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Wrigley's Chewing Gum Patent Ruled Invalid: Federal Circuit
Practical Law Legal Update 8-520-0467 (Approx. 5 pages)
Wrigley's Chewing Gum Patent Ruled Invalid: Federal Circuit
by PLC Intellectual Property & Technology
| Published on 25 Jun 2012 • USA (National/Federal) |
In WM. Wrigley Jr. Co. v. Cadbury Adams USA LLC, in a split decision, the US Court of Appeals for the Federal Circuit affirmed a district court decision that Wrigley's patent concerning a chewing gum with a cooling composition was anticipated and obvious based on prior art references. The court unanimously affirmed the district court's decision that Wrigley did not infringe a Cadbury patent concerning a chewing gum with a cooling composition.
Key Litigated Issues
The key issues before the US Court of Appeals for the Federal Circuit in WM. Wrigley Jr. Co. v. Cadbury Adams USA LLC, was whether the district court erred in granting Cadbury's motion for summary judgment that Wrigley's patent for a chewing gum with a cooling composition was anticipated and obvious based on prior art references.
Also on appeal was the district court's ruling of Wrigley's motion for summary judgment of noninfringement of Cadbury's patent for a chewing gum with a cooling composition because Wrigley's product did not literally infringe or infringe under the doctrine of equivalents.
Background
Wm. Wrigley Jr. Co. and Cadbury Adams USA LLC compete in the chewing gum market. Both companies hold patents for chewing gums that provide a cooling sensation when chewed. Cadbury owns US Patent No. 5,009,893 ('893 Patent), which claims a chewing gum with a cooling composition made of combining menthol with the physiological cooling agent WS-3 (and other similar cooling agents described by the recited formula). Wrigley owns US Patent No. 6,627,233 ('233 Patent). Claim 34 claims a chewing gum that combines menthol with the physiological cooling agent WS-23.
Cadbury released its chewing gum based on the '893 Patent first. After Wrigley released its chewing gum based on its '233 Patent, Cadbury reformulated some of its chewing gum products to contain both WS-23 and menthol. Wrigley filed suit in the US District Court for the Northern District of Illinois, claiming that Cadbury's reformulated chewing gum infringed its '233 Patent. Cadbury counterclaimed and accused Wrigley of infringing its '893 Patent. Cadbury sought summary judgment declaring Claim 34 of the '233 Patent invalid for obviousness and anticipation. Wrigley sought summary judgment declaring that it had not infringed the asserted claims of the '893 Patent. The district court granted both parties' respective motions for summary judgment.
The district court granted Wrigley's motion for summary judgment of noninfringement of the '893 Patent because:
- WS-23 does not fall within the class of claimed cooling agent compounds and therefore does not literally infringe the '893 Patent.
- The '893 Patent narrowly claimed the combination of N-substituted-p-menthane carboxamides and menthol and implicitly excluded other carboxamides, including WS-23.
The district court granted Cadbury's motion for summary judgment and held that the '233 Patent is invalid on grounds of anticipation and obviousness. The court held that the patent is:
- Anticipated by US Patent No. 5,688,491 (Shahidi patent).
- Obvious in view of US Patent No. 5,698,181 (Luo patent) and an article written by Dr. M. A. Parrish.
Both parties appealed.
Outcome
In its June 22, 2012 opinion, a majority of the Federal Circuit, Circuit Judge Bryson and District Judge Fogel, affirmed the district court's decision that Claim 34 of Wrigley's patent was invalid as both anticipated based on the Shahidi patent and obvious based on the Lou patent and Parrish article. Circuit Judge Newman dissented.
The Federal Circuit unanimously affirmed the district court's finding that Wrigley's chewing gum product did not infringe Cadbury's patent either literally or by the doctrine of equivalents.
Invalidity of Wrigley's Patent
Anticipation
The majority rejected Wrigley's argument that the Shahidi patent does not anticipate its patent because the Shahidi patent:
- Does not disclose the claim limitations in the combination recited in Claim 34 of the '233 Patent.
- Would not have enabled a person of ordinary skill in the art to derive the combination recited in Claim 34 without undue experimentation.
