White v. H.J. Heinz Company , 640 F. App'x 930 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SCOTT A. WHITE,
Appellant
v.
H.J. HEINZ COMPANY,
Appellee
______________________
2015-1176
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,241.
______________________
Decided: February 19, 2016
______________________
KEITH JUDE GRADY, Polsinelli PC, St. Louis, MO,
argued for appellant. Also represented by MARK THOMAS
DEMING, Chicago, IL.
PETER BRANKO PEJIC, Greenblum & Bernstein, P.L.C.,
Reston, VA, argued for appellee. Also represented by
ARNOLD TURK, MICHAEL J. FINK, JILL BROWNING.
______________________
Before LOURIE, MOORE, and WALLACH, Circuit Judges.
2 WHITE v. H.J. HEINZ CO.
WALLACH, Circuit Judge.
Appellant Scott A. White appeals the decision of the
United States Patent and Trademark Office’s (“USPTO”)
Patent Trial and Appeal Board (“PTAB” or “Board”), on
inter partes reexamination, finding claims 1–19 of U.S.
Patent No. 8,231,026 (the “’026 patent”) unpatentable as
anticipated or obvious. See H.J. Heinz Co. v. White, No.
2014-004561 (P.T.A.B. Aug. 28, 2014) (J.A. 2–9). For the
reasons set forth below, this court affirms.
BACKGROUND
I. The ’026 Patent
The ’026 patent is entitled “Condiment Container”
and relates to “a condiment container configured to be
carried by a standard drink holder to enable condiments
to be securely carried in place in a vehicle during travel.”
’026 patent col. 1 ll. 7–9.
Independent claim 1 is illustrative and recites:
A condiment container for carrying various
condiments, the condiment container com-
prising:
a container formed with a continuous side-
wall with varying heights and forming a
predetermined shape closed on one end
forming a bottom floor and open on an op-
posing end defining an open end forming a
container portion for receiving a condi-
ment, said container portion formed with a
form factor that enables said container to
be received in a standard vehicle drink
holder by way of a shoulder portion, said
bottom floor formed to provide a deep end
of said condiment container and a shallow
end of said condiment container;
WHITE v. H.J. HEINZ CO. 3
said shoulder portion comprising one or more
extending shoulders extending outwardly
from said continuous sidewall adjacent
said open end configured to vertically sup-
port said container portion in said stand-
ard vehicle drink holder; and
a cover for covering said open end of said
container portion, the cover attached to
the open end of said container by an adhe-
sive, the cover is peelable from the deep
end of the container, the cover is totally
removable from the deep end of the con-
tainer to access the deep end of the con-
tainer, and the cover is removable from the
shallow end of the container to squirt the
condiment from the shallow end of the con-
tainer.
Id. col. 5 ll. 25–49 (emphases added). Independent claims
14 and 18 are similar to independent claim 1, but do not
recite limitations relating to the shape and configuration
of the container. See id. col. 5 ll. 19–33, 43–59.
II. The Prior Art: Selker
U.S. Patent Application No. 2001/0045374 (“Selker”)
“discloses a single-use sealed package assembly for food
products and medicines with dual distinct functions of
containing a substance, and dispensing and applying it
evenly, neatly, and sanitarily using a handle.” Selker ¶ 9.
Figure 1 depicts “a view of the filled and hermetically
sealed package,” id. ¶ 12, and Figure 2 depicts “a top view
of the unsealed container,” id. ¶ 13.
4 WHITE v. H.J. HEINZ CO.
Id. figs.1, 2. This sealed container is formed “when the
base 102 is sealed with the lid 104 using a conventional
adhesive 112 deposited on the flange 110. During assem-
bly, the adhesive 112 is applied to either the exterior
circumferential flange 110 or the lid 104.” Id. ¶ 18.
III. Proceedings
In 2012, Appellee H.J. Heinz Company (“Heinz”) re-
quested an inter partes reexamination of claims 1–19 of
the ’026 patent. 1 In its reexamination request, Heinz
asserted: (1) claims 14–18 were unpatentable as antici-
pated by the teachings of Selker; (2) claims 1–5, 8–13, and
19 were unpatentable as obvious in view of the combined
teachings of Selker and U.S. Patent Application No.
