Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC , 683 F.3d 1356 ( 2012 )

United States Court of Appeals
for the Federal Circuit
__________________________
WM. WRIGLEY JR. CO.,
Plaintiff-Appellant,
v.
CADBURY ADAMS USA LLC,
Defendant-Cross Appellant.
__________________________
2011-1140,-1150
__________________________
Appeal from the United States District Court for the
Northern District of Illinois in Case No. 04-CV-0346,
Judge Robert M. Dow, Jr.
___________________________
Decided: June 22, 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
WM WRIGLEY JR CO v. CADBURY ADAMS 2
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 sensa-
tion when chewed. Historically, chewing gum makers
have achieved that cooling sensation (known as “physio-
logical 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 contain-
ing a combination of menthol and one of those coolants.
Cadbury owns U.S. Patent No. 5,009,893 (“the ’893 pat-
ent”), which claims a chewing gum that combines menthol
with WS-3. Wrigley owns U.S. Patent No. 6,627,233 (“the
1 Honorable Jeremy Fogel, District Judge, United
States District Court for the Northern District of Califor-
nia, sitting by designation.
3 WM WRIGLEY JR CO v. CADBURY ADAMS
’233 patent”), which claims a chewing gum that combines
menthol with WS-23.
The application that matured into Cadbury’s ’893 pat-
ent was filed in July 1989. Claim 1, one of two independ-
ent claims of the ’893 patent, recites:
1. A chewing gum composition capable of provid-
ing 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 car-
boxamide of [a specific formula.]
WS-3 is an N-substituted-p-menthane carboxamide
and one of the compounds described by the formula re-
cited 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 al-
though the cooling effect of both menthol and WS-3 were
known in the prior art, the combination of the two “re-
sults 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 mar-
ketplace.
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:
WM WRIGLEY JR CO v. CADBURY ADAMS 4
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 chew-
ing 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, accus-
ing 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 judg-
ment 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 sum-
mary judgment of noninfringement of the ’893 patent.
2 This appeal concerns Wrigley’s “production” gum.
Cadbury moved for summary judgment that certain
experimental chewing gum produced by Wrigley infringed
the ’893 patent. The district court denied that motion,
and Cadbury has not pursued that issue on appeal.
5 WM WRIGLEY JR CO v. CADBURY ADAMS
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 carbox-
amides 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 compositions include 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”) compo-
nents; 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.
WM WRIGLEY JR CO v. CADBURY ADAMS 6
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 ef-
fect 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 Manufactur-
ers 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
7 WM WRIGLEY JR CO v. CADBURY ADAMS
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.” Strato-
flex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir.
1983).
I
On appeal, Wrigley argues that Shahidi does not an-
ticipate 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 combi-
nation recited in that claim. 3 Second, and relatedly,
Wrigley argues that Shahidi would not have enabled a
person of ordinary skill in the art to derive the combina-
tion recited in claim 34 without undue experimentation.
3 Cadbury contends that in the district court Wrig-
ley failed to make that argument, as well as its argument
that unexpected results show the ’233 patent was not
obvious. For that reason, Cadbury contends, Wrigley has
waived those arguments. We conclude that Wrigley
presented the essence of its present arguments to the
district court sufficiently to preserve those arguments for
appeal. See Warner-Lambert Co. v. Teva Pharm. USA,
Inc., 418 F.3d 1326, 1338 n.11 (Fed. Cir. 2005). In the
district court, Wrigley argued that because Shahidi dis-
closed “a large number of optional or non-essential cate-
gories of ingredients,” it did not disclose “the combination
of ‘menthol’ and WS-23 in a chewing gum composition.”
Although in much abbreviated form, that is essentially
the same argument Wrigley makes as to anticipation on
appeal. As for obviousness, Wrigley’s argument as to
unexpected results was also skimpy, but it asserted that
“the performance of WS-23 in combination with menthol
in chewing gum applications would not have been pre-
dicted by one of ordinary skill in the art,” which was
enough to preserve the “unexpected results” argument for
appeal.
WM WRIGLEY JR CO v. CADBURY ADAMS 8
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 sepa-
rate 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 dis-
closes 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 those components, we
agree with the district court that Shahidi anticipates
claim 34.
This is not a case in which the prior art reference
merely discloses a genus and the claim at issue recites a
species of that genus. In such a case, the issue of antici-
pation turns on whether the genus was of such a defined
and limited class that one of ordinary skill in the art could
“at once envisage” each member of the genus. Eli Lilly &
Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1376
(Fed. Cir. 2006). Shahidi specifically discloses WS-23 as a
coolant and menthol as a flavoring agent. The question
for purposes of anticipation is therefore whether the
number of categories and components in Shahidi was so
9 WM WRIGLEY JR CO v. CADBURY ADAMS
large that the combination of WS-23 and menthol would
not be immediately apparent to one of ordinary skill in
the art. See Perricone v. Medicis Pharm. Corp., 432 F.3d
1368, 1377 (Fed. Cir. 2005) (distinguishing cases in which
a prior art reference discloses a genus from those in which
it discloses a number of species as part of a list).
