Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC (631 F. Supp. 2d 1010, 2009)

United States District Court for the Northern District of Illinois 2009-06-26

Citations

Full opinion text

MEMORANDUM OPINION AND ORDER

ROBERT M. DOW, Jr., District Judge.

Before the Court are several pending motions for summary judgment. Defendant Cadbury Adams USA LLC (“Cad-bury”) moved for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, seeking to establish the invalidity of Claim 34 of U.S. Patent No. 6,627,233 (the “'233 patent”), owned by Plaintiff, Wm. Wrigley Jr. Co. (‘Wrigley”), on grounds of anticipation and obviousness. Wrigley moved for partial summary judgment of non-infringement of U.S. Patent No. 5,009,893 (the “'893 patent”), owned by Cadbury [209]. Cadbury then filed a cross-motion for literal infringement by Wrigley of the '893 Patent and for validity of the '893 patent [230]. The case is about cooling agents in chewing gum and mint products — specifically, Cadbury’s use of “WS-3” in its products and Wrigley’s use of “WS-23” in its products. Each party claims that the other infringed its intellectual property rights.

For the following reasons, Cadbury’s motion for summary judgment of invalidity is granted, Wrigley’s motion for partial summary judgment of non-infringement [209] is granted, and Cadbury’s cross-motion for literal infringement [230] is granted in part and denied in part.

I. Facts

The Court takes the relevant facts primarily from the parties’ respective Local Rule (“L.R.”) 56.1 statements. The Court takes no position on whose version of disputed factual matters is correct. Local Rule (“L.R.”) 56.1 requires that statements of facts contain allegations of material fact, and that the factual allegations be supported by admissible record evidence. See L.R. 56.1; Malec v. Sanford, 191 F.R.D. 581, 583-85 (N.D.Ill.2000). The Seventh Circuit teaches that a district court has broad discretion to require strict compliance with L.R. 56.1. See, e.g., Koszola v. Bd. of Educ. of the City of Chicago, 385 F.3d 1104, 1109 (7th Cir.2004); Curran v. Kwon, 153 F.3d 481, 486 (7th Cir.1998) (citing Midwest Imps., Ltd. v. Coval, 71 F.3d 1311, 1317 (7th Cir.1995) (collecting cases)).

Where a party has offered a legal conclusion or a statement of fact without offering proper evidentiary support, the Court will not consider that statement. See, e.g., Malec, 191 F.R.D. at 583. Additionally, where a party improperly denies a statement of fact by failing to provide adequate or proper record support for the denial, the Court deems admitted that statement of fact. See L.R. 56.1(a), (b)(3)(B); see also Malec, 191 F.R.D. at 584. The requirements for a response under Local Rule 56.1 are “not satisfied by evasive denials that do not fairly meet the substance of the material facts asserted.” Bordelon v. Chicago Sch. Reform Bd. of Trs., 233 F.3d 524, 528 (7th Cir.2000). In addition, the Court disregards any additional statements of fact contained in a party’s briefs but not in its fact statements. See, e.g., Malec, 191 F.R.D. at 584 (citing Midwest Imps., 71 F.3d at 1317).

A. The'233 Patent

U.S. Patent No. 6,627,233 (the “'233 patent”) is assigned to Wrigley. Cadbury SOF ¶ 6. Wrigley filed its patent application on March 16, 2000, and the patent issued on September 30, 2003. Id. The '233 patent relates to chewing gums that contain physiological cooling agents and methods for producing those chewing gums. Cadbury Mem. Ex. A, '233 Patent, at 1:12-15. The relevant claim at issue in this case from the '233 patent is Claim 34. Cadbury SOF ¶ 4. Claim 34 reads as follows:

A chewing gum composition comprising:

a) about 5% to about 95% gum base;

b) about 5% to about 95% bulking and sweetening agent; and

c) about 0.1 to about 10% flavoring agent wherein the flavoring agent comprises N-2,3-trimethyl-2-isopropyl butanamide and menthol.

Cadbury Mem., Ex. A, '233 Patent, at 56:41-47.

During the claim construction phase of the case, Judge Zagel defined several key terms of the '233 patent in a Memorandum Opinion and Order before this case was transferred to this Court. 5/18/07 Mem. Op. [192], 500 F.Supp.2d 922. The percentages of the ingredients refer to the “percent by weight of the chewing gum composition.” Id. at 928. The term “N-2,3-trimethyl-2-isopropyl butanamide” refers to “a carboxamide formula commonly known as WS-23.” Id. Judge Zagel defined the term “menthol” to be “menthol, as a distinct and separate substance, as distinguished from being present in mint oils.” Id. at 936.

B. Prior Aort Use of Carboxamides and Menthol in Chewing Gum Products

The following facts detail the prior art relating to Cadbury’s argument that Wrigley’s '233 patent is invalid. Prior to the '233 patent, chewing gums had been known to contain between 5 and 95 percent gum base, between 5 and 95 percent bulking and sweetening agents, and between 0.1 and 10 percent flavoring agents. Wrigley’s Resp. ¶ 12. The combination of WS-23 and menthol is the novel feature of Claim 34. Id.

Menthol, which is a component of peppermint oil, is a well-established flavoring agent in chewing gum and confectionaries. Cadbury SOF ¶ 22. Menthol provides a cooling sensation when it interacts with nerve receptors in the mouth. Id. However, while menthol imparts a desirable cooling sensation, at higher concentrations it also can impart a bitter flavor. Id. Thus, gum makers have run into difficulties when trying to create cooler chewing gums by using high concentrations of menthol. Id.

To address this problem, researchers at Wilkinson-Sword Co. researched other compounds that could be used as cooling agents in place of menthol. Cadbury Mem., Ex. W, Dr. M.A. Parrish, Market Warms to Physiological Cooling Agents, Mfg. Chemist (Feb.1987) (the “Parrish article”), at 1. Researchers discovered 1200 compounds that produce a cooling effect without the bitterness of menthol. Id. From these 1200 compounds, two were selected for commercialization based upon several parameters, including “low toxicity, cooling activity together with general efficacy and acceptability, low odour and taste, low volatility, stability in use, and cost.” Id. These two compounds were N-ethyl-p-menthane-3-carboxamide (WS-3) and N-2,3-trimethyl-2-isopropyl butanamide (WS-23). Id. The Parrish article, which was published in 1987, described the two compounds. Id.; Cadbury SOF ¶ 24. In the article, WS-3 and WS-23 are described as “compounds of high ‘quality’ ” in that they are “characterized by high cooling activity with no side-effects such as tingling, stinging or burning sensations.” Cadbury Mem., Ex. W, Parrish Article, at 1. Chewing gum was listed as a product in which WS-23 and WS-3 could be used, and the amounts suggested for use were between 0.5 and 1 percent by weight. Id. The Patent Office did not consider the Parrish article during the prosecution of the '233 patent. Cadbury SOF ¶ 24.

