# United States **Court of Appeals**  **for the Federal Circuit**

______________________
INTERCONTINENTAL GRE AT BRANDS LLC, Plaintiff

- Appellant

v.

KELLOGG NORTH AMERICA COMPANY, KELLOGG USA, INC., KEEBLER COMPAN Y, KEEBLER FOODS COMPAN Y, 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

______________________

K

ATIE C ROSBY L EHMANN , Ciresi Con l in LLP, Minn eapolis, MN, argued for plaintiff

- appellant. Also represen ted by M ICHAEL V. C IRESI

.

R ICHARD D ANIEL H ARRIS , Green berg Traurig LLP, Chicago, IL, argued for defendants

- cross

- appellants. Also represented by M ATTHEW J. L EVINST E IN , J AMES J. L UKAS , J R

.

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Before P ROST , Chief Judge, R EYNA and T ARANTO , Ci rcuit Judges.
Opinion for the court filed by Circuit Judge TARANTO.

Opinion d issenting in part filed by Circuit Judge REYNA.

T ARANTO , Circuit Judge

. Kraft Foods Global Brands LLC (now called Interco ntinental Great Brands) owns U.S. Patent No. 6,918,532

, which issued in 2005 and was supplemented with add itional 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

- infringemen t 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 obv iousness of the asserted c laims of the ’532 patent

. Inte rcontinental 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 rejec ting Kellogg’s counterclaim of unenforceability of the patent due to alleged inequitable conduct by Kraft , chiefly in a n ex parte reexamination proceeding

. Id. at 1044

– 45. We affirm.

I

The ’532 patent describes a combination of two known kinds of packaging . O ne, common for cookies, uses a frame surrounded by a wrapper . T he 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

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Thus, the background section of the patent be gins: “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 pro duct and to protect the food product from damage.” ’532
pa tent, 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]h e se 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 cli pping 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 openin g, allowing access to the wet tissues or wipes inside.” Id.

, col. 1, lines 25

– 27. “T ypically,” 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 i mproved container for food products such as rigid food articles, for example cookies and the like, which container provides adequate pr otection for the contents thereof, while concurren t-INTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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 co ntainer, said container having a top, a bottom[,] and sides connecting the top and bottom, the frame containing a food product comprised of di screte food articles; a wrapper surrounding said frame, said wrapper forming the top[,] sides[,] and bottom of the co ntainer; 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 di sc rete 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 gra sped 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

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In October 2007, about two years after the ’532 patent issued, a Swedish company that produces resealable packages so ught an ex parte reexamination of that patent from the U.S. Patent and Trademark Office. Intercont inental , 118 F. Supp. 3d at 1026. The Office initiated the reexamination , and i n 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 reje ctions . It relied critically on a particular phrase in the Packaging News article asserting the co nventionality 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 F oods 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 package s that a Kellogg document suggested were designed to “‘circu mvent[] the Kraft patent while maintaining similar prope rties.’” 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

w as unenforceab le 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 KraftINTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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moved for summary judgment on Kellogg’s co unterclaim of unenforceability due to inequitable conduct. 1
The district court granted Kellogg’s motion for su mmary 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 m akes clear, the “frame” element is shown by prior art, such as U.S. P atent No. 3,740,238 issued to Graham, which discloses a traditional cookie package with a frame to hold the coo kies, described as prior art in the ’532 patent. And wh ile the patent ma kes 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 sho wing a peel

- back resealable package with a rigid tray for food items ( “such as” discrete items like sushi and can apés)

— namely, t wo 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 non

infringement, but the district court agreed only as to literal infringement, concluding that the record present ed a triable issue as to infringement by equivalence. Inte rcontinental , 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 appl ication, 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)

. S ee Intercontinental , 118 F. Supp. 3d at 1027 n.2.INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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March/April 2002 at 59

– 60 (J.A. 4423

– 24) ; Machinery Update , September/October 2001 at 46

– 47 (J.A. 4708

– 09)

. First

, consider ing independent claims 1 and 34 , the district court concluded that the record put beyond re asonable 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 . T he court specifically stressed that the absen ce 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 Machi nery 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 chara cter of Kraft’s expert’s assert ions 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 asses sment of obviousness as to produce a bottom

