PROST, REYNA (D), TARANTO
September 7, 2017
Brief summary: DC grant of SJ for obviousness and no inequitable conduct affirmed.
Summary: Kraft appealed grant of SJ to Kellogg of invalidity for obviousness of the asserted claims of Kraft’s US 6,918,532 relating to resealable food packages. The ‘532 patent was reexamined, the reexamination certificate being issued for original claims 1-25 and new claims 26-67. In granting SJ for obviousness, the DC found: “In fact, nearly all 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.” And the DC was not convinced by Kraft’s secondary consideration evidence commercial success tied to the patent-claimed packaging, industry praise, and copying by Kellogg), “though substantial…do not overcome Kellogg’s extremely strong prima facie showing”. The FC panel explained that under KSR “[o]ne of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of the invention a known problem for which there was an obvous solution encompassed by the patent’s claims. The FC panel also wrote that “[i]dentification 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” (Graham, US 1966), and “[e]ven with a motivation proved” secondary considerations can provide reasons why the claims would not have been obvious (Plantronics, FC 2013 (“objective indicia can be important evidence of obviousness, sometimes even the most important evidence”); Demaco, FC 1988; KSR (“secondary considerations do not ‘dislodge’ the determination that a claim would have been obvious”)). It found “no error in the sequence of steps the [DC] took in arriving” at its conclusion since it considered the secondary considerations after considering whether Kellogg had presented a prima facie case of obviousness. Kraft unsuccessfully argued that the DC did not provide “‘explicit and clear reasoning providing some rational underpinning’ for its invocation of common sense in its motivation-to-combine analysis” and that “there was more than one reasonable inference about whether a relevant skilled artisan had” the required motivation (e.g., “One company’s temporary decision about an equipment investment is not sufficient to defeat the otherwise-compelled inference…It was a ‘known problem’ for cookie consumers that [existing] packages did not satisfactorily provide” the packages “consumers wanted”.) Kraft also argued Kellogg’s burden was higher because the same prior art was considered during examination (Sciele, FC 2012), but the FC panel concluded “this is not a case in which what the PTO concluded makes a difference” because the Board did not “expressly consider” one of the articles proffered by Kellogg that was considered by the examiner and “the showing of obviousness is sufficiently strong that no PTO contrary determination could alter the conclusion”. Judge Reyna’s dissent (in part) argued that “[t]here should be no prima facie rule or test in the obviousness inquiry” and “the burden of persuasion should not shift from the challenger to the patent holder afer a legal determination of obviousness has already been made.” Thus, the DC grant of SJ for obviousness was affirmed.
Kellogg alleged Kraft engaged in inequitable conduct during the reexamination but the DC disagreed (“There is no evidence that the attorney knowingly failed to identify the inconsistency between the two articles.” Therasense, FC 2011), and Kellogg appealed. The FC panel disagreed since “the deposition of Kraft’s counsel provides no suggestion of any awareness of a misprint” and “one reasonable inference on the record-especially given Kellogg’s burden of persuasion” (show a “specific intent to mislead or deceive the PTO” (In re Rosuvastatin, FC 2012) “is that Kraft did not believe that there was a misprint.” Thus, the DC grant of SJ for no inequitable conduct was affirmed.