Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC
683 F.3d 1356, 103 U.S.P.Q. 2d (BNA) 1130, 2012 WL 2367047 (2012)
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Rule of Law:
A patent claim for a combination of known elements is invalid as anticipated if a prior art reference discloses all elements, identifying them as preferred components for the claimed composition. Such a claim is also invalid for obviousness if prior art teaches the substitution of one known element for another similar, well-known element to achieve a predictable result, and any evidence of secondary considerations like commercial success lacks a direct nexus to the novel aspects of the invention.
Facts:
- Chewing gum makers historically used menthol for a 'physiological cooling' sensation but sought alternatives to avoid its bitterness at high concentrations.
- In the 1970s-80s, Wilkinson-Sword Ltd. developed alternative chemical coolants, including compounds known by the trade names WS-3 and WS-23.
- Cadbury Adams USA LLC (Cadbury) obtained U.S. Patent No. 5,009,893 for a chewing gum that combined menthol with WS-3, and its products based on this combination were commercially successful.
- Wm. Wrigley Jr. Co. (Wrigley) subsequently introduced its own chewing gum that combined menthol with a different coolant, WS-23, and obtained U.S. Patent No. 6,627,233 for this combination.
- After Wrigley's product became successful, Cadbury reformulated some of its own chewing gum products to also contain both WS-23 and menthol.
- Prior art existed at the time of Wrigley's invention, including U.S. Patent No. 5,688,491 ('Shahidi'), which disclosed chewing gum compositions and listed WS-23 as a 'particularly preferred cooling agent' and menthol as a 'most suitable' flavoring agent.
- Other prior art, such as U.S. Patent No. 5,698,181 ('Luo'), taught a synergistic cooling effect from combining menthol and WS-3, while an article ('Parrish') described WS-3 and WS-23 as similar and highly effective coolants.
Procedural Posture:
- Wm. Wrigley Jr. Co. sued Cadbury Adams USA LLC in the U.S. District Court for the Northern District of Illinois for infringement of its '233 patent.
- Cadbury filed a counterclaim, alleging that Wrigley's products infringed its '893 patent.
- Both parties moved for summary judgment on various issues.
- The district court granted summary judgment in favor of Wrigley on Cadbury's counterclaim, finding no infringement of the '893 patent.
- The district court also granted summary judgment in favor of Cadbury on Wrigley's claim, ruling that claim 34 of Wrigley's '233 patent was invalid as anticipated and obvious.
- Wrigley appealed the judgment of invalidity to the U.S. Court of Appeals for the Federal Circuit, and Cadbury cross-appealed the judgment of non-infringement.
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Issue:
Is a patent claim for a chewing gum composition combining menthol and the coolant WS-23 invalid as anticipated by a prior patent that lists both ingredients as preferred options, and invalid for obviousness in light of prior art teaching the synergistic cooling effect of combining menthol with a similar coolant, WS-3?
Opinions:
Majority - Judge Bryson
Yes, the patent claim is invalid for both anticipation and obviousness. The court affirmed the district court's finding that claim 34 of Wrigley's '233 patent is invalid. For anticipation, the Shahidi patent disclosed all limitations of the claim by identifying WS-23 as a 'particularly preferred' coolant and menthol as a 'most suitable' flavoring agent for use in a single chewing gum product, making the combination immediately apparent to one of ordinary skill. For obviousness, the prior art taught that combining menthol with WS-3 produced a synergistic cooling effect (Luo patent) and that WS-23 was a very similar and highly favored coolant to WS-3 (Parrish article). It would have been obvious to a person of ordinary skill in the art to substitute WS-23 for WS-3 in the known combination to achieve a predictable cooling improvement. Wrigley's evidence of secondary considerations, such as commercial success and copying by Cadbury, failed because Wrigley did not establish the required nexus between this evidence and the novel aspects of the claimed invention; the success could be attributed to other factors like sweeteners and marketing.
Concurring in part and dissenting in part - Judge Newman
No, the patent claim is not invalid for anticipation or obviousness. The majority and district court erred by first establishing a prima facie case of obviousness based only on prior art and then improperly shifting the burden to Wrigley. All evidence, including the strong secondary considerations of commercial success and copying, must be considered together from the outset. The record was 'rife with evidence' of a nexus, including Cadbury's own internal documents showing it copied the specific WS-23/menthol combination because it produced a surprisingly superior and preferred cooling effect that drove consumer preference. Furthermore, the Shahidi patent did not anticipate the claim, as it merely contained extensive lists of hundreds of possible ingredients, from which one could not 'at once envisage' the specific, successful combination Wrigley invented.
Analysis:
This case reinforces the high evidentiary burden on patentees attempting to use secondary considerations to overcome a strong case of obviousness. It clarifies that a patentee must prove a direct causal link, or 'nexus,' between the commercial success (or other indicia) and the novel features of the patented invention itself, separate from other contributing factors like marketing or other product improvements. The decision also illustrates that a prior art reference can be anticipatory even if it discloses the claimed elements in lists, provided it gives sufficient guidance—such as labeling them 'preferred'—to lead a skilled artisan to the specific combination. The case serves as a key example of how courts apply the 'obvious to try' standard from KSR v. Teleflex in the context of chemical combination patents.