- line concl usion 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 d o not overcome Kellogg’s extremely strong prima facie showing that theINTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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 fo und in existing food packaging technology. In fact, nearly all of the elements were found in one Machinery Update article, and the rest already e xisted in cookie packages. Additionally, the tec hnology 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 obv ious in light of the prior art, and [Intercon tinental’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 exis ting 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, t he court granted Kraft’s motion for summary judgment rejecting the challenge. Id. at 1044

– 45. The court e xplained 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 undi sputed that [the 2002] Machinery Update [article] . . . [ was ] presented during reexamination .” I d. 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 co nventionality of the wrapping f ilm, on which the Board came to rely in upholding Kraft’s claims

, was actually aINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 t he 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) (e n banc). Intercontinental , 118 F. Supp. 3d at 1045. 3 Kraft appeals regarding invalidity. Kellogg cross

appeals 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 t hat assertion failed to meet Therasense ’s inequitable

- conduct standard. Intercont inental , 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 pros ecution. Kellogg has forfei ted the point and certainly has not shown error. We do not further address this aspect of the inequitable

- conduct issue.INTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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 s ummary 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. Libe rty Lobby, Inc. , 477 U.S. 242, 248 (1986); Williams v. Brooks , 809 F.3 d 936, 941

– 42 (7th Cir. 2016); Crown Operations Int’l , Ltd. v. Solutia Inc. , 289 F.3d 1367, 1375 (Fed. Cir. 200 2 ). A “genuine” dispute o ver a material fact exists only if it is “reasonable” on the summary

- judgment record to find that fact , and therefore t o reach a verdict, against the movant , taking into account the governing burden of persuasion. Anderson , 477 U.S. at 248 (“ [A] materi al fact is ‘genuine’

. . . if the evidence is such that a

reason able 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 a pplies); see Scott v. Harris , 550 U.S. 372, 378 (2007) ( O n summary judgment, “courts are required to view the facts and draw reasonable inferences in the light most favor able 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 suchINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 “t he 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 obv iousness in an inter partes review). 4 Once the relevant fact issues are resolved

, “[t] he ultimate judgment of obvious ness is a legal determination” for the court. KSR

, 550 U.S. at 427.

“ In KSR, the Supreme Court criticized a rigid a pproach to determining obviousness based on the discl osures 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.INTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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 a ccount 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 [claim ed] improvement is more than the predictable use”

— a “predictable variation”

— “of prior art elements according to their established fun ctions,” 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 dete rmine “whether there was an apparent reason to combine the known e lements 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 el ements 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. Depen ding on the record , summary judgment of inv alidity for obviousness may be appropriate

. The Supreme Court order ed summary judgment in KSR after a careful determination of the facts put beyond genuine dispute by the record, and it explained that “a conclusory affidavitINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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addressing the question of obviousness” does not “exclude the possibility of summary judgment.” Id. at 426. R ather : In considering summary judgment on that que stion the district court can and should take into a ccount 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 co ntent of the prior art, the scope of t he 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 som etimes held summary judgment of obviousness unwarran ted 5 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); Süd

Chemie, 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., LL C , 735 F.3d 1333 (Fed. Cir. 2013); BayerINTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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 d escribing the district court’s opinion. Kraft’s arguments to the contrary are unpersuasive.

1

Kraft turns first to the objective indicia ( secondary consid erations) 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 “repeate dly not[ing] its finding of obv iousness before considering the objective indicia.” Id. at 38, 40, 41. That contention mischaracterizes the district court’s reasoning , which followed a sequence that accord s with KSR

, Graham

, and this court’s precedents.

The district court drew its conc lusion of obviousness only after, not before, considering the objective indicia. Intercontinental , 118 F. Supp. 3d at 1042. B efore revie w-

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 Aer osol & Specialty Container, Inc. v. L td. 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

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ing the objective indicia, the court concluded only that Kellogg had made a “strong prima facie showing of obv iousness. ” 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 d irected 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. , Plan tronics

, 724 F.3d at 1354 (“ [M] otivation to combine may be found explicitly or implicitly in market forces; design incentives; the ‘ interrelated teach ings of multiple p atents’; ‘ any need or problem known in the field of endea vor at the time of invention and ad dressed by the patent’ ; and the back ground 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 o bjective indicia . T he contrary is not shown by the court’s not

uncommon choice of words when conducting the ultimate weighing

, namely, that the objective indicia “do not ove rcome Kellogg’s extremely strong prima facie sho w ing.” Intercontinental , 118 F. Supp. 3d at 1041. See

, e.g. , Ohio Willow , 735 F.3d at 1344 (similar usage); PerfectWeb , 587 F.3d at 133 3 (similar) ; cf. KSR , 550 U.S. at 426 (secondary considerations do not “dislodge” the determination that the claim would have been obvious).

