Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC

• Decision Date: 24 August 2012
• Docket Number: Nos. 2011–1140,2011–1150.,s. 2011–1140
• Citation: 683 F.3d 1356,103 U.S.P.Q.2d 1130
• Parties: WM. WRIGLEY JR. CO., Plaintiff–Appellant, v. CADBURY ADAMS USA LLC, Defendant–Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

683 F.3d 1356

103 U.S.P.Q.2d 1130

WM. WRIGLEY JR. CO., Plaintiff–Appellant,

v.CADBURY ADAMS USA LLC, Defendant–Cross Appellant.

Nos. 2011–1140, 2011–1150.

United States Court of Appeals,

Federal Circuit.

June 22, 2012.

Rehearing and Rehearing En Banc Denied Aug. 24, 2012.

Paul H. Berghoff, McDonnell Boehnen Hulbert & Berghoff, LLP, of Chicago, Illinois, argued for plaintiff-appellant. With him on the brief was James V. Suggs. Also on the brief was Patricia K. Schmidt, K & L Gates LLP, of Chicago, Illinois. Of counsel were Alan L. Barry and Jason A. Engel.

James M. Bollinger, Troutman Sanders LLP, of New York, New York, argued for defendant-cross appellant. With him on the brief were Laura E. Krawczyk and Suraj K. Balusu. Of counsel were Timothy P. Heaton and Douglas D. Salyers.

Before NEWMAN and BRYSON, Circuit Judges, and FOGEL, District Judge. ¹

Opinion for the court filed by Circuit Judge BRYSON. Concurring in part and dissenting in part opinion filed by Circuit Judge NEWMAN.

BRYSON, Circuit Judge.

Wm. Wrigley Jr. Co. and Cadbury Adams USA LLC compete in the consumer market for chewing gum. This case involves chewing gum that provides a cooling sensation when chewed. Historically, chewing gum makers have achieved that cooling sensation (known as “physiological cooling”) by adding menthol to their products. Menthol, however, has disadvantages, including a strong peppermint flavor and bitterness in high concentrations. During the 1970s and 1980s, Wilkinson–Sword Ltd. attempted to develop physiological cooling agents that would not have the drawbacks of menthol. The result was two such coolants, which were released under the trade names “WS–3” and “WS–23.” Wrigley and Cadbury each own a patent that generally claims chewing gum containing a combination of menthol and one of those coolants. Cadbury owns U.S. Patent No. 5,009,893 (“the '893 patent”), which claims a chewing gum that combines menthol with WS–3. Wrigley owns U.S. Patent No. 6,627,233 (“the '233 patent”), which claims a chewing gum that combines menthol with WS–23.

The application that matured into Cadbury's '893 patent was filed in July 1989. Claim 1, one of two independent claims of the '893 patent, recites:

1. A chewing gum composition capable of providing long-lasting, breath freshening perception without bitterness comprising a gum base, a sweetener and a cooling composition comprising menthol and an N-substituted-p-menthane carboxamide of [a specific formula.]

WS–3 is an N-substituted-p-menthane carboxamide and one of the compounds described by the formula recited in claim 1. The claim, therefore, reads on chewing gum that combines WS–3 (and other N-substituted-p-menthane carboxamides of the recited formula) and menthol. The patent's specification discloses that although the cooling effect of both menthol and WS–3 were known in the prior art, the combination of the two “results in an unexpected heightened cooling sensation in edible products.” Cadbury introduced into the market a variety of chewing gum products that embody the claims of the '893 patent. Those products did well in the marketplace.

After Cadbury introduced its WS–3/menthol chewing gum, Wrigley introduced a chewing gum that combined menthol and WS–23. That product was the commercial embodiment of claim 34 of Wrigley's '233 patent. The application for the ' 233 patent was filed in March 2000. Claim 34 recites:

34. A chewing gum composition comprising:

a) about 5% to about 95% gum base;

b) about 5% to about 95% bulking and sweetening agent; and

c) about 0.1[%] to about 10% flavoring agent wherein the flavoring agent comprises N–2,3–trimethyl–2–isopropyl butanamide and menthol.

WS–23 is the trade name for N–2,3–trimethyl–2–isopropyl butanamide.

Following the introduction of Wrigley's WS–23/menthol chewing gum, Cadbury reformulated some of its chewing gum products. Cadbury's reformulated chewing gum contained both WS–23 and menthol. Wrigley then filed suit against Cadbury in the United States District Court for the Northern District of Illinois, accusing Cadbury's reformulated chewing gum of infringing the '233 patent. Cadbury counterclaimed, accusing Wrigley's chewing gum of infringing Cadbury's '893 patent.

