Intercontinental Great Brands v. Kellogg North America Company
869 F.3d 1336
Fed. Cir.2017Background
- Kraft (now Intercontinental Great Brands) owns U.S. Patent No. 6,918,532 claiming a resealable food package combining a rigid frame/tray (as in cookie packs) with a peel-back resealable sealing layer (as in wet-wipe dispensing bags).
- Paramount/Real-Seal It resealable packaging was described in Packaging News and Machinery Update articles (2001–2002); those articles played central roles in reexamination and this litigation.
- A third party requested ex parte reexamination (PTO examiner rejected most claims; the PTAB reversed and reinstated claims, relying in part on a Packaging News sentence later alleged to be a misprint).
- Kraft sued Kellogg for infringement; Kellogg counterclaimed that asserted claims were invalid as obvious under 35 U.S.C. § 103 and that the patent was unenforceable for inequitable conduct during reexamination.
- The district court granted summary judgment that the asserted claims were invalid for obviousness (relying on Machinery Update + cookie packaging like Graham) but granted Kraft summary judgment rejecting Kellogg’s inequitable-conduct counterclaim; the Federal Circuit affirmed.
Issues
| Issue | Plaintiff's Argument (Kraft) | Defendant's Argument (Kellogg) | Held |
|---|---|---|---|
| Obviousness of asserted claims under §103 | Kraft urged objective indicia (commercial success, praise, copying) and disputed motivation-to-combine and scope of prior art | Kellogg argued prior art (Machinery Update, Graham) disclosed elements and a skilled artisan would be motivated to combine; obviousness was predictable/common‑sense | Affirmed: claims invalid as obvious; prior art taught elements and motivation to combine; objective indicia did not overcome strong prima facie showing |
| Role/timing of objective indicia (weight and sequence) | Kraft argued objective indicia must be considered before deeming a prima facie case of obviousness and can be dispositive | Kellogg relied on district court’s sequence (determine prior-art teachings and motivation, then weigh objective indicia) | Rejected plaintiff’s procedural complaint; court found district court properly weighed objective indicia after resolving prior‑art and motivation issues and gave them fair consideration |
| Effect of prior PTO reexamination ("enhanced burden") | Kraft argued deference to PTO or heightened burden when same art was considered in PTO | Kellogg noted Board’s decision relied on Packaging News sentence, not Machinery Update; no explicit Board finding on Machinery Update | Held: enhanced-burden argument unpersuasive — Board did not make an express contrary finding on Machinery Update, and the obviousness showing was strong regardless |
| Inequitable conduct in reexamination (failure to disclose/misleading omission) | Kraft: its counsel did not knowingly mislead the PTAB about the Packaging News sentence; any misprint was not known | Kellogg: Packaging News sentence was a misprint and Kraft failed to disclose that fact to the Board, showing intent to deceive | Held: Affirmed district court — evidence insufficient to meet Therasense’s demanding intent-to-deceive standard; multiple reasonable inferences defeat finding of deceptive intent |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (establishes Graham framework for obviousness analysis)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (endorses flexible, common-sense obviousness analysis; permits summary judgment where prior art, scope, and skill are undisputed)
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir.) (en banc) (sets demanding intent standard for inequitable conduct)
- In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir.) (objective indicia must be considered and not relegated to mere rebuttal; caution against burden-shifting)
- Tokai Corp. v. Easton Enters., 632 F.3d 1358 (Fed. Cir.) (affirming summary judgment of obviousness where prior art and need made combination compelling)
- Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir.) (objective indicia must always be considered; they can be most probative)