir. 2016); Crown
Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375
(Fed. Cir. 2002). A “genuine” dispute over a material fact
exists only if it is “reasonable” on the summary-judgment
record to find that fact, and therefore to reach a verdict,
against the movant, taking into account the governing
burden of persuasion. Anderson, 477 U.S. at 248 (“[A]
material fact is ‘genuine’ . . . if the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party.”); id. at 250–57 (reiterating reasonableness inquiry
and role of who has burden of persuasion and whether
“clear and convincing evidence” or other standard ap-
plies); see Scott v. Harris, 550 U.S. 372, 378 (2007) (On
summary judgment, “courts are required to view the facts
and draw reasonable inferences in the light most favora-
ble to the party opposing” the motion. (emphasis added)
(internal quotation marks omitted)); Reeves v. Sanderson
Plumbing Prods., Inc., 530 U.S. 133, 150 (2000) (“[T]he
court must draw all reasonable inferences in favor of the
nonmoving party.”); U.S. Water Servs., Inc. v. Novozymes
A/S, 843 F.3d 1345, 1350 (Fed. Cir. 2016); Laskin v.
Siegel, 728 F.3d 731, 734 (7th Cir. 2013).
A
A claimed invention is unpatentable “if the differences
between the claimed invention and the prior art are such
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 11
that the claimed invention as a whole would have been
obvious” to one of ordinary skill in the relevant art. 35
U.S.C. § 103. Obviousness is a legal question based on
underlying factual determinations. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John
Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966); Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Among
the factual determinations are “the scope and content of
the prior art, differences between the prior art and the
claims at issue, the level of ordinary skill in the pertinent
art, and any objective indicia of non-obviousness.” Ran-
dall, 733 F.3d at 1362 (citing KSR, 550 U.S. at 406;
Graham, 383 U.S. at 17–18). Also a fact question, of
significance here, is whether the relevant skilled artisan
had a motivation to combine pieces of prior art in the way
eventually claimed in the patent at issue. Apple Inc. v.
Samsung Elecs. Co., 839 F.3d 1034, 1047–48, 1051 (Fed.
Cir. 2016) (en banc); PAR Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014); Wyers v. Master
Lock Co., 616 F.3d 1231, 1237–39 (Fed. Cir. 2010); see
also, e.g., Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014,
1021 (Fed. Cir. 2017) (applying the same standards to the
Patent Trial and Appeal Board’s determination of obvi-
ousness in an inter partes review). 4 Once the relevant
fact issues are resolved, “[t]he ultimate judgment of
obviousness is a legal determination” for the court. KSR,
550 U.S. at 427.
“In KSR, the Supreme Court criticized a rigid ap-
proach to determining obviousness based on the disclo-
sures of individual prior-art references, with little
recourse to the knowledge, creativity, and common sense
that an ordinarily skilled artisan would have brought to
4 Whether a skilled artisan would have reasonably
expected success, an issue in many obviousness cases, has
not been presented as an issue here.
12 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
bear when considering combinations or modifications.”
Randall, 733 F.3d at 1362. “[T]he Court required an
analysis that reads the prior art in context, taking ac-
count of ‘demands known to the design community,’ ‘the
background knowledge possessed by a person having
ordinary skill in the art,’ and ‘the inferences and creative
steps that a person of ordinary skill in the art would
employ.’” Id. (quoting KSR, 550 U.S. at 418). A “court
must ask whether the [claimed] improvement is more
than the predictable use”—a “predictable variation”—“of
prior art elements according to their established func-
tions,” considering whether more is involved than “the
simple substitution of one known element for another or
the mere application of a known technique to a piece of
prior art ready for the improvement.” KSR, 550 U.S. at
417. “[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id. at 417. The
court should consider a range of real-world facts to deter-
mine “whether there was an apparent reason to combine
the known elements in the fashion claimed by the patent
at issue.” Id. at 418; see id. (“[I]t can be important to
identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the ele-
ments in the way the claimed new invention does.”). “One
of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time
of invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.” Id.
at 419–20.
Depending on the record, summary judgment of inva-
lidity for obviousness may be appropriate. The Supreme
Court ordered summary judgment in KSR after a careful
determination of the facts put beyond genuine dispute by
the record, and it explained that “a conclusory affidavit
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 13
addressing the question of obviousness” does not “exclude
the possibility of summary judgment.” Id. at 426. Ra-
ther:
In considering summary judgment on that ques-
tion the district court can and should take into ac-
count expert testimony, which may resolve or
keep open certain questions of fact. That is not
the end of the issue, however. The ultimate
judgment of obviousness is a legal determination.
Graham, 383 U.S. at 17. Where, as here, the con-
tent 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.
Id. at 427. Based on the required close examinations of
case-specific records, this court, since KSR, has some-
times held summary judgment of obviousness unwarrant-
ed 5 and sometimes found it warranted. 6
5 See, e.g., Ivera Med. Corp. v. Hospira, Inc., 801
F.3d 1336 (Fed. Cir. 2015); Plantronics, Inc. v. Aliph, Inc.,
724 F.3d 1343 (Fed. Cir. 2013); OSRAM Sylvania, Inc. v.
Am. Induction Techs., Inc., 701 F.3d 698 (Fed. Cir. 2012);
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d
1314 (Fed. Cir. 2011); Transocean Offshore Deepwater
Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d
1296 (Fed. Cir. 2010); TriMed, Inc. v. Stryker Corp., 608
F.3d 1333 (Fed. Cir. 2010); Source Search Techs., LLC v.
LendingTree, LLC, 588 F.3d 1063 (Fed. Cir. 2009); Süd-
Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001 (Fed.
Cir. 2009).
6 See, e.g., Hoffman-La Roche Inc. v. Apotex Inc.,
748 F.3d 1326 (Fed. Cir. 2014); Ohio Willow Wood Co. v.
Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013); Bayer
14 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
In this case, we conclude, the district court correctly
determined that summary judgment was warranted on
the record, for the reasons we have summarized in de-
scribing the district court’s opinion. Kraft’s arguments to
the contrary are unpersuasive.
1
Kraft turns first to the objective indicia (secondary
considerations) bearing on obviousness. Kraft’s Opening
Br. 38–42. It contends that the district court treated the
objective indicia as an “afterthought,” “writing off the
patent before turning to objective indicia,” and “repeated-
ly not[ing] its finding of obviousness before considering
the objective indicia.” Id. at 38, 40, 41. That contention
mischaracterizes the district court’s reasoning, which
followed a sequence that accords with KSR, Graham, and
this court’s precedents.
The district court drew its conclusion of obviousness
only after, not before, considering the objective indicia.
Intercontinental, 118 F. Supp. 3d at 1042. Before review-
Healthcare Pharm., Inc. v. Watson Pharm., Inc., 713 F.3d
1369 (Fed. Cir. 2013); Wm. Wrigley Jr. Co. v. Cadbury
Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012);
MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250 (Fed. Cir.
