By Jason Rantanen
WM. Wrigley Jr. Co. v. Cadbury Adams USA LLC (Fed. Cir. 2012) Download 11-1140-1150
Panel: Bryson (author), Newman (dissenting-in-part), Fogel
Chewing gum is a big business, with billions of dollars of sales each year. Wrigley and Cadbury are the two dominant players and compete closely in the "cooling sensation" gum market. This lawsuit involved patent assertions by each company: Cadbury contended that Wrigley infringed its Patent No. 5,009,893, which claims chewing gum containing a combination of menthol and a coolant known as WS-3, while Wrigley contended that Cadbury infringed its Patent No. 6,627,233, which claims chewing gum containing a combination of menthol and a coolant known as WS-23.
The district court proceedings were essentially a wash: Cadbury obtained summary judgment of anticipation and obviousness of the '233 patent, while Wrigley obtained summmary judgment of noninfringement of the '893 patent. Both parties appealed.
Anticipation: Anticipation of the '893 was based on a prior art patent referred to as "Shahidi." Shahidi discloses a variety of oral compositions such as toothpaste and chewing gum, containing several categories of components, including those that are "essential," "optional," and "preferred." Included in the preferred nonessential categories were WS-3 and WS-23, with menthol being listed as one of 23 flavoring agents that can be used in the claimed composition.
Relying on Impax Laboratories v. Aventis Pharmaceuticals, 545 F.3d 1312 (Fed. Cir. 2008), Wrigley argued that Shahidi could not anticipate because it would require a PHOSITA to pick items from two lists of components in order to assemble the invention, and thus did not disclose all of the limitations of the claim arranged or combined in the same way as in the claim. Rejecting the extension of Impax to this case, the CAFC concluded that the disclosure in Shahidi was sufficient. The ultimate question instead was "whether the number of categories and components in Shahidi was so large that the combination of WS-23 and menthol would not be immediately apparent to one of ordinary skill in the art." Slip Op. at 8-9. The majority concluded that it was not.
Judge Newman disagreed with the holding of anticipation. "The purported anticipatory reference does not show this combination, and does not present so short and selective a list of these ingredients as to warrant an inference that their combination was already known." Slip Op. at 28. Rather, the contents of Shahidi's lists "can be combined in over a million possible combinations." Id. at 29.
- For those who are interested in looking at the disclosure, a copy of Shahidi is available here: Download US5688491
Obviousness: The CAFC also affirmed the district court's grant of summary judgment of obviousness, a determination that largely turned on whether combining menthol and WS-23 produced an unexpected effect. The court concluded that there was not: the prior art had already revealed an "enhanced breath-freshening effect" between menthol and WS-3, and pointed to characteristics shared by the WS-3 and WS-23 that suggested that they would likely have similar effects when ingested. Given these disclosures, the court concluded that effects above and beyond those of the combination of menthol and WS-3 needed to be shown:
to show that the cooling effect of the combination of WS-23 and menthol was unexpected, Wrigley needed to demonstrate that the results were unexpected to a significant degree beyond what was already known about the effect of combining WS-3 and menthol.
Slip Op. at 11 (emphasis added). The court concluded that such evidence was not present. The Cadbury study that Wrigley presented, while touting the superior cooling features of Wrigley's products, involved tested products that differed in ways other than just the coolant. Likewise, the court concluded that no nexus was demonstrated between the commercial success of Wrigley's products containing menthol and WS-23 and the specific combination of menthol and WS-23.
Judge Newman again disagreed, concluding that "[t]he record is rife with" evidence of nexus between the success of Wrigley's chewing gums covered by the claim and the specific combination of menthol and WS-23. Slip Op. at 24. Judge Newman further criticized the majority and district court for concluding that Cadbury had established a prima facie case of obviousness, then shifting the burden to the patent holder.
