{"id":1747,"date":"2017-09-08T09:49:49","date_gmt":"2017-09-08T13:49:49","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1747"},"modified":"2017-09-08T09:56:12","modified_gmt":"2017-09-08T13:56:12","slug":"objective-indicia-were-properly-considered-and-did-not-save-cookie-package-patent-from-summary-judgment-of-obviousness","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1747","title":{"rendered":"Objective Indicia Were Properly Considered and Did Not Save Cookie Package Patent from Summary Judgment of Obviousness"},"content":{"rendered":"

In Intercontinental Great Brands LLC v. Kellogg North American Co.<\/a>, [2015-2082, 2015-2084] (September 7, 2017), the Federal Circuit affirmed summary judgment that Kraft’s\u00a0U.S. Patent No. 6,918,532 was invalid for obviousness, but was not unenforceable for inequitable conduct.<\/p>\n

The district court found that the absence of a \u201cconvenient opening and reclosing arrangement\u201d was a \u201cknown problem\u201d for cookie\u00a0packaging and that the prior art resealable,\u00a0tray-included packaging for foods offered a skilled artisan\u00a0a solution to the problem simply by replacing the existing \u201ctray\u201d with a “frame” i.e., a tray with higher\u00a0sides. \u00a0The court\u00a0considered the simple\u00a0and clear teachings of the art, the importance of common
\nsense and ordinary creativity, and the conclusory character\u00a0of Kraft\u2019s expert\u2019s assertions of nonobviousness. \u00a0the court concluded that Kraft\u2019s evidence of objective indicia, though substantial, was\u00a0not entitled to much weight in the ultimate legal assessment\u00a0of obviousness. \u00a0On the issue of inequitable conduct, the court found that Kellogg\u00a0had not presented evidence that could meet the standard\u00a0for intent to deceive established in Therasense<\/em>,<\/p>\n

The Federal Circuit said that Kraft’s arguments that the district court treated the\u00a0objective indicia as an \u201cafterthought,\u201d \u201cwriting off the\u00a0patent before turning to objective indicia,\u201d and \u201crepeatedly\u00a0not[ing] its finding of obviousness before considering\u00a0the objective indicia,\u201d mischaracterized the district court’s reasoning, finding that\u00a0the district court drew its conclusion of obviousness\u00a0only after, not before, considering the objective indicia.<\/p>\n

The Federal Circuit held that the district court did not draw an ultimate conclusion of\u00a0obviousness before considering the objective\u00a0indicia, the . The contrary is not shown by the court\u2019s “not uncommon”\u00a0choice of words when conducting the ultimate\u00a0weighing, namely, that the objective indicia \u201cdo not overcome\u00a0Kellogg\u2019s extremely strong prima facie showing.\u201d<\/p>\n

The Federal Circuit rejected Kraft’s argument that objective indicia must be considered before drawing a conclusion about whether a person of ordinary skill had motivation to combine the prior art, finding that the staged consideration undertaken by the district\u00a0court, and reflected in its cases, makes sense within the\u00a0motivation-to-combine framework.<\/p>\n

The Federal Circuit also rejected Kraft’s argument that\u00a0the district court failed to provide\u00a0\u201cexplicit and clear reasoning providing some rational
\nunderpinning\u201d for its invocation of common sense in its\u00a0motivation-to-combine analysis. \u00a0The Federal Circuit said that\u00a0the court relied on the record demonstrating the \u201cknown\u00a0problem\u201d of an insufficiently \u201cconvenient opening and\u00a0reclosing arrangement\u201d for cookie packaging and the\u00a0suggestion in the prior art that it was useful for a variety of items.<\/p>\n

The Federal Circuit also found that that the “enhanced burden” when the prior art relied upon for invalidation was previously considered by the USPTO “provides no\u00a0basis for a different result.” \u00a0First the Federal Circuit noted that there is no specific\u00a0PTO determination of nonobviousness based on the particular\u00a0prior art now at issue. Second, the Federal Circuit found the showing of obviousness to be sufficiently strong that no PTO contrary\u00a0determination could alter the conclusion about summary
\njudgment.<\/p>\n

On the cross-appeal of the finding of no inequitable conduct, the Federal Circuit\u00a0no reversible error in the district court\u2019s conclusion\u00a0that Kellogg\u2019s evidence was insufficient to permit a finding\u00a0of the intent required for inequitable conduct based on\u00a0Kraft\u2019s reexamination arguments. \u00a0Kellogg alleged that an item in the prior art considered by the Board during reexamination contained a misprint, and that Kraft committed inequitable conduct by not so informing the Board. This sentence containing the misprint was material, because it resulted in the Board’s reversing the reexamination Examiner. \u00a0However, the Federal Circuit said that Kellogg also had to prove that \u00a0Kraft, in what it did not say about the sentence
\nthat was the focus of the Board\u2019s attention, had a \u201cspecific\u00a0intent to mislead or deceive the PTO.\u201d<\/p>\n

The Federal Circuit said that the intent requirement\u00a0is demanding, and citing Therasense<\/em> said that the evidence must be \u201csufficient\u00a0to require a finding of deceitful intent in the light of all\u00a0the circumstances\u201d; deceptive intent \u201cmust be the single\u00a0most reasonable inference able to be drawn from the\u00a0evidence\u201d; and \u201cwhen there are multiple reasonable\u00a0inferences that may be drawn, intent to deceive cannot be\u00a0found.\u201d<\/p>\n

The Board noted that there was no evidence of whether or not Kraft actually believed it was a misprint, just Kellogg’s argument of what Kraft had to have believed. \u00a0The Federal Circuit said that\u00a0without more evidence of Kraft\u2019s belief,\u00a0one reasonable inference on the record\u2014especially given\u00a0Kellogg\u2019s burden of persuasion\u2014is that Kraft did not
\nbelieve that there was a misprint.<\/p>\n

The district court’s obviousness analysis, approved by the Federal Circuit, relied upon the identification of the problem to be solved in the Background. \u00a0Prosecutors need to be careful in drafting the background section, so that it does not make the invention seem like the logical (and thus obvious) solution to the problem that perhaps only the inventor had the insight to identify in advance.<\/span><\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Intercontinental Great Brands LLC v. Kellogg North American Co., [2015-2082, 2015-2084] (September 7, 2017), the Federal Circuit affirmed summary judgment that Kraft’s\u00a0U.S. Patent No. 6,918,532 was invalid for obviousness, but was not unenforceable for inequitable conduct. The district court … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[9,53,12],"tags":[],"class_list":["post-1747","post","type-post","status-publish","format-standard","hentry","category-inequitable-conduct","category-objective-indicia","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1747","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1747"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1747\/revisions"}],"predecessor-version":[{"id":1749,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1747\/revisions\/1749"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1747"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1747"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1747"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}