2005/0161471 (“Grenda”); and (3) claims 6–7 were un-
patentable as obvious in view of the combined teachings of
either (i) Selker, Grenda, and U.S. Patent No. 5,429,262
(“Sharkey”) or (ii) Selker, Grenda, and U.S. Patent No.
6,076,700 (“Manges”).
1 Mr. White and Heinz are also involved in an in-
fringement action in the U.S. District Court for the
Northern District of Illinois regarding the ’026 patent.
White v. H.J. Heinz Co., No. 12-cv-06074 (N.D. Ill. filed
Aug. 1, 2012). That case is currently stayed pending final
decision in this proceeding.
WHITE v. H.J. HEINZ CO. 5
In June 2013, the Examiner issued a Right of Appeal
Notice following her Action Closing Prosecution, which
held claims 1–22 of the ’026 patent unpatentable as
anticipated or obvious. 2 See J.A. 687–95 (Action Closing
Prosecution). Mr. White appealed the Examiner’s find-
ings to the PTAB. J.A. 750. The PTAB affirmed the
Examiner’s rejection of claims 14–18 under 35 U.S.C.
§ 102(b) (2006) and claims 1–13, and 19 under 35 U.S.C.
§ 103(a). Mr. White timely appealed. This court has
jurisdiction to review the PTAB’s Final Decision under 28
U.S.C. § 1295(a)(4)(A) (2012).
DISCUSSION
I. Anticipation
A. Standard of Review and Legal Standard for Anticipa-
tion
“[A]nticipation is a question of fact, including whether
an element is inherent in the prior art,” In re Gleave, 560
F.3d 1331, 1334–35 (Fed. Cir. 2009) (citation omitted),
and is reviewed for substantial evidence, In re Rambus
Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “A finding is sup-
ported by substantial evidence if a reasonable mind might
accept the evidence to support the finding.” K/S Himpp
v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1364 (Fed. Cir.
2014) (citation omitted). “If the evidence in [the] record
will support several reasonable but contradictory conclu-
sions, we will not find the Board’s decision unsupported
by substantial evidence simply because the Board chose
one conclusion over another plausible alternative.” In re
Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).
2 In January 2013, Mr. White added claims 20–22
by amendment. During the reexamination, the Examiner
found these claims unpatentable. In September 2013, Mr.
White canceled claims 20–22 by amendment.
6 WHITE v. H.J. HEINZ CO.
A reference is anticipatory under 35 U.S.C. § 102(b)3
if “the prior art reference . . . disclose[s] each and every
feature of the claimed invention, either explicitly or
inherently.” Eli Lilly & Co. v. Zenith Goldline Pharm.,
Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006) (citation omit-
ted). “[A]nticipation by inherent disclosure is appropriate
only when the reference discloses prior art that must
necessarily include the unstated limitation . . . .”
Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d
1364, 1373 (Fed. Cir. 2002) (citing Cont’l Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991)).
“Inherency, however, may not be established by probabili-
ties or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not suffi-
cient.” Cont’l Can Co., 948 F.2d at 1269 (internal quota-
tion marks and citations omitted).
B. The PTAB Did Not Err in Its Finding of Anticipation
for Claims 14–18
Mr. White argues Selker does not anticipate the re-
movable cover limitation of independent claim 14 or
dependent claims 15–18 because “Selker would have
necessarily included a stop that would prevent total
removal of the cover.” Appellant’s Br. 18. Mr. White
argues: (1) the PTAB erred in finding Selker does not
disclose an inherent stop limitation preventing complete
removal of the container cover, id. at 24–32, and (2) the
PTAB erred in its applying the law of inherent anticipa-
tion, id. at 23, 26. We address these arguments below.
3 In passing the Leahy-Smith America Invents Act
(“AIA”), Congress amended § 102. See Pub. L. No. 112-29,
§ 3(b), 125 Stat. 284, 285–87 (2011). However, because
the application that led to the ’026 patent was filed before
March 16, 2013, the pre-AIA § 102(b) applies. See id.
§ 3(n)(1), 125 Stat. at 293.
WHITE v. H.J. HEINZ CO. 7
1. Substantial Evidence Supports the PTAB’s Determina-
tion that Selker Does Not Inherently Disclose a Stop
The PTAB affirmed the Examiner’s finding that “in
Selker, [t]here is not any structure disclosed that prevents
the cover from being peeled beyond the handle portion
and that the user stops the cover at the desired location.”
J.A. 5 (internal quotation marks and citation omitted).