Infringement by Equivalents: The court unanimously affirmed the district court's ruling of noninfringement, concluding that the claims were narrowly drafted to WS-3 and the interchangeability with WS-23 was forseeable.
Practice Convention: In the majority opinion, Judge Bryson consistently refers to the patents-in-suit by their abbreviated numbers and the prior art patents, such as Shahidi, by the first inventor's name. Providing an easy way for the reader to distinguish between the two types of patents in this way adds clarity to his writing. As far as I am aware this is not currently a generally accepted convention but it seems like a good stylistic practice for attorneys writing briefs.
Addendum: One commentator pointed out that Judge Bryson is not the only Federal Circuit judge to apply this convention. Judge Moore also consistently refers to prior art references by name rather than number, although in my small sample of three I noted that a third judge does not.
Nice article, thanks for the information.
Darn all those menthols and coolants! I prefer to chew Willy Wonka’s gums. LOL.
“Why is Newman allowed to get away with having so many dissents?”
Being allowed to disagree with the majority is so un-American.
“Our law should follow that approach…”
A better plan is for all the Europe sympathizers to just go to their utopia and leave the rest of us alone. Expedia is showing tickets from SFO to LHR starting at just over $1300. It even shows one to Frankfurt for $582.
Why is Newman allowed to get away with having so many dissents?
Thank you.
Thanks. I’ve fixed that.
“If our patent laws worked properly, the applicationat issue would have not issued as a patent“.
Corrected.
Our law should follow that approach, and under that approach Newman would be correct in her dissent. Shahidi is not an anticipating reference. Its a kitchen sink disclosure.
If our patent laws worked properly, the patent at issue would have died at the district court on summary judgment as an obvious piece of sxxt.
In Europe the issue is very clear. Shahidi would not be an anticiapating reference, and to the above wd issue, one would not be able to draft a claim from the patent at issue to the combination of choice. That would result in a new matter objection. So you see Europe is very consistent as to how it approaches anticipation and written description. Our law should follow that approach, and under that approach Newman would be correct in her dissent. Shahidi is not an anticipating reference. Its a kitchen sink disclosure.
Joe Barrera
Looks like majority was right.
Dennis, end of 2nd paragraph under *Anticipation*, I think you meant to say “The majority concluded that it was *not*,” i.e., the number of categories was not so large that the combination would not have been apparent.
Excellent fact matrix for the majority, and excellent too for the dissent position. According to the dissent, but not the majority, on anticipation, for a menthol gum, picking one cooling composition from a preferred provider list of three is novel. Fun. On obviousness, Newman’s para on her page 4 that begins: The evidence established that (1)……(2) makes startling reading. Just as in medicine, one hopes that obviousness decisions in patent law are “evidence-based” (rather than founded on little more than gut feeling).
I’m now even more interested to find out if this dispute has a European dimension.
Can anybody tell me if there is a parallel dispute in Europe and, if so, identify the patent in suit. With these litigants, and the amount of chewing that goes on in Europe these days, I imagine this patent dispute is occurring there too.
I ask because this CAFC Decision works through points of novelty and obviousness that are everyday issues in EPO opposition cases, so that it will be instructive for me to read the majority and the dissent.
I wonder whether the facts of the case, and the dissent, render it suitable for en banc review. Mind you, that’s only theoretical, if the loser sees no point in battling on.
From Shahidi, at Col 4 ln 14-32:
Col 7 ln 13-26:
“The compositions of the present invention can also incor porate a flavoring agent or a mixture of compatible flavoring agents Such flavoring agents are well known in the art Those flavoring agents most suitable for use in the present invention include anise cassia clove dihydroanethole estragole eucalyptol menthol methyl salicylicate peppermint oxanone phenyl ethyl alcohol sweet birch eugenol spearmint cinnamic aldehyde menthone alpha ionone ethyl vanillin limonene isoamylacetate benzaldehyde thymol ethylbutyrate and many others a These additional or further optional flavoring agents com cu 1 ni u in ui prise from about 0.01 to about 5.0 preferably from about 0.05 to about 2.0 and most preferably from about 0 1 to about 1.0 of the herein described composition.”
