Intercontinental Great Brands LLC v. Kellogg N. Am. Co.

869 F.3d 1336

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

United States Court of Appeals, Federal Circuit.

Decided: September 7, 2017

Katie Crosby Lehmann, Ciresi Conlin LLP, Minneapolis, MN, argued for Plaintiff–Appellant. Also represented 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.

Jacob Daniel Koering, Attorney, Miller, Canfield, Paddock, & Stone, PLC, Chicago, IL, for Plaintiff–Appellant.

Before Prost, Chief Judge, Reyna and Taranto, Circuit Judges.

Opinion dissenting in part filed by Circuit Judge Reyna.

Taranto, Circuit Judge.

Kraft 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.

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.

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 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 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 protection for the contents thereof, while concurrently 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 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.

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. 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 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 resealable cookie 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 alleging, among other things, 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.¹

The 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).² 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).

First, 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...