W hile wit hholding a conclusion as to obviousness u ntil considering the objective indicia, the district court did draw the following conclusions before such consideration :INTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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“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 ground ed in common

sense

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

– 93)

. The court then concluded (before discussing objective indicia): “N o reasonable jury could con clude that a person skilled in packaging design would not be motivated to combine these features.” I d.

Kraft contends that objective indicia must be evalua ted before drawing a conclusion about whether a reason able 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 ev idence

. S ee , 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 consi dered 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 L eo 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 Cyclobe nza prine Hydrochloride Extended

- Release Capsule Patent Litig. , 676 F.3d 1063, 1076 (Fed. Cir. 2012) ; see alsoINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 t he district court here did just that. And Kraft cites no authority that requir es consideration of objective indicia as part of the motiv ation- 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 fi nding , 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 invent ions which would not be disclosed or devised but for the i nducement of a patent”). Even with a motivation proved, the record may reveal reasons that , after all, t he 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 fundamentalINTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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 s tatements.

This way of structuring the analysis fulfills the r equirement 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 i t 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 ulti mate obviousness determin ation.
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 : th e 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 add itionally argue to us , certai nly not in a meaningful way, that in this particular case the objective indicia accepted by the district court require a legal conclusion of nonobv iousness if we agree with the district court as to the prior

art 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

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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 predict able use of prior art elements according to established functions, as here, evidence of secondary indicia are frequently deemed inadequate to establish non

obviousness. ”)

.
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 —e xcept the required “frame” that was common for cookies , as shown by Graham ; the a bsence 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. Kraf t 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 obviou sness, there being no meaningful argument that the obje ctive 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.INTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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 o ur 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 Fabr icating Ltd. , 550 F.3d 1356, 1365 (Fed. Cir. 2008)

. What is claimed and described in th e ’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 “Ke llogg personnel rejected the idea of combining a trad itional 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

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But the only evidence in the record about the reason behind th at initial decision is that Kellogg did not possess the requi red 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 combi ning the Re

- Seal It packaging with familiar cookie- package frame s (as in Graham ) was a predictable technological solution to the relevant known market prob lem.

Kraft does not dispute , as its own evidence recited by the district court confirms, that the invention disclosed in its patent help s solve a known problem with cookie pac kaging (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 statement s 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. 17 69

– 75, 6134

– 35
, 6146

– 53 , 6156, 6159

– 60, 6163

– 64 6166

– 67 ). B ut the expert’s
statements in this case are insufficient to support a reasonable contrary finding. Kraft’s expert , especially in the PTO, devoted relativ ely little a tten tion to the Machinery Update articles . He focused instead on the Packaging News articl e, which (unlike the Machinery Update articles) stated that the Re

Seal It packaging described and shown did not use co nventional wrap ping

— the statement that led the Board on reexamination to reverse the examiner’s rejection of Kraft’s claims

. Regardless, t o the extent that his stat ements apply directly or indirectly to the Machinery Update packaging, they rest on misreadings of the articlesINTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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) ( determi ning that expert declaration not based on reasonable inferences from the material record facts amount s 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 peeli ng back the resealable flap. Kraft’s Opening Br. 46

– 52 . But the district court correc tly 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 wel l

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 vari ations,” 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 th e district court meticulously discussed in relation to the teachings of the prior art at issue. Inte rcontinental , 118 F. Supp. 3d at 1038

– 41. On appeal, Kraft makes no meaningful argument about the merits of the district court’s document