2012); In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303 (Fed. Cir. 2011); Tokai Corp v. Easton
Enters., Inc., 632 F.3d 1358 (Fed. Cir. 2011); King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010); Dow
Jones & Co., Inc. v. Ablaise Ltd., 606 F.3d 1338 (Fed. Cir.
2010); Media Techs. Licensing, LLC v. Upper Deck Co.,
596 F.3d 1334 (Fed. Cir. 2010); Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009); Ball Aero-
sol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555
F.3d 984 (Fed. Cir. 2009); Ricoh Co. v. Quanta Comput.
Inc., 550 F.3d 1325 (Fed. Cir. 2008).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 15
ing the objective indicia, the court concluded only that
Kellogg had made a “strong prima facie showing of obvi-
ousness.” Intercontinental, 118 F. Supp. 3d at 1037–38
(“Because there is no genuine dispute that all elements of
claims 1 and 34 are disclosed in the prior art and it would
have been predictable for a person of skill in the art to
combine those elements, Kellogg has made a strong prima
facie showing of obviousness as to independent claims 1
and 34.”); see id. at 1038–41 (same for asserted dependent
claims). As its opinion shows, id. at 1034–37, the court
drew that conclusion based on the Graham factors di-
rected to identifying the teachings of the prior art, as well
as the considerations this court has identified as bearing
on the question of motivation to combine. See, e.g., Plant-
ronics, 724 F.3d at 1354 (“[M]otivation to combine may be
found explicitly or implicitly in market forces; design
incentives; the ‘interrelated teachings of multiple pa-
tents’; ‘any need or problem known in the field of endeav-
or at the time of invention and addressed by the patent’;
and the background knowledge, creativity, and common
sense of the person of ordinary skill.”) (citing Perfect Web,
587 F.3d at 1328–29 (quoting KSR, 550 U.S. at 418–21)).
The court thus did not draw an ultimate conclusion
regarding obviousness before considering the objective
indicia. The contrary is not shown by the court’s not-
uncommon choice of words when conducting the ultimate
weighing, namely, that the objective indicia “do not over-
come Kellogg’s extremely strong prima facie showing.”
Intercontinental, 118 F. Supp. 3d at 1041. See, e.g., Ohio
Willow, 735 F.3d at 1344 (similar usage); PerfectWeb, 587
F.3d at 1333 (similar); cf. KSR, 550 U.S. at 426 (secondary
considerations do not “dislodge” the determination that
the claim would have been obvious).
While withholding a conclusion as to obviousness un-
til considering the objective indicia, the district court did
draw the following conclusions before such consideration:
16 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
“there was a known problem in the cookie packaging
industry, and all of the elements of the invention existed
in the prior art”; “[a] packaging expert, with knowledge of
existing food packaging technology, would have thought to
combine a resealable container and a frame big enough to
contain cookies”; and the claimed “combination ‘would
have been entirely predictable and grounded in common
sense.’” Intercontinental, 118 F. Supp. 3d at 1035 (quot-
ing Ball Aerosol & Specialty Container, 555 F.3d at 992–
93). The court then concluded (before discussing objective
indicia): “No reasonable jury could conclude that a person
skilled in packaging design would not be motivated to
combine these features.” Id.
Kraft contends that objective indicia must be evaluat-
ed before drawing a conclusion about whether a reasona-
ble jury could find that a relevant skilled artisan had a
motivation to combine the prior art, not merely before
drawing the ultimate obviousness conclusion. But it cites
no precedent so holding.
Kraft does cite authorities confirming that, in some
cases, objective indicia can be important evidence of
obviousness, sometimes even the most important evi-
dence. See, e.g., Plantronics, 724 F.3d at 1355; Crocs, Inc.
v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir.
2010). And it cites authorities that say, consistent with
KSR and Graham, that objective indicia must be consid-
ered and given “fair weight” before a legal conclusion on
obviousness is drawn. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988); see
Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357–58
(Fed. Cir. 2013); Plantronics, 724 F.3d at 1355; Power
Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
711 F.3d 1348, 1368 (Fed. Cir. 2013); In re Cycloben-
zaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1076 (Fed. Cir. 2012); see also
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 17
Apple, 839 F.3d at 1058; Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1368–71 (Fed. Cir. 2012);
Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361,
1380–81 (Fed. Cir. 2000). But the district court here did
just that. And Kraft cites no authority that requires
consideration of objective indicia as part of the motiva-
tion-to-combine factual analysis.
The staged consideration undertaken by the district
court, and reflected in our cases, makes sense within the
motivation-to-combine framework, a framework with
which Kraft does not take issue. When a challenger
shows that a “motivation” existed for a relevant skilled
artisan to combine prior art in the way claimed in the
patent at issue, such a showing commonly supports and
leads readily to the further, ultimate determination that
such an artisan, using ordinary creativity, would actually
have found the claimed invention obvious. But the latter
conclusion does not follow automatically from the former
finding, and additional evidence may prevent drawing it.
Identification of a “motivation” to make the combination
may not give a complete picture of what a skilled artisan,
exercising ordinary creativity without the incentive of
patent protection, would actually have found it obvious to
“disclose[] or devise[]” at the relevant time. See Graham,
383 U.S. at 11 (explaining that when Congress adopted
§ 103, and even before, “[t]he inherent problem was to
develop some means of weeding out those inventions
which would not be disclosed or devised but for the in-
ducement of a patent”). Even with a motivation proved,
the record may reveal reasons that, after all, the court
should not conclude that the combination would have
been obvious, i.e., already part of the public domain. 7 One
7 See In re Translogic Tech., Inc., 504 F.3d 1249,
1259 (Fed. Cir. 2007) (citing KSR for “the fundamental
18 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
type of such additional evidence consists of evidence of
objective indicia—commercial success traceable to the
claimed invention, industry praise, copying, and certain
other facts concerning people’s actions and statements.
This way of structuring the analysis fulfills the re-
quirement that the approach to determining obviousness
be “expansive” and “flexible.” See KSR, 550 U.S. at 415.
It reflects an understanding of the role of “motivation”
that fits our consistent treatment of that element of the
analysis as factual in nature. And it fits the Supreme
Court’s treatment of objective indicia as evidence to be
weighed in the overall legal determination of obviousness.
We see no error in the sequence of steps the district court
took in arriving at its ultimate obviousness determina-
tion.
Kraft’s only argument about the objective indicia thus
fails. Kraft cannot complain that the district court failed
to credit its evidence regarding objective indicia: the
district court accepted the facts Kraft asserted about
commercial success, industry praise, and copying. What
remains for the objective indicia, therefore, is a weighing
to produce a legal conclusion. But Kraft does not addi-
tionally argue to us, certainly not in a meaningful way,
that in this particular case the objective indicia accepted
by the district court require a legal conclusion of nonobvi-
ousness if we agree with the district court as to the prior-
art and motivation-to-combine elements of the analysis.
