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

• Citation: 118 F.Supp.3d 1022
• Decision Date: 03 August 2015
• Docket Number: No. 13 C 321,13 C 321
• Parties: Intercontinental Great Brands LLC, Plaintiff, v. Kellogg North America Company, Kellogg USA Inc., Keebler Company, Keebler Foods Company, and Kellogg Sales Company, Defendants.
• Court: U.S. District Court — Northern District of Illinois

118 F.Supp.3d 1022

Intercontinental Great Brands LLC, Plaintiff,

v.Kellogg North America Company, Kellogg USA Inc., Keebler Company, Keebler Foods Company, and Kellogg Sales Company, Defendants.

No. 13 C 321

United States District Court, N.D. Illinois, Eastern Division.

Signed August 3, 2015

Jacob D. Koering, Freeborn & Peters LLP, Chicago, IL, Jan M. Conlin, Katie Crosby Lehmann, Melissa A. Goodman, Michael V. Ciresi, Ciresi Conlin LLP, Jeffrey Sullivan Gleason, Robins, Kaplan, Miller & Ciresi L.L.P., Minneapolis, MN, for Plaintiff.

Richard Daniel Harris, Francis A. Citera, James J. Lukas, Jr., Matthew Joshua Levinstein, Robbie R. Harmer, Greenberg Traurig, LLP, Kevin John O'Shea, Ice Miller, Chicago, IL, for Defendants.

MEMORANDUM OPINION AND ORDER

MATTHEW F. KENNELLY, District Judge:

Intercontinental Great Brands LLC (IGB, formerly Kraft Foods Global Brands LLC) sued Kellogg North America Company, Keebler Foods Company, and affiliates (collectively referred to as Kellogg), alleging that Kellogg manufactures products that infringe U.S. patent number 6,918,532 B2 (the '532 patent). Kellogg has moved for summary judgment of non-infringement and invalidity of the '532 patent. IGB has moved for summary judgment on Kellogg's defense of unenforceability and various validity-related points. For the reasons stated below, the Court grants IGB's motion in part, denies Kellogg's motion claiming non-infringement, but grants summary judgment of invalidity in favor of Kellogg, finding the '532 patent obvious under 35 U.S.C. § 103.

Background

Both parties market cookies in resealable containers. IGB sells Oreos and Chips Ahoy, among other cookies, in its resealable container (referred to as the Snack 'n Seal), and Kellogg sells Sandies and Simply Made, among others. IGB owns a patent for its package, titled "Resealable Food Container," which was issued July 19, 2005.¹ The patent lists Kraft Foods Holdings, Inc., as the patent's exclusive licensee.

In October 2007, Regath HB, a patent holding company for Macfarlane Group Sweden, a company that produces resealable packages, requested an ex parte reexamination of the '532 patent. The U.S. Patent and Trademark Office (PTO) granted the request. In April 2010, the PTO issued a rejection of the '532 patent claims. IGB (then Kraft Foods Global Brands LLC) appealed the decision to the Board of Patent Appeals and Interferences. The Board reversed, finding that the claims were patentable. On October 25, 2011, the PTO issued a reexamination certificate that left the original claims in the '532 patent intact and added claims 26 through 67.

Kellogg developed its resealable container in 2010. Its package was designed to "circumvent[ ] the Kraft patent while maintaining similar properties." Pl.'s Ex. 19 at KELLOGG010055. IGB sued Kellogg on June 16, 2013, alleging that its cookie container infringes multiple claims of the '532 patent, including independent claims 1 and 34, dependent claims 3, 4, 6, 26, 32, 33, and 42 (which depend from claim 1), and dependent claims 35, 36, 37, and 39 (which depend from claim 34).

Independent claim 1 of the '532 patent reads:

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.

