United States Court of Appeals 

for the Federal Circuit ______________________ 

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

______________________ 

Appeals from the United States District Court for the 

Northern District of Illinois in No. 1:13-cv-00321, Judge 

Matthew F. Kennelly.

______________________ 

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.

______________________ 
 2 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

Before PROST, Chief Judge, REYNA and TARANTO, Circuit Judges.

Opinion for the court filed by Circuit Judge TARANTO.

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. 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 3

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 clipping 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 concurrent-
 4 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

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. 

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. 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 5

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 priorart 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 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 
 6 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

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, 

 

1

 Kellogg also sought summary judgment of noninfringement, but the district court agreed only as to 

literal infringement, concluding that the record presented 

a triable issue as to infringement by equivalence. Intercontinental, 118 F. Supp. 3d at 1042–44. We need not 

discuss either half of that ruling, or any issue except the 

invalidity and unenforceability issues, as to which we 

affirm the district court’s summary judgment rulings.

2 The ’532 patent, which issued from a 2003 application, is governed by the version of § 103 that was in 

effect before its amendment by the Leahy-Smith America 

Invents Act, Pub. L. No. 112-29, § 3(n)(1), 125 Stat. 284, 

293 (2011). See Intercontinental, 118 F. Supp. 3d at 1027 

n.2.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 7

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 no basis for a different conclusion about 

the art-based portion of the obviousness analysis. Id. at 

1038–41. 

Finally, 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 
 8 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

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.

With 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 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 9

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 

1045.3

Kraft appeals regarding invalidity. Kellogg crossappeals regarding unenforceability. We have jurisdiction 

under 28 U.S.C. § 1295(a)(1). 

 

3 Kellogg also alleged that Kraft withheld prior art 

(the “Fuji Package”) in the original prosecution, but the 

district court concluded, for several reasons, that the 

evidence offered to support that assertion failed to meet 

Therasense’s inequitable-conduct standard. Intercontinental, 118 F. Supp. 3d at 1045. In this court, Kellogg 

makes only what amounts to a bare assertion of error on 

this point, not a meaningful argument for why the district 

court erred. Kellogg’s Opening Corrected Br. 56–57. For 

record evidence on the point, Kellogg cites only “Sec. V(C), 

supra,” which does not exist, and J.A. 4924–26, which 

does not address inequitable non-disclosure during prosecution. Kellogg has forfeited the point and certainly has 

not shown error. We do not further address this aspect of 

the inequitable-conduct issue.
 10 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

II 

We 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. 2013). 

A 

A claimed invention is unpatentable “if the differences 

between the claimed invention and the prior art are such 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 11

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).4 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.

“In 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 

 

4 Whether a skilled artisan would have reasonably 

expected success, an issue in many obviousness cases, has 

not been presented as an issue here.
 12 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

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.

Depending 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 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 13

addressing the question of obviousness” does not “exclude 

the possibility of summary judgment.” Id. at 426. Rather: 

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 unwarranted5 and sometimes found it warranted.6

 

5 See, e.g., Ivera Med. Corp. v. Hospira, Inc., 801 

F.3d 1336 (Fed. Cir. 2015); Plantronics, Inc. v. Aliph, Inc., 

724 F.3d 1343 (Fed. Cir. 2013); OSRAM Sylvania, Inc. v. 

Am. Induction Techs., Inc., 701 F.3d 698 (Fed. Cir. 2012); 

Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 

1314 (Fed. Cir. 2011); Transocean Offshore Deepwater 

Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 

1296 (Fed. Cir. 2010); TriMed, Inc. v. Stryker Corp., 608 

F.3d 1333 (Fed. Cir. 2010); Source Search Techs., LLC v. 

LendingTree, LLC, 588 F.3d 1063 (Fed. Cir. 2009); SüdChemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001 (Fed. 

Cir. 2009). 

6 See, e.g., Hoffman-La Roche Inc. v. Apotex Inc., 

748 F.3d 1326 (Fed. Cir. 2014); Ohio Willow Wood Co. v. 

Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013); Bayer 
 14 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

In this 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 are unpersuasive.

1 

Kraft 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 reasoning, which 

followed a sequence that accords with KSR, Graham, and 

this court’s precedents.

The district court drew its conclusion of obviousness 

only after, not before, considering the objective indicia. 

Intercontinental, 118 F. Supp. 3d at 1042. Before review-

 

Healthcare Pharm., Inc. v. Watson Pharm., Inc., 713 F.3d 

1369 (Fed. Cir. 2013); Wm. Wrigley Jr. Co. v. Cadbury 

Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012); 

MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250 (Fed. Cir. 

2012); In re Katz Interactive Call Processing Patent Litig., 

639 F.3d 1303 (Fed. Cir. 2011); Tokai Corp v. Easton 

Enters., Inc., 632 F.3d 1358 (Fed. Cir. 2011); King Pharm., 

Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010); Dow 

Jones & Co., Inc. v. Ablaise Ltd., 606 F.3d 1338 (Fed. Cir. 

2010); Media Techs. Licensing, LLC v. Upper Deck Co., 

596 F.3d 1334 (Fed. Cir. 2010); Perfect Web Techs., Inc. v. 

InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009); Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 

F.3d 984 (Fed. Cir. 2009); Ricoh Co. v. Quanta Comput. 

Inc., 550 F.3d 1325 (Fed. Cir. 2008).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 15

ing the objective indicia, the court concluded only that 

Kellogg had made a “strong prima facie showing of obviousness.” Intercontinental, 118 F. Supp. 3d at 1037–38 

(“Because there is no genuine dispute that all elements of 

claims 1 and 34 are disclosed in the prior art and it would 

have been predictable for a person of skill in the art to 

combine those elements, Kellogg has made a strong prima 

facie showing of obviousness as to independent claims 1 

and 34.”); see id. at 1038–41 (same for asserted dependent 

claims). As its opinion shows, id. at 1034–37, the court 

drew that conclusion based on the Graham factors directed to identifying the teachings of the prior art, as well 

as the considerations this court has identified as bearing 

on the question of motivation to combine. See, e.g., Plantronics, 724 F.3d at 1354 (“[M]otivation to combine may be 

found explicitly or implicitly in market forces; design 

incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; 

and the background knowledge, creativity, and common 

sense of the person of ordinary skill.”) (citing Perfect Web,

587 F.3d at 1328–29 (quoting KSR, 550 U.S. at 418–21)).

The court thus did not draw an ultimate conclusion 

regarding obviousness before considering the objective 

indicia. The contrary is not shown by the court’s notuncommon choice of words when conducting the ultimate 

weighing, namely, that the objective indicia “do not overcome Kellogg’s extremely strong prima facie showing.” 