The PTAB determined “a preponderance of the evidence
support[ed] the finding that Selker does not disclose any
kind of stop. Selker neither depicts in any drawing, nor
describes in any textual disclosure, structure that might
prevent the cover from being removed from both ends of
Selker’s package.” J.A. 5. The PTAB further stated “[i]n
fact . . . , Selker specifically discloses reliance upon the
user to refrain from peeling the cover back from either
end of the package any more than necessary to make the
condiment available for use as the user desires.” J.A. 5–6
(emphasis added).
Mr. White argues the PTAB erred in finding that
Selker does not inherently disclose a structural stop.
Appellant’s Br. 28. Mr. White contends “the Selker con-
tainer necessarily has a stopping point [between the bowl
and the knife] that prevents the cover from being totally
removable.” Id. at 13. Mr. White notes that he provided
“expert testimony [that] conclusively establishe[d] that
Selker necessarily included a stop, or that it otherwise
would not function as intended.” Id. at 28. In support of
this argument, Mr. White relies on analysis from his
expert, Thomas J. Dunn. Specifically, Mr. White repro-
duced Mr. Dunn’s annotated versions of Figures 3 and 4
from Selker, where arrows were added to “demonstrate
the presence of the [alleged] stopping point.” Id. at 29; see
also J.A. 253 (Mr. Dunn’s expert declaration). Mr. Dunn
calculated that “Selker intends that eight-fifteenths (57%)
of the lid remain[s] attached to the base for either use.”
J.A. 253 ¶ 27. The image, as presented in Mr. White’s
appeal brief, is provided below.
8 WHITE v. H.J. HEINZ CO.
Appellant’s Br. 29 (reproducing Figures 3 and 4 from
Selker, with arrows added).
Mr. White’s amalgamation of these figures and analy-
sis is misplaced. We have consistently found “patent
drawings do not define the precise proportions of the
elements and may not be relied on to show particular
sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222
F.3d 951, 956 (Fed. Cir. 2000); see also In re Wright, 569
F.2d 1124, 1127 (CCPA 1977) (“Absent any written de-
scription in the specification of quantitative values,
arguments based on measurement of a drawing are of
little value.” (citation omitted)).
Mr. White further argues that “a physical stop or lock-
up seal [i.e., adhesive] is necessarily present because
Selker would otherwise be susceptible to over-peeling that
would render it inoperable.” Appellant’s Br. 30. Without
a stop, Mr. White contends, Selker would not work for its
intended purpose. Id. at 14 (“A stop . . . is fundamental to
Selker’s operation.”). As such, a person having ordinary
skill in the art (“PHOSITA”) would know a consumer
would be prone to over peeling the lid from the container
and would have “turned to well-known adhesives that
WHITE v. H.J. HEINZ CO. 9
form ‘easy-peel’ sealants at one temperature and ‘lock-up’
seals that provide a stop at higher temperatures.” Id. at
31. Mr. White contends “the absence of extensive discus-
sion about the stop is of no moment given that the imple-
menting technology—such as heat-sealed bumps or ‘lock
up’ seals—was well-known and regularly used in the art.”
Id. at 15. Based on this, Mr. White concludes that Selker
“necessarily discloses a stop that would prevent its lid
from being totally removable.” Id. at 32.
Both Mr. White and Heinz submitted declarations de-
tailing their respective positions on why a stop was or was
not present in Selker. See generally J.A. 249–58 (Mr.
Dunn’s expert declaration on behalf of Mr. White), 481–87
(Brian Wagner’s expert declaration on behalf of Heinz).
These experts opined on what a PHOSITA would infer
from Selker regarding what a “conventional adhesive”
was. See Selker ¶ 18 (“lid 104 using a conventional adhe-
sive 112”). Mr. White’s expert, Mr. Dunn, contends such a
person would infer the use of an adhesive that would
create a permanent stop in the middle of the packaging.