Any implicit, undeveloped suggestion to that effect by
Kraft is not enough on the record here, given the strength
of the record on those elements, including the simplicity of
proposition that obvious variants of prior art references
are themselves part of the public domain”); see also In re
Huai-Hung Kao, 639 F.3d 1057, 1073 (Fed. Cir. 2011); In
re Wiseman, 596 F.2d 1019, 1023 (C.C.P.A. 1979).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 19
the technology and combination at issue, the recognized
problem of resealing for cookie packaging, and the strong
teaching of the prior art just before the claimed priority
date. See, e.g., Ohio Willow, 735 F.3d at 1344 (“[W]here a
claimed invention represents no more than the predicta-
ble use of prior art elements according to established
functions, as here, evidence of secondary indicia are
frequently deemed inadequate to establish non-
obviousness.”).
2
Kraft next argues that the district court improperly
resolved genuine factual disputes. The district court
concluded that the following were the only reasonable
findings on the record: the Machinery Update articles
(published shortly before Kraft’s priority date) disclose all
the elements of the claims in combination—including,
notably, a pull-back resealable package for discrete food
items with a rigid tray—except the required “frame” that
was common for cookies, as shown by Graham; the ab-
sence of a satisfactory resealable package was a known
problem for cookies; and the ordinary creativity of the
relevant skilled packaging artisan motivated and made
predictable the use of the Machinery Update package with
a cookie-protecting frame as a solution to that known
problem. Kraft has not shown any basis in the record for
reasonable contrary findings. Those findings, in this case,
suffice to justify the overall legal conclusion of obvious-
ness, there being no meaningful argument that the objec-
tive indicia, when weighed in Kraft’s favor (as the district
court did), can change the ultimate conclusion.
Kraft argues that the district court failed to provide
“explicit and clear reasoning providing some rational
underpinning” for its invocation of common sense in its
motivation-to-combine analysis. Kraft’s Opening Br. 43
(quoting Plantronics, 724 F.3d at 1354). We disagree.
20 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
The court relied on the record demonstrating the “known
problem” of an insufficiently “convenient opening and
reclosing arrangement” for cookie packaging and the
suggestion in Machinery Update itself that its packaging,
with a tray, was usable for a variety of foods, “such as”
discrete items like sushi and canapés. Intercontinental,
118 F. Supp. 3d at 1035–36.
Kraft also points to the absence of expert testimony
for Kellogg on this point. Kraft’s Opening Br. 43. But we
have recognized that some cases involve technologies
and prior art that are simple enough that no expert
testimony is needed. See Wyers, 616 F.3d at 1239 (“KSR
and our later cases establish that the legal determination
of obviousness may include recourse to logic, judgment,
and common sense, in lieu of expert testimony.”); Perfect
Web, 587 F.3d at 1329; Sundance, Inc. v. DeMonte Fabri-
cating Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008). What is
claimed and described in the ’532 patent—which does not
include any new manufacturing equipment or instructions
to produce the described and claimed packaging—makes
this such a case.
Kraft next contends that the evidence in the record
shows that there was more than one reasonable inference
about whether a relevant skilled artisan had a motivation
to use the Machinery Update packaging with a frame for
cookies. Kraft begins by relying on the assertion that
“Kellogg personnel rejected the idea of combining a tradi-
tional cookie package with the resealable technology” of
the Machinery Update articles. Kraft’s Opening Br. 45.
But the record does not support the suggested inference.
At best, the cited deposition testimony could establish
that a group of Kellogg employees viewed a sample of the
Re-Seal It packaging technology at an internal meeting
along with other packaging samples brought back from a
trade show and Kellogg did not immediately adopt the
technology for cookies. See J.A. 6328–29, 6347, 6366–69.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 21
But the only evidence in the record about the reason
behind that initial decision is that Kellogg did not possess
the required equipment and did not then wish to purchase
new equipment. J.A. 6329. One company’s temporary
decision about an equipment investment is not sufficient
to defeat the otherwise-compelled inference that combin-
ing the Re-Seal It packaging with familiar cookie-package
frames (as in Graham) was a predictable technological
solution to the relevant known market problem.
Kraft does not dispute, as its own evidence recited by
the district court confirms, that the invention disclosed in
its patent helps solve a known problem with cookie pack-
aging (experienced by those consumers who want the
option of eating less than a full package of cookies in one
sitting). Intercontinental, 118 F. Supp. 3d at 1035. The
packaging in the Machinery Update articles, with an
internal tray to protect the contents and convenient
resealing functionality, and its suggestion of use for a
variety of discrete food items, makes readily predictable
its use for cookies by raising the sides of the tray to form a
“frame.” Kraft points to statements by its packaging
expert (or Kraft filings based on such statements) as
allegedly supporting a contrary finding. Kraft’s Opening
Br. 46–52 (citing portions of J.A. 1769–75, 6134–35, 6146–
53, 6156, 6159–60, 6163–64 6166–67). But the expert’s
statements in this case are insufficient to support a
reasonable contrary finding.
Kraft’s expert, especially in the PTO, devoted relative-
ly little attention to the Machinery Update articles. He
focused instead on the Packaging News article, which
(unlike the Machinery Update articles) stated that the Re-
Seal It packaging described and shown did not use con-
ventional wrapping—the statement that led the Board on
reexamination to reverse the examiner’s rejection of
Kraft’s claims. Regardless, to the extent that his state-
ments apply directly or indirectly to the Machinery Up-
date packaging, they rest on misreadings of the articles
22 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
and disregard of the plain significance of other evidence
from Kraft itself. See Novartis Corp. v. Ben Venue Labs.,
Inc., 271 F.3d 1043, 1050–51 (Fed. Cir. 2001) (determin-
ing that expert declaration not based on reasonable
inferences from the material record facts amounts to a
conclusory opinion insufficient to prevent summary
judgment); see also Scott, 552 U.S. at 380.
For example, the expert suggested that the Machinery
Update articles are focused on layered items like sliced
meats and suggest use of a tray only to be removed from
the side of the package, not for items like cookies to be
accessed from the top by peeling back the resealable flap.
Kraft’s Opening Br. 46–52. But the district court correct-
ly explained why the Machinery Update articles do teach
top access to trays with unstacked discrete items, giving
sushi and canapés as mere examples (“such as”), as well
as parallel perimeter portions at the top for the sealing
layer to stick to. Intercontinental, 118 F. Supp. 3d at
1030–34. We fail to see any other reasonable reading of
the Machinery Update articles on these points. 8
Likewise, the expert noted “many reclosure varia-
tions,” as Kraft summarizes the point, such as “tin ties,
twist ties, adhesive tape for reclosing one end, a clip to
pinch the end of the package, a zipper strip added to the
8 That conclusion applies equally to the dependent
claims, which the district court meticulously discussed in
relation to the teachings of the prior art at issue. Inter-
continental, 118 F. Supp. 3d at 1038–41. On appeal, Kraft
makes no meaningful argument about the merits of the
district court’s document-supported readings. Kraft’s
assertion that Kraft’s expert asserted contrary readings,
Kraft’s Opening Br. 50–52, is doubly conclusory. Kraft
has given no sufficient basis for overturning the grant of
summary judgment as to the dependent claims any more
than as to the independent claims.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 23
end or side of the package, and a pinch seal strip added to
an end or side of the package.” Kraft Opening Br. 47.
