Intercontinental Great Brands LLC v. Kellogg North America Co.
118 F. Supp. 3d 1022
N.D. Ill.2015Background
- IGB sued Kellogg for infringing the ’532 patent on resealable cookie containers; Kellogg moved for summary judgment of non-infringement and invalidity; IGB cross-moved on unenforceability and validity defenses; court granted IGB in part and Kellogg in part, finding the patent obvious; reexamination and Board history show the patent’s claims were upheld despite prior art; the court analyzed Machinery Update and Packaging News as the primary prior art for obviousness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness of independent claims 1 and 34 | IGB argues claims are not obvious. | Kellogg argues all elements are disclosed by Machinery Update. | Yes; claims are invalid as obvious. |
| Non-infringement and equivalence | IGB seeks literal infringement; doctrine of equivalents argued. | Kellogg contends no literal infringement; potential equivalence. | Kellogg granted summary judgment of non-infringement literally; doctrine of equivalents viable. |
| Inequitable conduct | IGB argues no deceit; misprint issue raised. | Kellogg asserts inequitable conduct by withholding art. | Summary judgment for IGB; no inequitable conduct proven. |
| Validity distinctions from dependent claims | IGB asserts non-obviousness of dependent claims. | Kellogg shows dependent claims obvious in view of Machinery Update. | Dependent claims shown obvious. |
| Weight of secondary considerations | IGB cites commercial success, long-felt need, copying. | Secondary considerations do not overcome obviousness. | Secondary considerations do not defeat strong prima facie obviousness. |
Key Cases Cited
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness requires common-sense approach; combination may be obvious)
- Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358 (Fed.Cir. 2011) (enhanced deference to PTO; legal obviousness determination)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed.Cir. 2010) (motivation to combine; standard for obviousness on summary judgment)
- Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed.Cir. 2009) (non-obviousness secondary considerations; summary judgment context)
- Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984 (Fed.Cir. 2009) (secondary considerations cannot override obviousness)