- supported readin gs. 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 in dependent claims.INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 , th ose 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, ‘signi ficantly more rigid,’ and ‘not conformable to the food products.’” Kraft ’s Opening Br. 46. But those assert ions 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 dissatisfa ction 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

ma terial about cost: it does not say that the result ing cookie package would cost cookie consumers more than the prior

- art cookie package or that any increase would beINTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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sufficient to deter the combination. The expert’s only point about cost was that the coo kie frame was less e xpensive than the Machinery Update tray. But that point says nothing to the effect that the relevant (cookie) co nsumers would face a cost increase were the cookie makers to use the old frame but replac e the su rrounding wrappers with th e Machinery Update package. On this record, we conclude, there is no basis for ove rturning 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

. Th e “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 a bsence 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 refe rence was before the PTO goes to the weight of the ev idence, and the parties a re of course free to, and generallyINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 co nvincing evidence is required. Id. In any event, this is not a case in which what the PTO concluded makes a diffe rence, for at least two reasons

. First, as the district court explained, the only express analysis of the Machinery Update articles was by the

ex aminer, who rejected the claims. T he Board, which upheld the claims , did not expressly consider those art icles, 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. T here is no basis for attributing to the Board an implied assessment of the Machinery Update articles. T he record before the Board indicates that the Board simply accepted a premise that those articles were redundant of Packaging News

, re quiring no separate consideration. There is no specific PTO determination of nonobviousness based on the pa rticular prior art now at issue. Second, in this case, we think that the showing of o bviousness is sufficiently strong that no PTO contrary determin ation could alter the conclusion about summary judgment. I f 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 conclusi on on the record before it in affirming a summary judgment of obviousness: “ [T] he undisputed facts in this case

—INTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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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

war ranted 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 fin ding 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 senten ce in that article describes the Re

- Seal It packaging as not using“ conventional wrapping film .” J.A. 4713. Kellogg says that the se ntence is a misprint and that Kraft committed inequitable conduct by not so informing the Board.

There is no doubt that t he Packaging Material se ntence was important to the Board’s decision : the Board relied on that sentence to reverse the examiner’s reje ctions of Kraft’s claims. But to prevail, Kellogg had to

9 Neither party has suggested that the unenforce ability (of the patent) is of no consequence if the invalidity ruling (as to selected claims) is affirmed.INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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prove that Kraft, in what it did not say about the sentence tha t 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 r equirement is demanding: the evidence must be “sufficient
to require a finding of deceitful intent in the light of all the circumstances” ; d eceptive intent “ must be the single most reasonable inferenc e able to be drawn from the evidence ”; and “when there are multiple reasonable infer ences that may be drawn, intent to deceive cannot be found.” Therasense , 649 F.3d at 1290

– 91 (internal quot ation marks omitted) ; see Ohio Willow , 735 F.3d at 13 51 ; Ohio Willow Wood Co. v. Alps South, LLC , 813 F.3d 1350, 1358

– 59 (Fed. Cir. 2016).

Unlike Oh io 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 partic ipant’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 stat ement 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, t he district court properly concluded that the record does not

10 The 2001 Machinery Update article, which co ntains a photograph identical to th at 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.INTERCONTINENTAL GRE AT BRANDS v. KELLOGG N

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support an inference of deceptive intent under the Th erasense standard

. Kellogg presents no admission or anything similar i ndicating that an y 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 (“withou t conve ntional 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. 6 427, 6441

. But without more evidence of Kraft’s belief,

one reasonabl e 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 cou nsel provides no suggestion of any awareness of a misprint. See J.A. 6941

– 45

. The same is true as to Kraft’s inve ntor— 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

c orrected, 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 th at th e a lleged misprint was not as obvious as Kellogg claims. The rejections that were then appealed did not involve M a-INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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.

I II 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 GRE AT BRANDS LLC, Plaintiff

- Appellant

v.

KELLOGG NORTH AMERICA COMPANY, KELLOGG USA, INC., KEEBLER COMPAN Y, KEEBLER FOODS COMPAN Y, 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.

______________________

R EYNA , 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 necess arily achieves a legal determ ination 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 r eferred to as “secondary considerations.” See, e.g.

