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

• Citation: 631 F.Supp.2d 1010
• Decision Date: 26 June 2009
• Docket Number: No. 04-cv-0346.,04-cv-0346.
• Court: United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
• Parties: WM. WRIGLEY JR. COMPANY, a Delaware corporation, Plaintiff, v. CADBURY ADAMS USA LLC, a Delaware limited liability company, Defendant.

631 F.Supp.2d 1010

WM. WRIGLEY JR. COMPANY, a Delaware corporation, Plaintiff, v. CADBURY ADAMS USA LLC, a Delaware limited liability company, Defendant.

No. 04-cv-0346.

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

June 26, 2009.

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Michael J. Abernathy, Alan L. Barry, Christopher James Fahy, Eric P. Martin, Jason Alexander Engel, Patricia Kane Schmidt, Robert M. Barrett, Wendy J. Sawyer, K & L Gates LLP, Sarah Lynn Taylor, Bell, Boyd & Lloyd LLC, William Francis Dolan, Jones Day, Chicago, IL, Abbott Laboratories, Abbott Park, IL, for Plaintiff.

Dean Scott Rauchwerger, James F. Smith, Joshua Avinoam Aldort, Clausen Miller P.C., Steven P. Mandell, Mandell Menkes LLC, Brendan J. Healey, Tribune Company, Peter James McCarthy, William J. Harte, Ltd., Chicago, IL, Bryan J. Vogel, Christine A. Pepe, Christopher S. Pennisi, David C. I., James M. Bollinger, Jason A. Lief, Philip L. Hirschhorn, Sandhya E. Kattakuzhy, Stephen B. Judlowe, Morgan, Lewis & Bockius, Dennis J. Mondolino, McDermott Will & Emery LLP, New York, NY, Kenneth E. Crowell, Morgan Lewis & Bockius LLP, Gillette, NJ, Paul M. Morgan, Varnum, Riddering, Schmidt & Howlett, Kalamazoo, MI, for Defendant.

MEMORANDUM OPINION AND ORDER

ROBERT M. DOW, Jr., District Judge.

Before the Court are several pending motions for summary judgment. Defendant Cadbury Adams USA LLC ("Cadbury") moved for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, seeking to establish the invalidity of Claim 34 of U.S. Patent No. 6,627,233 (the "'233 patent"), owned by Plaintiff, Wm. Wrigley Jr. Co. ("Wrigley"), on grounds of anticipation and obviousness.¹ Wrigley moved for partial summary judgment of non-infringement of U.S. Patent No. 5,009,893 (the "'893 patent"), owned by Cadbury [209]. Cadbury then filed a cross-motion for literal infringement by Wrigley of the '893 Patent and for validity of the '893 patent [230]. The case is about cooling agents in chewing gum and mint products—specifically, Cadbury's use of "WS-3" in its products and Wrigley's use of "WS-23" in its products. Each party claims that the other infringed its intellectual property rights.

For the following reasons, Cadbury's motion for summary judgment of invalidity is granted, Wrigley's motion for partial summary judgment of non-infringement [209] is granted, and Cadbury's cross-motion for literal infringement [230] is granted in part and denied in part.

I. Facts²

The Court takes the relevant facts primarily from the parties' respective Local Rule ("L.R.") 56.1 statements.³ The Court takes no position on whose version of disputed factual matters is correct. Local Rule ("L.R.") 56.1 requires that statements of facts contain allegations of material fact, and that the factual allegations be supported by admissible record evidence. See L.R. 56.1; Malec v. Sanford, 191 F.R.D. 581, 583-85 (N.D.Ill.2000). The Seventh Circuit teaches that a district court has broad discretion to require strict compliance with L.R. 56.1. See, e.g., Koszola v. Bd. of Educ. of the City of Chicago, 385 F.3d 1104, 1109 (7th Cir.2004); Curran v. Kwon, 153 F.3d 481, 486 (7th Cir. 1998) (citing Midwest Imps., Ltd. v. Coval, 71 F.3d 1311, 1317 (7th Cir.1995) (collecting cases)).

Where a party has offered a legal conclusion or a statement of fact without offering proper evidentiary support, the Court will not consider that statement. See, e.g., Malec, 191 F.R.D. at 583. Additionally, where a party improperly denies a statement of fact by failing to provide adequate or proper record support for the denial, the Court deems admitted that statement of fact. See L.R. 56.1(a), (b)(3)(B); see also Malec, 191 F.R.D. at 584. The requirements for a response under Local Rule 56.1 are "not satisfied by evasive denials that do not fairly meet the substance of the material facts asserted." Bordelon v. Chicago Sch. Reform Bd. of Trs., 233 F.3d 524, 528 (7th Cir.2000). In addition, the Court disregards any additional statements of fact contained in a party's briefs but not in its fact statements. See, e.g., Malec, 191 F.R.D. at 584 (citing Midwest Imps., 71 F.3d at 1317).