Wrigley argues that Impax Laboratories, Inc. v.
Aventis Pharmaceuticals Inc., 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 in
order to assemble the invention. The issue in Impax was
whether the use of the drug riluzole for treating amyotro-
phic lateral sclerosis (“ALS”) was anticipated by U.S.
Patent No. 5,236,940 (“the ’940 patent”). Id. at 1314. The
’940 patent disclosed a formula that encompassed “hun-
dreds or thousands of compounds.” Id. at 1315. The ’940
patent also listed a number of diseases, including ALS,
that could potentially be treated with compounds of the
disclosed formula. Id. While we affirmed the district
court’s finding that undue experimentation would have
been required to practice the patent at issue in Impax,
there are important distinctions between that case and
this one. Unlike the prior art reference at issue in Impax,
where there was no disclosed dosage information for using
riluzole to treat ALS, see id., Shahidi discloses component
amounts within the ranges claimed in claim 34. Even
more importantly, Shahidi specifically discloses the use of
both WS-23 and menthol in chewing gum, whereas the
only mention of riluzole in the prior art reference in
Impax was to disclaim it from the disclosed invention.
See id. (“the ’940 patent . . . specifically excludes riluzole
from the invention”).
WM WRIGLEY JR CO v. CADBURY ADAMS 10
Given the objective of the ’233 patent, to obtain “a
cooling flavor composition that will contribute a long-
lasting cooling sensation” and a chewing gum with a
“clean, high-quality flavor . . . with a good cooling effect,”
the Shahidi reference clearly identifies the combination of
WS-23, which Shahidi identifies as one of three “particu-
larly preferred” cooling agents, and menthol, which Sha-
hidi identifies as being among the “most suitable”
flavoring ingredients. 4 The district court therefore cor-
rectly held that Shahidi anticipates claim 34 of the ’233
patent.
II
Wrigley also argues that the district court erred in
finding that the combination recited in the ’233 patent
would have been obvious in light of Luo and Parrish. In
particular, Wrigley argues that the combination of WS-23
and menthol resulted in unexpected cooling, beyond what
would have been predicted by one of ordinary skill in the
art.
Evidence that a combination of known components re-
sults in an effect greater than the predicted additive effect
of the components can support a finding of nonobvious-
ness. See Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d
1294, 1309 (Fed. Cir. 2010) (“Even if the [patent at issue]
were a combination of known elements according to their
established functions . . . it yields more than predictable
4 While the dissent notes that Shahidi listed a
number of flavoring agents, a person of ordinary skill in
the art would recognize menthol as extremely well known
in the prior art for inclusion in a cooling gum. The fact
that one of ordinary skill in the art might also have
included other flavorings would not remove the resulting
composition from the broad reach of claim 34.
11 WM WRIGLEY JR CO v. CADBURY ADAMS
results [and therefore is] non-obvious.”); Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 808 (Fed. Cir. 1989). In
this case, however, the synergistic effect of combining
coolants had already been discovered, as reflected in the
prior art. Luo disclosed a “synergy” between menthol and
WS-3, when menthol was included in high amounts, and
disclosed that the combination produced an “enhanced
breath-freshening effect” in which each component played
“a vital role.” Parrish identified WS-3 and WS-23 as
especially favored cooling agents for commercial use from
among 1200 tested compounds that induced a cooling
effect. Moreover, Parrish pointed to four characteristics
shared by the WS-3 and WS-23 molecules that were
associated with their physiological cooling effect, suggest-
ing that the two compounds would likely have similar
effects when ingested. Therefore, 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. See Ex parte NutraSweet Co., 19
U.S.P.Q.2d 1586, 1589 (B.P.A.I. 1991) (“It would at least
be necessary to demonstrate that the improvements
observed were greater to an unobvious extent than those
which would have been expected from the reference
teachings and that those differences were of some signifi-
cant, practical advantage.”).
As evidence that the claimed combination produced
unexpected results and drove the commercial success of
Wrigley’s chewing gums, Wrigley points to an internal
Cadbury study comparing Wrigley and Cadbury products.
That study concluded that the flavor and cooling features
of Wrigley’s products were superior to those of the Cad-
bury products with which they were compared. The study
noted, however, that besides having a “newer, more
WM WRIGLEY JR CO v. CADBURY ADAMS 12
advanced cooling system,” the tested Wrigley products
differed from the comparable Cadbury products in a
number of other ways, including having sweetener levels
three times higher than Cadbury’s products; more encap-
sulated sweeteners for longer sweetness duration; higher
gum base and filler levels that allowed for a more efficient
flavor release; and significantly more expensive ingredi-
ents. Moreover, the “cooling system” used in Wrigley’s
products was not simply a combination of menthol and
WS-23, as recited in claim 34 of the ’233 patent. Instead,
as the district court noted, it was a formulation that
“contained menthol and WS-23 along with several other
ingredients,” and the menthol and WS-23 components
were present in quantities not specifically identified in
claim 34. Therefore, Cadbury’s study does not demon-
strate that the broadly claimed combination recited in
claim 34 results in unexpected cooling beyond the degree
that was already predictable based on the prior art.
