A Reference May Anticipate Even If It Requires A Person Of Ordinary Skill To Pick Items From Lists Of Components To Assemble The Invention

This article previously appeared in Last Month at the Federal Circuit, July, 2012.

Judges: Newman (concurring-in-part and dissenting-in-part), Bryson (author), Fogel (district judge sitting by designation)

[Appealed from N.D. Ill., Judge Dow, Jr.]

In Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, Nos. 11-1140, -1150 (Fed. Cir. June 22, 2012), the Federal Circuit affirmed the district court's determination on SJ that a patent owned by Wm. Wrigley Jr. Co. ("Wrigley") was invalid and that Wrigley's product did not infringe a patent owned by Cadbury Adams USA LLC ("Cadbury").

Wrigley and Cadbury compete in the market for chewing gum. This case involved gum that provided a cooling sensation when chewed. Menthol, historically known to provide a cooling sensation, has drawbacks that newer products, such as coolants "WS-3" and "WS-23," do not have. Cadbury owns U.S. Patent No. 5,009,893 ("the '893 patent"), directed to a chewing gum that combines menthol with WS-3. Meanwhile, Wrigley owns U.S. Patent No. 6,627,233 ("the '233 patent"), claiming a chewing gum combining menthol with WS-23.

Cadbury's products embodying the '893 patent went on the market before Wrigley's products embodying the '233 patent. After Wrigley introduced its menthol/WS-23 chewing gum, Cadbury reformulated some of its products to contain both menthol and WS-23. Wrigley sued Cadbury for infringing the '233 patent. Cadbury counterclaimed that Wrigley's menthol/WS-23 chewing gum products infringed the '893 patent and that the '233 patent was invalid for obviousness and anticipation. The district court granted SJ of invalidity of the '233 patent and noninfringement of the '893 patent.

On appeal, the Court affirmed that U.S. Patent No. 5,688,491 ("Shahidi") anticipated claim 34 of the '233 patent. Shahidi discloses various oral compositions, including chewing gum. Shahidi also lists categories of components that can be included in the compositions, including "essential" and "non-essential," and certain "non-essential" components are noted as "preferred." Within the category of "cooling agents," Shahidi discloses WS-3 and WS-23 as two of the three "particularly preferred cooling agents." Slip op. at 8.

"The question for purposes of anticipation is therefore whether the number of categories and components in [the prior art reference] was so large that the combination [of items from various categories] would not be immediately apparent to one of ordinary skill in the art." Slip op. at...