Intercontinental, 118 F. Supp. 3d at 1041. See, e.g., Ohio 

Willow, 735 F.3d at 1344 (similar usage); PerfectWeb, 587 

F.3d at 1333 (similar); cf. KSR, 550 U.S. at 426 (secondary 

considerations do not “dislodge” the determination that 

the claim would have been obvious). 

 While withholding a conclusion as to obviousness until considering the objective indicia, the district court did 

draw the following conclusions before such consideration: 
 16 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

“there was a known problem in the cookie packaging 

industry, and all of the elements of the invention existed 

in the prior art”; “[a] packaging expert, with knowledge of 

existing food packaging technology, would have thought to 

combine a resealable container and a frame big enough to 

contain cookies”; and the claimed “combination ‘would 

have been entirely predictable and grounded in common 

sense.’” Intercontinental, 118 F. Supp. 3d at 1035 (quoting Ball Aerosol & Specialty Container, 555 F.3d at 992–

93). The court then concluded (before discussing objective 

indicia): “No reasonable jury could conclude that a person 

skilled in packaging design would not be motivated to 

combine these features.” Id. 

Kraft contends that objective indicia must be evaluated before drawing a conclusion about whether a reasonable jury could find that a relevant skilled artisan had a 

motivation to combine the prior art, not merely before 

drawing the ultimate obviousness conclusion. But it cites 

no precedent so holding.

Kraft does cite authorities confirming that, in some 

cases, objective indicia can be important evidence of 

obviousness, sometimes even the most important evidence. See, e.g., Plantronics, 724 F.3d at 1355; Crocs, Inc. 

v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir. 

2010). And it cites authorities that say, consistent with 

KSR and Graham, that objective indicia must be considered and given “fair weight” before a legal conclusion on 

obviousness is drawn. Demaco Corp. v. F. Von Langsdorff 

Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988); see 

Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357–58 

(Fed. Cir. 2013); Plantronics, 724 F.3d at 1355; Power 

Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 

711 F.3d 1348, 1368 (Fed. Cir. 2013); In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent 

Litig., 676 F.3d 1063, 1076 (Fed. Cir. 2012); see also
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 17

Apple, 839 F.3d at 1058; Kinetic Concepts, Inc. v. Smith & 

Nephew, Inc., 688 F.3d 1342, 1368–71 (Fed. Cir. 2012); 

Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 

1380–81 (Fed. Cir. 2000). But the district court here did 

just that. And Kraft cites no authority that requires 

consideration of objective indicia as part of the motivation-to-combine factual analysis.

The staged consideration undertaken by the district 

court, and reflected in our cases, makes sense within the 

motivation-to-combine framework, a framework with 

which Kraft does not take issue. When a challenger 

shows that a “motivation” existed for a relevant skilled 

artisan to combine prior art in the way claimed in the 

patent at issue, such a showing commonly supports and 

leads readily to the further, ultimate determination that 

such an artisan, using ordinary creativity, would actually 

have found the claimed invention obvious. But the latter 

conclusion does not follow automatically from the former 

finding, and additional evidence may prevent drawing it. 

Identification of a “motivation” to make the combination

may not give a complete picture of what a skilled artisan, 

exercising ordinary creativity without the incentive of

patent protection, would actually have found it obvious to 

“disclose[] or devise[]” at the relevant time. See Graham, 

383 U.S. at 11 (explaining that when Congress adopted 

§ 103, and even before, “[t]he inherent problem was to 

develop some means of weeding out those inventions 

which would not be disclosed or devised but for the inducement of a patent”). Even with a motivation proved,

the record may reveal reasons that, after all, the court 

should not conclude that the combination would have 

been obvious, i.e., already part of the public domain.7 One 

 

7 See In re Translogic Tech., Inc., 504 F.3d 1249, 

1259 (Fed. Cir. 2007) (citing KSR for “the fundamental 
 18 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

type of such additional evidence consists of evidence of 

objective indicia—commercial success traceable to the 

claimed invention, industry praise, copying, and certain 

other facts concerning people’s actions and statements.

This way of structuring the analysis fulfills the requirement that the approach to determining obviousness 

be “expansive” and “flexible.” See KSR, 550 U.S. at 415. 

It reflects an understanding of the role of “motivation” 

that fits our consistent treatment of that element of the 

analysis as factual in nature. And it fits the Supreme 

Court’s treatment of objective indicia as evidence to be 

weighed in the overall legal determination of obviousness. 

We see no error in the sequence of steps the district court 

took in arriving at its ultimate obviousness determination.

Kraft’s only argument about the objective indicia thus 

fails. Kraft cannot complain that the district court failed 

to credit its evidence regarding objective indicia: the 

district court accepted the facts Kraft asserted about 

commercial success, industry praise, and copying. What 

remains for the objective indicia, therefore, is a weighing 

to produce a legal conclusion. But Kraft does not additionally argue to us, certainly not in a meaningful way, 

that in this particular case the objective indicia accepted 

by the district court require a legal conclusion of nonobviousness if we agree with the district court as to the priorart and motivation-to-combine elements of the analysis. 

Any implicit, undeveloped suggestion to that effect by 

Kraft is not enough on the record here, given the strength 

of the record on those elements, including the simplicity of 

 

proposition that obvious variants of prior art references 

are themselves part of the public domain”); see also In re 

Huai-Hung Kao, 639 F.3d 1057, 1073 (Fed. Cir. 2011); In 

re Wiseman, 596 F.2d 1019, 1023 (C.C.P.A. 1979).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 19

the technology and combination at issue, the recognized 

problem of resealing for cookie packaging, and the strong 

teaching of the prior art just before the claimed priority 

date. See, e.g., Ohio Willow, 735 F.3d at 1344 (“[W]here a 

claimed invention represents no more than the predictable use of prior art elements according to established 

functions, as here, evidence of secondary indicia are 

frequently deemed inadequate to establish nonobviousness.”). 

2 

Kraft next argues that the district court improperly 

resolved genuine factual disputes. The district court

concluded that the following were the only reasonable 

findings on the record: the Machinery Update articles 

(published shortly before Kraft’s priority date) disclose all 

the elements of the claims in combination—including, 

notably, a pull-back resealable package for discrete food 

items with a rigid tray—except the required “frame” that 

was common for cookies, as shown by Graham; the absence of a satisfactory resealable package was a known 

problem for cookies; and the ordinary creativity of the 

relevant skilled packaging artisan motivated and made 

predictable the use of the Machinery Update package with 

a cookie-protecting frame as a solution to that known 

problem. Kraft has not shown any basis in the record for 

reasonable contrary findings. Those findings, in this case, 

suffice to justify the overall legal conclusion of obviousness, there being no meaningful argument that the objective indicia, when weighed in Kraft’s favor (as the district 

court did), can change the ultimate conclusion. 