The same analysis applies to Wrigley’s argument that
the commercial success of its chewing gum containing
menthol and WS-23 shows that the claimed invention was
nonobvious. As the district court noted, for commercial
success to be probative evidence of nonobviousness, a
nexus must be shown between the claimed invention and
the evidence of commercial success. In this case, the
district court concluded, Wrigley failed to establish such a
nexus. Rather, the court observed, in the documents on
which Wrigley relies, “many factors were identified as
contributing to [Wrigley’s commercial] success, including
marketing efforts, the way in which the gum was pack-
aged, the amounts of gum base and sweeteners used, and
the cooling system used.” In sum, the district court found
“no evidence of any nexus between the success of Wrig-
ley’s chewing gums covered by Claim 34 and the specific
combination of menthol and WS-23,” and therefore held
13 WM WRIGLEY JR CO v. CADBURY ADAMS
that “the fact that Wrigley’s gums are successful does not
alter the obviousness analysis.”
For the reasons given by the district court, we agree
that Wrigley has not established a sufficient nexus be-
tween the invention of claim 34 of the ’233 patent and the
success in the marketplace of its chewing gum products
that contain a combination of menthol and WS-23. Cad-
bury’s internal study of Wrigley’s product showed that it
differed from Cadbury’s comparable product in several
ways that could have contributed to the commercial
success of Wrigley’s gum. Because the evidence does not
show that the success of Wrigley’s product was directly
attributable to combining WS-23, rather than WS-3, with
menthol, the district court properly discounted the evi-
dence of commercial success as a secondary consideration
rebutting Cadbury’s showing that the claimed invention
would have been obvious.
Wrigley also argues that evidence that Cadbury cop-
ied the combination of WS-23 and menthol shows that the
combination would not have been obvious. In some cases,
evidence that a competitor has copied a product embody-
ing a patented invention can be an indication of nonobvi-
ousness. See Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004). However, as the
district court observed, “[j]ust as with the commercial
success analysis, a nexus between the copying and the
novel aspects of the claimed invention must exist for
evidence of copying to be given significant weight in an
obviousness analysis.” The district court acknowledged
that Wrigley had shown through internal documents that
Cadbury had sought to copy Wrigley’s invention by adding
WS-23 to the cooling agents of some of its products. But
the court added that Wrigley had not shown evidence
suggesting that “the novel combination of WS-23 and
WM WRIGLEY JR CO v. CADBURY ADAMS 14
menthol is what led Cadbury to copy Wrigley’s chewing
gums,” and in the absence of that evidence, the court
found that Wrigley had failed to establish the requisite
nexus between “Cadbury’s copying and the merits of the
claimed invention.”
Besides the absence of evidence of a nexus between
Cadbury’s copying and Wrigley’s claimed invention, there
is evidence suggesting the contrary. In particular, the
evidence shows that in the market for chewing gum the
parties have a practice of marketing very similar prod-
ucts. While Cadbury’s internal documents show that it
sought to reformulate its products to match Wrigley’s
products, that desire extended not just to the inclusion of
WS-23, but to the inclusion of similar sweeteners and
similar levels of each. Wrigley’s evidence of copying is
therefore not a strong indicator of nonobviousness, but
rather a measure of the extent to which parties in the
chewing gum market typically copy any development by
their competitors, whether patented or not.
This case presents a strong case of obviousness based
on the prior art references of record. Claim 34 recites a
combination of elements that were all known in the prior
art, and all that was required to obtain that combination
was to substitute one well-known cooling agent for an-
other. Luo taught the physiological cooling effect from
combining menthol with WS-3. Parrish showed that WS-
3 and WS-23 were the two most attractive cooling agents
for commercial use from among 1200 cooling agents
tested. Shahidi taught the combination of menthol and
cooling agents, of which WS-3 and WS-23 were two of the
three most preferred candidates. And a prior art 1995
patent owned by The Procter & Gamble Company (U.S.
Patent No. 5,451,404), specifically refers to the combina-
tion of menthol and WS-23, along with other components,
15 WM WRIGLEY JR CO v. CADBURY ADAMS
in a composition designed to produce physiological cool-
ing. Under these circumstances, it is fair to say that
there were “a finite number of identified, predictable
solutions” to the problem of finding physiological cooling
agents for chewing gum, and that the combination of
menthol and WS-23 was “the product not of innovation
but of ordinary skill and common sense.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). This case is thus
one in which a person of ordinary skill in the art would
find it “obvious to try” the combination recited in claim
34. Id. We therefore uphold the district court’s conclu-
sion that, even in light of the evidence of secondary con-
siderations, claim 34 would have been obvious in light of
Luo and Parrish. 5
III
In its cross-appeal, Cadbury argues that the district
court made two errors regarding the ’893 patent, both of
which involve whether chewing gum formulations that
combine menthol with WS-23 are within the patent’s
5 We do not adopt a “formal burden-shifting frame-
work,” see In re Cyclobenzaprine Hydrochloride Extended-
Release Capsule Patent Litig., 676 F.3d 1063, 1077 (Fed.