” She must wonder how the other patrons thought of all the different food combinations on their plates.”
There’s millions of possibilities! How did they know what to get???!?!?!?!?!!?!!?!!? There were no signs suggesting why to pick one or the other or in what combination!!!!!!!!!!!!
Just as I predicted, reading Newman’s dissent makes it seem less objectionable.
She alleges that the majority is making a key factual finding in error, but fails to specifically point that out for them.
She finds:
“The Parrish reference mentions both WS-3 and WS-23 as replacements for menthol, but does not show the combination of either WS-3 or WS-23 with menthol. ”
But the majority interprets that ref to not only show WS-3 and 23 as replacements for menthol, but as part of a class of cooling compounds. Newman fails to make this distinction apparent to everyone very well by failing to call attention to her differing view and how it is different. I cannot be bothered to review the reference myself.
She then takes a different view of what the evidence shows re the unexpected results and a gain in market share. I would go into it all but it’s too complicated for me to bother to explain where the judges differ. Bottom line, Newman thinks the evidence shows the invention is the greatz and the other judges think the evidence shows the invention was only one of many things that made a product great. Considering the way the majority lays things out, I have to take their side.
She also ducks back to the old “knock down” evidence of non-obviousness argument. Where she really likes a supposed rigid rule that states that if secondary factors are present then a prima facie case is apparently never established, or at least is not established until the decision maker has considered those secondary factors. I see her quotation from the caselaw, but that sounds like bunk to me. To deny the existence of a prima facie case because of the mere existence of secondary factors is to err. I believe Newman has a fundamental misunderstanding of what a prima facie case is and indeed what those words in latin mean. It just means there appears to be a case of obviousness on the face of things, not that obviousness has been determined. In other words, look for a prima facie case, if one exists then evaluate the evidence and make a determination on the ultimate question of obviousness, otherwise simply end the inquiry without even bothering with the evidence because there is no need. One need not think of the evidence as evidence to “knock down” the prima facie case, in order for this to be the correct ordering of the inquiry. One simply must reserve ultimate judgement on the obviousness question until after evaluating the effects of the evidence. A prima facie case is not an ultimate determination of obviousness and is only what need kick off that whole chain of events. The majority rolls right on through as proper.
In other words, she’s showing signs of falling back into being an old school spawn of the Oetikertards that appeared prior to that case that laid the whole series of events out not a year ago. I swear, I don’t understand how people can be missing how the inquiry goes, it is so simple. How does a mere examiner understand this better than you guys? Newman is quite smart, underneath all her patent protectionism.
Finally I should point out that I think she misunderstands what her colleagues are saying about there being : no evidence of any nexus between the success of Wrigley’s chewing gums covered by Claim 34 and the specific combination of menthol and WS-23.
Indeed, she seems to think that any evidence of unexpected results of any sub-embodiment covered by the broad recitation of the invention, that is, what the majority calls the “specific” combination of menthol and WS-23, would be sufficient. Blatantly if you’re going to claim broad and you want nexus between the claim and the secondary factors you’ve got to have evidence of there being nexus between the entire scope of the claim and not simply one sub-embodiment having a nexus with the secondary factor. Which is what the majority is trying to tell her but she seems oblivious to.
“My colleagues’ finding that nexus was not established,
maj. op. at 13, is hard to fathom”
It actually isn’t that hard to fathom Newman, it’s just hard for you to understand because you’re not hearing what they’re telling you.
I do admit thought it would be nice of the good judges to lay out in an infographic all the information relating to their holding. Maybe that would help some people understand.