Kraft argues that the district court failed to provide 

“explicit and clear reasoning providing some rational 

underpinning” for its invocation of common sense in its 

motivation-to-combine analysis. Kraft’s Opening Br. 43 

(quoting Plantronics, 724 F.3d at 1354). We disagree. 
 20 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

The court relied on the record demonstrating the “known 

problem” of an insufficiently “convenient opening and 

reclosing arrangement” for cookie packaging and the 

suggestion in Machinery Update itself that its packaging, 

with a tray, was usable for a variety of foods, “such as” 

discrete items like sushi and canapés. Intercontinental, 

118 F. Supp. 3d at 1035–36. 

Kraft also points to the absence of expert testimony 

for Kellogg on this point. Kraft’s Opening Br. 43. But we 

have recognized that some cases involve technologies 

and prior art that are simple enough that no expert 

testimony is needed. See Wyers, 616 F.3d at 1239 (“KSR

and our later cases establish that the legal determination 

of obviousness may include recourse to logic, judgment, 

and common sense, in lieu of expert testimony.”); Perfect

Web, 587 F.3d at 1329; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008). What is 

claimed and described in the ’532 patent—which does not 

include any new manufacturing equipment or instructions 

to produce the described and claimed packaging—makes 

this such a case.

Kraft next contends that the evidence in the record 

shows that there was more than one reasonable inference 

about whether a relevant skilled artisan had a motivation 

to use the Machinery Update packaging with a frame for 

cookies. Kraft begins by relying on the assertion that 

“Kellogg personnel rejected the idea of combining a traditional cookie package with the resealable technology” of 

the Machinery Update articles. Kraft’s Opening Br. 45. 

But the record does not support the suggested inference. 

At best, the cited deposition testimony could establish

that a group of Kellogg employees viewed a sample of the 

Re-Seal It packaging technology at an internal meeting 

along with other packaging samples brought back from a 

trade show and Kellogg did not immediately adopt the 

technology for cookies. See J.A. 6328–29, 6347, 6366–69. 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 21

But the only evidence in the record about the reason 

behind that initial decision is that Kellogg did not possess 

the required equipment and did not then wish to purchase 

new equipment. J.A. 6329. One company’s temporary 

decision about an equipment investment is not sufficient 

to defeat the otherwise-compelled inference that combining the Re-Seal It packaging with familiar cookie-package

frames (as in Graham) was a predictable technological 

solution to the relevant known market problem. 

Kraft does not dispute, as its own evidence recited by 

the district court confirms, that the invention disclosed in 

its patent helps solve a known problem with cookie packaging (experienced by those consumers who want the 

option of eating less than a full package of cookies in one 

sitting). Intercontinental, 118 F. Supp. 3d at 1035. The 

packaging in the Machinery Update articles, with an 

internal tray to protect the contents and convenient 

resealing functionality, and its suggestion of use for a 

variety of discrete food items, makes readily predictable 

its use for cookies by raising the sides of the tray to form a 

“frame.” Kraft points to statements by its packaging 

expert (or Kraft filings based on such statements) as 

allegedly supporting a contrary finding. Kraft’s Opening 

Br. 46–52 (citing portions of J.A. 1769–75, 6134–35, 6146–

53, 6156, 6159–60, 6163–64 6166–67). But the expert’s 

statements in this case are insufficient to support a 

reasonable contrary finding.

Kraft’s expert, especially in the PTO, devoted relatively little attention to the Machinery Update articles. He 

focused instead on the Packaging News article, which 

(unlike the Machinery Update articles) stated that the ReSeal It packaging described and shown did not use conventional wrapping—the statement that led the Board on 

reexamination to reverse the examiner’s rejection of 

Kraft’s claims. Regardless, to the extent that his statements apply directly or indirectly to the Machinery Update packaging, they rest on misreadings of the articles 
 22 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

and disregard of the plain significance of other evidence 

from Kraft itself. See Novartis Corp. v. Ben Venue Labs.,

Inc., 271 F.3d 1043, 1050–51 (Fed. Cir. 2001) (determining that expert declaration not based on reasonable 

inferences from the material record facts amounts to a 

conclusory opinion insufficient to prevent summary 

judgment); see also Scott, 552 U.S. at 380. 

For example, the expert suggested that the Machinery 

Update articles are focused on layered items like sliced 

meats and suggest use of a tray only to be removed from 

the side of the package, not for items like cookies to be 

accessed from the top by peeling back the resealable flap. 

Kraft’s Opening Br. 46–52. But the district court correctly explained why the Machinery Update articles do teach 

top access to trays with unstacked discrete items, giving 

sushi and canapés as mere examples (“such as”), as well 

as parallel perimeter portions at the top for the sealing 

layer to stick to. Intercontinental, 118 F. Supp. 3d at

1030–34. We fail to see any other reasonable reading of 

the Machinery Update articles on these points.8

Likewise, the expert noted “many reclosure variations,” as Kraft summarizes the point, such as “tin ties, 

twist ties, adhesive tape for reclosing one end, a clip to 

pinch the end of the package, a zipper strip added to the 

 

8 That conclusion applies equally to the dependent 

claims, which the district court meticulously discussed in 

relation to the teachings of the prior art at issue. Intercontinental, 118 F. Supp. 3d at 1038–41. On appeal, Kraft 

makes no meaningful argument about the merits of the 

district court’s document-supported readings. Kraft’s 

assertion that Kraft’s expert asserted contrary readings, 

Kraft’s Opening Br. 50–52, is doubly conclusory. Kraft 

has given no sufficient basis for overturning the grant of 

summary judgment as to the dependent claims any more 

than as to the independent claims. 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 23

end or side of the package, and a pinch seal strip added to 

an end or side of the package.” Kraft Opening Br. 47. 

But as far as the record shows, those were among the very 

alternatives in the prior art that left consumers with the 

“known problem” with cookie packaging that motivated 

turning to the resealable Machinery Update packaging. 

Such known-to-be-unsatisfactory alternatives provide no 

basis for questioning the predictability of picking out the 

Machinery Update packaging as a new solution to the 

known problem. 

Kraft asserts, based on declarations submitted to the

PTO (relied on by its expert in this case), that “[a] skilled 

artisan would not add a reclosure feature to Graham 

because it is designed for one-time use, by ‘opening at one 

of its ends,’” and “the Graham tray is inexpensive and 

‘resiliently flexible’ to conform to the cookies,” whereas 

the Packaging News packaging “is designed for multiple 

openings and reclosings” and its “tray is expensive, ‘significantly more rigid,’ and ‘not conformable to the food 

products.’” Kraft’s Opening Br. 46. But those assertions 

provide no reasonable basis for denying the predictability 

of using prior-art cookie frames like Graham’s in the 

Machinery Update packaging.