Cir. 2012), nor did the district court. As noted in
Cyclobenzaprine, use of the terms “prima facie” and
“rebuttal” in addressing an invalidity challenge does not
constitute reversible error as long as the court “con-
sider[s] all evidence of obviousness and nonobviousness
before reaching a determination” and does not shift the
burden from the patent challenger. Id. In this case, the
district court addressed the objective considerations put
forth by Wrigley prior to making a determination of
obviousness. The district court in Cyclobenzaprine, by
contrast, concluded that “the invention was obvious”
before considering the objective factors. In re Cycloben-
zaprine Hydrochloride Extended-Release Capsule Patent
Litig., 794 F. Supp. 2d 517, 537 (D. Del. 2011).
WM WRIGLEY JR CO v. CADBURY ADAMS 16
scope. First, Cadbury argues that in its claim construc-
tion ruling the district court improperly found that the
’893 patent disclaimed certain compounds, including WS-
23. Second, Cadbury argues that the court erred in ruling
that the doctrine of equivalents could not be used to
extend the reach of the ’893 patent to cover a chewing
gum containing a combination of menthol and WS-23.
In its opening claim construction brief, Cadbury ar-
gued that the term “N-substituted-p-menthane carbox-
amide” should be construed according to its ordinary
meaning. Wrigley responded that the ’893 patent should
be read to exclude all compounds other than N-
substituted-p-menthane carboxamides. That would
exclude WS-23, which is not an N-substituted-p-
menthane carboxamide. In its reply brief on claim con-
struction, Cadbury argued that the patent did not dis-
claim compounds other than “WS-3 and its related
carboxamides,” and in particular that the patent did not
disclaim WS-23. The district court agreed with Wrigley
that the ’893 patent disclaimed all compounds other than
N-substituted-p-menthane carboxamides and construed
the term “N-substituted-p-menthane carboxamide” to
mean “a class of molecules with the chemical formulas set
forth in Claims 1 and 12 of the ’893 Patent.”
On appeal, all parties now agree that the claimed N-
substituted-p-menthane carboxamides do not include WS-
23. Wrigley’s products are therefore plainly not within
the literal scope of the claims of the ’893 patent. While
Cadbury argues that Wrigley’s products infringe under
the doctrine of equivalents, we agree with the district
court that WS-23 is not an equivalent of WS-3 for pur-
poses of the ’893 patent.
17 WM WRIGLEY JR CO v. CADBURY ADAMS
As the district court noted, the disclosure of the ’893
patent focuses narrowly on N-substituted-p-menthane
carboxamides, and not on carboxamides generally. The
“Summary of the Invention” section states that
“[a]pplicants have unexpectedly found that N-substituted-
p-menthane carboxamides when used in combination with
menthol in specific amounts results in an unexpected
heightened cooling sensation in edible products.” The
specification adds that certain species of N-substituted-p-
menthane carboxamides—and not carboxamides gener-
ally—“are quite similar structurally to menthol itself.”
While there is some dispute as to the mechanism by
which WS-3 and WS-23 provide cooling sensation, it is
clear that WS-23 is not structurally similar to menthol in
the same way that N-substituted-p-menthane carbox-
amides are. Finally, the claims themselves are narrow,
not even claiming all N-substituted-p-menthane carbox-
amides, but only a subset of those compounds. See Ta-
nabe Seiyaku Co. v. Int’l Trade Comm’n, 109 F.3d 726,
732 (Fed. Cir. 1997) (narrow language in the claims and
specification can preclude use of doctrine of equivalents to
reach beyond what is literally claimed); see also Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 955 (Fed. Cir. 2006)
(“A claim that contains a detailed recitation of structure is
properly accorded correspondingly limited recourse to the
doctrine of equivalents.”).
Cadbury’s argument that Abraxis Bioscience, Inc. v.
Mayne Pharma Inc., 467 F.3d 1370 (Fed. Cir. 2006),
compels a different result is unavailing. The issue in
Abraxis was whether diethylenetriaminepentaacetic acid
(“DTPA”) could be considered as an equivalent of edetate.
Both compounds belonged to “a broad class of structurally
analogous compounds known as polyaminocarboxylic
acids.” Id. at 1379 n.7. The patentee, however, had
narrowly claimed edetate. Id. at 1381. We rejected the
WM WRIGLEY JR CO v. CADBURY ADAMS 18
argument that such narrow claiming precluded the pat-
entee from arguing that DPTA was an equivalent of
edetate. Id. at 1380. In so finding, we relied on the fact
that it was unknown at the time of the invention that the
properties of DTPA made it a suitable substitute for
edetate in the claimed invention. Id. at 1381-82. Because
it was unknown that DTPA and edetate were inter-
changeable, the patentee had no reason to claim DTPA,
and we therefore held that DTPA could be considered to
be within the scope of the patent under the doctrine of
equivalents. Id.; see also Kinzenbaw v. Deere & Co., 741
F.2d 383, 389 (Fed. Cir. 1984) (“The doctrine of equiva-
lents is designed to protect inventors from unscrupulous
copyists and unanticipated equivalents.”).
