from the United States District Court for the Northern
District of Illinois in No. 1:13-cv-00321, Judge Matthew F.
Crosby Lehmann, Ciresi Conlin LLP, Minneapolis, MN, argued
for plaintiff-appellant. Also represented by Michael V.
Richard Daniel Harris, Greenberg Traurig LLP, Chicago, IL,
argued for defendants-cross-appellants. Also represented by
Matthew J. Levinstein, James J. Lukas, Jr.
Prost, Chief Judge, Reyna and Taranto, Circuit Judges.
TARANTO, CIRCUIT JUDGE.
Foods Global Brands LLC (now called Intercontinental Great
Brands) owns U.S. Patent No. 6, 918, 532, which issued in
2005 and was supplemented with additional 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 obviousness of the asserted claims of the
'532 patent. Intercontinental 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 rejecting 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.
'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.
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 product 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 clipping
the end to keep the wrapper closed." Id., col.
1, lines 19-23.
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.
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 protection for the contents thereof, while
concurrent- 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.
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 container, said
container having a top, a bottom[, ] and sides connecting the
top and bottom, the frame containing a food product comprised
of discrete food articles;
a wrapper surrounding said frame, said wrapper forming the
top[, ] sides[, ] and bottom of the container;
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 discrete 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.
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.
Intercontinental, 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 rejections. 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
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
"'circumvent the Kraft patent while maintaining
similar properties.'" 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 moved for summary
judgment on Kellogg's counterclaim of unenforceability
due to inequitable conduct.
district court granted Kellogg's motion for summary
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). As the patent itself makes clear, the
"frame" element is shown by prior art, such as U.S.
Patent No. 3, 740, 238 issued to Graham, which discloses a
traditional cookie package with a frame to hold the cookies,
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 showing a peel-back resealable package with a
rigid tray for food items ("such as" discrete
items like sushi and canapés)-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, March/April 2002 at
59-60 (J.A. 4423-24); Machinery Update,
September/October 2001 at 46-47 (J.A. 4708-09).
considering independent claims 1 and 34, the district court
concluded that the record put beyond reasonable 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 Machinery 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 character
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.
the court concluded that Kraft's evidence of certain
objective indicia, though substantial, was simply not
entitled to such weight in the ultimate legal assessment of
obviousness as to produce a bottom-line conclusion 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 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 existed in cookie packages.
Additionally, the technology 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 obvious in light of the prior art, and
[Intercontinental'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 existing cookie packages.
Id. at 1042.
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 explained 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 undisputed 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 conventionality of the wrapping film, on
which the Board came to rely in upholding Kraft's claims,
was actually a 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.
appeals regarding invalidity. Kellogg cross-appeals regarding
unenforceability. We have jurisdiction under 28 U.S.C. §
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. Liberty 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 applies); 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 favorable 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.
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" 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." Randall, 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 obviousness in an inter
partes review). 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.
KSR, the Supreme Court criticized a rigid approach
to determining obviousness based on the disclosures of
individual prior-art references, with little recourse to the
knowledge, creativity, and common sense that an ordinarily
skilled artisan would have brought to 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 account 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 functions, " 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 determine "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 elements
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.
on the record, summary judgment of invalidity 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 addressing the
question of obviousness" does not "exclude the
possibility of summary judgment." Id. at 426.
In considering summary judgment on that question the district
court can and should take into account 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 content
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
sometimes held summary judgment of obviousness
unwarranted and sometimes found it
case, we conclude, the district court correctly determined
that summary judgment was warranted on the record, for the
reasons we have summarized in describing the district
court's opinion. Kraft's arguments to the contrary
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 "repeatedly not[ing] its finding of
obviousness before considering the objective indicia."
Id. at 38, 40, 41. That contention mischaracterizes
the district court's ...