Wilkinson-Sword previously had obtained patents on the cooling agents WS-3 and WS-23: the former was included in U.S. Patent No. 4,136,163 to Watson et al. (the “Watson patent”), which issued on January 23,1979 and covered a class of N-substituted-p-menthane carboxamides, including WS-3. The latter was included in U.S. Patent No. 4,230,688 to Rowsell et al. (the “Rowsell patent”), which issued on October 28, 1980 and covered a class of acyclic carboxamides, including WS-23. Wrigley Resp. ¶ 26.

Cadbury also applied for and obtained two patents that preceded the '233 patent, both of which dealt with cooling agents in chewing gums: they are the '893 patent and the Luo patent. (Recall that the '893 patent is also the subject of Wrigley’s motion for summary judgment of non-infringement.) Cadbury first obtained the '893 patent, which was directed toward edible compositions that contained “a cooling agent comprising [menthol] and an N-substituted-p-menthane carboxamide.” Cadbury Mem., Ex. DD, '893 Patent, Cover. Cadbury filed the '893 patent application on July 17,1989, and the patent issued on April 23, 1991. Id. The '893 patent describes a chewing gum composition comprising “a gum base, a sweetener, and a cooling composition comprising menthol and an N-substituted-p-menthane carboxamide” as a preferred embodiment of the invention. Id. at 2:42-48. The '893 patent lists WS-3 as a preferred N-substituted-pmenthane carboxamide. Id. at 4:66-67.

The second pertinent Cadbury patent is U.S. Patent No. 5,698,181 to Luo (the “Luo patent”), and it was directed to chewing gum compositions that contained a cooling agent comprising menthol and an N-substituted-p-menthane carboxamide. Cad-bury Mem., Ex. N, Luo Patent, Cover. Cadbury filed the Luo patent application on May 11, 1995, and the Luo patent issued on December 16, 1997. Id. The Luo patent describes a formulation of chewing gum comprising a gum base, a bulking agent, and a cooling composition comprising menthol and an N-substituted-p-men-thane carboxamide. Id. The Luo patent discloses that chewing gum base can be present in “amounts up to 99%, preferably from about 40% to about 85%, and more preferably from about 40% to about 75%.” Id. at 11:29-32. The Luo patent then discloses that bulking agents “may be used in [a]mounts up to about 60%, and preferably in [a]mounts from about 25% to about 60%, by weight of the chewing gum composition.” Id. at 12:13-16. Luo also explains that sweetening agents may be used in chewing gum compositions “from about 0.001% to about 1%.” Id. at 13:26-28. The Luo patent discloses that “the amount of cooling composition present in an edible composition will be from about 0.01% to about 2% by weight of the edible composition.” Id. at 7:4-7. The cooling composition disclosed and described in the Luo patent comprises menthol and an N-substituted-p-menthane carboxamide. Id. In Claim 2 of the Luo patent, WS-3 is specifically claimed as the N-substituted-p-men-thane carboxamide to be used in combination with menthol. Id. at 10:3-14. The Luo patent was not disclosed to the Patent Office during the prosecution of the '233 patent, but its PCT Publication No. WO 96/17524 was disclosed. Cadbury Mem., Ex. A, '233 Patent, Cover.

In addition to the '893 patent and the Luo patent, two patents owned by Procter & Gamble Company also are relevant to the Court’s analysis: Procter & Gamble owns U.S. Patent No. 5,451,404 issued to Furman (the “Furman patent”) and U.S. Patent No. 5,688,491 issued to Shahidi (the “Shahidi patent”). Procter & Gamble filed the Furman patent application on June 28, 1993, and the Furman patent issued on September 19, 1995. Cadbury Mem., Ex. V, Furman Patent, Cover. Procter & Gamble filed the Shahidi patent application on April 17, 1996, and the Shahidi patent issued on November 18, 1997. Cadbury Mem., Ex. HH, Shahidi Patent, Cover.

The Furman patent was disclosed to the Patent Office during the prosecution of the '233 patent. Cadbury Mem., Ex. A, '233 Patent, Cover. The Furman patent was not the subject of any of the Patent Examiner’s rejections. Cadbury Mem., Ex. C, Tab 2, at W000142-149; id., Tab 8, at W000258-265; id., Tab 13, at W000308313. The Furman patent relates to cooling compositions that comprise a ketal and a secondary coolant, which could consist of either menthol, carboxamides, or mixtures of menthol and carboxamides. Cadbury Mem., Ex. V, Furman Patent, Cover. The Furman patent discloses that the claimed cooling composition could be used in edible compositions, including chewing gum. Id. at 6:36-38. The Furman patent states that “menthol and specific carboxamides” are the most preferred secondary coolants to be used with a ketal. Cadbury Mem., Ex. V, Furman Patent, at 4:35-36. The Furman patent states that the most useful carboxamides for the claimed invention are the N-substituted-p-menthane-3-earboxamides described in the Watson patent and acyclic tertiary and secondary carboxamides described in the Rowsell patent. Id. at 4:41^48; 5:20-23. Both the Watson patent and the Rowsell patent are incorporated by reference in the Furman patent. Id. at 4:41-45.

The Rowsell patent relates to certain acyclic carboxamides that have a physiological cooling effect. Cadbury Mem., Ex. 0, Rowsell Patent, at 1:48-55. The Row-sell patent discloses at least forty-eight different acyclic carboxamides, one of which is WS-23. Id. at 2:56-3:40. The Rowsell patent lists chewing gum as one potential edible composition that could contain the claimed carboxamides. Id. at 4:43-45; 5:37-39; 5:67-6:1. The Rowsell patent further states:

The active compound will be added to the recipe at a convenient point and in an amount sufficient to produce the desired cooling effect in the final product. As already indicated, the amount will vary depending up on the particular compound, the degree of cooling effect desired and the strength of other flavors. For general guidance, however, amounts in the range 0.1 to 5% by weight based on the total composition will be found suitable.

Id. at 6:7-13. The Rowsell patent also discloses how to make WS-23. Id. at 11:48-68.

The Furman patent contains two examples, one for a toothpaste composition and one for a mouth-rinse composition, that include menthol and WS-23 among other ingredients. Cadbury Mem., Ex. V, Fur-man Patent, at 8:20-9:7. In both examples, the menthol added is stipulated as menthol from peppermint oil and not “added as menthol.” Id. at 8:42, 9:6.

