Sometimes being cool just isn’t enough.  So said the Federal Circuit in its opinion in W.M. Wrigley Jr. Co. v. Cadbury Adams USA LLC, released on June 22, 2012.  In a precedential decision by a divided panel, the court invalidated a Wrigley patent for chewing gum with a “cooling” element consisting of a blend of menthol and another cooling agent, “WS-23,” a combination it patented after discovering that it provided a better cooling sensation than menthol alone.  The court affirmed the decision of the Northern District of Illinois, agreeing that the challenged patent was invalid because the relevant claim was both obvious and anticipated.[1]  In the process, the court likely made challenges on the basis of anticipation much easier to prove.

While a suit surrounding chewing gum may not seem overly important on its face, the eye-opening aspect of the opinion came from the court’s reason for finding that Wrigley’s combination of cooling ingredients was anticipated.  In the district court, the court believed the prior art would have put a person of ordinary skill in the art (POSITA) on notice that this specific combination of ingredients would provide gum chewers with a longer-lasting and more enjoyable cooling sensation than they would experience by chewing a gum “cooled” by menthol alone.  Specifically, the court referenced the Shahidi patent (U.S. Patent No. 5,688,491), which contained a list of a number of ingredients that could be used—alone or in combination—to add a cooling sensation to products including toothpaste, mouth washes, lozenges, and chewing gums.  Both menthol and WS-23, a cooling agent developed by Wilkinson–Sword Ltd. that provides the “cooling” benefit of menthol without the undesirable bitterness and strong mint taste associated with menthol, appeared on this list, with WS-23 being referred to as a “preferred” cooling agent.

Wrigley relied on a previous Federal Circuit opinion, Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc.,[2] arguing it stood 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 court distinguished the case, however, reasoning that unlike in Impax, the list in the Shahidi patent specifically mentioned the use of both WS-23 and menthol in chewing gum.  The court thus concluded that a POSITA would have no problem combining these two ingredients to enhance a gum’s cooling effect, and in fact was encouraged to do so by the disclosure.[3]  Clearly, this rationale makes an anticipation claim much easier to prove, since the court upheld the finding despite only the single reference to the ingredients, with that reference failing to even mention the use of the two elements in combination with each other.

The court went on, however, to hold that the Wrigley patent was also invalid due to its obviousness in light of prior art, rejecting Wrigley’s “unexpected results” argument.  In its attempt to show that its patented formula was unobvious, Wrigley relied on Crocs, Inc. v. Int’l Trade Comm’n,[4]  for the rule that “[e]vidence that a combination of known components results in an effect greater than the predictive additive effect of the components can support a finding of nonobviousness.”[5]  But the court  distinguished Crocs, reasoning that the relevant prior art introduced in the district court in this case (the “Luo” patent and an article by Dr. M. A. Parrish), when read in combination, would render the combination of WS-23 and menthol obvious as an agent for cooling chewing gum more effectively than either ingredient alone to any POSITA.

The Luo patent “disclosed a ‘synergy’ between menthol and WS-3 [and] disclosed that the combination produced an ‘enhanced breath-freshening effect’ in which each component played ‘a vital role.’”  The Parrish article, in turn, highlighted both WS-3 and WS-23 as desirable cooling agents and stressed the shared characteristics of the two ingredients that made them virtually interchangeable in use.  When read together, the court reasoned, it should be obvious to a POSITA that the combination of menthol and WS-23 would provide that same “enhanced breath-freshening effect.”

Wrigley further argued that the commercial success the company achieved due to the heightened cooling effect of this gum, as well as Cadbury’s substitution of WS-23/menthol combination for its previous WS-3/menthol combination in its gum, indicated that the patented formula was not obvious.  But the court rejected both of these arguments.  In order to defeat the claim of obviousness, Wrigley was required to show a direct “nexus” between the challenged claim and the company’s commercial success with the product.  The district court held, and the Federal Circuit affirmed, that Wrigley made no such showing here.  Instead, the court reasoned that it was not clear whether it was Wrigley’s use of the WS-23/menthol combination, or some other factor, such as the sweetener used or even the company’s marketing efforts, that led to its success.

Relying on Iron Grip Barbell Co. v. USA Sports, Inc.,[6] Wrigley further argued that its claim was not obvious because once their gum proved successful, Cadbury altered its own recipe to include the more effective cooling combination.  The court dismissed this assertion as well, however, again reasoning that there must be a nexus between the competitor’s “copying and the novel aspects of the claimed invention” before this finding can serve as evidence of the claim’s nonobviousness, and again finding that Wrigley had failed to show this connection.  The court cited a Cadbury report that indicated that in addition to making the switch from WS-3 to WS-23, Cadbury also changed the type and level of sweetener it used in its gum as a result of Wrigley’s success.  The court also highlighted the hyper-competitive nature of the chewing gum industry as evidence that the copying was not a result of the novel nature of Wrigley’s cooling element, but rather just one competitor attempting to keep in lockstep with another.

Writing separately, Judge Newman concurred with the majority’s determination that Wrigley’s patent did not infringe on Cadbury’s, but dissented from the majority’s decision on the invalidity of Wrigley’s patent.  In her opinion, the court was incorrect in its decisions on both the obviousness and the anticipation grounds.

In terms of obviousness, Judge Newman relied on the four-factor obviousness test from Graham v. John Deere Co.,[7] and argued that the majority erred in its analysis of the fourth factor, “any objective factors such as commercial success, long-felt but unsolved need, and copying by others,” when it found Wrigley’s claim obvious.  According to Judge Newman, the court was incorrect in finding that Cadbury established its prima facie case of obviousness simply by putting forth evidence of prior art.  Beyond that, however, Judge Newman argued that Wrigley successfully countered Cadbury’s showing when it presented its evidence of commercial success and copying by Cadbury, even though such a showing should never have been necessary.[8]

Judge Newman also found error with the majority’s anticipation analysis, arguing that her colleagues had misconstrued the court’s precedent when they found that the ingredients’ presence on the lengthy list in the Shahidi patent was sufficient to show that a POSITA would have quickly discovered the combination in question.  Judge Newman argued that the correct reading of Impax requires that in order for items’ presence on a list to suffice as evidence of anticipation, “the prior art must be such that a person of ordinary skill would ‘at once envisage’ the specific claimed composition.”

            As such, Judge Newman believed that, with the Shahidi lists being as lengthy as they were, the court erred in finding that this evidence alone met the required standard: “When the listing of many possible ingredients does not produce immediate recognition of the specific combination, the list does not ‘anticipate’ that combination.”

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