But as far as the record shows, those were among the very
alternatives in the prior art that left consumers with the
“known problem” with cookie packaging that motivated
turning to the resealable Machinery Update packaging.
Such known-to-be-unsatisfactory alternatives provide no
basis for questioning the predictability of picking out the
Machinery Update packaging as a new solution to the
known problem.
Kraft asserts, based on declarations submitted to the
PTO (relied on by its expert in this case), that “[a] skilled
artisan would not add a reclosure feature to Graham
because it is designed for one-time use, by ‘opening at one
of its ends,’” and “the Graham tray is inexpensive and
‘resiliently flexible’ to conform to the cookies,” whereas
the Packaging News packaging “is designed for multiple
openings and reclosings” and its “tray is expensive, ‘signif-
icantly more rigid,’ and ‘not conformable to the food
products.’” Kraft’s Opening Br. 46. But those assertions
provide no reasonable basis for denying the predictability
of using prior-art cookie frames like Graham’s in the
Machinery Update packaging.
It was a “known problem” for cookie consumers that
Graham-like packages did not satisfactorily provide for
the “multiple openings and closings” that consumers
wanted—and that the Machinery Update packaging made
more convenient. As Kraft says, “[c]onsumer dissatisfac-
tion with this traditional frame-in-wrapper package was
well-known.” Id. at 4. That is what motivated looking to
the multiple-use Machinery Update packaging. Moreover,
Kraft points to no evidence that the Graham-like frames
would not work with the Machinery Update packaging.
Nor does the relied-on testimony say anything actually
material about cost: it does not say that the resulting
cookie package would cost cookie consumers more than
the prior-art cookie package or that any increase would be
24 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
sufficient to deter the combination. The expert’s only
point about cost was that the cookie frame was less ex-
pensive than the Machinery Update tray. But that point
says nothing to the effect that the relevant (cookie) con-
sumers would face a cost increase were the cookie makers
to use the old frame but replace the surrounding wrap-
pers with the Machinery Update package.
On this record, we conclude, there is no basis for over-
turning the district court’s conclusion that any reasonable
jury would have to find a motivation to combine.
3
Kraft’s final argument invokes this court’s recognition
that a “party challenging validity shoulders an enhanced
burden if the invalidity argument relies on the same prior
art considered during examination.” Tokai, 632 F.3d at
1367. According to Kraft, that proposition applies here
based on the reexamination, in which Graham, the 2002
Machinery Update article, and the Packaging News article
(containing the same photograph as appeared in the 2001
Machinery Update article) were considered. See Kraft
Opening Br. 56–60. It suffices to say, however, that in
this case the “enhanced burden” proposition provides no
basis for a different result.
The “enhanced burden” point certainly confirms a
practical truth about litigation: persuading a fact finder
that an expert agency is incorrect on a proposition is
likely to be a greater forensic challenge to the advocate
than showing the proposition to be incorrect in the ab-
sence of a contrary expert-agency determination. See
Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260–61
(Fed. Cir. 2012) (“[I]t may be harder to meet the clear and
convincing burden when the invalidity contention is based
upon the same argument on the same reference that the
PTO already considered. Importantly, whether a refer-
ence was before the PTO goes to the weight of the evi-
dence, and the parties are of course free to, and generally
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 25
do, make these arguments to the fact finder.”). This court
has not, however, ascribed any larger meaning to the
“enhanced burden” point, which, the court has explained,
does not mean that something more than clear and con-
vincing evidence is required. Id. In any event, this is not
a case in which what the PTO concluded makes a differ-
ence, for at least two reasons.
First, as the district court explained, the only express
analysis of the Machinery Update articles was by the
examiner, who rejected the claims. The Board, which
upheld the claims, did not expressly consider those arti-
cles, but relied instead on a sentence in Packaging News
that does not appear in the Machinery Update articles.
Intercontinental, 118 F. Supp. 3d at 1028–29. There is no
basis for attributing to the Board an implied assessment
of the Machinery Update articles. The record before the
Board indicates that the Board simply accepted a premise
that those articles were redundant of Packaging News,
requiring no separate consideration. There is no specific
PTO determination of nonobviousness based on the par-
ticular prior art now at issue.
Second, in this case, we think that the showing of ob-
viousness is sufficiently strong that no PTO contrary
determination could alter the conclusion about summary
judgment. If the substantive evidentiary and other
arguments made by Kraft do not create a triable issue, as
we (and the district court) have concluded, neither could a
bare assumption, otherwise unexplained, that the PTO
reached a different conclusion based on the prior art here
at issue. For that reason as well, we reject Kraft’s final
deference-invoking argument against summary judgment
of obviousness.
***
In Tokai, this court drew the following conclusion on
the record before it in affirming a summary judgment of
obviousness: “[T]he undisputed facts in this case—
26 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
including the state of the prior art, the simplicity and
availability of the components making up the claimed
invention, and an explicit need in the prior art for [the
asserted invention]—compel a conclusion of obviousness
as to the subject matter of each of the asserted claims.”
632 F.3d at 1371. For the reasons we have set forth, we
agree with the district court that the same conclusion is
warranted in this case.
B
In its cross-appeal, Kellogg argues that the district
court erred when it granted Kraft summary judgment
rejecting Kellogg’s inequitable-conduct charge. 9 The only
issue here concerns the arguments Kraft made about
Packaging News to the Board during reexamination. We
see no reversible error in the district court’s conclusion
that Kellogg’s evidence was insufficient to permit a find-
ing of the intent required for inequitable conduct based on
Kraft’s reexamination arguments.
Kellogg’s charge rests on a sentence in the Packaging
News article—a short article that was the central focus
before the Board, including during oral argument, when
the Board was specifically looking at and asking about the
brief text. The relevant sentence in that article describes
the Re-Seal It packaging as not using “conventional
wrapping film.” J.A. 4713. Kellogg says that the sen-
tence is a misprint and that Kraft committed inequitable
conduct by not so informing the Board.
There is no doubt that the Packaging Material sen-
tence was important to the Board’s decision: the Board
relied on that sentence to reverse the examiner’s rejec-
tions of Kraft’s claims. But to prevail, Kellogg had to
9 Neither party has suggested that the unenforcea-
bility (of the patent) is of no consequence if the invalidity
ruling (as to selected claims) is affirmed.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 27
prove that Kraft, in what it did not say about the sentence
that was the focus of the Board’s attention, had a “specific
intent to mislead or deceive the PTO.” In re Rosuvastatin
Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012)
(citing Therasense, 649 F.3d at 1287). The intent re-
quirement is demanding: the evidence must be “sufficient
to require a finding of deceitful intent in the light of all
the circumstances”; deceptive intent “must be the single
most reasonable inference able to be drawn from the
evidence”; and “when there are multiple reasonable
inferences that may be drawn, intent to deceive cannot be
found.” Therasense, 649 F.3d at 1290–91 (internal quota-
tion marks omitted); see Ohio Willow, 735 F.3d at 1351;
Ohio Willow Wood Co. v. Alps South, LLC, 813 F.3d 1350,
1358–59 (Fed. Cir. 2016).
