Finding that the prior art taught all of the claim elements and provided a motivation to combine, the US Court of Appeals for the Federal Circuit concluded that a challenged patent claim would have been obvious notwithstanding significant objective indicia to the contrary. Intercontinental Great Brands LLC v. Kellogg North America Co. et al., Case Nos. 15-2082; -2084 (Fed. Cir., Sept. 7, 2017) (Taranto, J) (Reyna, J, dissenting). In a dissenting opinion, Judge Reyna questioned the propriety of the prima facie obviousness framework applied by the lower court and sanctioned by the majority.

Intercontinental Great Brands (formerly Kraft) owned patents for cookie packaging in which the allegedly novelty was a top portion that could be peeled back and resealed with an adhesive strip to preserve the cookies’ freshness. Intercontinental asserted the patents against Kellogg. Kellogg asserted invalidity based on obviousness, arguing that the only difference between the claimed packaging and standard cookie packaging was the resealable top, which existed in prior art packaging. Intercontinental premised its rebuttal to obviousness largely on objective indicia of industry praise, long-felt need and copying.

Applying a prima facie obviousness analysis, the district court first determined that the individual elements were known in the prior art and that a skilled artisan would have had a motivation to combine them. Having found a prima facie case for obviousness, the district court reviewed the secondary considerations of record and concluded that the evidence was insufficient to overcome the strong evidence of obviousness.

Intercontinental appealed, arguing that the lower court failed to properly consider the objective indicia before reaching a conclusion on obviousness. Specifically, Intercontinental took the position that objective indicia should be considered as part of the motivation to combine analysis.

The Federal Circuit affirmed the district court, including its prima facie framework. The Court confirmed that objective indicia are important considerations for obviousness (or unobviousness) and may indeed be the most important factors in certain cases. Nevertheless, the Court made clear that Supreme Court of the United States precedent, such as KSR Int’l v. Teleflex (2007), allows for a flexible obviousness analysis, and that consideration of objective indicia can occur after the motivation to combine analysis, so long the court considers them before reaching an ultimate conclusion on obviousness.

Judge Reyna dissented, arguing that “[t]here 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.”

Practice Note: Judge Reyna’s dissent cites post-KSR Federal Circuit cases, primarily In re Cyclobenzaprine (2012), for the proposition that there should be no burden shifting: “all evidence relevant to obviousness or nonobviousness [must] be considered, and considered collectively.”