Patent Obviousness is Sticky BusinessThis is a case about chewing gum. Unfortunately, the district court’s approach to analyzing Wrigley’s patent for obviousness and anticipation led to a sticky situation among the judges hearing this appeal.

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, Nos. 2011-1140, -1150 (Fed. Cir. Jun. 22, 2012) (Judges Newman, Bryson, and District Judge Jeremy Fogel of the Northern District of California, sitting by designation)

Wrigley and Cadbury both own patents that cover formulas for combining menthol with a certain cooling agent, either WS-3 or WS-23, to achieve the cooling sensation you get when you chew a piece of minty fresh gum. Wrigley sued Cadbury for patent infringement, and Cadbury counterclaimed that Wrigley infringed its (Cadbury’s) patent and that Wrigley’s patent was invalid for obviousness and anticipation. The district court granted summary judgment to that Wrigley didn’t infringe Cadbury’s patent, but also decided that Wrigley’s patent was invalid.

The tricky (and sticky) issue at the Federal Circuit involved the question of how a court should use secondary considerations in an obviousness analysis. The district court concluded, and the Federal Circuit majority agreed, that Wrigley’s patent was obvious in light of two prior art references. Wrigley submitted evidence of the secondary consideration of commercial success, unexpected results, and copying. The Federal Circuit, like the district court, didn’t find that Wrigley evidence was good enough to show that its patent isn’t obvious.

Judge Newman dissented on this point. Her main concern was that the court found that Cadbury had made a prima facie showing of obviousness, and then it improperly shifted the burden onto Wrigley to show that its patent was not obvious. The burden to show invalidity of a patent, she reminded, is always on the challenger, and the court must analyze secondary considerations as part of the overall obviousness assessment. She was particularly bothered by the court’s statement that “[T]o 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.” This phrasing, to Judge Newman, implied that Wrigley’s evidence of secondary considerations was considered after the court had already decided—on the prior art alone—that the patent claim was obvious, and that’s not how it should work.

The district court found, and the Federal Circuit majority agreed, that Wrigley’s evidence of unexpected results and commercial success—an internal Cadbury comparison study—didn’t show a “nexus” (i.e., intersection) between the sales success of Wrigley’s gum and the WS-23/menthol combination. The majority based its conclusion mostly on the fact that the comparison considered a number of other factors besides the cooling effect. But Judge Newman disagreed here as well, noting that the presence of other factors doesn’t negate the study’s statement that the cooling combo was a “key driver[] for [customers’] liking.”

I think Judge Newman raises valid points. On my reading, both the district court and the majority seem to set a very high bar for Wrigley’s secondary consideration evidence. But, as the dissent points out, it is Cadbury’s job to prove, by clear and convincing evidence, that Wrigley’s patent is obvious. Plus, this is summary judgment, which means Cadbury must also prove that there are no material fact issues about the invalidity of Wrigley’s patent when the evidence is considered the light most favorable to Wrigley. At the very least, there appear to be fact issues sticking around.

Do you think the majority opinion is cool as ice? Or are you lukewarm to it? Let us know!