Unlike Ohio Willow, this is not a case of withholding
documents from the PTO (in Ohio Willow, documents key
to corroboration of inventorship) or of making affirmative
misrepresentations (in Ohio Willow, about a key partici-
pant’s supposed admission somewhere in the record). The
Board had the 2002 Machinery Update article in the
record, but it was not a basis for the examiner’s rejections
on review and so was not the subject of any discussion
before the Board. 10 The alleged wrong, moreover, is not
what Kraft affirmatively stated about Packaging News.
The only alleged wrong is Kraft’s omission of any state-
ment that the sentence in the Packaging News reference
on which the Board was directly focusing was actually a
misprint. But even if the sentence was a misprint, the
district court properly concluded that the record does not
10 The 2001 Machinery Update article, which con-
tains a photograph identical to that in Packaging News, is
not in the reexamination record. See J.A. 97–99, 679.
Kellogg has not asserted inequitable conduct based on the
2001 Machinery Update article.
28 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
support an inference of deceptive intent under the The-
rasense standard.
Kellogg presents no admission or anything similar in-
dicating that any relevant Kraft officer or representative
during the reexamination actually believed the sentence
to be a misprint. Kellogg asks for an inference as to what
Kraft had to believe, given the disparity of language
between the Packaging News article (“without conven-
tional wrapping film,” J.A. 4713) and the 2002 Machinery
Update article (“with conventional wrapping film,”
J.A. 4424), that Kraft’s counsel had read both articles,
and that a representative of a company selling packaging
machines that counts Kraft as one of its biggest customers
(affiliated with the reexamination requester) testified
that, since “we run with conventional film,” it was obvious
that the Packaging News sentence was a misprint, J.A.
6427, 6441. But without more evidence of Kraft’s belief,
one reasonable inference on the record—especially given
Kellogg’s burden of persuasion—is that Kraft did not
believe that there was a misprint.
Kellogg’s evidence from the deposition of Kraft’s coun-
sel provides no suggestion of any awareness of a misprint.
See J.A. 6941–45. The same is true as to Kraft’s inven-
tor—appearing also as Kraft’s official company witness
under Fed. R. Civ. P. 30(b)(6)—who testified that she did
not recognize a misprint in Packaging News at all, much
less one based on the difference in language between it
and the 2002 Machinery Update, believing that “they
were different packaging in different articles,” J.A. 6388,
and that if there had been a misprint, it would have been
corrected, J.A. 6382–83. In the reexamination, moreover,
neither the ex parte requester nor the examiner suggested
that the Packaging News article contained a misprint.
The absence of such a statement indicates that the al-
leged misprint was not as obvious as Kellogg claims. The
rejections that were then appealed did not involve Ma-
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 29
chinery Update, which therefore need not have been the
subject of reinspection by Kraft during the appeal.
In these circumstances, we think that the district
court properly concluded that the Therasense intent
standard could not be met.
III
For the foregoing reasons, we affirm the judgment of
the district court.
No costs awarded to either party.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
______________________
INTERCONTINENTAL GREAT BRANDS LLC,
Plaintiff-Appellant
v.
KELLOGG NORTH AMERICA COMPANY,
KELLOGG USA, INC., KEEBLER COMPANY,
KEEBLER FOODS COMPANY, KELLOGG SALES
COMPANY,
Defendants-Cross-Appellants
______________________
2015-2082, 2015-2084
______________________
Appeals from the United States District Court for the
Northern District of Illinois in No. 1:13-cv-00321, Judge
Matthew F. Kennelly.
______________________
REYNA, Circuit Judge, dissenting-in-part.
For too long, this court has turned a blind eye to what
I consider to be a grave concern: the application of a
prima facie test that necessarily achieves a legal determi-
nation of obviousness prior to full and fair consideration
of evidence of objective indicia of non-obviousness. 1 There
1 Objective indicia of non-obviousness are often re-
ferred to as “secondary considerations.” See, e.g., Graham
v. John Deere Co., 383 U.S. 1, 17 (1966). I prefer to use
2 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
should be no prima facie rule or test in the obviousness
inquiry. Stated differently, the burden of persuasion
should not shift from the challenger to the patent holder
after a legal determination of obviousness has already
been made.
I agree with the majority’s decision to affirm the dis-
trict court’s grant of summary judgment of no inequitable
conduct. Thus, I join Part IIB of the majority opinion. I
disagree, however, with the majority’s decision that
affirms the district court’s grant of summary judgment of
obviousness. I would find that the district court improp-
erly found a prima facie case of obviousness before consid-
ering Kraft’s evidence of objective indicia of non-
obviousness. I therefore respectfully dissent from Part
IIA of the majority opinion.
Because the majority affirms on obviousness, it does
not address the district court’s finding of no literal in-
fringement. Because I believe the district court erred on
obviousness, I would address the infringement issue. The
district court changed its construction of the claim term
“objective indicia” to properly signify their evidentiary
role and prevent any misperception that they are less
important than, i.e., secondary to, other non-obviousness
factors relevant in determining whether a claimed inven-
tion would have been obvious. See In re Cyclobenzaprine,
676 F.3d 1063 (Fed. Cir. 2012) (using “objective indicia”);
Truswal Sys. Corp. v. Hydro-Air Eng’g Inc., 813 F.2d
1207, 1212 (Fed. Cir. 1987) (“That evidence is ‘secondary’
in time does not mean that it is secondary in im-
portance.”); 2 Donald S. Chisum, Chisum on Patents
§ 5.05 (“To emphasize the importance of what the Graham
decision referred to as ‘secondary considerations,’ many
Federal Circuit opinions refer to them as ‘objective con-
siderations’ and list such considerations as a fourth
factual inquiry.”).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 3
“sealing layer” between its Markman order and summary
judgment order, resulting in a conclusion of non-
infringement. That midstream change was dispositive,
and because Kraft had no opportunity to address the new
construction, the district court’s summary judgment was
erroneous. I dissent.
I.
A. Statutory Requirement of Non-Obviousness
In 1952, Congress amended the Patent Act to, inter
alia, require that patents be non-obvious. 35 U.S.C.
§ 103; 2 Donald S. Chisum, Chisum on Patents § 5.02[4]
(“In Section 103 of the Patent Act of 1952, Congress for
the first time gave express legislative recognition to the
judicially-developed doctrine that something more than
strict novelty is required in order to support a patent.”).
Section 103 codified what the common law already had
required for a century. See Hotchkiss v. M. Greenwood &
Co., 52 U.S. (11 How.) 248 (1850). A claimed invention is
unpatentable “if the differences between the claimed
invention and the prior art are such that the claimed
invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed
invention pertains.” 35 U.S.C. § 103. 2
B. Supreme Court Precedent
The Supreme Court first addressed § 103 in Graham
v. John Deere Co., 383 U.S. 1 (1966). The Court set forth
the framework for determining whether patent claims
would have been obvious:
Under § 103, the scope and content of the prior art
are to be determined; differences between the pri-
2 An earlier version of § 103 controls this case, but
any differences do not impact this analysis.