The Furman patent lists chewing gum along with several other edible compositions in which the claimed cooling compounds would “find particular utility.” Cadbury Mem., Ex. V, Furman Patent, at 6:65-67. Furman goes on to state that “the formulation of such confections will be by ordinary techniques and according to conventional recipes.” Id. at 6:68-7:1. The cooling compound is to be added “in an amount sufficient to produce the desired cooling effect.” Id. at 7:2-5. The Furman patent then states that for oral compositions, the preferred amounts of the cooling compositions disclosed in the Row-sell patent are from 0.0500 to about 0.2000 by weight. Id. at 7:58-62.

The Furman patent claims mixtures of WS-23 and menthol along with a ketal. Id. at 10:46-51. Claim 10 of the Furman patent claims a composition wherein the secondary coolant present along with the ketal is menthol, WS-23, WS-3, or mixtures thereof. Id. Claim 11 claims the composition of Claim 10 with the further limitations that WS-23 is to be “present at a level from about 0.0500 to about 0.2000” percent by weight and menthol is to be “present at a level from about 0.0500 to 0.3500” percent by weight. Id. at 10:52-58.

The second relevant Procter & Gamble patent is the Shahidi patent, which is directed towards oral compositions comprising xylitol, copper bis-glycinate, and a carrier for these substances. Cadbury Mem., Ex. HH, Shahidi Patent, at 2:20-24. The Shahidi patent was not disclosed to the Patent Office during the prosecution of the '233 patent application. Cadbury SOF ¶ 54.

The Shahidi patent describes chewing gums along "with dentrifices and mouthwashes as preferred embodiments of the claimed invention. Cadbury Mem., Ex. HH, Shahidi Patent, at 4:4-5. Xylitol, copper bis-glycinate, and a pharmaceutically acceptable carrier are set forth as the three essential components of the invention described in Shahidi. Id. at 2:55-56; 3:15; 3:65. Cooling agents, humectants, surfactants, stannous salts, flavoring agents, and sweeteners are some of the ingredients that are listed as other possible components of the claimed compositions. Id. at 4:14-16; 4:50-51; 5:35-36; 6:62-63; 7:13-14; 7:27-28. The Shahidi patent describes cooling agents as a “preferred nonessential” component of the invention, and suitable cooling agents are given as those described in the Watson patent, the Rowsell patent, and two other patents. Id. at 4:14-20. The Rowsell and Watson patents are incorporated by reference into the Shahidi patent. Id. at 4:14-21. The Shahidi patent lists both WS-3 and WS-23 as “particularly preferred cooling agents.” Id. at 4:21-26. The Shahidi patent also lists menthol as one of twenty-three possible flavoring agents that could be used. Id. at 7:13-14, 7:18. Shahidi then states that the “flavoring agents comprise from about 0.01% to about 5% * * * of the herein described composition.” Id. at 7:23-26.

The Shahidi patent also describes adding xylitol, mannitol, and sorbitol to chewing gum in amounts from 0.5 to 80 percent. Id. at 3:9-10. Xylitol, mannitol, and sorbitol are sweeteners. Id. at 3:3-5; see also Cadbury Mem., Ex. A, '233 Patent, at 17:32-38. The Shahidi patent also describes four chewing gum examples, and each includes a gum base in an amount of 25 percent by weight. Cadbury Mem., Ex. HH, Shahidi Patent, at 9:28-10:8.

C. Commercial Success of Wrigley’s Chewing Gum Products Covered by the '233 Patent

Wrigley provides information describing the commercial success of its gum products covered by Claim 34 of its '233 patent. Wrigley’s Doublemint, Eclipse, Orbit, Orbit White, Winterfresh, Spearmint, and select Excel formulas are covered by Claim 34 of the '233 patent. Wrigley SOAF ¶ 36; Cadbury Resp. SOAF ¶ 36. Wrigley’s Orbit, Orbit White, Eclipse, Winterfresh, and Spearmint all have had large commercial sales. Id. Several factors have contributed to this commercial success. The Orbit Launch Analysis identifies packaging and marketing as two factors that contributed to the success of Orbit. Id. Amounts of gum base and sweetener were also factors identified by Wrigley as driving Orbit’s success. Id.

Wrigley also submitted evidence of a licensing agreement and evidence showing that Cadbury reformulated some of its chewing gums to include WS-23 in an effort to show patent validity. A licensing agreement between Hershey and Wrigley gives Hershey the right to make products that are encompassed by Claim 34 of Wrigley’s '233 patent. Wrigley SOAF, Ex. 27, at 1. In an effort to reformulate their chewing gums, Cadbury added WS-23 to its gums’ existing cooling systems. Cadbury Resp. SOAF ¶ 37.

A person of ordinary skill in the art for the purposes of the '233 patent would have at least a bachelor’s degree in a science-related field, such as chemistry, biology, or food science, and 3-5 years of experience in food science, flavor chemistry, oral product formulations, or gum and confectionary manufacturing, or an advanced degree in related sciences and work in the fields of chewing gum, confections, or flavor chemistry. Wrigley SOAF ¶ 40.

D. The '893 Patent

Cadbury asserts that Wrigley’s chewing gum products infringe Claims 1-3 and 6 of the '893 patent and that Wrigley’s mint products infringe Claims 12, 13, and 17 of the '893 patent. Wrigley SOF ¶ 5. According to Cadbury, the accused Wrigley products infringe the '893 patent either literally or under the doctrine of equivalents. Wrigley moves for summary judgment of non-infringement. Claim 1 of the '893 patent reads as follows:

A chewing gum composition capable of providing long-lasting, breath freshening perception without bitterness comprising a gum base, a sweetener and a cooling composition comprising menthol and an N-substituted-p-menthane carboxamide of the formula:

C6CO-NRxR2 wherein Rx, when taken separately, is selected from the group consisting of hydrogen, and an aliphatic radical containing up to 25 carbon atoms;

R2, when taken separately is selected from the group consisting of a hydroxy radical, and an aliphatic radical containing up to 25 carbon atoms, with the proviso that when Rx is hydrogen, R2 may also be an aryl radical of up to 10 carbon atoms and selected from substituted phenyl, phenalkyl, naphthyl and substituted naphthyl, and pyridyl; and Rx and R2 when taken together, represent a cyclic or heterocyclic group of up to 25 carbon atoms.