You’re right – I picked a few of Judge Moore’s opinions at random and she consistently uses this convention. Not all the judges do – a recent Judge Lourie opinion, for example, contains this passage:
The unsubstituted butoxy is disclosed and claimed in Otsuka’s earlier U.S. Patent 4,734,416 (the “′416 patent”), which the parties agree is prior art to the ′528 patent. The ′416 patent issued on March 29, 1988, and expired on March 29, 2005. Entitled “Pharmaceutically Useful Carbostyril Derivatives,” the ′416 patent teaches a broad genus encompassing “approximately nine trillion compounds.”
Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1286 (Fed. Cir. 2012)
Judge Bryson consistently refers to the patents-in-suit by their abbreviated numbers and the prior art patents, such as Shahidi, by the first inventor’s name. … As far as I am aware this is not currently a generally accepted convention but it seems like a good stylistic practice for attorneys writing briefs.
Perhaps I’m missing something, but this convention is not new or particular to Judge Bryson. Just to pick a random example: Transocean v. Maersk (written by Judge Moore in 2010) includes “Transocean asserted claims 10-13 and 30 of U.S. Patent No. 6,047,781 (’781 patent) … The district court held that the claims would have been obvious over two references: U.K. patent application GB 2 041 836 to Horn (Horn) and U.S. Patent No. 4,850,439 to Lund (Lund).”
Jason: Providing an easy way for the reader to distinguish between the two types of patents in this way adds clarity to his writing.
Indeed. Well done. He should have filed for a patent on that technique.
One does not need to chew on this very long to realize that it it is not much of a stretch, and no bubble.
Judge Newman again disagreed, concluding that “[t]he record is rife with” evidence of nexus between the success of Wrigley’s chewing gums covered by the claim and the specific combination of menthol and WS-23. Slip Op. at 24.
I’ll read that on the plane, when the air sickness bag is handy.
Any thoughts on Judge Newman’s comments on copying?
in judge Newman’s world she would prefer that we have a million references/disclosures all disclosing one species each in order to have disclosed what the reference managed to disclose in a paragraph or two.
Ah, but in an art where there are millions of patents, how is a person of ordinary skill to know which one to rely on for a teaching of the claimed invention? After all, choosing the one patent that clearly anticipates is surely based in hindsight.
I’d love to see Newman in a buffet-style restaurant. She must wonder how the other patrons thought of all the different food combinations on their plates.
One final thing on the Newman dissent, she goes on and on about how this reference doesn’t teach this particular combination of elements. But if we turned around and that reference were the instant patent app and the applicant tried to amend into that specific species you can bet your bottom dollar that she would find WD support for such an amendment.
“Judge Newman again disagreed, concluding that “[t]he record is rife with” evidence of nexus between the success of Wrigley’s chewing gums covered by the claim and the specific combination of menthol and WS-23. Slip Op. at 24. Judge Newman further criticized the majority and district court for concluding that Cadbury had established a prima facie case of obviousness, then shifting the burden to the patent holder. ”
/facepalm
Where on earth does she get her ideas? Is she reading the same patent law as the rest of us?
I’m betting this won’t look “as bad” when I actually read her decision, but on the face of it this dissent just sounds horrible.
“Judge Newman disagreed with the holding of anticipation. “The purported anticipatory reference does not show this combination, and does not present so short and selective a list of these ingredients as to warrant an inference that their combination was already known.” Slip Op. at 28. Rather, the contents of Shahidi’s lists “can be combined in over a million possible combinations.” Id. at 29. ”
I should add, in judge Newman’s world she would prefer that we have a million references/disclosures all disclosing one species each in order to have disclosed what the reference managed to disclose in a paragraph or two. Either that or have this reference be a million pages long.
It’s this kind of horse sht that leads us to having half a million applications a year Newman.
“Judge Newman disagreed with the holding of anticipation.”
Surprise surprise.
An applicant of mine had been wanting to take a case involving but a single list of less than 12 species to the board over this kind of anticipation issue. I talked him down from the ledge got him to take the previously indicated deps and suggested he fight on in a con. Haven’t recieved that con just yet.
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