4 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
or art and the claims at issue are to be ascer-
tained; and the level of ordinary skill in the perti-
nent art resolved. Against this background, the
obviousness or nonobviousness of the subject mat-
ter is determined. Such secondary considerations
as commercial success, long felt but unsolved
needs, failure of others, etc., might be utilized to
give light to the circumstances surrounding the
origin of the subject matter sought to be patented.
As indicia of obviousness or nonobviousness, these
inquiries may have relevancy.
Id. at 17–18 (citation omitted). The Court noted that
objective indicia of non-obviousness are “more susceptible
of judicial treatment” than the other “highly technical
facts” relevant to an obviousness analysis. Id. at 36.
Objective indicia “may lend a helping hand to the judici-
ary” that “is most ill-fitted to discharge the technological
duties cast upon it by patent legislation.” Id. Objective
indicia, the Court wrote, help guard against hindsight
and “the temptation to read into the prior art the teach-
ings of the invention in issue.” Id. 3
3 Objective indicia include commercial success,
long-felt but unsolved need, failure of others, industry
praise, unexpected results, and copying. See Apple Inc.
v. Samsung Elecs. Co., 839 F.3d 1034, 1058 (Fed. Cir.
2016) (en banc); Kinetic Concepts, Inc. v. Smith & Neph-
ew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012); In re Cyclo-
benzaprine, 794 F. Supp. 2d 517, 538 (D. Del. 2011), rev’d
in part, 676 F.3d 1063 (Fed. Cir. 2012). For more than a
century, the Supreme Court has recognized the utility of
objective indicia of non-obviousness in adjudicating patent
validity. See Smith v. Goodyear Dental Vulcanite, 93 U.S.
(3 Otto) 486, 494–95 (1877) (discussing long-felt but
unmet need and professional approval).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 5
More recently, the Supreme Court clarified the obvi-
ousness analysis in KSR International Co. v. Teleflex Inc.,
550 U.S. 398 (2007). It explained that trial courts must
consider the four Graham factors to determine whether
an asserted claim would have been obvious: (1) the scope
and content of prior art; (2) the differences between the
prior art and asserted claims; (3) the level of ordinary
skill; and (4) objective indicia of non-obviousness. KSR,
550 U.S. at 406 (citing Graham, 383 U.S. at 17–18). The
Court noted that “the sequence of these questions might
be reordered in any particular case.” Id. at 407. It also
cautioned factfinders to consider “the distortion caused by
hindsight bias” and “be cautious of arguments reliant
upon ex post reasoning.” Id. at 421. In KSR, however, the
patentee’s minimal evidence of objective indicia did not
“dislodge” the obviousness determination. Id. at 426.
Thus, the Supreme Court held that the asserted claim
would have been obvious. Id. 4
To be clear, nothing in Graham or KSR requires
courts to analyze the first three Graham factors first,
make a prima facie determination of obviousness, and
only then examine objective indicia of non-obviousness.
Such a prima facie framework excludes objective indicia
in the primary analysis and artificially creates a height-
ened standard of proof for objective indicia. I am not
aware of any Supreme Court authority that endorses—let
alone requires—the prima facie framework.
4 The party asserting obviousness—here, Kellogg—
bears the burden of proof by clear and convincing evi-
dence. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95
(2011).
6 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
C. Federal Circuit Precedent
This court explained the basic obviousness analysis in
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir.
1983). In Stratoflex, the district court concluded that the
claimed inventions were “plainly obvious.” 713 F.2d at
1539. As a result, it refused to analyze objective indicia of
non-obviousness. Id. We held that such an approach was
error, noting that each Graham factor “is but an aid” in
determining whether the claimed invention would have
been obvious. Id. at 1537. And although we discussed
objective indicia after the other three Graham factors, we
elaborated at length about their importance:
It is jurisprudentially inappropriate to disregard
any relevant evidence on any issue in any case,
patent cases included. Thus evidence rising out of
the so-called “secondary considerations” must al-
ways when present be considered en route to a de-
termination of obviousness. Indeed, evidence of
secondary considerations may often be the most
probative and cogent evidence in the record. It
may often establish that an invention appearing
to have been obvious in light of the prior art was
not. It is to be considered as part of all the evi-
dence, not just when the decisionmaker remains
in doubt after reviewing the art. . . . En route to a
conclusion on obviousness, a court must not stop
until all pieces of evidence on that issue have been
fully considered and each has been given its ap-
propriate weight. Along the way, some pieces will
weigh more heavily than others, but decision
should be held in abeyance, and doubt main-
tained, until all the evidence has had its say.
Id. at 1538–39 (citations omitted). In light of the district
court’s failure to consider the objective indicia, we did so
in the first instance. Id. at 1539. Giving “full considera-
tion” of objective indicia such as alleged commercial
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 7
success, industry praise, and long-felt but unmet need, we
concluded that the claims would have been obvious and
thus affirmed the district court under the harmless error
rule. Id. at 1540.
More recently, we discussed the role of objective indi-
cia in Cyclobenzaprine, 676 F.3d at 1063. In that case,
the district court engaged in a three-step analysis to
determine whether a certain drug extended-delivery
method would have been obvious. First, under the head-
ing “Prior art,” it described four prior art references. In re
Cyclobenzaprine, 794 F. Supp. 2d 517, 534–35 (D. Del.
2011), rev’d in part, 676 F.3d 1063 (Fed. Cir. 2012). In the
next section, with the heading “Prima facie case,” the
district court determined that “a person of ordinary skill
in the art would have been motivated to take a group of
known elements to create an extended release version of
cyclobenzaprine, and to have a reasonable expectation of
success in doing so.” Id. at 537. It also concluded that
certain properties and delivery methods would have been
obvious. Id. at 536–37. Only later, under the heading
“Secondary considerations,” did the court analyze the
patentee’s objective indicia of non-obviousness. Id. at 537.
Finding that the objective indicia did not “overcome the
prima facie case of obviousness,” the district court granted
summary judgment of obviousness. Id. at 536.
On appeal, we reversed the district court’s obvious-
ness determination. We explained that the purpose of
objective indicia of non-obviousness is to refute the evi-
dence of obviousness. Cyclobenzaprine, 676 F.3d at 1077.
That a patent owner may submit this evidence on objec-
tive indicia does not mean, however, that the burden
shifts to the patent owner to prove non-obviousness.
Cyclobenzaprine, 676 F.3d at 1079–80. The district court
must consider all evidence, including objective indicia of
non-obviousness, before making an ultimate conclusion of
obviousness. Id. at 1080. We criticized the district court
8 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
for “impos[ing] a burden-shifting framework in a context
in which none exists.” Id. at 1075.