A. The '233 Patent

U.S. Patent No. 6,627,233 (the "'233 patent") is assigned to Wrigley. Cadbury SOF ¶ 6. Wrigley filed its patent application on March 16, 2000, and the patent issued on September 30, 2003. Id. The '233 patent relates to chewing gums that contain physiological cooling agents and methods for producing those chewing gums. Cadbury Mem. Ex. A, '233 Patent, at 1:12-15. The relevant claim at issue in this case from the '233 patent is Claim 34. Cadbury SOF ¶ 4. Claim 34 reads as follows:

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.

Cadbury Mem., Ex. A, '233 Patent, at 56:41-47.

During the claim construction phase of the case, Judge Zagel defined several key terms of the '233 patent in a Memorandum Opinion and Order before this case was transferred to this Court.⁴ 5/18/07 Mem. Op. [192], 500 F.Supp.2d 922. The percentages of the ingredients refer to the "percent by weight of the chewing gum composition." Id. at 928. The term "N-2,3-trimethyl-2-isopropyl butanamide" refers to "a carboxamide formula commonly known as WS-23." Id. Judge Zagel defined the term "menthol" to be "menthol, as a distinct and separate substance, as distinguished from being present in mint oils." Id. at 936.

B. Prior Art Use of Carboxamides and Menthol in Chewing Gum Products

The following facts detail the prior art relating to Cadbury's argument that Wrigley's '233 patent is invalid. Prior to the '233 patent, chewing gums had been known to contain between 5 and 95 percent gum base, between 5 and 95 percent bulking and sweetening agents, and between 0.1 and 10 percent flavoring agents. Wrigley's Resp. ¶ 12. The combination of WS-23 and menthol is the novel feature of Claim 34. Id.

Menthol, which is a component of peppermint oil, is a well-established flavoring agent in chewing gum and confectionaries. Cadbury SOF ¶ 22. Menthol provides a cooling sensation when it interacts with nerve receptors in the mouth. Id. However, while menthol imparts a desirable cooling sensation, at higher concentrations it also can impart a bitter flavor. Id. Thus, gum makers have run into difficulties when trying to create cooler chewing gums by using high concentrations of menthol. Id.

To address this problem, researchers at Wilkinson-Sword Co. researched other compounds that could be used as cooling agents in place of menthol. Cadbury Mem., Ex. W, Dr. M.A. Parrish, Market Warms to Physiological Cooling Agents, MFG. CHEMIST (Feb.1987) (the "Parrish article"), at 1. Researchers discovered 1200 compounds that produce a cooling effect without the bitterness of menthol. Id. From these 1200 compounds, two were selected for commercialization based upon several parameters, including "low toxicity, cooling activity together with general efficacy and acceptability, low odour and taste, low volatility, stability in use, and cost." Id. These two compounds were Nethyl-p-menthane-3-carboxamide (WS-3) and N-2,3-trimethyl-2-isopropyl butanamide (WS-23). Id. The Parrish article, which was published in 1987, described the two compounds. Id.; Cadbury SOF ¶ 24. In the article, WS-3 and WS-23 are described as "compounds of high `quality'" in that they are "characterized by high cooling activity with no side-effects such as tingling, stinging or burning sensations." Cadbury Mem., Ex. W, Parrish Article, at 1. Chewing gum was listed as a product in which WS-23 and WS-3 could be used, and the amounts suggested for use were between 0.5 and 1 percent by weight. Id. The Patent Office did not consider the Parrish article during the prosecution of the '233 patent. Cadbury SOF ¶ 24.

Wilkinson-Sword previously had obtained patents on the cooling agents WS-3 and WS-23: the former was included in U.S. Patent No. 4,136,163 to Watson et al. (the "Watson patent"), which issued on January 23, 1979 and covered a class of N-substituted-p-menthane carboxamides, including WS-3. The latter was included in U.S. Patent No. 4,230,688 to Rowsell et al. (the "Rowsell patent"), which issued on October 28, 1980 and covered a class of acyclic carboxamides, including WS-23. Wrigley Resp. ¶ 26.

Cadbury also applied for and obtained two patents that preceded the '233 patent, both of which dealt with cooling agents in chewing gums: they are the '893 patent and the Luo patent. (Recall that the '893 patent is also the subject of Wrigley's motion for summary judgment of non-infringement.) Cadbury first obtained the '893 patent, which was directed toward edible compositions that contained "a cooling agent comprising [menthol]⁵ and an N-substituted-p-menthane carboxamide." Cadbury Mem., Ex. DD, '893 Patent, Cover. Cadbury filed the '893 patent application on July 17, 1989, and the patent issued on April 23, 1991. Id. The '893 patent describes a chewing gum composition comprising "a gum base, a sweetener, and a cooling composition comprising menthol and an N-substituted-p-menthane carboxamide" as a preferred embodiment of the invention. Id. at 2:42-48. The '893 patent lists WS-3 as a preferred N-substituted-p-menthane carboxamide. Id. at 4:66-67.

The second pertinent Cadbury patent is U.S. Patent No. 5,698,181 to Luo (the "Luo patent"), and it was directed to chewing gum compositions that contained a cooling agent comprising menthol and an N-substituted-p-menthane carboxamide. Cadbury Mem., Ex. N, Luo Patent, Cover. Cadbury filed the Luo patent application on May 11, 1995, and the Luo patent issued on December 16, 1997. Id. The Luo patent describes a formulation of chewing gum comprising a gum base, a...