The facts of this case support the opposite inference.
The inventors of the ’893 patent were introduced to WS-3
and WS-23 by a salesman for Sterling Organics, the
distributor of the compounds, during the same sales call,
and they were told that the two compounds were appro-
priate for the same uses. Although the fact that WS-23
did not enjoy FEMA-GRAS listing at the time of the
invention might have prevented Cadbury from marketing
a chewing gum containing a combination of WS-23 and
menthol, it would not have precluded the inventors from
anticipating that WS-23 could be used as a substitute for
WS-3. Thus, the inventors were on notice of the potential
interchangeability of WS-23 and WS-3, yet they drafted
the claims of the ’893 patent narrowly to recite certain N-
substituted-p-menthane carboxamides, not a broader
category of carboxamides that would include WS-23. The
trial court therefore properly held that Cadbury could not
expand the coverage of its patent to include WS-23
through the doctrine of equivalents.
Each party shall bear its own costs for this appeal.
19 WM WRIGLEY JR CO v. CADBURY ADAMS
AFFIRMED
United States Court of Appeals
for the Federal Circuit
__________________________
WM. WRIGLEY JR. CO.,
Plaintiff-Appellant,
v.
CADBURY ADAMS USA LLC,
Defendant-Cross Appellant.
__________________________
2011-1140,-1150
__________________________
Appeal from the United States District Court for the
Northern District of Illinois in Case Nos. 04-CV-0346, Judge
Robert M. Dow, Jr.
__________________________
NEWMAN, Circuit Judge, concurring in part, dissenting in
part.
I concur in Part III of the court’s opinion, and agree that
Wrigley does not infringe Cadbury’s ’893 patent. However, I
must dissent from Parts I and II. I would sustain the valid-
ity of Wrigley’s ’233 patent, for the district court departed
from the routine correct law of obviousness and anticipation.
On the correct law, the district court’s decisions on these
grounds are not supportable.
WM WRIGLEY JR CO v. CADBURY ADAMS 2
I. Obviousness
To be patentable, the subject matter must be unobvious
in view of what has gone before. This determination is
made by examiners in the Patent and Trademark Office;
and when that agency’s grant of a patent is challenged in
litigation, the court applies the analytical protocol set forth
in Graham v. John Deere Co., 383 U.S. 1 (1966), and recon-
firmed by the Court in KSR International Co. v. Teleflex
Inc., 550 U.S. 398 (2007). In litigation the burden of proof is
on the challenger by clear and convincing evidence, for the
patent as granted by the agency is presumed valid.
In Graham the Court set forth four factual areas on
which the determination of obviousness is based: (1) the
scope and content of the prior art, (2) the differences be-
tween the prior art and the claimed invention, (3) the level
of ordinary skill in the field of the invention, and (4) any
objective factors such as commercial success, long-felt but
unsolved need, and copying by others. 383 U.S. at 17–18.
The district court erred in its treatment of the fourth factor,
for as explained in Simmons Fastener Corp. v. Illinois Tool
Works, Inc., 739 F.2d 1573 (Fed.Cir.1984):
The section 103 test of nonobviousness set forth in
Graham is a four part inquiry comprising, not only
the three familiar elements (scope and content of
the prior art, differences between the prior art and
the claims at issue, and level of ordinary skill in the
pertinent art), but also evidence of secondary con-
siderations when such evidence is, of course, pre-
sent.
Id. at 1575.
3 WM WRIGLEY JR CO v. CADBURY ADAMS
The district court, and my colleagues on this panel, err
by holding that Cadbury established a prima facie case of
obviousness on prior art alone, viz., the Luo and Parrish
references. It is agreed that these references do not show
the Wrigley composition. When the evidence of commercial
success and copying by the infringer is considered, a prima
facie case of obviousness is not demonstrated. In Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) the
court explained that “evidence of secondary considerations
may often be the most probative and cogent evidence in the
record. It may often establish that an invention appearing
to have been obvious in light of the prior art was not. It is
to be considered as part of all the evidence, not just when
the decisionmaker remains in doubt after reviewing the
art.”
The district court, holding that a prima facie case of ob-
viousness was established on the prior art alone, shifted the
burden of proof to the patentee to rebut the asserted, but
improper, prima facie case with the evidence of commercial
success and copying. This is a distortion of the burden of
proof, which never leaves the challenger, see In re Cycloben-
zaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1078 (Fed. Cir. 2012) (“[T]he Supreme
Court has never imposed nor even contemplated a formal
burden-shifting framework in the patent litigation con-
text.”). It is also a distortion of reasoned analysis for, as the
Court stated in Graham, “[s]uch secondary considerations
as commercial success, long felt but unsolved needs, failure
of others, etc., might be utilized to give light to the circum-
stances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 17–18. All of the circumstances
must be considered.