, Graham

v. John Deere Co. , 383 U.S. 1, 17 (1966). I prefer to useINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 di strict 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 t hat affirms the district court’s grant of summary judgment of obviousness. I would find that the district court impro perly found a prima facie case of obviousness before consi dering Kraft’s evidence of objective indicia of non

obviousness. 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 i nfringement. 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 i mportance.”); 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 co nsideratio ns’ and list such considerations as a fourth factual inquiry.”).INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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“sealing layer” between its Markman order and summary judgment order, resulting in a conclusion of non

infringement. 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 i n 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 pr i-

2 An earlier version of § 103 controls this case, but any differences do not impact this analysis.INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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or art and the claims at issue are to be asce rtained; and the level of ordinary skill in the pert inent art resolved. Against this background, the obviousness or nonobviousness of the subject ma tter is determined. Such secondary consider a tions as commercial success , long felt but unsolved needs, failure of others, etc., might be utilized to giv e 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 relevan cy.
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 le nd a helping hand to the judic iary” 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 th e teac hings 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 & Nep hew, Inc. , 688 F.3d 1342, 1367 (Fed. Cir. 2012); In re Cycl obenzaprine , 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

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More recently, the Supreme Court clarified the obv iousness 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 deter mine whether an asserted claim would have been obvious: (1) the scope and content of prior art; (2) the differences between the prior ar t 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 obviousne ss determination

. Id. at 426. Thus, the Supreme Court held that the ass erted claim would have been obvious. Id. 4 To be clear, n othing in Graham or KSR requires courts to analyze the first three Graham factors first, make a prima facie determination of o bviousness , 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 heigh tened standard of proof for objective indicia. I am not aware of any S upreme 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 ev idence. Microsoft Corp. v. i4i Ltd. P’ship , 564 U.S. 91, 95 (2011).INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 indic ia 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 discuss ed objective indicia after the other three Graham factors, we elaborated at length about the ir 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 a lways when present be considered en route to a d etermination 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 ev idence, 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 a ppropriate weight. Along the way, some pieces will weigh more heavily than others, but decision should be held in abeyance, and doubt mai ntained, until all the evidence has had its say.

Id. at 1538

– 39 (citations omitted)

. In light of the district

co urt’s failure to consider the objective indicia, we did so in the first instance. Id. at 1539. Giving “full consider ation” of objective indicia such as alleged commercialINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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success, industry praise, and long

- felt but unmet need, we concluded that the claim s 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 ind icia 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

. F irst , under the hea ding “Prior art,” it described four prior art references. In re Cyclobenzaprine , 794 F. Supp. 2d 517, 534

– 35 (D. D el. 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 determine d 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 obvi ous. I d. at 53 6–37. O nly later , under the heading “Secondary considerations,” did the court analyze the patentee’s objective indicia of non -obviousness. I d. at 537

. Finding that the objective indicia did not “overcome the prima facie case of obviousness,” the district court granted summary judgm ent of obviousness

. Id. at 536

. On appeal, we reversed the district court’s obviou sness determination

. We explain ed that the purpose of objective indicia of non -obviousness is to refute the ev idence of obviousness. Cyclobenzaprine , 676 F.3d at 1077. That a patent owner may submit this evidence on obje ctive indicia does not mean, however, that t he 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 courtINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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for “impos[ing] a burden

- shifting framework in a context in which none exists.” Id. at 1075.

In Cyclobenzaprine , we emphasized our earlier stat ement that “‘evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appea ring to be obvious in light of the prior art was not.’” Id. at 1 075

– 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 hin dsight 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

ev idence 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 obv iousness] analysis using terms such as ‘ov ercome’ 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

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t rial courts have continue d to find a prima facie case of obviousness before turning to objective indicia as rebuttal evidence

. Despite Cyclobenzaprine ’s warnings, burden

shifting remains common among trial courts

. See, e.g.

, Ba yer 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 -o bviousness 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 pr esenting evidence to rebut a prima facie case of obviou sness); Bristol

- Myers Squibb Co. v. Teva Pharm. USA, Inc.