It was a “known problem” for cookie consumers that 

Graham-like packages did not satisfactorily provide for 

the “multiple openings and closings” that consumers 

wanted—and that the Machinery Update packaging made 

more convenient. As Kraft says, “[c]onsumer dissatisfaction with this traditional frame-in-wrapper package was 

well-known.” Id. at 4. That is what motivated looking to 

the multiple-use Machinery Update packaging. Moreover, 

Kraft points to no evidence that the Graham-like frames 

would not work with the Machinery Update packaging. 

Nor does the relied-on testimony say anything actually 

material about cost: it does not say that the resulting 

cookie package would cost cookie consumers more than 

the prior-art cookie package or that any increase would be 
 24 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

sufficient to deter the combination. The expert’s only 

point about cost was that the cookie frame was less expensive than the Machinery Update tray. But that point 

says nothing to the effect that the relevant (cookie) consumers would face a cost increase were the cookie makers 

to use the old frame but replace the surrounding wrappers with the Machinery Update package.

On this record, we conclude, there is no basis for overturning the district court’s conclusion that any reasonable 

jury would have to find a motivation to combine.

3 

Kraft’s final argument invokes this court’s recognition 

that a “party challenging validity shoulders an enhanced 

burden if the invalidity argument relies on the same prior 

art considered during examination.” Tokai, 632 F.3d at 

1367. According to Kraft, that proposition applies here 

based on the reexamination, in which Graham, the 2002 

Machinery Update article, and the Packaging News article 

(containing the same photograph as appeared in the 2001 

Machinery Update article) were considered. See Kraft 

Opening Br. 56–60. It suffices to say, however, that in 

this case the “enhanced burden” proposition provides no 

basis for a different result. 

The “enhanced burden” point certainly confirms a 

practical truth about litigation: persuading a fact finder 

that an expert agency is incorrect on a proposition is 

likely to be a greater forensic challenge to the advocate 

than showing the proposition to be incorrect in the absence of a contrary expert-agency determination. See 

Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260–61

(Fed. Cir. 2012) (“[I]t may be harder to meet the clear and 

convincing burden when the invalidity contention is based 

upon the same argument on the same reference that the 

PTO already considered. Importantly, whether a reference was before the PTO goes to the weight of the evidence, and the parties are of course free to, and generally 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 25

do, make these arguments to the fact finder.”). This court 

has not, however, ascribed any larger meaning to the 

“enhanced burden” point, which, the court has explained, 

does not mean that something more than clear and convincing evidence is required. Id. In any event, this is not 

a case in which what the PTO concluded makes a difference, for at least two reasons. 

First, as the district court explained, the only express 

analysis of the Machinery Update articles was by the 

examiner, who rejected the claims. The Board, which 

upheld the claims, did not expressly consider those articles, but relied instead on a sentence in Packaging News 

that does not appear in the Machinery Update articles. 

Intercontinental, 118 F. Supp. 3d at 1028–29. There is no 

basis for attributing to the Board an implied assessment 

of the Machinery Update articles. The record before the 

Board indicates that the Board simply accepted a premise 

that those articles were redundant of Packaging News, 

requiring no separate consideration. There is no specific 

PTO determination of nonobviousness based on the particular prior art now at issue.

Second, in this case, we think that the showing of obviousness is sufficiently strong that no PTO contrary 

determination could alter the conclusion about summary 

judgment. If the substantive evidentiary and other 

arguments made by Kraft do not create a triable issue, as 

we (and the district court) have concluded, neither could a 

bare assumption, otherwise unexplained, that the PTO 

reached a different conclusion based on the prior art here 

at issue. For that reason as well, we reject Kraft’s final 

deference-invoking argument against summary judgment 

of obviousness.

* * *

In Tokai, this court drew the following conclusion on 

the record before it in affirming a summary judgment of 

obviousness: “[T]he undisputed facts in this case—
 26 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

including the state of the prior art, the simplicity and 

availability of the components making up the claimed 

invention, and an explicit need in the prior art for [the 

asserted invention]—compel a conclusion of obviousness 

as to the subject matter of each of the asserted claims.” 

632 F.3d at 1371. For the reasons we have set forth, we 

agree with the district court that the same conclusion is 

warranted in this case.

B 

In its cross-appeal, Kellogg argues that the district 

court erred when it granted Kraft summary judgment 

rejecting Kellogg’s inequitable-conduct charge.9 The only 

issue here concerns the arguments Kraft made about 

Packaging News to the Board during reexamination. We 

see no reversible error in the district court’s conclusion 

that Kellogg’s evidence was insufficient to permit a finding of the intent required for inequitable conduct based on 

Kraft’s reexamination arguments.

Kellogg’s charge rests on a sentence in the Packaging 

News article—a short article that was the central focus 

before the Board, including during oral argument, when

the Board was specifically looking at and asking about the 

brief text. The relevant sentence in that article describes 

the Re-Seal It packaging as not using “conventional 

wrapping film.” J.A. 4713. Kellogg says that the sentence is a misprint and that Kraft committed inequitable 

conduct by not so informing the Board.

There is no doubt that the Packaging Material sentence was important to the Board’s decision: the Board 

relied on that sentence to reverse the examiner’s rejections of Kraft’s claims. But to prevail, Kellogg had to 

 

9 Neither party has suggested that the unenforceability (of the patent) is of no consequence if the invalidity 

ruling (as to selected claims) is affirmed.
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 27

prove that Kraft, in what it did not say about the sentence 

that was the focus of the Board’s attention, had a “specific 

intent to mislead or deceive the PTO.” In re Rosuvastatin 

Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012) 

(citing Therasense, 649 F.3d at 1287). The intent requirement is demanding: the evidence must be “sufficient 

to require a finding of deceitful intent in the light of all 

the circumstances”; deceptive intent “must be the single 

most reasonable inference able to be drawn from the 

evidence”; and “when there are multiple reasonable 

inferences that may be drawn, intent to deceive cannot be 

found.” Therasense, 649 F.3d at 1290–91 (internal quotation marks omitted); see Ohio Willow, 735 F.3d at 1351;

Ohio Willow Wood Co. v. Alps South, LLC, 813 F.3d 1350, 

1358–59 (Fed. Cir. 2016).

Unlike Ohio Willow, this is not a case of withholding 

documents from the PTO (in Ohio Willow, documents key 

to corroboration of inventorship) or of making affirmative 

misrepresentations (in Ohio Willow, about a key participant’s supposed admission somewhere in the record). The

Board had the 2002 Machinery Update article in the 

record, but it was not a basis for the examiner’s rejections 

on review and so was not the subject of any discussion

before the Board.10 The alleged wrong, moreover, is not 

what Kraft affirmatively stated about Packaging News. 