The panel majority affirms the district court’s misplaced
analysis, agreeing that the Luo and Parrish references
WM WRIGLEY JR CO v. CADBURY ADAMS 4
present a prima facie case of obviousness and that the
burden of rebuttal shifts to the patentee. Maj. op. at 11
(“Therefore, to show that the cooling effect of the combina-
tion of WS-23 and menthol was unexpected, Wrigley needed
to demonstrate that the results were unexpected to a sig-
nificant degree beyond what was already known about the
effect of combining WS-3 and menthol.”). The cited refer-
ences indeed show relevant information. The Luo reference
shows WS-3 in combination with menthol, and mentions the
generic class of N-substituted-p-menthane carboxamides,
but does not mention WS-23. The Parrish reference men-
tions 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. Wrigley provided a large amount of evidence,
much of it from Cadbury’s records, of the unexpected results
and commercial success of the combination of WS-23 with
menthol.
The evidence established that (1) although WS-3 alone
is two to three times more effective as a coolant in chewing
gum than WS-23 alone, when combined with menthol WS-
23 is not only more effective, but is sufficiently more effec-
tive such that there is a vast preference among gum-
chewers; and (2) Cadbury observed its major loss of sales to
the new Wrigley gum, analyzed the Wrigley product, con-
cluded that the WS-23 menthol combination was responsible
for the consumer preference, and then copied the Wrigley
product. This information surely colors the understanding
of the prior art, as seen by a person of ordinary skill in the
field of the invention, for the improved properties that
produced the striking consumer preference for Wrigley’s
new composition are nowhere signaled in the cited refer-
ences. These objective considerations are not consigned to
rebuttal, for they are direct evidence of obviousness.
5 WM WRIGLEY JR CO v. CADBURY ADAMS
The district court erred in holding the ’233 composition
prima facie obvious on only part of the evidence, ignoring
the evidence that supports unobviousness. As remarked by
Judge Learned Hand, “Courts, made up of laymen as they
must be, are likely either to underrate, or to overrate, the
difficulties in making new and profitable discoveries in
fields with which they cannot be familiar; and, so far as it is
available, they had best appraise the originality involved by
the circumstances which preceded, attended and succeeded
the appearance of the invention.” Safety Car Heating &
Lighting Co. v. General Elec. Co., 155 F.2d 937, 939 (2d Cir.
1946).
The advantageous properties of the Wrigley combination
of WS-23 and menthol are not predicted or suggested or
even hinted in any reference. My colleagues on this panel
hold that “Wrigley needed to demonstrate that the results
were unexpected to a significant degree beyond what was
already known about the cooling effects of WS-3 and men-
thol.” Maj. op. at 11. This criterion, although unwarranted,
was surely met. Cadbury’s own test report states that
although WS-3 alone exhibits a cooling intensity three times
that of WS-23, when combined with menthol “WS-23 cooling
technology was positively correlated with increased overall
liking and also with flavor and cooling intensity at 5 min-
utes and ten minutes.” J.A. 3320. This observation has no
foreshadow in the prior art. It is highly relevant, and on the
facts of this case precludes summary judgment of obvious-
ness.
Nonetheless, the district court states, and my colleagues
agree, that there was “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.” Maj. op. at
12. The record is rife with such evidence. Cadbury’s own
records specifically identify the combination of WS-23 and
WM WRIGLEY JR CO v. CADBURY ADAMS 6
menthol as “key drivers for liking.” J.A. 3310; J.A. 2996–
3000. As further evidence of a clear and undisputed nexus,
Wrigley points to marketing material that stresses the
cooling effect of its WS-23 reformulated chewing gums,
describing the gums as “Even More Powerful,” producing
“Icy Cool Breath That Lasts,” and generating a “Just
Brushed Clean Feeling;” and that “It’s Cooler, Longer Last-
ing and MORE ICY!” J.A. 3012; J.A. 3261–62; J.A. 2981.
Similarly, after Cadbury copied Wrigley’s formulation
using WS-23, Cadbury advertised its new product’s “New
Taste. New Chill” and “Now. Cooler. Longer.” Advertising
the benefits of the claimed invention links the invention to
commercial success. Cf. Gambro Lundia AB v. Baxter
Healthcare Corp., 110 F.3d 1573, 1579 (Fed. Cir. 1997) (“The
prominence of the patented technology in . . . advertising
creates an inference that links the . . . invention to this
success.”). No contrary evidence was offered to the strong
evidence of a nexus between the invention and its market
success. “To the extent that the patentee demonstrates the
required nexus, his objective evidence of nonobviousness
will be accorded more or less weight.” In re GPAC Inc., 57
F.3d 1573, 1580 (Fed. Cir. 1995). “Once the patentee dem-
onstrates a prima facie nexus, the burden of coming forward
with evidence in rebuttal shifts to the challenger.” Id. No
such rebuttal evidence was presented.