'532 Patent, col. 5:29–51. Claim 34 reads:

34. A polygonal shaped food container comprising:

a frame defining the polygonal shape of the container, the frame having a bottom, sides and an upper periphery portion, the frame containing a food product comprised of discrete food product articles;

an overwrap encasing the frame, the overwrap forming an overwrap top, overwrap bottom and overwrap sides of the container over the frame and defining the top, bottom and sides of the container, the overwrap top having at least a pair of facing overwrap perimeter portions inward of the periphery portion of the frame;

the overwrap top having a reclosable access opening defined at least in part by the perimeter portions, the 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 the reclosable access opening, the upper periphery portion of the frame supporting the overwrap perimeter so that the overwrap perimeter portions are in a plane generally parallel to the bottom of the frame, the overwrap perimeter portions capturing the frame in the encasing overwrap to guard against unintentional removal of the frame through the opening from the encasing overwrap; and

a sealing layer adhesively sealed to the overwrap top around the recloseable access opening, the sealing layer including a starter portion located near a side of the overwrap top which can be grasped by a user, the sealing layer being releasable when the starter portion is pulled in a direction away from the side to in turn pull and thereby release at least a portion of the sealing layer to provide hand access to the recloseable access opening and recloseable against the overwrap top to seal the access opening when the sealing layer is moved back against the overwrap top.

Ex Parte Reexam. Certif., col. 1:57–2:24.

On September 22, 2014, the Court entered an order construing certain disputed claim terms. The parties then cross-moved for summary judgment. The Court heard argument on the parties' summary judgment motions on June 26, 2015.

Discussion

A party is entitled to summary judgment if it shows that there is no genuine issue of material fact and it is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). On a motion for summary judgment, the Court views the record in a light most favorable to the non-moving party and draws all reasonable inferences in that party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment is inappropriate "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248, 106 S.Ct. 2505. On cross-motions for summary judgment, the Court assesses whether each movant has satisfied the requirements of Rule 56. See Cont'l Cas. Co. v. Nw. Nat'l Ins. Co., 427 F.3d 1038, 1041 (7th Cir.2005). "As with any summary judgment motion, we review cross-motions for summary judgment construing all facts, and drawing all reasonable inferences from those facts, in favor of the nonmoving party." Laskin v. Siegel, 728 F.3d 731, 734 (7th Cir.2013) (internal quotation marks omitted).

A. Obviousness

Kellogg has moved for summary judgment of invalidity on the grounds that the patent is anticipated under 35 U.S.C. § 102 and is obvious under 35 U.S.C. § 103. IGB has moved for summary judgment on, among other things, Kellogg's defense that the claims do not contain a sufficient written description under 35 U.S.C. § 112. Because the Court concludes that the asserted claims are obvious, the Court will not discuss anticipation or written description.²

Patent claims are invalid as obvious under 35 U.S.C. § 103(a) when the differences between the subject matter sought to be patented and the prior art are such that the invention would have been obvious to a person having ordinary skill in the art at the time the invention was made. 35 U.S.C. § 103(a) (2006). The Court must consider four factors to determine whether claims are invalid as obvious: (1) the "scope and content of the prior art;" (2) "differences between the prior art and the claims at issue;" (3) "the level of ordinary skill in the pertinent art;" and (4) "[s]uch secondary considerations as commercial success, long felt but unsolved needs, failure of others." Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). A prima facie case of obviousness is established if the prior art references "[i]n combination ... teach all of the limitations of the claims" and a person of ordinary skill in the art would combine the elements to create the invention. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1303–04 (Fed.Cir.2010). Even if the prior art combines to support a prima face case of obviousness, the Court must also consider objective evidence of non-obviousness—"secondary considerations," as they are called. Id. at 1305.

As the Supreme Court has stated, "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). A patent is invalid if a person of ordinary skill in the art can implement a predictable variation of existing prior art or if he would recognize that a technique used to improve one product would improve similar products in the same way. Id. at 417, 127 S.Ct. 1727. Because "[t]he ultimate...