The majority found that the Shahidi patent specifically discloses WS-23 in a group of three particularly preferred cooling agents" and menthol as one of 23 "most suitable flavoring agents" listed. The majority distinguished its decisions in other cases (for example, Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005)) where a prior art reference discloses a genus from those in which it discloses a number of species as part of a list. The court also rejected Wrigley's argument that its decision in Impax Laboratories, Inc. v. Aventis Pharmaceuticals(545 F.3d 1312 (Fed. Cir. 2008)) stands for the proposition that a prior art reference is not anticipatory if one of ordinary skill in the art would be required to pick items from two lists of components to assemble the invention. In this case, the court found that the number of categories and components in the Shahidi patent was not so large that the combination of WS-23 and menthol would not be immediately apparent to one of ordinary skill in the art. It specifically noted that the Shahidi patent disclosed:
- Component amounts within the ranges claimed in Claim 34 of the '233 Patent.
- The use of both WS-23 and menthol in chewing gum.
Judge Newman's dissenting view was that the lists of ingredients in the prior art reference, which included many categories of additional ingredients, could be combined in over a million different ways and therefore was not specific enough to anticipate that particular combination.
Obviousness
The majority also rejected Wrigley's argument that the combination of WS-23 and menthol resulted in cooling beyond what would have been predicted by one of ordinary skill in the art.
The majority also found that a sufficient nexus between the claimed invention and Wrigley's evidence of secondary considerations of commercial success and Cadbury's copying of its product did not exist. The majority found that:
- A Cadbury study comparing Wrigley's and Cadbury's products concluding that Wrigley's product had superior flavor and cooling features does not show that the success of Wrigley's product was directly attributable to the menthol and WS-23 combination. The court found that the study also noted other differences like higher sweetener levels, more encapsulated sweeteners, higher gum base and filler levels and more expensive ingredients that could have contributed to Wrigley's success.
- Wrigley had not shown evidence suggesting that the novel combination of WS-23 and menthol is what led Cadbury to copy Wrigley's chewing gums. In particular, the court noted that in the chewing gum market, the parties have a practice of typically copying developments by their competitors.
In her dissent, Judge Newman disagreed with the majority on both the proper way to analyze secondary considerations and the evidence offered by Wrigley. She believed that the district court inappropriately shifted the burden of proof from Cadbury to Wrigley to rebut a prima facie case of obviousness with the evidence of secondary considerations rather than analyzing secondary considerations as part of the prima facie case.
Noninfringement of Cadbury's Patent
The Federal Circuit unanimously affirmed the district court's decision granting Wrigley's motion for summary judgment of noninfringement. On appeal, all parties agreed that the claimed cooling agents in Cadbury's patent do not include WS-23. Therefore, the court found that Wrigley's products are plainly not within the literal scope of the '893 Patent. The court also agreed with the district court that WS-23 is not an equivalent of WS-3 for purposes of the '893 Patent because Wrigley offered evidence that the inventors knew that WS-3 and WS-23 were potentially interchangeable but drafted the patent claims to only include a class of carbamoxides that did not include WS-23.
Practical Implications
The court's decision provides useful insight on the approach to take when evaluating:
- Anticipation where the claimed components are found in lists of ingredients in the anticipatory reference.
- Obviousness where the patent owner offers evidence of secondary considerations of commercial success and copying.
Counsel attacking patent validity based on anticipation must show that the number of categories and components listed in the prior art reference is not so large that one of ordinary skill in the art would need to engage in undue experimentation to practice the claimed combination. In this case, the lack of undue experimentation may be shown where the anticipatory reference discloses each of the claimed components in the claimed ranges for the claimed use.
This case is also noteworthy because of the Federal Circuit's decision affirming the district court's obviousness determination:
- Despite the patentee's evidence of secondary considerations of nonobviousness where the patentee failed to establish a nexus between the secondary considerations and the claimed invention.
- By asserting that the claimed invention is obvious to try since the majority determined that there were "a finite number of identified, predictable solutions" to the problem solved by the claimed invention.