My colleagues’ finding that nexus was not established,
maj. op. at 13, is hard to fathom. Cadbury’s own documents
showed that Cadbury changed its formulation to copy Wrig-
ley’s new gums containing WS-23 and menthol. A Cadbury
internal report states that Cadbury expected that if it did
not reformulate its gums, it would lose market share at a
cost in the United States of “$2MM in Year 1, then $3.5MM,
$5.0MM, and $7.0MM in subsequent years and projects that
maximum lost sales would amount to half of the brand
7 WM WRIGLEY JR CO v. CADBURY ADAMS
growth projected on Dentyne Ice to be at risk (approx.
$25MM per year).” J.A. 2984. The Cadbury report states
that Wrigley’s gums use a “newer, more advanced cooling
system than WS-3” and that “cooling” and “breath freshen-
ing” are “key drivers of [consumer] loyalty.” J.A. 2985.
Contrary to my colleagues’ hypothesis, the fact that
Cadbury also copied Wrigley’s sweeteners does not negate
the undisputed record that Cadbury copied the composition
of WS-23 with menthol in order to obtain the improved
cooling of this composition, an effect that both competitors
advertised for these products. Cadbury’s internal docu-
ments state that Cadbury copied the Wrigley cooling system
because it was “more advanced” and “preferred” by consum-
ers over Cadbury’s product which used WS-3 with menthol.
It is not disputed that the superior properties of the WS-
23 menthol combination were not shown or suggested in the
prior art. The district court erred in its application of the
Graham factors by asking whether the evidence of secon-
dary considerations were sufficient to overcome its “final
conclusion” that the patent is obvious. D.Ct. op. at 42
(citing Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485
F.3d 1157 (Fed. Cir. 2007) for the proposition that “the
evidence on secondary considerations was inadequate to
overcome a final conclusion” of obviousness). “Evidence of
secondary considerations, including evidence of unexpected
results and commercial success, are but a part of the ‘total-
ity of the evidence’ that is used to reach the ultimate conclu-
sion of obviousness.” Richardson–Vicks Inc. v. Upjohn Co.,
122 F.3d 1476, 1483 (Fed.Cir.1997); see also Cycloben-
zaprine, 676 F.3d at 1079–80 (“[O]pinions of this court
should not be read to require a burden-shifting framework
in derogation of Stratoflex's directive that objective evidence
be considered before making an obviousness determination
WM WRIGLEY JR CO v. CADBURY ADAMS 8
and in disregard of where the burdens of proof and persua-
sion are properly placed in district court litigation.”).
A court may not presuppose that, regardless of the evi-
dence of commercial success and unexpected results, the
invention is obvious based on prior art alone. The secondary
indicia of nonobviousness must be considered in deciding
whether a prima facie case of obviousness has been pre-
sented. See Stratoflex, 713 F.2d at 1538 (“It is jurispruden-
tially inappropriate to disregard any relevant evidence on
any issue in any case, patent cases included. Thus evidence
rising out of the so-called ‘secondary considerations’ must
always when present be considered en route to a determina-
tion of obviousness.”); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985) (“Just
as it is legal error for a district court to fail to consider
relevant evidence going to secondary considerations, it may
be legal error for a district court to presuppose that all
evidence relating to secondary considerations, when consid-
ered with the other Graham indicia relating to the obvious-
ness/nonobviousness issue, cannot be of sufficient probative
value to elevate the subject matter of the claimed invention
to the level of patentable invention.”) (internal citation
omitted); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d
309 (Fed. Cir. 1985) (“Objective evidence of nonobviousness,
when present, must always be considered before reaching a
legal conclusion under § 103”); Kan. Jack, Inc. v. Kuhn, 719
F.2d 1144, 1150–51 (Fed.Cir.1983) (finding that a district
court's consideration of commercial success complied with
“the basic requirement that all evidence touching the obvi-
ous-nonobvious issue be fully considered before a conclusion
is reached on that issue”); Richardson-Vicks 122 F.3d at
1483 (“we must consider all of the evidence under the Gra-
ham factors before reaching our decision”); In re Mageli et
al., 470 F.2d 1380, 1384 (CCPA 1973) (evidence bearing on
issue of nonobviousness “is never of ‘no moment,’ is always
9 WM WRIGLEY JR CO v. CADBURY ADAMS
to be considered and accorded whatever weight it may
have.”). To the extent this court has made statements to the
contrary, e.g., Wyers v. Master Lock Co., 616 F.3d 1231, 1246
(Fed. Cir. 2010) (“secondary considerations of nonobvious-
ness—considered here by the district court—simply cannot
overcome a strong prima facie case of obviousness”), earlier
precedent controls. See Newell Cos., Inc. v. Kenney Mfg. Co.,
864 F.2d 757, 765 (Fed. Cir. 1988) (“[P]rior decisions of a
panel of the court are binding precedent on subsequent
panels unless and until overturned in banc.”)
The district court erred in granting summary judgment
of obviousness, for the criteria for summary judgment of
invalidity on this ground were clearly not met. I respect-
fully dissent from the court’s contrary ruling.
II. Anticipation
The district court also granted summary judgment of
invalidity on the ground of anticipation, not relying on any
reference cited for obviousness, but relying on a different
reference that does not show the claimed combination at all,
but merely presents the ingredients on lists.