Cadbury Mem., Ex. DD, '893 Patent, at 12:46-13:4 (emphasis added). Claims 2, 3, and 6 of the '893 patent all depend from Claim 1 and thus include all of the limitations of Claim 1. Wrigley SOF ¶¶ 11, 13, 15. Claim 12 of the '893 patent reads as follows:

A confectionary composition capable of providing long-lasting, breath freshening perception without bitterness comprising a confectionary matrix and a cooling composition comprising menthol and an N-substituted-p-menthane carboxamide of the formula:

C6CO-NRxR2 wherein Rx, when taken separately, is selected from the group consisting of hydrogen, and an aliphatic radical containing up to 25 carbon atoms;

R2, when taken separately is selected from the group consisting of a hydroxy radical, and an aliphatic radical containing up to 25 carbon atoms, with the proviso that when Rx is hydrogen, R2 may also be an aryl radical or up to 10 carbon atoms and selected from substituted phenyl, phenalkyl, naphthyl and substituted naphthyl, and pyridyl; and Rx and R2 when taken together, represent a cyclic or heterocyclic group of up to 25 carbon atoms.

Cadbury Mem., Ex. DD, '893 Patent, at 13:44A14:5 (emphasis added).

During claim construction and prior to the transfer of this case to this Court, Judge Zagel defined several of the terms in the '893 patent. For purposes of this Court’s analysis, the term “menthol” means “menthol, a distinct and separate substance, as distinguished from being present in mint oils.” Mem. Op. [192] at 936. The term “N-substituted-p-menthane carboxamide” is “a class of molecules with the chemical formulas set forth in Claims 1 and 12 of the '893 patent.” Id. The term “N-ethyl-p-menthane-3-carboxamide” is “an N-substituted-p-menthane carboxamide known by the trade name WS-3.” Id. During claim construction, Judge Zagel construed the '893 patent to exclude “non-N-substituted-p-menthane carboxamides” from the claimed invention. Id. at 936. Although the '893 patent does not mention or criticize WS-23 (see Cadbury SOAF ¶¶ 2-3), Judge Zagel determined that statements in the disclosure and in Claims 1 and 12 amounted to “an expression of manifest restriction.” Id.

E. Wrigley’s Chewing Gum Products

The accused Wrigley chewing gum products all contain a gum base, a sweetener, and menthol. Wrigley Resp. SOAF ¶ 23. The accused Wrigley mint products are confectionary compositions that contain menthol. Id. ¶ 26. None of the accused Wrigley products contains an N-substituted-p-menthane carboxamide (such as WS-3); rather, all of the accused products contain WS-23 — an acyclic carboxamide. Wrigley SOF ¶ 18; Cadbury Resp. ¶ 18.

Cadbury also accuses some of Wrigley’s experimental chewing gum formulations of literally infringing Claims 1-3 and 6 of the '893 patent. Cadbury SOFX ¶ 7. Cadbury contends that Wrigley made experimental chewing gum formulations that included menthol and WS-3 and infringed the '893 patent claims. Id. ¶ 13. Specifically, Cad-bury accuses Wrigley’s Eclipse Winter-fresh Australia (Experimental 24N-167), Orbit Sweet Mint Pellet (3515-01Z and 3439-02N), and Excel Polar Ice (3484-01W) of infringing the '893 patent. Cad-bury Cross-Motion Reply at 4-5. Wrigley responds that Cadbury has failed to demonstrate that any formulations contained each of the limitations of the '893 patent claims or that the allegedly infringing formulations were made in the United States.

Experimental 24N-167 is a pellet gum which contains menthol and WS-3. Wrigley SOAFX ¶ 1; Cadbury Resp. SOAFX ¶ 1. Several Wrigley employees stated in depositions that a chewing gum pellet consisted of a chewing gum center and a coating. Id. Sonya Johnson, a U.S.-based Wrigley employee, listed ingredients used in Experimental 24N-167 and those used in a control gum that contained WS-23 and WS-3 in her laboratory notebook. Id., Ex. I, at W160348. In addition, a weekly progress report stated that early testing for this research was “O.K.” and that subsequent testing was scheduled to take place in Australia. Id., Ex. 0, at W145596, W145608. The cited documents date back to May to July of 2002. Id. Similarly, Cadbury’s expert stated that the documents he reviewed indicated that the products had been made in the period from March to June of 2002. Id. Also, Johnson’s deposition testimony states that the early stage testing used “lab gum.” Cad-bury takes this term, along with the report stating that early stage testing was “O.K.,” to mean that a chewing gum composition that contains menthol and WS-3 as listed in the notebook was made in Wrigley’s research and development department in the United States.

Orbit Sweet Mint Pellet 3515-01N and 3515-01Z both were identified as candidates for replacing WS-23 with WS-3. Cadbury Resp. SOAFX, Ex. O, at W145608. However, there is a dispute over where these gum formulations are made. It is undisputed that the commercialized 3515-01Z formulation is manufactured in St. Petersburg, Russia. Cad-bury’s Resp. SOAFX ¶ 6. Wrigley has a research and development department in Chicago that supports the Wrigley corporation worldwide. Id. The document identifying replacement of WS-23 by WS-3 merely states that this formulation or another formulation is to be tested with WS-3 in “St. Pete” pending the results of another test. Cadbury Resp. SOAFX, Ex. 0, at W145608. There is also a dispute as to whether there was a 3515-01N formulation made with WS-3 and if so, where it was made. The document cited states that pending the results of a different test, this formulation is to be made “in Poznan” with WS-3. Cadbury Resp. SOAFX, Ex. 0, at W145608. There is a Wrigley factory in Poznan, Poland. Cadbury Resp. SOAFX ¶ 4. Testing for the Poznan and St. Peters-burg sweet mint formulas was scheduled. Cadbury Resp. SOAFX, Ex. S, at W156881-83.

Excel Polar Ice 3484-01 W also was identified as a candidate for replacing WS-23 with WS-3. Cadbury Resp. SOAFX, Ex. 0, at W145608. Documentation shows that 3484-01W or 3515-01N could be tested with WS-3 “in Poznan” by Wrigley. Id. It is not clear if 3484-01 W was ever made, and if it was, where it was made. According to the expert testimony of Robert McGorrin, Wrigley produced experimental Big Red, Eclipse Winterfresh, Orbit Sweetmint, and Excel Polar Ice formulations that contained gum base, sweetener, WS-3, and menthol. Cadbury SOFX ¶ 16., Ex. B, McGorrin Report, at 13-14.

II. Analysis

Summary judgment is proper where “the pleadings, depositions, answers to the interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). In determining whether there is a genuine issue of fact, the Court “must construe the facts and draw all reasonable inferences in the light most favorable to the nonmoving party.” Foley v. City of Lafayette, Ind., 359 F.3d 925, 928 (7th Cir.2004). To avoid summary judgment, the opposing party must go beyond the pleadings and “set forth specific facts showing that there is a genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (internal quotation marks and citation omitted).