In Cyclobenzaprine, we emphasized our earlier state-
ment that “‘evidence of secondary considerations may
often be the most probative and cogent evidence in the
record. It may often establish that an invention appear-
ing to be obvious in light of the prior art was not.’” Id. at
1075–76 (quoting Stratoflex, 713 F.2d at 1538). We noted
that some Federal Circuit opinions have used the “prima
facie” and “rebuttal” language, but we cautioned that
“those cases should not be interpreted as establishing a
formal burden-shifting framework.” Id. at 1077. Instead,
we interpreted our precedent to hold that “all evidence
relevant to obviousness or nonobviousness [must] be
considered, and considered collectively.” Id. at 1078.
Objective indicia of non-obviousness, we stated, are not
mere, after-the-fact considerations relegated to secondary
status. Id. They are essential safeguards against hind-
sight bias. Id. at 1079.
D. Post-Cyclobenzaprine Use Of
Prima Facie Framework
After Cyclobenzaprine, some of this court’s decisions
have continued to endorse the prima facie framework.
See, e.g., Cubist Pharm., Inc. v. Hospira, Inc., 805 F.3d
1112, 1130 (Fed. Cir. 2015) (“We sustain the district
court’s determination that the secondary consideration
evidence did not overcome the showing of obviousness
based on the prior art.”); Novo Nordisk A/S v. Caraco
Pharm. Labs., Ltd., 719 F.3d 1346, 1353–54 (Fed. Cir.
2013) (“The mere fact that the court conducted [the obvi-
ousness] analysis using terms such as ‘overcome’ and
‘prima facie’ does not necessarily imply that it shifted the
burden of persuasion onto [the patent owner].”).
In light of mixed messages coming from our court—
endorsement of a prima facie framework on one hand but
insistence to view the evidence as a whole on the other—
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 9
trial courts have continued to find a prima facie case of
obviousness before turning to objective indicia as rebuttal
evidence. Despite Cyclobenzaprine’s warnings, burden-
shifting remains common among trial courts. See, e.g.,
Bayer Pharma AG v. Watson Labs., Inc., 183 F. Supp. 3d
579, 589 (D. Del. 2016) (“Under relevant law, once a
prima facie case of obviousness has been established, the
burden then shifts to the applicant to present evidence of
secondary considerations of non-obviousness to overcome
this prima facie showing.”); B-K Lighting, Inc. v. Vision3
Lighting, 930 F. Supp. 2d 1102, 1116–17 (C.D. Cal. 2013)
(stating that the patent owner bears the burden of pre-
senting evidence to rebut a prima facie case of obvious-
ness); Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc.,
923 F. Supp. 2d 602, 675 (D. Del. 2013) (“With [the al-
leged infringer] having met its burden to establish a
prima facie case of obviousness, the Court will go on to
consider the fourth Graham factor: facts regarding objec-
tive indicia of nonobviousness.”); Hitkansut LLC v. United
States, 127 Fed. Cl. 101, 113 (2016) (stating that the
patent owner “incorrectly assumes that secondary consid-
erations are part of [the alleged infringer’s] burden in
proving obviousness. Instead, evidence of secondary
considerations is in the nature of rebuttal evidence. . . . A
patentee typically comes forward with proof of secondary
considerations of validity, or ‘non-obviousness,’ in rebuttal
to a patent challenger’s prima facie case of obviousness.”)
(alterations, quotation marks, and citation omitted).
E. This Court’s “Prima Facie” Framework Does Not
Comport With Supreme Court Precedent
Although this court highlighted the dangers associat-
ed with the prima facie framework in Cyclobenzaprine, we
have not diligently instructed trial courts to abandon the
10 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
framework altogether. 5 The time to do so has come. One
commentator has stated that “Cyclobenzaprine was unre-
alistic” if it intended to ban district courts from making
prima facie findings of obviousness prior to consideration
of objective indicia. Chisum § 5.05. I am not the first
member of this court to state that such a ban is necessary.
See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731,
748 (Fed. Cir. 2013) (Newman, J., dissenting) (“[T]he
proper analysis of obviousness under 35 U.S.C. § 103
requires that all evidence relevant to obviousness or
nonobviousness be considered, and be considered collec-
tively, without resort to presumptions of prima facie
obviousness or burden-shifting.”) (quotation marks omit-
ted); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
683 F.3d 1356, 1367 (Fed. Cir. 2012) (Newman, J., dis-
senting) (“The district court, holding that a prima facie
case of obviousness was established on the prior art alone,
shifted the burden of proof to the patentee to rebut the
asserted, but improper, prima facie case with the evidence
of commercial success and copying. This is a distortion of
the burden of proof, which never leaves the challenger.”).
Objective indicia of non-obviousness must be consid-
ered from the outset, and the burden of proof should never
leave the challenger. The purpose of our patent system is
the promotion of the progress of science and useful arts.
U.S. Const. art. 1, § 8, cl. 8. This purpose is undermined
by premature findings of obviousness and over-
5 The majority notes, and I do not dispute, that the
use of “prima facie” is a “not-uncommon choice of words”
in our past precedent. Maj. Op. at 15; see also Chisum
§ 5.05 (“Federal Circuit decisions have held that, in
particular cases, secondary considerations, though rele-
vant, failed to overcome a ‘strong’ prima facie case of
obviousness based on the prior art.”).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 11
invalidation of innovative patents. Novo Nordisk, 719
F.3d at 1365 (Newman, J., dissenting).
The prima facie approach to obviousness jumbles the
proper order of operations. “Prima facie” refers to evi-
dence that is “[s]ufficient to establish a fact or raise a
presumption unless disproved or rebutted.” Prima Facie,
Black’s Law Dictionary (10th ed. 2014). Whether a party
has made a prima facie case is a legal determination. See
Takeda Chem. Indus., Ltd. v. Alphapharm Pty., 492 F.3d
1350, 1356 (Fed. Cir. 2007) (calling the prima facie test
“consistent with the legal principles enunciated in KSR”).
Consistent with the prima facie approach endorsed by
some of our past decisions, the district court here proceed-
ed in four steps: it (1) considered the first three Graham
factors; (2) made a legal prima facie determination of
obviousness; (3) considered objective indicia of non-
obviousness; and (4) made an ultimate conclusion of
obviousness. Steps one and three are factual, whereas
steps two and four are legal. It is clear to me that courts
are making a legal determination of obviousness at step
two. As a result, all of the facts concerning patentability
are not considered. This is error.
I read Supreme Court and Federal Circuit precedent
to require all factual analysis to occur prior to achieving a
legal conclusion on non-obviousness. This should be done
without resort to an intermediate prima facie conclusion.
See, e.g., Graham, 383 U.S. at 36 (not making a prima
facie conclusion and instead reserving any legal conclu-
sion until after discussion of all factual predicates); KSR,
550 U.S. at 426 (same); Apple, 839 F.3d at 1058 (same);
Cyclobenzaprine, 676 F.3d at 1081–83 (same); Stratoflex,
713 F.2d at 1539 (same). Thus, I would instruct the
district court to abandon the prima facie framework and
instead proceed in two steps: (1) consider all factual
evidence, both favoring and disfavoring a finding of obvi-
ousness; and (2) make a legal conclusion of obviousness.