The only alleged wrong is Kraft’s omission of any statement that the sentence in the Packaging News reference 

on which the Board was directly focusing was actually a

misprint. But even if the sentence was a misprint, the 

district court properly concluded that the record does not 

 

10 The 2001 Machinery Update article, which contains a photograph identical to that in Packaging News, is 

not in the reexamination record. See J.A. 97–99, 679. 

Kellogg has not asserted inequitable conduct based on the 

2001 Machinery Update article.
 28 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

support an inference of deceptive intent under the Therasense standard. 

Kellogg presents no admission or anything similar indicating that any relevant Kraft officer or representative 

during the reexamination actually believed the sentence 

to be a misprint. Kellogg asks for an inference as to what 

Kraft had to believe, given the disparity of language 

between the Packaging News article (“without conventional wrapping film,” J.A. 4713) and the 2002 Machinery 

Update article (“with conventional wrapping film,” 

J.A. 4424), that Kraft’s counsel had read both articles, 

and that a representative of a company selling packaging 

machines that counts Kraft as one of its biggest customers 

(affiliated with the reexamination requester) testified 

that, since “we run with conventional film,” it was obvious 

that the Packaging News sentence was a misprint, J.A.

6427, 6441. But without more evidence of Kraft’s belief, 

one reasonable inference on the record—especially given 

Kellogg’s burden of persuasion—is that Kraft did not 

believe that there was a misprint.

Kellogg’s evidence from the deposition of Kraft’s counsel provides no suggestion of any awareness of a misprint. 

See J.A. 6941–45. The same is true as to Kraft’s inventor—appearing also as Kraft’s official company witness 

under Fed. R. Civ. P. 30(b)(6)—who testified that she did 

not recognize a misprint in Packaging News at all, much 

less one based on the difference in language between it 

and the 2002 Machinery Update, believing that “they 

were different packaging in different articles,” J.A. 6388, 

and that if there had been a misprint, it would have been 

corrected, J.A. 6382–83. In the reexamination, moreover, 

neither the ex parte requester nor the examiner suggested 

that the Packaging News article contained a misprint. 

The absence of such a statement indicates that the alleged misprint was not as obvious as Kellogg claims. The 

rejections that were then appealed did not involve Ma-
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 29

chinery Update, which therefore need not have been the 

subject of reinspection by Kraft during the appeal.

In these circumstances, we think that the district 

court properly concluded that the Therasense intent 

standard could not be met.

III

For the foregoing reasons, we affirm the judgment of 

the district court.

No costs awarded to either party. 

AFFIRMED
United States Court of Appeals 

for the Federal Circuit ______________________ 

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

______________________ 

Appeals from the United States District Court for the 

Northern District of Illinois in No. 1:13-cv-00321, Judge 

Matthew F. Kennelly.

______________________ 

 

REYNA, Circuit Judge, dissenting-in-part. 

For too long, this court has turned a blind eye to what 

I consider to be a grave concern: the application of a 

prima facie test that necessarily achieves a legal determination of obviousness prior to full and fair consideration 

of evidence of objective indicia of non-obviousness.1 There 

 

1 Objective indicia of non-obviousness are often referred to as “secondary considerations.” See, e.g., Graham 

v. John Deere Co., 383 U.S. 1, 17 (1966). I prefer to use 
2 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

should be no prima facie rule or test in the obviousness 

inquiry. Stated differently, the burden of persuasion 

should not shift from the challenger to the patent holder 

after a legal determination of obviousness has already 

been made. 

I agree with the majority’s decision to affirm the district court’s grant of summary judgment of no inequitable 

conduct. Thus, I join Part IIB of the majority opinion. I 

disagree, however, with the majority’s decision that 

affirms the district court’s grant of summary judgment of 

obviousness. I would find that the district court improperly found a prima facie case of obviousness before considering Kraft’s evidence of objective indicia of nonobviousness. I therefore respectfully dissent from Part 

IIA of the majority opinion. 

Because the majority affirms on obviousness, it does 

not address the district court’s finding of no literal infringement. Because I believe the district court erred on 

obviousness, I would address the infringement issue. The 

district court changed its construction of the claim term 

 

“objective indicia” to properly signify their evidentiary 

role and prevent any misperception that they are less 

important than, i.e., secondary to, other non-obviousness 

factors relevant in determining whether a claimed invention would have been obvious. See In re Cyclobenzaprine, 

676 F.3d 1063 (Fed. Cir. 2012) (using “objective indicia”); 

Truswal Sys. Corp. v. Hydro-Air Eng’g Inc., 813 F.2d 

1207, 1212 (Fed. Cir. 1987) (“That evidence is ‘secondary’ 

in time does not mean that it is secondary in importance.”); 2 Donald S. Chisum, Chisum on Patents

§ 5.05 (“To emphasize the importance of what the Graham

decision referred to as ‘secondary considerations,’ many 

Federal Circuit opinions refer to them as ‘objective considerations’ and list such considerations as a fourth 

factual inquiry.”).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 3

“sealing layer” between its Markman order and summary 

judgment order, resulting in a conclusion of noninfringement. That midstream change was dispositive, 

and because Kraft had no opportunity to address the new 

construction, the district court’s summary judgment was 

erroneous. I dissent.

I. 

A. Statutory Requirement of Non-Obviousness

In 1952, Congress amended the Patent Act to, inter 

alia, require that patents be non-obvious. 35 U.S.C. 

§ 103; 2 Donald S. Chisum, Chisum on Patents § 5.02[4] 

(“In Section 103 of the Patent Act of 1952, Congress for 

the first time gave express legislative recognition to the 

judicially-developed doctrine that something more than 

strict novelty is required in order to support a patent.”). 

Section 103 codified what the common law already had 

required for a century. See Hotchkiss v. M. Greenwood & 

Co., 52 U.S. (11 How.) 248 (1850). A 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 before the 

effective filing date of the claimed invention to a person 

having ordinary skill in the art to which the claimed 

invention pertains.” 35 U.S.C. § 103.2

B. Supreme Court Precedent 

The Supreme Court first addressed § 103 in Graham 

v. John Deere Co., 383 U.S. 1 (1966). The Court set forth 

the framework for determining whether patent claims 

would have been obvious:

Under § 103, the scope and content of the prior art 

are to be determined; differences between the pri-

 

2 An earlier version of § 103 controls this case, but 

any differences do not impact this analysis.
4 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

or art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the 

obviousness or nonobviousness of the subject matter is determined. Such secondary considerations 

as commercial success, long felt but unsolved 

needs, failure of others, etc., might be utilized to 

give light to the circumstances surrounding the 

origin of the subject matter sought to be patented. 

As indicia of obviousness or nonobviousness, these 

inquiries may have relevancy.

Id. at 17–18 (citation omitted). The Court noted that 

objective indicia of non-obviousness are “more susceptible 

of judicial treatment” than the other “highly technical 

facts” relevant to an obviousness analysis. Id. at 36. 