A genuine issue of material fact exists if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. The party seeking summary judgment has the burden of establishing the lack of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Summary judgment is proper against “a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial.” Id. at 322, 106 S.Ct. 2548. The non-moving party “must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “The mere existence of a scintilla of evidence in support of the [non-movant’s] position will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmovant].” Anderson, 477 U.S. at 252, 106 S.Ct. 2505. Summary judgment is “as appropriate in a patent case as in any other.” Avia Group Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1561 (Fed.Cir.1988), abrogated on other grounds by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed.Cir.2008). Questions of patent validity and of infringement are both amenable to summary judgment. Id.

A. The Validity of the '233 Patent

Patent validity is a question of law, not fact. Avia, 853 F.2d at 1562. A patent is presumed to be valid, and the party alleging invalidity must “establish facts, by clear and convincing evidence, which persuasively lead to the conclusion of invalidity.” Id.; 35 U.S.C. § 282.

Cadbury moves for summary judgment, arguing that Claim 34 of Plaintiff Wrigley’s '233 patent is invalid as a matter of law under the doctrines of anticipation and obviousness. Cadbury first argues that Claim 34 was anticipated by the Furman patent, the Shahidi patent, and the Luo patent. Cadbury also argues that Claim 34 is obvious in view of the Luo patent and the Parrish article. The Court agrees that Claim 34 was anticipated by the Shahidi patent and also that Claim 34 is obvious.

1. Anticipation

35 U.S.C. § 102(b) will bar issuance of a patent if “the invention was patented or described in a printed publication in this or a foreign country * * * more than one year prior to the date of the application for patent in the United States.” A patent is invalid on anticipation grounds if “a single prior art reference discloses each and every limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed.Cir.2003) (citing Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed.Cir.1987)). A single prior art reference will anticipate the claimed invention if it either expressly or inherently discloses each and every claim limitation. Id. at 1379. Anticipation is a question of fact. SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (2005). However, “without genuine factual disputes underlying the anticipation inquiry, the issue is ripe for judgment as a matter of law.” Id.

A prior patent is anticipatory if one of skill in the art would be able to combine the information in the prior patent with his own knowledge of the art to make the claimed invention. Gen. Elec. Co. v. Hoechst Celanese Corp., 740 F.Supp. 305, 313 (D.Del.1990). A prior patent can anticipate a later claimed invention even if the prior patent only suggested the claimed invention, as long as those suggestions are enabling to one of ordinary skill in the art. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed.Cir.2001). The suggestions need not actually be performed in the prior patent to be anticipatory. Id. Enablement of a prior art reference may be demonstrated by other prior art references. Id. Even though anticipation analysis requires all of the limitations of a claimed invention to be present in a single prior art reference, other references may be used to show that the claimed process was known by or would have been obvious to one of ordinary skill in the art more than one year prior to the patentee’s filing date. Id.

a. The Furman patent

Cadbury first argues that Furman patent describes every claim limitation of Claim 34 of the '233 patent, and that therefore Claim 34 is invalid for anticipation as a matter of law. Cadbury contends that Furman describes using both menthol and WS-23 in a cooling composition for chewing gums in amounts that are encompassed in the ranges set forth in Claim 34. Wrigley responds that the Furman patent did not disclose the combination of menthol and WS-23 in a chewing gum composition, and that the Furman patent does not provide guidance or direction to combine WS-23 and menthol in a gum composition that includes all of the ingredients in the amounts specified in Claim 34. Wrigley has the better argument.

The Furman patent application was filed on June 28, 1993, and the patent issued on September 19, 1995. Since the Furman patent issued more -than one year before the '233 patent application was filed, it is prior art for the purposes of Section 102(b). See Bristol-Myers, 246 F.3d at 1379. The PTO considered the Furman patent during the prosecution of the '233 patent; thus the '233 patent was allowed over Furman. See Cadbury Mem., Ex. A, '233 Patent, Cover. While a patent examiner’s decision with respect to anticipation is not binding on this Court, it is material evidence that the Court “must consider in determining whether the party asserting invalidity has met its statutory burden by clear and convincing evidence.” Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1555 (Fed.Cir.1985).

The Furman patent relates to cooling compositions that comprise a ketal and a secondary coolant, which could consist of either menthol, carboxamides, or mixtures of menthol and carboxamides. Cadbury Mem., Ex. Y, Furman Patent, Cover. Furman describes combining the claimed cooling composition with an edible carrier and a flavoring or coloring agent, and chewing gum is listed as a particularly useful product to make with this combination. Id. at 6:59-7:8. Furman goes on to state that chewing gum using the disclosed cooling composition will be made by “ordinary techniques and according to conventional recipes.” Id. Furman incorporates the Rowsell patent by reference, which describes and claims acyclic carboxamides such as WS-23. In Claim 10, Furman claims a cooling composition requiring a ketal, and then as secondary coolants menthol, WS-23, and WS-3, and mixtures of them. The amount for this coolant is then claimed in Claim 11 as including a ketal in an amount from 0.05 to 0.1 percent by weight, WS-23 in an amount from 0.05 to 0.2 percent by weight, and menthol in an amount from 0.05 to 0.35 percent by weight.

Claim 34 of the '233 patent claims a chewing gum composition comprising a chewing gum base in an amount from 5 to 95 percent by weight, sweeteners and bulking agents from 5 to 95 percent by weight, and a flavoring agent from 0.1 to 10 percent by weight, where the flavoring agent comprises WS-23 and menthol. Cadbury Mem., Ex. A, '233 Patent, at 56:41-47. Furman discloses the combination of menthol and WS-23 as a cooling agent in chewing gum. However, the limitations of Claim 34 requiring gum base, sweeteners, and bulking agents as part of the chewing gum are not disclosed in Fur-man. In order to be enabling, a prior art reference must “[disclose] each and every limitation of the claimed invention.” Schering, 339 F.3d at 1377. Instead of describing chewing gums that can be made with gum base, sweeteners and bulking agents, and flavoring agents in the amounts listed in Claim 34, Furman states that chewing gums can be made “according to conventional recipes.”

Cadbury argues that “conventional recipes” for chewing gums necessarily encompass the limitations of Claim 34 not expressly set forth in Furman. However, whether or not each and every claim limitation is present in a prior art patent is a question of fact. See SmithKline, 403 F.3d at 1343. Therefore, whether or not “conventional recipes” encompasses the limitations set forth in Claim 34 is a question of fact and precludes a finding of anticipation by Furman for summary judgment purposes.

b. Shahidi patent

Cadbury next argues that the Shahidi patent anticipates the '233 patent by disclosing chewing gum compositions that contain both menthol and WS-23. Cadbury also argues that the Shahidi patent discloses chewing gum compositions containing a gum base and sweetener in amounts that overlap with those claimed by Claim 34 of the '233 patent. In response, Wrigley contends that the Shahidi patent does not disclose using a combination of menthol and WS-23 in chewing gum and that to arrive at such a combination from the teachings of the Shahidi patent would require undue experimentation. Wrigley Mem. at 12. The Court concludes that the Shahidi patent anticipates Wrigley’s '233 patent.

