Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC
683 F.3d 1356
| Fed. Cir. | 2012Background
- Wrigley and Cadbury compete in chewing gum; each owns a patent claiming menthol plus a cooling agent (WS-23 or WS-3 respectively).
- Cadbury owns the '893 patent (claim 1) covering menthol combined with WS-3 in chewing gum; Wrigley owns the '233 patent (claim 34) covering menthol combined with WS-23.
- Cadbury marketed WS-3/menthol gums; Wrigley released WS-23/menthol gums; Cadbury reformulated to include WS-23 and menthol.
- District court granted summary judgment: (i) noninfringement of the '893 patent; (ii) claim 34 of the '233 patent anticipated and obvious over Shahidi, Luo, and Parrish.
- On appeal, the Federal Circuit majority held Shahidi anticipates claim 34; district court findings on obviousness affirmed; cross-appeal addressed scope and equivalents of the '893 patent.
- Dissent argues the '233 patent is not obvious and that Shahidi does not anticipate the claimed combination; also critiques the district court’s handling of secondary considerations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Shahidi anticipate claim 34 of the '233 patent? | Shahidi discloses all elements, but not in the claimed combination. | Shahidi teaches menthol with WS-23 as a single menthol/WS-23 combination in chewing gum. | Yes; Shahidi anticipates claim 34. |
| Is claim 34 of the '233 patent obvious in view of Luo and Parrish (and related art)? | The combination yields unexpected cooling; secondary considerations support nonobviousness. | Combination of known elements; Shahidi, Luo, Parrish teach the substitution; obvious to try. | Yes; claim 34 would have been obvious. |
| Does the district court correctly construe the '893 patent scope and apply the doctrine of equivalents to WS-23? | WS-23 is within the broader scope; doctrine of equivalents should extend to WS-23. | '893 patent claims a narrow class (N-substituted-p-menthane carboxamides) excluding WS-23; no equivalents. | WS-23 not within literal scope; no equivalents. |
Key Cases Cited
- Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) (anticipation requires exact arrangement of components)
- Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369 (Fed. Cir. 2006) (genus vs. species in anticipation analysis)
- Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., 468 F.3d 1366 (Fed. Cir. 2006) (anticipation requires specific, enabling disclosure of the claimed combination)
- Perricone v. Medicis Pharm. Corp., 432 F.3d 1368 (Fed. Cir. 2005) (lists versus specific disclosures; Perricone cautions on anticipation by lists)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (S. Ct. 2007) (rejection of rigid rule; obviousness is a flexible, common-sense analysis)
- Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) (secondary considerations can be probative of nonobviousness)