Objective indicia “may lend a helping hand to the judiciary” that “is most ill-fitted to discharge the technological 

duties cast upon it by patent legislation.” Id. Objective 

indicia, the Court wrote, help guard against hindsight 

and “the temptation to read into the prior art the teachings of the invention in issue.” Id.3

 

3 Objective indicia include commercial success, 

long-felt but unsolved need, failure of others, industry 

praise, unexpected results, and copying. See Apple Inc. 

v. Samsung Elecs. Co., 839 F.3d 1034, 1058 (Fed. Cir. 

2016) (en banc); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012); In re Cyclobenzaprine, 794 F. Supp. 2d 517, 538 (D. Del. 2011), rev’d 

in part, 676 F.3d 1063 (Fed. Cir. 2012). For more than a 

century, the Supreme Court has recognized the utility of 

objective indicia of non-obviousness in adjudicating patent 

validity. See Smith v. Goodyear Dental Vulcanite, 93 U.S. 

(3 Otto) 486, 494–95 (1877) (discussing long-felt but 

unmet need and professional approval).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 5

More recently, the Supreme Court clarified the obviousness analysis in KSR International Co. v. Teleflex Inc., 

550 U.S. 398 (2007). It explained that trial courts must 

consider the four Graham factors to determine whether 

an asserted claim would have been obvious: (1) the scope 

and content of prior art; (2) the differences between the 

prior art and asserted claims; (3) the level of ordinary 

skill; and (4) objective indicia of non-obviousness. KSR, 

550 U.S. at 406 (citing Graham, 383 U.S. at 17–18). The 

Court noted that “the sequence of these questions might 

be reordered in any particular case.” Id. at 407. It also

cautioned factfinders to consider “the distortion caused by 

hindsight bias” and “be cautious of arguments reliant 

upon ex post reasoning.” Id. at 421. In KSR, however, the 

patentee’s minimal evidence of objective indicia did not

“dislodge” the obviousness determination. Id. at 426. 

Thus, the Supreme Court held that the asserted claim 

would have been obvious. Id.4

To be clear, nothing in Graham or KSR requires 

courts to analyze the first three Graham factors first, 

make a prima facie determination of obviousness, and 

only then examine objective indicia of non-obviousness. 

Such a prima facie framework excludes objective indicia 

in the primary analysis and artificially creates a heightened standard of proof for objective indicia. I am not 

aware of any Supreme Court authority that endorses—let 

alone requires—the prima facie framework. 

 

4 The party asserting obviousness—here, Kellogg—

bears the burden of proof by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 

(2011).
6 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

C. Federal Circuit Precedent

This court explained the basic obviousness analysis in 

Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 

1983). In Stratoflex, the district court concluded that the 

claimed inventions were “plainly obvious.” 713 F.2d at 

1539. As a result, it refused to analyze objective indicia of 

non-obviousness. Id. We held that such an approach was 

error, noting that each Graham factor “is but an aid” in 

determining whether the claimed invention would have 

been obvious. Id. at 1537. And although we discussed

objective indicia after the other three Graham factors, we 

elaborated at length about their importance:

It is jurisprudentially inappropriate to disregard 

any relevant evidence on any issue in any case, 

patent cases included. Thus evidence rising out of 

the so-called “secondary considerations” must always when present be considered en route to a determination of obviousness. Indeed, evidence of 

secondary considerations may often be the most 

probative and cogent evidence in the record. It 

may often establish that an invention appearing 

to have been obvious in light of the prior art was 

not. It is to be considered as part of all the evidence, not just when the decisionmaker remains 

in doubt after reviewing the art. . . . En route to a 

conclusion on obviousness, a court must not stop 

until all pieces of evidence on that issue have been 

fully considered and each has been given its appropriate weight. Along the way, some pieces will 

weigh more heavily than others, but decision 

should be held in abeyance, and doubt maintained, until all the evidence has had its say.

Id. at 1538–39 (citations omitted). In light of the district 

court’s failure to consider the objective indicia, we did so 

in the first instance. Id. at 1539. Giving “full consideration” of objective indicia such as alleged commercial 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 7

success, industry praise, and long-felt but unmet need, we 

concluded that the claims would have been obvious and 

thus affirmed the district court under the harmless error 

rule. Id. at 1540.

More recently, we discussed the role of objective indicia in Cyclobenzaprine, 676 F.3d at 1063. In that case, 

the district court engaged in a three-step analysis to 

determine whether a certain drug extended-delivery 

method would have been obvious. First, under the heading “Prior art,” it described four prior art references. In re 

Cyclobenzaprine, 794 F. Supp. 2d 517, 534–35 (D. Del. 

2011), rev’d in part, 676 F.3d 1063 (Fed. Cir. 2012). In the 

next section, with the heading “Prima facie case,” the 

district court determined that “a person of ordinary skill 

in the art would have been motivated to take a group of 

known elements to create an extended release version of 

cyclobenzaprine, and to have a reasonable expectation of 

success in doing so.” Id. at 537. It also concluded that

certain properties and delivery methods would have been 

obvious. Id. at 536–37. Only later, under the heading 

“Secondary considerations,” did the court analyze the 

patentee’s objective indicia of non-obviousness. Id. at 537. 

Finding that the objective indicia did not “overcome the 

prima facie case of obviousness,” the district court granted 

summary judgment of obviousness. Id. at 536. 

On appeal, we reversed the district court’s obviousness determination. We explained that the purpose of

objective indicia of non-obviousness is to refute the evidence of obviousness. Cyclobenzaprine, 676 F.3d at 1077. 

That a patent owner may submit this evidence on objective indicia does not mean, however, that the burden 

shifts to the patent owner to prove non-obviousness. 

Cyclobenzaprine, 676 F.3d at 1079–80. The district court 

must consider all evidence, including objective indicia of 

non-obviousness, before making an ultimate conclusion of 

obviousness. Id. at 1080. We criticized the district court 
8 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

for “impos[ing] a burden-shifting framework in a context 

in which none exists.” Id. at 1075.

In Cyclobenzaprine, we emphasized our earlier statement that “‘evidence of secondary considerations may 

often be the most probative and cogent evidence in the 

record. It may often establish that an invention appearing to be obvious in light of the prior art was not.’” Id. at 

1075–76 (quoting Stratoflex, 713 F.2d at 1538). We noted 

that some Federal Circuit opinions have used the “prima 

facie” and “rebuttal” language, but we cautioned that 

“those cases should not be interpreted as establishing a 

formal burden-shifting framework.” Id. at 1077. Instead, 

we interpreted our precedent to hold that “all evidence 

relevant to obviousness or nonobviousness [must] be 

considered, and considered collectively.” Id. at 1078. 

Objective indicia of non-obviousness, we stated, are not 

mere, after-the-fact considerations relegated to secondary 

status. Id. They are essential safeguards against hindsight bias. Id. at 1079.