The application for the Shahidi patent was filed on April 17, 1996, and the patent issued on November 18, 1997. As the Shahidi patent issued and was published more than one year before the filing of the '233 patent (applied for March 16, 2000 and issued on September 30, 2003), it is prior art for the purposes of Section 102(b). See 35 U.S.C. § 102(g); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577-78 (Fed.Cir.1996). The Shahidi patent was not disclosed to the PTO during the prosecution of the '233 patent, so it was not considered when deciding whether or not to allow Claim 34. The fact that Shahidi was not considered by the PTO does not weaken the presumption that Claim 34 is valid; rather, it serves as evidence that must be considered in determining whether Cadbury has met its burden of showing invalidity through clear and convincing evidence. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed.Cir.1983).

The Shahidi patent is directed towards oral compositions, including gums, which contain xylitol, copper bis-glycinate, and a carrier for these substances, with a purpose of combating infections in the mouth, including anti-gingivitis and anti-plaque benefits. Cadbury Mem., Ex. HH, Shahidi Patent, at 2:55-56, 3:15, 3:65, 4:4-5. The Shahidi patent describes chewing gums as a preferred embodiment of the claimed invention. Id. at 8:26-28; id. at 9:28-42. Shahidi discloses the use of WS-23, menthol, and sweeteners as optional components of the claimed invention. Specifically with respect to chewing gum, Shahidi includes examples of chewing gum compositions containing 25 percent by weight gum base, 1.7 percent by weight flavor, and 20 percent or 55.1345 percent by weight xylitol (a sweetening agent). Id. In addition, menthol was listed as one of twenty-three possible flavoring agents “most suitable” for the claimed invention. Id. at 7:13-26. These optional flavoring agents “comprise from about 0.01% to about 5.0%, preferably from about 0.05% to about 2.0%, and most preferably from about 0.1% to about 1.0%” of the composition of the claim invention. Id. Finally, Shahidi discloses cooling agents as nonessential, but preferred, components of the claimed invention. Id. at 4:14-16. In particular, Shahidi teaches that suitable cooling agents are those covered by, for example, the Rowsell patent and the Watson patent, and incorporates them by reference. Id. at 4:16-21. The Shahidi patent goes on to teach that “particularly preferred cooling agents are [WS-3] and [WS-23]” as taught by the Rowsell patent. Id. at 21-27. The Rowsell patent, incorporated by reference, discloses adding acyclic carboxamides such as WS-23 in the amount of 0.1 to 5 percent by weight. Cadbury Mem., Ex. O, Rowsell Patent, at 6:7-13.

Materials that have been incorporated by reference may be considered for purposes of anticipation analysis. Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (“Material not explicitly contained in the single, prior art document may still be considered for purposes of anticipation if that material is incorporated by reference into the document.”); see also Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed.Cir.1997) (holding that material incorporated by reference into a document may be considered in an anticipation determination). “Incorporation by reference provides a method for integrating material from various documents into a host document—a patent or printed publication in an anticipation determination—by citing such material in a manner that makes clear that the material is effectively part of the host documents as if it were explicitly contained herein.” Advanced Display, 212 F.3d at 1282 (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id. at 1283 (citation omitted). It is to be viewed from “the standard of one reasonably skilled in the art [] to determine whether the host document describes the material to be incorporated by reference with sufficient particularity.” Zenon Envtl., Inc. v. United States Filter Corp., 506 F.3d 1370, 1378-1379 (Fed.Cir.2007). Thus, “if incorporation by reference comes into play in an anticipation determination, the court’s role is to determine what material in addition to the host document constitutes the single reference.” Advanced Display, 212 F.3d at 1282 (citations omitted). Here, the Court finds that the incorporation by reference of the Rowsell patent—and, in particular, Shahidi’s direction to Rowsell as teaching the use of WS-23, one of its preferred cooling agents for the claimed invention—is disclosed with sufficient particularity.

If the prior art discloses a range that falls within the range disclosed in the challenged patent claim, then the prior art disclosure anticipates the patent claim. Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1346 (Fed.Cir.1999). Through Shahidi’s specification and the incorporation by reference of the Rowsell patent, the Shahidi patent sets forth all of the elements of Claim 34 in amounts that fall within the ranges given in Claim 34. Thus, there can be no genuine factual dispute with respect to the disclosure of all of the elements of Claim 34 in the Shahidi patent. Cadbury thus has shown by clear and convincing evidence that, at a minimum, the Shahidi patent encompasses every claim limitation of Claim 34.

However, the analysis does not end there. In order for the Shahidi patent to anticipate Claim 34 as a prior art reference, it also must “be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation.” Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed.Cir.2005) (citation omitted). “Whether a prior art reference is enabling is a matter of law based upon underlying factual findings.” Id.

When evaluating enablement for anticipatory purposes, the determination of what constitutes undue experimentation must be determined with respect to the viewpoint of one of ordinary skill in the art, and routine experimentation is permissible. Elan Pharm., Inc. v. Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1055 (Fed.Cir.2003). The requirement for enablement of an anticipatory reference is not as high as the requirement set forth in 35 U.S.C. § 112. Novo Nordisk, 424 F.3d at 1355. For example, there is no requirement under 35 U.S.C. § 102(b) that the prior art reference enable someone to use the invention, and thus there is no requirement that an anticipatory reference disclose “actual performance of suggestions in the disclosure. Rather, anticipation only requires that those suggestions are enabled to one of skill in the art.” Id. (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed.Cir.2001)).

When a prior art patent is asserted as evidence of an invalidity defense in an infringement action, as is the case here, the Court must presume that the prior art patent enabled and the patentee has the burden of proving that it is not enabled. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed.Cir.2003). If the patentee satisfies that burden by setting forth “evidence of nonenablement that a trial court finds persuasive, the trial court must then exclude that prior art patent in any anticipation inquiry.” Id.