Wrigley and Cadbury each moved for summary judgment on a number of issues. 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.²

The district court granted Wrigley's motion for summary judgment of noninfringement of the '893 patent. The court first noted that WS–23 is not an N-substituted-p-menthane carboxamide, so a combination of WS–23 and menthol would not literally infringe the '893 patent. The court further found that the '893 patent narrowly claimed the combination of N-substituted-p-menthane carboxamides and menthol, and that it implicitly excluded other carboxamides, including WS–23. The court therefore held that a combination of WS–23 and menthol did not infringe the '893 patent under the doctrine of equivalents.

Addressing Cadbury's summary judgment motion, the district court concluded that claim 34 of the '233 patent was invalid on grounds of anticipation and obviousness. The court held claim 34 to be anticipated by U.S. Patent No. 5,688,491 (“Shahidi”), and obvious in view of U.S. Patent No. 5,698,181 (“Luo”) and an article written by Dr. M.A. Parrish (“Parrish”).

Shahidi is directed to a variety of oral compositions, each of which contains xylitol and copper bis-glycinate. The compositionsinclude chewing gum as well as other compositions, such as toothpaste, mouth rinses, and lozenges. Shahidi lists several categories of components that can be included in the compositions. They include both “essential” and “optional” (or “nonessential”) components; certain of the optional components are noted as “preferred.” A “cooling agent or combination of cooling agents” is such a “preferred nonessential” component. Some of the categories further identify certain specific components as “preferred.” Within the category of cooling agents, Shahidi discloses WS–3 and WS–23 as two of three “particularly preferred cooling agents.” Shahidi also discloses menthol as one of 23 listed flavoring agents that can be used in the claimed compositions.

The district court found that Shahidi discloses every limitation of claim 34. In making that determination, the district court relied on a patent, incorporated by reference into Shahidi, which provided a range for the amount of WS–23 to include in a composition. That range is a subset of the range for the amount of flavoring agent recited in claim 34. The court further ruled that Shahidi would have disclosed to one of ordinary skill in the art how to create a cooling chewing gum with component amounts in the ranges claimed by claim 34. The court therefore held that Shahidi anticipated claim 34.

Luo discloses chewing gum that achieves a cooling effect by combining WS–3 and menthol, and it also discloses combining N-substituted-p-menthane carboxamides with menthol. Parrish, which was published in 1987, describes WS–3 and WS–23 as potential replacements for menthol in a variety of applications, including chewing gum. Parrish highlights that both WS–3 and WS–23 have “high cooling activity with no side-effects.” Parrish does not distinguish the cooling activity of WS–3 and WS–23, although it notes that WS–3, but not WS–23, had been listed as “generally regarded as safe” by the Flavor and Extract Manufacturers Association (“FEMA”). That approval, referred to as “FEMA–GRAS listing,” was subsequently extended to WS–23.

The district court held that, in light of the disclosures of Luo and Parrish, the only novel aspect of claim 34 was the combination of menthol and WS–23. Although Parrish teaches substituting WS–23 for menthol, rather than combining the two, the court found that Parrish would have made it obvious to substitute WS–23 for WS–3 in the combination of menthol and WS–3 that was disclosed in Luo. The court also ruled that the evidence of secondary considerations proffered by Wrigley was not sufficient to overcome the strong showing of obviousness and establish that claim 34 was “an invention appearing to have been obvious in light of the prior art [that] was not.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.Cir.1983).

I

On appeal, Wrigley argues that Shahidi does not anticipate claim 34 for two reasons. First, Wrigley argues that while Shahidi discloses all the claim limitations found in claim 34, it does not disclose them in the combination recited in that claim.³ Second, and relatedly, Wrigley arguesthat Shahidi would not have enabled a person of ordinary skill in the art to derive the combination recited in claim 34 without undue experimentation.

For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim, “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.Cir.2008). For example, in Net MoneyIN, this court held that an “Internet payment system” was not anticipated by a prior art reference that disclosed all the components of the invention, because the reference disclosed two separate payment protocols, each of which contained only a subset of the components claimed in the patent at issue. Id. at 1371. Therefore, the reference did not “prove prior invention of the thing claimed.” Id.

In this case, by contrast, Shahidi envisions using WS–23 and menthol in a single product. While Shahidi discloses a number of different combinations of cooling and flavoring elements, one of them is the combination of menthol, which Shahidi identifies as one of the “most suitable” flavoring agents, with WS–23, which Shahidi identifies along with WS–3 as among a group of three “particularly preferred cooling agents.” Based on the disclosure of the combination of...