Wrigley v. Cadbury: Judge Newman Emphasizes Commercial Success and Copying

By William A. Hector and R. Hain Swope, Gibbons

In WM. Wrigley Jr. v. Cadbury Adams USA, a recent Court of Appeals for the Federal Circuit decision related to chewing gum patents, Wrigley brought suit against Cadbury for infringement of its U.S. Patent Number 6,627,233 ("the '233 patent") claiming a chewing gum including a combination of menthol and a physiological cooling agent, WS-23. Cadbury counterclaimed against Wrigley for infringement of Cadbury's U.S. Patent Number 5,009,893 ("the '893 patent") claiming a chewing gum including menthol and a similar cooling agent entitled WS-3.

The Federal Circuit affirmed the District Court holding that claim 34 of the Wrigley '233 patent was invalid for anticipation and obviousness. Regarding the issue of obviousness, the majority held that Wrigley had not met its burden of overcoming a prima facie case of obviousness based on a combination of two references. Of interest here is Circuit Judge Newman's dissent regarding this issue. Judge Newman argued that prima facie obviousness was not established such that the burden of proof was shifted to Wrigley to demonstrate unexpected results for the claimed invention. Rather, Judge Newman argued that a prima facie case of obviousness cannot be sustained where there is evidence of commercial success and copying by the infringer.

In support of its commercial success argument, Wrigley produced a Cadbury internal study that stated that Wrigley products were superior to similar Cadbury products. The study, however, concluded that the advantages of the Wrigley products "differed from Cadbury's comparable product in several ways that could have contributed to the commercial success of Wrigley's gum." Slip Op. at 13. The majority therefore concluded that Wrigley did not show a nexus between the commercial success and the claimed invention. Judge Newman, however, pointed out that Cadbury internal documents projected that, if it did not reformulate its gums to copy Wrigley's new gums, it would lose substantial market share and revenue in the relevant market. Judge Newman therefore argued that these and similar statements in the Cadbury internal documents clearly established the nexus the majority found lacking.

In the authors' view, Judge Newman's analysis on the issue of copying and related commercial success might be relevant in view of the current litigation between Apple, Inc. and Samsung Electronics Co. Ltd., and the proofs in that case.

Hector-W-121x160pxWilliam A. Hector, Associate
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Swope-R 121x160pxR. Hain Swope,
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