Wrigley argues that the Shahidi patent does not enable one of ordinary skill in the art to practice the invention in Claim 34 without undue experimentation because of the sheer number of potential chewing gum ingredients disclosed and the fact that the Shahidi patent made no mention of a combination of WS-23 and menthol. Shahidi does not need to set forth examples of a chewing gum composition containing all of the elements of Claim 34 to anticipate it. See Novo Nordisk, 424 F.3d at 1355; Schering, 339 F.3d at 1380 (citing In re Donohue, 766 F.2d 531, 533 (Fed.Cir.1985) (“Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure.”)); In re Donohue, 766 F.2d 531, 533 (Fed.Cir.1985) (“It is not [ ] necessary that an invention disclosed in a publication shall have actually been made in order to satisfy the enablement requirement.”). Rather, if one of ordinary skill in the art could make a chewing gum comprising 5 to 95 percent gum base, 5 to 95 percent sweetening and bulking agents, and 0.1 to 10 percent flavoring agent, where the flavoring agent comprised a combination of menthol and WS-23, using the teachings in the Shahidi patent and the knowledge in the art at the time of the Shahidi patent, then the Shahidi patent anticipates Claim 34.

Claim 34 describes only a chewing gum composition, and there is no mention of any special effect obtained through the combination of WS-23 and menthol. Moreover, the only novel aspect of Claim 34 is the combination of WS-23 and menthol, and it is undisputed that that one of skill in the art could make a chewing gum composition comprising a gum base, sweetening and bulking agents, and a flavoring agent in the amounts set forth in Claim 34 at the time of the Shahidi patent. The Shahidi patent itself contains examples of chewing gums that contain gum base, sweeteners, and flavoring agents in amounts that fall within the ranges listed in Claim 34. See Cadbury Mem., Ex. HH, Shahidi Patent, at 9:28-42. Shahidi lists menthol as a possible flavor ingredient (id. at 7:13-17), and it is undisputed that menthol was a well-known chewing gum ingredient at the time of the Shahidi patent, as evidenced by the disclosure of the '893 patent and the Parrish article, both discussed above. One of ordinary skill in the art certainly would have been able to make a chewing gum containing a gum base, a sweetener, and menthol in the required ranges based on Shahidi and the knowledge available in the art at the time.

The question then becomes whether one of ordinary skill in the art would have been able to add WS-23 in the claimed amount to the chewing gum composition just described at the time that the Shahidi patent issued. Shahidi lists WS-23 as a particularly preferred cooling agent and incorporates the Rowsell patent by reference, which teaches that WS-23 can be used in chewing gum and suggests an amount of from 0.1 to 5 percent by weight. Cadbury Mem., Ex. O, Rowsell Patent, at 6:7-13. The Rowsell patent also describes how to make WS-23. Id. Claim 34 does not set forth any requirement as to the end flavor or cooling sensation that is required from the combination of menthol and WS-23. Rather, both ingredients simply must be present in a combined amount of between 0.1 and 10 percent by weight. Id., Ex. A, '233 Patent, at 56:41-47. Thus, under the broad reach of Claim 34, any combination of WS-23 and menthol falling within that range would suffice, regardless of the end-taste or flavor. As it is undisputed that one of skill in the art could make a chewing gum comprising all of the elements of Claim 34 except WS-23, and the Shahidi patent (with the Rowsell patent incorporated by reference into the Shahidi patent) provides direction for making and adding WS-23 to that chewing gum in the requisite amount, the Shahidi patent sets forth all of the elements of claimed 34 and does so in an enabling manner.

Moreover, the Court must presume the Shahidi patent to be enabled with respect to both its claimed and unclaimed subject matter. Amgen, 314 F.3d at 1355. The patentee has the burden of proving that Shahidi is not enabling with respect to Claim 34. Id. Wrigley has failed to provide evidence that Shahidi would not enable one of skill in the art to make the chewing gum described in Claim 34. Rather, all of Wrigley’s arguments center around the challenge of selecting all of the elements of Claim 34 and putting them into a chewing gum. Wrigley argues that Shahidi provides no “guidance or direction” to combine WS-23 and menthol together in a chewing gum. But the Court has found no authority supporting Wrigley’s arguments in that respect. An obviousness analysis requires some suggestion or motivation to combine prior art teachings in a way that would render the patented subject matter obvious (see, e.g., Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323-24 (Fed.Cir.1999)), but an anticipation analysis requires no such direction or guidance (Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed.Cir.2008) (“The tests for anticipation and obviousness are different.”)). As long as all of the claimed elements are present in a prior art reference and that reference is enabling, the claim is anticipated. Indeed, even if the prior art disparages or teaches away from the claimed invention, it still is anticipatory if it discloses and enables the claimed invention. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed.Cir.1998) (“A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”). Therefore, the fact that Shahidi does not give any guidance or direction towards combining menthol and WS-23 in a chewing gum is irrelevant for the purposes of an anticipation analysis.

Similarly, the mere fact that the elements of a claim are set forth in the prior art patent in a list along with other ingredients without any “special emphasis” is irrelevant to an anticipation analysis. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed.Cir.2005) (“This court rejects the notion that one of these ingredients cannot anticipate because it appears without special emphasis in a longer list.”). Instead, all that is relevant is whether the prior art disclosure is enabling. Id. In Perricone, the patentee had claimed a process for treating different forms of skin damage by using ascorbyl fatty acid ester with a dermatologically-excepted carrier. Id. at 1371. The prior art reference that was cited as anticipating the patentee’s claims was directed towards a “cosmetic composition for topical application” and listed the claimed ascorbyl fatty acid ester along with thirteen other suitable “skin benefit ingredients.” Id. at 1376. In addition to skin benefit ingredients, emollients, emulsifiers, and thickeners also were listed. Id. Even though the claimed ingredient was present in the prior art patent in a list along with other suitable ingredients, the Court held that the prior art patent anticipated the claimed compound. Id. Similarly, Shahidi lists menthol along with twenty-three other optional flavoring agents and states that these flavoring agents can be used in the invention in amounts from 0.01 to 5 percent by weight. Cadbury Mem., Ex. HH, Shahidi Patent at 7:16-24. Shahidi also lists WS-23 along with WS-3 as a “particularly preferred” cooling agent. Id. at 4:21-26. The Row-sell patent, incorporated by reference, instructs that WS-23 can be used in amounts from 0.1 to 5 percent by weight in chewing gum. Id., Ex. O, Rowsell Patent, at 6:7-13. Thus, Shahidi discloses that both compounds can be used in a chewing gum in amounts within the claimed ranges in an enabling manner. Shahidi specifically discloses WS-23 and menthol, so this is not a case where a broad genus of compounds is disclosed and allegedly anticipates a species. (The genus/species issue would come into play if Shahidi only had disclosed acyclic carboxamides as cooling agents. However, Shahidi specifically mentions WS-23 as a preferred cooling agent.) In short, Cadbury has shown through clear and convincing evidence that the Shahidi patent anticipates Claim 34. Shahidi sets forth each of the claimed elements in the appropriate amounts and is enabling. Thus, Claim 34 is invalid on anticipation grounds.

c. Luo patent

Cadbury also argues that the Luo patent anticipates Claim 34 because it discloses a chewing gum composition using WS-3 and menthol as the cooling agent and incorporates Furman, which discloses WS-23, by reference. Furman discloses the use of WS-3, WS-23, and menthol as cooling agents in chewing gum, as described above. Cadbury Mem., Ex. V, Luo Patent, at 10:46-51. The Court concludes that the Luo patent does not anticipate Claim 34 of the '233 patent.