D. Post-Cyclobenzaprine Use Of

Prima Facie Framework

After Cyclobenzaprine, some of this court’s decisions 

have continued to endorse the prima facie framework. 

See, e.g., Cubist Pharm., Inc. v. Hospira, Inc., 805 F.3d 

1112, 1130 (Fed. Cir. 2015) (“We sustain the district 

court’s determination that the secondary consideration 

evidence did not overcome the showing of obviousness 

based on the prior art.”); Novo Nordisk A/S v. Caraco 

Pharm. Labs., Ltd., 719 F.3d 1346, 1353–54 (Fed. Cir. 

2013) (“The mere fact that the court conducted [the obviousness] analysis using terms such as ‘overcome’ and 

‘prima facie’ does not necessarily imply that it shifted the 

burden of persuasion onto [the patent owner].”). 

In light of mixed messages coming from our court—

endorsement of a prima facie framework on one hand but 

insistence to view the evidence as a whole on the other—
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 9

trial courts have continued to find a prima facie case of 

obviousness before turning to objective indicia as rebuttal 

evidence. Despite Cyclobenzaprine’s warnings, burdenshifting remains common among trial courts. See, e.g., 

Bayer Pharma AG v. Watson Labs., Inc., 183 F. Supp. 3d 

579, 589 (D. Del. 2016) (“Under relevant law, once a 

prima facie case of obviousness has been established, the 

burden then shifts to the applicant to present evidence of 

secondary considerations of non-obviousness to overcome 

this prima facie showing.”); B-K Lighting, Inc. v. Vision3 

Lighting, 930 F. Supp. 2d 1102, 1116–17 (C.D. Cal. 2013) 

(stating that the patent owner bears the burden of presenting evidence to rebut a prima facie case of obviousness); Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc., 

923 F. Supp. 2d 602, 675 (D. Del. 2013) (“With [the alleged infringer] having met its burden to establish a 

prima facie case of obviousness, the Court will go on to 

consider the fourth Graham factor: facts regarding objective indicia of nonobviousness.”); Hitkansut LLC v. United 

States, 127 Fed. Cl. 101, 113 (2016) (stating that the 

patent owner “incorrectly assumes that secondary considerations are part of [the alleged infringer’s] burden in 

proving obviousness. Instead, evidence of secondary 

considerations is in the nature of rebuttal evidence. . . . A 

patentee typically comes forward with proof of secondary 

considerations of validity, or ‘non-obviousness,’ in rebuttal 

to a patent challenger’s prima facie case of obviousness.”) 

(alterations, quotation marks, and citation omitted).

E. This Court’s “Prima Facie” Framework Does Not 

Comport With Supreme Court Precedent

Although this court highlighted the dangers associated with the prima facie framework in Cyclobenzaprine, we

have not diligently instructed trial courts to abandon the 
10 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

framework altogether.5 The time to do so has come. One

commentator has stated that “Cyclobenzaprine was unrealistic” if it intended to ban district courts from making 

prima facie findings of obviousness prior to consideration 

of objective indicia. Chisum § 5.05. I am not the first 

member of this court to state that such a ban is necessary. 

See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 

748 (Fed. Cir. 2013) (Newman, J., dissenting) (“[T]he 

proper analysis of obviousness under 35 U.S.C. § 103 

requires that all evidence relevant to obviousness or 

nonobviousness be considered, and be considered collectively, without resort to presumptions of prima facie 

obviousness or burden-shifting.”) (quotation marks omitted); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 

683 F.3d 1356, 1367 (Fed. Cir. 2012) (Newman, J., dissenting) (“The district court, holding that a prima facie 

case of obviousness was established on the prior art alone,

shifted the burden of proof to the patentee to rebut the 

asserted, but improper, prima facie case with the evidence 

of commercial success and copying. This is a distortion of 

the burden of proof, which never leaves the challenger.”). 

Objective indicia of non-obviousness must be considered from the outset, and the burden of proof should never 

leave the challenger. The purpose of our patent system is 

the promotion of the progress of science and useful arts. 

U.S. Const. art. 1, § 8, cl. 8. This purpose is undermined

by premature findings of obviousness and over-

 

5 The majority notes, and I do not dispute, that the 

use of “prima facie” is a “not-uncommon choice of words” 

in our past precedent. Maj. Op. at 15; see also Chisum 

§ 5.05 (“Federal Circuit decisions have held that, in 

particular cases, secondary considerations, though relevant, failed to overcome a ‘strong’ prima facie case of 

obviousness based on the prior art.”).
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 11

invalidation of innovative patents. Novo Nordisk, 719 

F.3d at 1365 (Newman, J., dissenting).

The prima facie approach to obviousness jumbles the 

proper order of operations. “Prima facie” refers to evidence that is “[s]ufficient to establish a fact or raise a 

presumption unless disproved or rebutted.” Prima Facie, 

Black’s Law Dictionary (10th ed. 2014). Whether a party 

has made a prima facie case is a legal determination. See 

Takeda Chem. Indus., Ltd. v. Alphapharm Pty., 492 F.3d 

1350, 1356 (Fed. Cir. 2007) (calling the prima facie test 

“consistent with the legal principles enunciated in KSR”). 

Consistent with the prima facie approach endorsed by 

some of our past decisions, the district court here proceeded in four steps: it (1) considered the first three Graham

factors; (2) made a legal prima facie determination of 

obviousness; (3) considered objective indicia of nonobviousness; and (4) made an ultimate conclusion of 

obviousness. Steps one and three are factual, whereas 

steps two and four are legal. It is clear to me that courts 

are making a legal determination of obviousness at step 

two. As a result, all of the facts concerning patentability 

are not considered. This is error.

I read Supreme Court and Federal Circuit precedent 

to require all factual analysis to occur prior to achieving a 

legal conclusion on non-obviousness. This should be done 

without resort to an intermediate prima facie conclusion. 

See, e.g., Graham, 383 U.S. at 36 (not making a prima 

facie conclusion and instead reserving any legal conclusion until after discussion of all factual predicates); KSR, 

550 U.S. at 426 (same); Apple, 839 F.3d at 1058 (same);

Cyclobenzaprine, 676 F.3d at 1081–83 (same); Stratoflex, 

713 F.2d at 1539 (same). Thus, I would instruct the 

district court to abandon the prima facie framework and 

instead proceed in two steps: (1) consider all factual 

evidence, both favoring and disfavoring a finding of obviousness; and (2) make a legal conclusion of obviousness. 
12 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

Accord Wm. Wrigley Jr. Co., 683 F.3d at 1370 (Newman, 

J., dissenting); Robert A. Matthews, Jr., Annotated Patent 

Digest § 18:93 (“A court should consider evidence of 

secondary considerations together with the evidence 

alleged to create a prima facie case of obviousness before

determining whether an invention is or is not obvious. In 

other words, secondary considerations do not come into 

play only to rebut a prima facie case of obvious, (even 

though that is often how they are considered during 

prosecution). Rather, the considerations factor in to the 

initial determination of obviousness.”).