The term “anticipation” in patent law means that the
invention was previously known. If the invention was
known, it is anticipated. The district court found “anticipa-
tion” by a reference that presents lists of hundreds of possi-
ble ingredients of chewing gum, from which the district
court, and now this court, select Wrigley’s components WS-
23 and menthol. 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. The
Shahidi patent, U.S. Patent No. 5,688,491 (the ’491 patent),
on which the district court and my colleagues rely, contains
WM WRIGLEY JR CO v. CADBURY ADAMS 10
lists of many known ingredients that might be used in an
assortment of products including chewing gums, detrifices,
and mouthwashes. Shahidi’s lists include humectants,
surfactants, thickeners, abrasives, stannous salts, copper
salts, flavoring agents, sweeteners, and cooling agents,
which can be combined in over a million possible combina-
tions, see Wrigley Br. 18. Shahidi names three known
preferred cooling agents: WS-3, WS-23, and TK-10, as well
as a large number of other cooling agents in five identified
U.S. Patents. ’491 patent col.4 ll.14–32.
Shahidi also states that flavoring agents “well known in
the art” can be used, naming anise, cassia, clove dihy-
droanethole, estragole, eucalyptol, menthol, methyl salicy-
late, peppermint, axanone, phenyl ethyl alcohol, sweet
birch, eugenol, spearmint, cinnamic aldehyde, menthone,
alpha-ionone, ethyl vanillin, limonene, isoamylacetate,
benzaldehyde, thymol, ethylbutryate, and “many others.”
Id. at col.7 ll.16–22. Shahidi does not describe any specific
composition containing either WS-23 or menthol, nor the
combination of WS-23 and menthol for any purpose. None-
theless, my colleagues affirm the district court’s grant of
summary judgment, and hold that Shahidi “anticipates” the
Wrigley composition of WS-23 and menthol. That is an
incorrect understanding of the law of “anticipation.”
The district court apparently went astray in applying
this court’s ruling in Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368 (Fed. Cir. 2005), for the district court
states that it suffices to anticipate if the ingredients WS-23
and menthol can be found somewhere on Shahidi’s lists,
although Shahidi shows only long lists of possible ingredi-
ents for Shahidi’s unrelated compositions. Perricone does
not hold that a specific unknown composition is deemed
known if its components can be found separately on lists of
possible components. See id. at 1375–76. It is the scope,
11 WM WRIGLEY JR CO v. CADBURY ADAMS
specificity, and content of the list that controls whether the
disclosure is so specific as to be deemed a disclosure of
specific combinations.
This court has explained that, in order to anticipate, the
prior art must be such that a person of ordinary skill would
“at once envisage” the specific claimed composition. Impax
Labs., Inc. v. Aventis Pharms. Inc., 468 F.3d 1366, 1383
(Fed. Cir. 2006); In re Petering, 301 F.2d 676, 681 (CCPA
1962). When the listing of many possible ingredients does
not produce immediate recognition of the specific combina-
tion, the list does not “anticipate” that combination. My
colleagues misconstrue Perricone, for that case does not rely
on the distinction between a list and a genus in determining
whether the claimed invention is “new,” and does not hold
that every list, of whatever form and length and complexity,
anticipates every combination of the listed components. In
Perricone the list contained fourteen ingredients, including
ascorbyl palmitate, for use in cosmetic cream, and the court
held that this anticipated claims to ascorbyl palmitate for
use in cosmetic cream. Perricone did not hold that all lists
are anticipating, as a matter of law. Rather, Perricone
alerts the trier of fact to the factual nature of “anticipation,”
and the specific circumstances whereby a specific product on
a list may be found to be identified for the patentee’s specific
composition.
The district court erred in viewing Perricone as holding
that “the mere fact that the elements of a claim are set forth
in the prior art patent in a list along with the other ingredi-
ents without any ‘special emphasis’ is irrelevant to an
anticipation analysis. Instead, all that is relevant is
whether the prior art disclosure is enabling.” D.Ct. op. at 27
(internal citation omitted). To the contrary, the way the
elements are set forth in the reference and its lists is highly
relevant, for an anticipating reference must show the spe-
WM WRIGLEY JR CO v. CADBURY ADAMS 12
cific ingredients and direct their selection such that the
specific combination is deemed to have existed. See Impax
Labs., 468 F.3d at 1383 (the specific combination must be at
once envisaged).
It was not disputed that a person of ordinary skill would
not at once envisage Wrigley’s combination of WS-23 and
menthol from Shahidi’s lists. See Eli Lilly & Co. v. Zenith
Goldline Pharms., Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006)
(“To anticipate, a prior art reference must place the inven-
tive compound or composition in the possession of the pub-
lic.”). From the large number of listed ingredients and
possible combinations of ingredients, and the absence of any
selection of the combination of WS-23 and menthol in chew-
ing gum, Shahidi does not anticipate the combination of
WS-23 and menthol in chewing gum. From the court’s
erroneous ruling of law and its incorrect application, I
respectfully dissent.