, 923 F. Supp. 2d 602, 675 (D. Del. 2013) (“ With [the a lleged 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 obje ctive indicia of nonobviousness. ”); Hitkansut LLC v. United States , 127 Fed. Cl. 101, 113 (2016) (stating that the patent owner “ incorrectly assumes that secondary consi derations are part of [the alleged infringer’s] burden in proving obviou sness. 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 chall enger’ s prima faci e 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 highlight ed the dangers associa ted with the prima facie framework in Cyclobenzaprine , we have not diligently instruct ed trial courts to abandon t heINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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framework altogether

. 5 T he time to do so has come

. O ne commentator ha s stated that “ Cyclobenzaprine was unr ealistic” 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 o f obviousness under 35 U.S.C. § 103 requires that all evidence relevant to obviousness or nonobviousness be considered, and be considered colle ctively, without resort to presumptions of prima facie obviousness or burden

- shifting.” ) (quotation marks omi tted); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC

, 683 F.3d 1356, 1367 (Fed. Cir. 2012) (Newman, J., di ssenting) (“ 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.”).

O bjective indicia of non

- obviousness must be consi dered 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. T his 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 rel evant, failed to overcome a ‘strong’ prima facie case of obviousness based on the prior art.”).INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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invalidation of innovative patents

. Novo Nordisk , 719 F.3d at 1365 (Newman, J., dissenting).

T he prima facie approach to obviousness jumbles the proper order of operations. “Prima facie” refers to ev idence 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 ”)

. C onsistent with the prima facie approach endorsed by some of our past decisions, the district court here procee ded in four steps: it (1) consider ed the first three Graham factors; (2) ma de a legal prima facie determi nation of obviousness; (3) consider ed objective indicia of non

obviousness; and (4) ma de an ultimate conclusion of obviousness. Steps one a nd three are factual, whereas steps two and four are legal. It i s 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 concl usion 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 obv iousness; and (2) make a legal conclusion o f obviousness.INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 pr ima 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 duri ng prosecution). Rather, the considerations factor in to the initial determination of obviousness. ”)

. I recognize the re are practical limitations of legal

a nalysis and writing. A court’s opinion must be linear and cover only one issue at a time. Typical ly, 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 obviou sness, did not relegate objective indicia into an afte rthought , 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 take n 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 fac ie showing has been made, making it difficult if not impossible for adequate weighing of evidence of obje ctive 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 objectiveINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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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 skil l would have been motivated to combine. In response to Kellogg’s evidence of obviousness, Kraft
p resented at least three objective indicia of non

obviousness . 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 i ncreased four percent due to the invention. J.A. 28. It also presented “evidence of positive consumer feedback” and

s urvey 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 long

felt 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 “compe lling” evidence of objective indicia cannot overcome a prima facie showing . If such significant evidence does not make a difference in th is 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 “ Secon dary Considerations ”

, 16 F LA

. C OASTAL L. R EV

. 1, 23 (2014). I hope so. Cycl obenzaprine was a step in the right direction. We should finish what Cyclobenzaprine started and prohibit primaINTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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facie findings of obviousness prior to consideration of objective indicia of non

- obviousness.

II

. Because it affirms on obviousness grounds, the majo rity 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 i nfringement finding. I would find reversible error in the district court’s claim construction, which led to its finding of no literal infringe ment

. Kraft sued Kellogg for, inter alia , literal infringement of the ’532 patent. Central to Kraft’s infringement alleg ation 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 i ssued a Markman order construing “sealing layer.” T he 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 cou rt 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 di stinct layer does not preclude the sealing layer from being laminated to another layer or layers of the wrapper. One layer of material that is lam inated to another is no less a distinct layer. In other words, “distinct” and “separate” have diffe re nt meanings in this context.

J.A. 45 ( emphases added)

. Neither party disputes that this construction, as expressed in the Markman order, is
correct

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In its subsequent summary judgment order , however, the court construed “sealing layer” differently. The s u mmary judgment order stated that the sealing layer “must be a separate piece of material.” J.A. 32. This constru ction was outcome

- determinative: T he court noted that it grant ed 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.”).

T he 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 mat erial. 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 litera lly infringe d the ’532 patent

. T he 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 cl arify 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 Boa rd 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
t he midstream change in the meaning of “sealing layer

, ” I would reverse the grant of summ ary judgment of no literal infringement. I respectfully dissent from judgment of the majority
to : (1) affirm the district court’s grant of summary jud g-INTERCONTINENTAL GREAT BRANDS v. KELLOGG N

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

.