I recognize there are practical limitations of legal 

analysis and writing. A court’s opinion must be linear 

and cover only one issue at a time. Typically, discussion 

of the objective indicia of non-obviousness comes last in 

an obviousness analysis. There is nothing inherently 

wrong with this order per se. Again, Supreme Court 

precedent is instructive. The Court discussed objective 

indicia of non-obviousness last in Graham. 383 U.S. at 

35–36. So too in KSR. 550 U.S. at 426. But in both 

cases, the Court made no “prima facie” finding of obviousness, did not relegate objective indicia into an afterthought, and reserved its legal conclusion for after 

discussion of all relevant factual inquiries. Id. Our 

seminal Federal Circuit decisions have done the same. 

See Apple, 839 F.3d at 1058; Cyclobenzaprine, 676 F.3d at 

1081–83; Stratoflex, 713 F.2d at 1539. But the notion 

that objective criteria are considered after a legal prima 

facie showing is made has taken root like a spreading

vine. This gives rise to cases, such as this case on appeal, 

where a court determines that a particularly “strong” 

prima facie showing has been made, making it difficult if 

not impossible for adequate weighing of evidence of objective indicia of non-obviousness. 

This case presents a textbook example of why courts 

should not make any determinations of obviousness, 

prima facie or otherwise, prior to considering objective 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 13

indicia of non-obviousness. Here, Kellogg responded to 

Kraft’s patent infringement suit by alleging that Kraft’s 

patent was invalid for obviousness. Kellogg presented 

evidence of prior art that it alleged a person of ordinary 

skill would have been motivated to combine. 

In response to Kellogg’s evidence of obviousness, Kraft 

presented at least three objective indicia of nonobviousness. The district court wrote that Kraft “has 

offered substantial evidence from which a jury could find 

that its invention has been commercially successful.” J.A. 

29. Kraft presented evidence that its sales volume increased four percent due to the invention. J.A. 28. It also 

presented “evidence of positive consumer feedback” and 

survey results showing that the invention “was a clear 

favorite for nearly all” survey respondents. J.A. 29. The 

court also found that Kraft introduced evidence of longfelt but unsolved need. Id. It explained that Kraft won 

“one of the highest industry awards innovative packaging 

technology can receive” and pointed to “many industry 

publications” praising the technology. Id. Finally, Kraft 

presented evidence “show[ing] that Kellogg intentionally 

copied [Kraft’s] packaging.” Id. The court found this 

evidence of copying to be “compelling.” Id. 

I am left to wonder how “substantial” and “compelling” evidence of objective indicia cannot overcome a 

prima facie showing. If such significant evidence does not 

make a difference in this case, it is hard to imagine a 

situation in which it would.

An observer noted that “the law, with respect to the 

importance of secondary considerations or objective 

indicia, is going through a transformation.” J. Jeffrey 

Hawley, The Resurgence of “Secondary Considerations”, 

16 FLA. COASTAL L. REV. 1, 23 (2014). I hope so. Cyclobenzaprine was a step in the right direction. We should 

finish what Cyclobenzaprine started and prohibit prima 
14 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

facie findings of obviousness prior to consideration of 

objective indicia of non-obviousness.

II. 

Because it affirms on obviousness grounds, the majority does not discuss the district court’s grant of summary 

judgment of no literal infringement. Because I would 

reverse the obviousness determination, I would review the 

infringement finding. I would find reversible error in the 

district court’s claim construction, which led to its finding 

of no literal infringement. 

Kraft sued Kellogg for, inter alia, literal infringement 

of the ’532 patent. Central to Kraft’s infringement allegation was the claim term “sealing layer,” which appears in 

claim 1 of the ’532 patent. The parties disputed the 

construction of “sealing layer” in their claim construction

briefs and at the claim construction hearing. 

Following briefing and argument, the district court issued a Markman order construing “sealing layer.” The 

court concluded that the ’532 patent claims require “the 

sealing layer to be a distinct layer from the top of the 

container.” J.A. 44. The court went on:

This does not mean, however, that the sealing layer must be physically separated from the top of the 

container or, more specifically, from the wrapper 

that forms the top of the container as described in 

claim 1. In particular, the requirement of a distinct layer does not preclude the sealing layer 

from being laminated to another layer or layers of 

the wrapper. One layer of material that is laminated to another is no less a distinct layer. In 

other words, “distinct” and “separate” have different meanings in this context.

J.A. 45 (emphases added). Neither party disputes that 

this construction, as expressed in the Markman order, is 

correct. 
INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 15

In its subsequent summary judgment order, however,

the court construed “sealing layer” differently. The summary judgment order stated that the sealing layer “must 

be a separate piece of material.” J.A. 32. This construction was outcome-determinative: The court noted that it 

granted summary judgment of no literal infringement

“based on [its] construction of the claim term, ‘sealing 

layer.’” J.A. 31; see also id. (“Because the top and cut-out 

flap are not ‘distinct layers’ in the accused products—

rather, they are part of the same layer—Kellogg does not 

literally infringe the sealing layer limitation.”). 

The court’s new construction at summary judgment

contradicts its Markman construction that stated the 

sealing layer did not need to be a separate piece of material. This distinction is critical because if the sealing 

layer need not be separate from the top of the container, 

then a reasonable jury could conclude that Kellogg literally infringed the ’532 patent. The majority opinion fails to 

address this issue at all, either in its recitation of the 

facts or its analysis of the law. Kraft was entitled to a 

consistent construction of “sealing layer” throughout the 

case, or, at minimum, to have an opportunity to respond 

to the court’s new construction. Cf. Cordis Corp. v. Bos. 

Sci. Corp., 658 F.3d 1347, 1355 (Fed. Cir. 2011) (holding 

that while a court may clarify its construction after a jury 

verdict, it may not apply an altogether different construction); SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 

1341, 1351–52 (Fed. Cir. 2016) (stating, in the agency 

context, that while the Patent Trial and Appeal Board 

may adopt a claim construction in its Final Written 

Opinion, it may not change constructions “midstream”). 

Because Kraft did not have an opportunity to respond to 

the midstream change in the meaning of “sealing layer,” I 

would reverse the grant of summary judgment of no 

literal infringement. 

I respectfully dissent from judgment of the majority

to: (1) affirm the district court’s grant of summary judg-
16 INTERCONTINENTAL GREAT BRANDS v. KELLOGG N. AM. CO. 

ment of obviousness and (2) not address the court’s claim 

construction error.