12 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
Accord Wm. Wrigley Jr. Co., 683 F.3d at 1370 (Newman,
J., dissenting); Robert A. Matthews, Jr., Annotated Patent
Digest § 18:93 (“A court should consider evidence of
secondary considerations together with the evidence
alleged to create a prima facie case of obviousness before
determining whether an invention is or is not obvious. In
other words, secondary considerations do not come into
play only to rebut a prima facie case of obvious, (even
though that is often how they are considered during
prosecution). Rather, the considerations factor in to the
initial determination of obviousness.”).
I recognize there are practical limitations of legal
analysis and writing. A court’s opinion must be linear
and cover only one issue at a time. Typically, discussion
of the objective indicia of non-obviousness comes last in
an obviousness analysis. There is nothing inherently
wrong with this order per se. Again, Supreme Court
precedent is instructive. The Court discussed objective
indicia of non-obviousness last in Graham. 383 U.S. at
35–36. So too in KSR. 550 U.S. at 426. But in both
cases, the Court made no “prima facie” finding of obvious-
ness, did not relegate objective indicia into an after-
thought, and reserved its legal conclusion for after
discussion of all relevant factual inquiries. Id. Our
seminal Federal Circuit decisions have done the same.
See Apple, 839 F.3d at 1058; Cyclobenzaprine, 676 F.3d at
1081–83; Stratoflex, 713 F.2d at 1539. But the notion
that objective criteria are considered after a legal prima
facie showing is made has taken root like a spreading
vine. This gives rise to cases, such as this case on appeal,
where a court determines that a particularly “strong”
prima facie showing has been made, making it difficult if
not impossible for adequate weighing of evidence of objec-
tive indicia of non-obviousness.
This case presents a textbook example of why courts
should not make any determinations of obviousness,
prima facie or otherwise, prior to considering objective
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 13
indicia of non-obviousness. Here, Kellogg responded to
Kraft’s patent infringement suit by alleging that Kraft’s
patent was invalid for obviousness. Kellogg presented
evidence of prior art that it alleged a person of ordinary
skill would have been motivated to combine.
In response to Kellogg’s evidence of obviousness, Kraft
presented at least three objective indicia of non-
obviousness. The district court wrote that Kraft “has
offered substantial evidence from which a jury could find
that its invention has been commercially successful.” J.A.
29. Kraft presented evidence that its sales volume in-
creased four percent due to the invention. J.A. 28. It also
presented “evidence of positive consumer feedback” and
survey results showing that the invention “was a clear
favorite for nearly all” survey respondents. J.A. 29. The
court also found that Kraft introduced evidence of long-
felt but unsolved need. Id. It explained that Kraft won
“one of the highest industry awards innovative packaging
technology can receive” and pointed to “many industry
publications” praising the technology. Id. Finally, Kraft
presented evidence “show[ing] that Kellogg intentionally
copied [Kraft’s] packaging.” Id. The court found this
evidence of copying to be “compelling.” Id.
I am left to wonder how “substantial” and “compel-
ling” evidence of objective indicia cannot overcome a
prima facie showing. If such significant evidence does not
make a difference in this case, it is hard to imagine a
situation in which it would.
An observer noted that “the law, with respect to the
importance of secondary considerations or objective
indicia, is going through a transformation.” J. Jeffrey
Hawley, The Resurgence of “Secondary Considerations”,
16 FLA. COASTAL L. REV. 1, 23 (2014). I hope so. Cyclo-
benzaprine was a step in the right direction. We should
finish what Cyclobenzaprine started and prohibit prima
14 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
facie findings of obviousness prior to consideration of
objective indicia of non-obviousness.
II.
Because it affirms on obviousness grounds, the major-
ity does not discuss the district court’s grant of summary
judgment of no literal infringement. Because I would
reverse the obviousness determination, I would review the
infringement finding. I would find reversible error in the
district court’s claim construction, which led to its finding
of no literal infringement.
Kraft sued Kellogg for, inter alia, literal infringement
of the ’532 patent. Central to Kraft’s infringement allega-
tion was the claim term “sealing layer,” which appears in
claim 1 of the ’532 patent. The parties disputed the
construction of “sealing layer” in their claim construction
briefs and at the claim construction hearing.
Following briefing and argument, the district court is-
sued a Markman order construing “sealing layer.” The
court concluded that the ’532 patent claims require “the
sealing layer to be a distinct layer from the top of the
container.” J.A. 44. The court went on:
This does not mean, however, that the sealing lay-
er must be physically separated from the top of the
container or, more specifically, from the wrapper
that forms the top of the container as described in
claim 1. In particular, the requirement of a dis-
tinct layer does not preclude the sealing layer
from being laminated to another layer or layers of
the wrapper. One layer of material that is lami-
nated to another is no less a distinct layer. In
other words, “distinct” and “separate” have differ-
ent meanings in this context.
J.A. 45 (emphases added). Neither party disputes that
this construction, as expressed in the Markman order, is
correct.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 15
In its subsequent summary judgment order, however,
the court construed “sealing layer” differently. The sum-
mary judgment order stated that the sealing layer “must
be a separate piece of material.” J.A. 32. This construc-
tion was outcome-determinative: The court noted that it
granted summary judgment of no literal infringement
“based on [its] construction of the claim term, ‘sealing
layer.’” J.A. 31; see also id. (“Because the top and cut-out
flap are not ‘distinct layers’ in the accused products—
rather, they are part of the same layer—Kellogg does not
literally infringe the sealing layer limitation.”).
The court’s new construction at summary judgment
contradicts its Markman construction that stated the
sealing layer did not need to be a separate piece of mate-
rial. This distinction is critical because if the sealing
layer need not be separate from the top of the container,
then a reasonable jury could conclude that Kellogg literal-
ly infringed the ’532 patent. The majority opinion fails to
address this issue at all, either in its recitation of the
facts or its analysis of the law. Kraft was entitled to a
consistent construction of “sealing layer” throughout the
case, or, at minimum, to have an opportunity to respond
to the court’s new construction. Cf. Cordis Corp. v. Bos.
Sci. Corp., 658 F.3d 1347, 1355 (Fed. Cir. 2011) (holding
that while a court may clarify its construction after a jury
verdict, it may not apply an altogether different construc-
tion); SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d
1341, 1351–52 (Fed. Cir. 2016) (stating, in the agency
context, that while the Patent Trial and Appeal Board
may adopt a claim construction in its Final Written
Opinion, it may not change constructions “midstream”).
Because Kraft did not have an opportunity to respond to
the midstream change in the meaning of “sealing layer,” I
would reverse the grant of summary judgment of no
literal infringement.
I respectfully dissent from judgment of the majority
to: (1) affirm the district court’s grant of summary judg-
16 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO.
ment of obviousness and (2) not address the court’s claim
construction error.