See J.A. 253 ¶ 29 (“Packaging material options are known
for specifying ‘easy-peel’ sealants on lidding that provide
[sic] can also deliver ‘lock-up’ seals. . . . It necessitates
that lid material with the uniform sealant layer experi-
ence higher sealing temperatures in the one fifteenth of
the lid length intended to provide a ‘stop peel’ function
than used in the ‘peel’ areas.”). Heinz’s expert, Mr. Wag-
ner, contends such a person would infer the use of a single
adhesive, which would not create a permanent stop. See
J.A. 486 ¶ 25 (“Given that [Selker] discloses the use of
only one adhesive to the exterior circumferential flange
110 or the lid 104, one of ordinary skill in the art would
understand that the adhesive would behave in the same
way throughout and, thus, the lid 104 could be capable of
being detached or removed from all sections of the con-
tainer 102.”). While the Examiner and the PTAB did not
explicitly cite these expert reports, it is evident the Exam-
10 WHITE v. H.J. HEINZ CO.
iner and the PTAB weighed these arguments and accord-
ed more weight to Heinz’s expert.
Substantial evidence supports the PTAB’s determina-
tion that Selker does not disclose a structural stop limita-
tion. As described above, Selker’s figures and express
textual teachings and expert declarations provided the
Examiner and the PTAB with substantial evidence to
reach its determination. Based on the record during
reexamination, the Examiner concluded, and the PTAB
agreed, that there was “not any structure disclosed that
prevents the cover from being peeled beyond the handle
portion. The Selker disclosure states that the user stops
the cover at a desired location.” J.A. 703 (emphasis added)
(Examiner’s Action Closing Prosecution); see J.A. 5–6.
Finally, Mr. White agues the PTAB erred in finding
the cover of Selker to be completely removable based on
its finding that Selker did not disclose any structural stop
limitations. Appellant’s Br. 23. He contends “substantial
evidence does not support finding Selker discloses a
totally removable cover.” Id. at 26 (capitalization omit-
ted). Mr. White cites Figures 2 and 5 of Selker to argue
the “figures do not disclose the total removal of a cover
from a once-sealed container. Rather, they explicitly
disclose ‘an unsealed container,’ i.e., a container to which
a cover has not been applied.” Id. at 24 (quoting Selker
¶¶ 13, 16). Figure 2 discloses “a top view of the unsealed
container,” Selker ¶ 13, and Figure 5 discloses “a top view
of the unsealed container showing a serrated edge along
the handle,” id. ¶ 16. Mr. White argues that Selker knew
how to describe a cover that had been removed, as in
Figures 3 and 4, because it explicitly said so.
As demonstrated above, substantial evidence supports
the PTAB’s finding that Selker anticipates claims 14–18
of the ’026 patent. The PTAB relied on its determination
that Selker did not disclose a structural limitation and
found this “allow[ed] for complete removability of the
WHITE v. H.J. HEINZ CO. 11
cover from the container.” J.A. 6. While Mr. White
argues a PHOSITA would understand Selker differently,
the PTAB’s decision to find anticipation of the ’026 patent
is supported by substantial evidence. See Jolley, 308 F.3d
at 1320 (“[T]he possibility of drawing two inconsistent
conclusions from the evidence will not render the Board’s
findings unsupported by substantial evidence.” (internal
quotation marks and citation omitted)). Accordingly, the
PTAB did not err in its determinations.
2. The PTAB Did Not Err in Its Inherent Anticipation
Analysis
Mr. White next argues that, even if the PTAB correct-
ly found that Selker does not inherently disclose a stop,
the PTAB committed legal error when it asked him “to
demonstrate Selker inherently disclosed the absence of
the totally removable limitation.” Appellant’s Br. 26. Mr.
White contends that in order for Selker to anticipate the
’026 patent claim limitation of “totally removable,” it
“must have ‘necessarily’ disclosed a totally removable
cover.” Id. (quoting In re Montgomery, 677 F.3d 1375,
1380 (Fed. Cir. 2012)). He explains “[i]t is not enough
that Selker likely or probably discloses a totally remova-
ble cover . . . .” Id. (citation omitted). Mr. White also
contends the PTAB “improperly shift[ed] the burden of
demonstrating inherency” because “it was the Examiner’s
and the Board’s responsibility to show the limitation was
necessarily present.” Id. at 23 (citation omitted).
Mr. White’s argument is contrary to the PTAB’s find-
ings. Here, the PTAB determined that “Selker neither
depicts in any drawing, nor describes in any textual
disclosure, structure that might prevent the cover from
being removed from both ends of Selker’s package.” J.A.
5. Rather, the PTAB determined that Selker expressly
“disclose[d] reliance upon the user to refrain from peeling
the cover back from either end of the package any more
than necessary.” J.A. 5–6.
