[F]or commercial success to be probative evidence of nonobviousness, a nexus must be shown between the claimed invention and the evidence of commercial success.
On June 22, 2012, in Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, the U.S. Court of Appeals for the Federal Circuit (Newman, Bryson,* Fogel) affirmed the district court's summary judgment that Wrigley did not infringe U.S. Patent No. 5,009,893, and that U.S. Patent No. 6,627,233 was invalid for anticipation and obviousness. The patented technology related to chewing gum that provides a cooling sensation when chewed. The Federal Circuit stated:
For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim, "arranged or combined in the same way as in the claim." [U.S. Patent No. 5,688,491, the Shahidi prior art reference] envisions using WS-23 and menthol in a single product. While Shahidi discloses a number of different combinations of cooling and flavoring elements, one of them is the combination of menthol, which Shahidi identifies as one of the "most suitable" flavoring agents, with WS-23, which Shahidi identifies along with WS-3 as among a group of three "particularly preferred cooling agents." Based on the disclosure of the combination of those components, we agree with the district court that Shahidi anticipates claim 34.
This is not a case in which the prior art reference merely discloses a genus and the claim at issue recites a species of that genus. In such a case, the issue of anticipation turns on whether the genus was of such a defined and limited class that one of ordinary skill in the art could "at once envisage" each member of the genus. Shahidi specifically discloses WS-23 as a coolant and menthol as a flavoring agent. The question for purposes of anticipation is therefore whether the number of categories and components in Shahidi was so large that the combination of WS-23 and menthol would not be immediately apparent to one of ordinary skill in the art. Shahidi discloses component amounts within the ranges claimed in claim 34. Even more importantly, Shahidi specifically discloses the use of both WS-23 and menthol in chewing gum . . . . Given the objective of the '233 patent, to obtain "a cooling flavor composition that will contribute a long-lasting cooling sensation" and a chewing gum with a "clean, high-quality flavor . . . with a good cooling effect," the Shahidi reference clearly identifies the combination of WS-23, which Shahidi identifies as one of three "particularly preferred" cooling agents, and menthol, which Shahidi identifies as being among the "most suitable" flavoring ingredients. The district court therefore correctly held that Shahidi anticipates claim 34 of the '233 patent.
Wrigley also argues that the district court erred in finding that the combination recited in the '233 patent would have been obvious in light of [U.S. Patent No. 5,698,181 ("Luo") and an article written by Dr. M. A. Parrish]. In particular, Wrigley argues that the combination of WS-23 and menthol resulted in unexpected cooling, beyond what would have been predicted by one of ordinary skill in the art.
Evidence that a combination of known components results in an effect greater than the predicted additive effect of the components can support a finding of nonobviousness. In this case, however, the synergistic effect of combining coolants had already been discovered, as reflected in the prior art. Luo disclosed a "synergy" between menthol and WS-3, when menthol was included in high amounts, and disclosed that the combination produced an "enhanced breath-freshening effect" in which each component played "a vital role." Parrish identified WS-3 and WS-23 as especially favored cooling agents for commercial use from among 1200 tested compounds that induced a cooling effect. Moreover, Parrish pointed to four characteristics shared by the WS-3 and WS-23 molecules that were associated with their physiological cooling effect, suggesting that the two compounds would likely have similar effects when ingested. Therefore, to 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.
As evidence that the claimed combination produced unexpected results and drove the commercial success of Wrigley's chewing gums, Wrigley points to an internal Cadbury study comparing Wrigley and Cadbury products. That study concluded that the flavor and cooling features of Wrigley's products were superior to those of the Cadbury products with which they were compared. The study noted, however, that besides having a "newer, more advanced cooling system," the tested Wrigley products differed from the comparable Cadbury products in a number of other ways, including having sweetener levels three times higher than Cadbury's products; more encapsulated sweeteners for longer sweetness duration; higher gum base and filler levels that allowed for a more efficient flavor release; and significantly more expensive ingredients. Moreover, the "cooling system" used in Wrigley's products was not simply a combination of menthol and WS-23, as recited in claim 34 of the '233 patent. Instead, as the district court noted, it was a formulation that "contained menthol and WS-23 along with several other ingredients," and the menthol and WS-23 components were present in quantities not specifically identified in claim 34. Therefore, Cadbury's study does not demonstrate that the broadly claimed combination recited in claim 34 results in unexpected cooling beyond the degree that was already predictable based on the prior art.
The same analysis applies to Wrigley's argument that the commercial success of its chewing gum containing menthol and WS-23 shows that the claimed invention was nonobvious. As the district court noted, for commercial success to be probative evidence of nonobviousness, a nexus must be shown between the claimed invention and the evidence of commercial success. In this case, the district court concluded, Wrigley failed to establish such a nexus. Rather, the court observed, in the documents on which Wrigley relies, "many factors were identified as contributing to [Wrigley's commercial] success, including marketing efforts, the way in which the gum was packaged, the amounts of gum base and sweeteners used, and the cooling system used." In sum, the district court found "no evidence of any nexus between the success of Wrigley's chewing gums covered by Claim 34 and the specific combination of menthol and WS-23," and therefore held that "the fact that Wrigley's gums are successful does not alter the obviousness analysis."
For the reasons given by the district court, we agree that Wrigley has not established a sufficient nexus between the invention of claim 34 of the '233 patent and the success in the marketplace of its chewing gum products that contain a combination of menthol and WS-23. Cadbury's internal study of Wrigley's product showed that it differed from Cadbury's comparable product in several ways that could have contributed to the commercial success of Wrigley's gum. Because the evidence does not show that the success of Wrigley's product was directly attributable to combining WS-23, rather than WS-3, with menthol, the district court properly discounted the evidence of commercial success as a secondary consideration rebutting Cadbury's showing that the claimed invention would have been obvious.
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