The Luo patent, owned by Cadbury, is directed towards a cooling composition consisting of menthol and N-substituted-pmenthane carboxamides, which can be used in chewing gum. Cadbury Mem., Ex. N, Luo Patent, at 2:42-48; Cover. N-ethyl-p-menthane-3-carboxamide, known as WS-3, is a an N-substituted-p-men-thane carboxamide. Cadbury Mem., Ex. W, Parrish Article, at 1. In the Luo patent, WS-3 is specifically described as the carboxamide in a preferred embodiment. Cadbury Mem., Ex. N, Luo Patent, at 4:66-5:2. The amount of carboxamide present in the cooling composition is between 0.001 to 6 percent by weight. The amount of cooling composition in the gum is between 0.01 and 2 percent by weight of the edible composition. Id. at 7:4-7. However, the Luo patent does not mention WS-23 at all, and only mentions acyclic carboxamides once in reference to a PCT patent application that discloses the use of acyclic carboxamides along with WS-3 as cooling agents. As the Luo patent does not in itself disclose WS-23, it could not anticipate Claim 34 unless it incorporated Furman by reference.

As described above, material that has been incorporated by reference may be considered for purposes of anticipation. Advanced Display, 212 F.3d at 1282. In order to incorporate Furman by reference, the Luo patent must “identify with detailed particularity what specific material it incorporates and clearly indicate where that material is to be found.” Id. (emphasis added). The determination of whether material has been incorporated by reference, and if so to what extent, is a question of law, and “the standard of one reasonably skilled in the art should be used to determine whether the host document describes the material to be incorporated by reference with sufficient particularity.” Zenon Envtl., 506 F.3d at 1378-1379. The Luo patent does cite to the Furman PCT application as disclosing a cooling composition consisting of a ketal as the primary coolant and WS-3 as a possible secondary cooling composition. Cadbury Mem., Ex. N, Luo Patent, at 2:28-35. At the end of the Luo patent, there is a statement incorporating by reference all of the previously cited publications. Id. at 19:46-49. The Luo patent does not even mention that Furman discloses WS-23, let alone set forth that fact in detail, in comparison, for example, with the clear direction in Shahidi when incorporating Rowsell’s teachings on the proper use of WS-23. Here, Luo only generally states that Furman discloses WS-3 in combination "with a ketal. There is no reason to believe that one of ordinary skill in the art would consider Luo to incorporate the material Furman directed towards the use of WS-23 as a cooling agent. As a matter of law, the Luo patent does not sufficiently incorporate Furman’s disclosure of WS-23 by reference. Thus, Luo does not anticipate Claim 34 of the '233 patent.

2. Obviousness

Cadbury argues that Claim 34 of the '233 patent is invalid for obviousness in view of the Luo patent in combination with the Parrish article. Specifically, Cadbury contends that because the Luo patent discloses every limitation of Claim 34 with the exception of WS-23, and the Parrish article discusses the use of both WS-3 and WS-23 as cooling agents in chewing gums, that it would have been obvious for one of ordinary skill in the art to substitute WS-3 for WS-23 in the chewing gum disclosed by Luo. The Court agrees.

The Luo patent was not disclosed to the Patent Office during the prosecution of the '233 patent, but its PCT Publication No. WO 96/17524 was disclosed. Cadbury Mem., Ex. A, '233 Patent, Cover. The Parrish article was not considered by the PTO during the prosecution of the '233 patent application. Cadbury SOF ¶ 24.

35 U.S.C. § 103 will bar issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The party alleging invalidity of a patent because of obviousness must show prior art references that either alone or combined with other references would render the claimed invention obvious to one of ordinary skill in the art. Al-Site, 174 F.3d at 1323. The concern with granting patents for obvious combinations of known elements is that doing so allows parties to obtain a monopoly over what is already known in a particular field. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 1739, 167 L.Ed.2d 705 (2007). To do so would “retard progress” and may also “deprive prior inventions of their value or utility.” Id. at 1741.

The basic framework for determining obviousness was set forth in Graham v. John Deere Co. of Kansas City through a four-part test:

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is to be determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.

383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Secondary considerations can be objective indicia of nonobviousness. Id. at 18, 86 S.Ct. 684. In addition, courts have recognized copying as a secondary consideration. See Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1572 (Fed.Cir.1996).

Although patent validity is a question of law, an obviousness inquiry involves factual determinations within the framework of the Graham factors. See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976) (citing Great A. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 155, 71 S.Ct. 127, 95 L.Ed. 162 (1950); Graham, 383 U.S. at 17, 86 S.Ct. 684). The Court begins its obviousness analysis by addressing the Graham factors.

a. Scope and content of the prior art

There are no genuine issues of material fact related to the scope and content of the prior art. The disclosure status of both the Luo patent and the Parrish article are undisputed by the parties. Wrigley Resp. ¶24; Cadbury Mem., Ex. A, '233 Patent, Cover. In addition, there is no dispute that the Luo patent and the Parrish article are part of the relevant prior art for the '233 patent, as they were in print more than one year before the filing date of the '233 patent. See 35 U.S.C. § 102(b).

As discussed above, the Luo patent discloses a chewing gum composition containing a cooling agent comprising menthol and WS-3. Luo discusses chewing gum compositions in which gum bases may be employed in amounts up to 99 percent, bulking and sweetening agents may be used in amounts up to 60 percent, and a cooling composition can be used in amounts from about 0.01 to 2 percent by weight. The cooling composition described and claimed contains menthol and WS-3. Cadbury Mem., Ex. N, Luo Patent, at 11:29-32; id. at 12:13-16; id. at 7:4-7.

The Parrish article describes the research that was done at Wilkinson-Sword to address the problems associated with using high levels of menthol as a cooling agent in consumer products. Cadbury Mem., Ex. W, Parrish article, at 1. While menthol had long been known and used for its ability to act as a cooling agent, high levels of menthol can produce a bitter flavor. Cadbury SOF ¶22. Thus, the researchers at Wilkinson-Sword attempted to create other compounds that would mimic the cooling effects of menthol without the accompanying bitterness.