12 WHITE v. H.J. HEINZ CO.
The PTAB did not err in its analysis of inherent antic-
ipation. Inherent anticipation requires that the “prior
art . . . necessarily include the unstated limitation.”
Transclean Corp., 290 F.3d at 1373 (citing Cont’l Can Co.,
948 F.2d at 1268–69). Here, the PTAB found Selker did
not disclose a stop, which was supported by express
disclosures in Selker that cautioned the user to “refrain
from peeling the cover back . . . any more than necessary.”
J.A. 6. Under substantial evidence review, there is suffi-
cient evidence to support the PTAB’s factual determina-
tion with respect to inherent anticipation. See Rambus,
694 F.3d at 46 (“Anticipation is a question of fact and we
uphold the Board’s factual determinations unless they are
not supported by substantial evidence.” (citation omit-
ted)).
II. OBVIOUSNESS
A. Standard of Review and Legal Standard for Obvious-
ness
A patent claim is invalid “if the differences between
the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have
been obvious at the time the invention was made to a
[PHOSITA] to which said subject matter pertains.” 35
U.S.C. § 103(a); 4 see also KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406–07 (2007) (discussing obviousness). Obvi-
ousness is a question of law that is reviewed de novo,
based on underlying findings of fact reviewed for substan-
tial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000). These underlying factual inquires include: (1)
4 In passing the AIA, Congress amended § 103. See
Pub. L. No. 112-29, § 3(c), 125 Stat. 284, 287–88. Howev-
er, because the application that led to the ’026 patent was
filed before March 16, 2013, the pre-AIA § 103 applies.
See id. § 3(n)(1), 125 Stat. at 293.
WHITE v. H.J. HEINZ CO. 13
“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 the pres-
ence of (4) secondary considerations of nonobviousness
such “as commercial success, long-felt but unsolved needs,
[and] failure of others.” Graham v. John Deere Co. of
Kan. City, 383 U.S. 1, 17–18 (1966), cited with approval in
KSR, 550 U.S. at 399. Evidence of copying is also consid-
ered when evaluating secondary considerations of nonob-
viousness. Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l,
Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).
“The objective evidence of nonobviousness . . . may in
a given case be entitled to more weight or less, depending
on its nature and its relationship to the merits of the
invention.” W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1555 (Fed. Cir. 1983). Additionally, any
“commercial success of the product must be due to the
merits of the claimed invention beyond what was readily
available in the prior art.” J.T. Eaton & Co. v. Atl. Paste
& Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (citation
omitted).
B. PTAB Did Not Err in Its Obviousness Determination
for Claims 1–13 and 19
Mr. White argues the PTAB’s finding of obviousness is
based on its erroneous determination that Selker does not
teach a structural limitation. He contends the PTAB did
“not rely on Grenda, Sharkey, and Manges to teach a
‘totally removable cover’ for a dual-function container as
claimed in the ’026 patent because it erroneously under-
stood Selker to teach that limitation.” Appellant’s Br. 32
(citation omitted). As such, Mr. White contends the
PTAB’s “determination that claims 1–13 and 19 are
obvious based on Selker in view of Grenda, Sharkey, or
Manges is unsupported and should be reversed.” Id.
These arguments are raised in one paragraph of Mr.
White’s appeal brief and they rely on his previous argu-
14 WHITE v. H.J. HEINZ CO.
ment that the PTAB erred in its determination of what
Selker teaches. The arguments—underdeveloped in any
event—need not be addressed because we affirm the
PTAB’s findings regarding Selker. Mr. White does not
otherwise develop his nonobviousness argument, instead
relying entirely on secondary considerations.
As the PTAB explained, Mr. White relied “on second-
ary consideration evidence [that] addresses what has
already been determined to be taught by Selker, so the
evidence relating to the nonobviousness of those features,
as opposed to the entirety of what is claimed in claim 1,
[is] inapt.” J.A. 7. On appeal, Mr. White fails to present
any developed arguments explaining how the asserted
secondary considerations address elements of the inven-
tion other than those taught by Selker. On this record,
we cannot say the PTAB erred in its determination that
Mr. White’s secondary considerations failed to establish
nonobviousness.
CONCLUSION
We have considered Mr. White’s remaining argu-
ments and find them unpersuasive. Accordingly, the
decision of the United States Patent and Trademark
Office’s Patent Trial and Appeal Board is
AFFIRMED