Case Nos. 2011-1140 (Newman, Bryson, Fogel)
Objective indicia of nonobviousness are often the last refuge of patentability. These secondary considerations offer the promise of undoing a prima facie showing of obviousness and potentially resuscitating an innovation back into the realm of the patentable. This second post on Wrigley looks at how effectively plying secondary considerations against a strong showing of obviousness is quite demanding and fact-based.
In addition to the anticipation rejection (discussed in the first part of this post), Wrigley’s asserted claim to menthol and WS-23 from the ‘233 patent was invalidated on summary judgment as obvious over two pieces of prior art, a US patent to Luo and an article by Dr. Parrish. In opposition, Wrigley argued that the claimed menthol + WS-23 had unexpectedly good cooling properties, enjoyed great commercial success in products containing the combo, and was copied by Cadbury. The lower court found none of this evidence overcame the showing of obviousness, and Wrigley appealed to the Federal Circuit.
Looking first at the prima facie case and prior art, Luo disclosed a combination of menthol and another cooling agent, WS-3 useable as commercial flavorants. Parrish identified WS-3 and WS-23 as equivalent cooling agents. As such, all elements of the claim, menthol and WS-23, were in the prior art, and it was a rather simple substitution of WS-23 for WS-3 in Luo to arrive at the claimed combination. Wrigley’s first argument against this rather straightforward prima facie showing was that WS-23 and menthol were particularly synergistic and offered unexpectedly good cooling in combination. The majority readily dismissed this argument because the good cooling was not truly unexpected. Luo disclosed an enhanced breath-freshening effect between menthol and WS-3, and Parrish taught that WS-3 and WS-23 had very similar molecular and physiological properties. According to the majority, one would expect heightened cooling from menthol with either WS-3 or WS-23.
Wrigley next produced an internal Cadbury study that concluded Wrigley’s products were “superior” and put into evidence large relative sales figures for its products. Insufficient nexus, said the majority. Wrigley’s products that were the subject of the report and sales figures had a lot of other things going on that could account for their success – differing sweeteners and other ingredients, different packaging and marketing, and apparently “the menthol and WS-23 components were present in quantities not specifically identified in claim 34” in the commercial Wrigley product. [RA comment: I’m not sure why this last item alone wouldn’t have been sufficient to throw out this secondary consideration evidence.]
Lastly, Wrigley argued that Cadbury intentionally copied Wrigley’s products to use menthol + WS-23, another indicium of nonobviousness. Intriguingly, the majority also dismissed this evidence as lacking a sufficient nexus to the claimed combo, because copying was widespread in the industry:
Besides the absence of evidence of a nexus between Cadbury’s copying and Wrigley’s claimed invention, there is evidence suggesting the contrary. In particular, the evidence shows that in the market for chewing gum the parties have a practice of marketing very similar products. While Cadbury’s internal documents show that it sought to reformulate its products to match Wrigley’s products, that desire extended not just to the inclusion of WS-23, but to the inclusion of similar sweeteners and similar levels of each. Wrigley’s evidence of copying is therefore not a strong indicator of nonobviousness, but rather a measure of the extent to which parties in the chewing gum market typically copy any development by their competitors, whether patented or not.
In light of the strong prima facie case of obviousness and lackluster secondary considerations, invalidity due to obviousness affirmed.
Judge Newman dissented on the issue of secondary considerations. Although Judge Newman couches her dissent in terms of procedural error – that the burden should have shifted to Cadbury to overcome the secondary considerations – the disagreement is really that Judge Newman found weighty the synergy between the claimed menthol and WS-23:
The evidence established that (1) although WS-3 alone is two to three times more effective as a coolant in chewing gum than WS-23 alone, when combined with menthol WS-23 is not only more effective, but is sufficiently more effective such that there is a vast preference among gum-chewers; and (2) Cadbury observed its major loss of sales to the new Wrigley gum, analyzed the Wrigley product, concluded that the WS-23 menthol combination was responsible for the consumer preference, and then copied the Wrigley product. This information surely colors the understanding of the prior art, as seen by a person of ordinary skill in the field of the invention, for the improved properties that produced the striking consumer preference for Wrigley’s new composition are nowhere signaled in the cited references. These objective considerations are not consigned to rebuttal, for they are direct evidence of obviousness.
Lessons: Secondary considerations can seem talismanic; they have the power to make obviousness go away seemingly regardless of the prior art. Wrigley should be a reminder, however, to approach secondary consideration soberly and without losing sight of the underlying prima facie case. The prima facie case itself can undercut some secondary considerations. In Wrigley an unexpectedly large cooling effect was pretty much undone by the same effect existing with a clear equivalent in the applied art. Consider focusing on secondary considerations that are unrelated to, and less impeachable by, the prior art.
Even relying on independent secondary considerations, these indicia are often reviewed under the equivalent of a “strict scrutiny” basis when the prima facie case is strong. That is, the showing needs to be of a truly compelling degree (e.g., a large, well outside the margin-of-error value), and the showing must be narrowly tailored to the claimed combination; (e.g., the large value exists only across the reasonable scope of the claim and not within the prior art). Wrigley failed on the second prong when proffering both commercial success and copying – where their product enjoyed commercial success and was ripped off, it could have been caused by / included several non-claimed criteria. Thus, any § 132 declaration or trial evidence of secondary considerations should quite clearly invoke the claim language missing from the uncombined/unmodified prior art and explicitly, exclusively tie the same to a “wow” result vis-à-vis this (or better) prior art.
When the prima facie case is not particularly strong (e.g., unlike in Wrigley, if obviousness relies on many different pieces of prior art or several modifications and combinations of the same and/or the prior art comes close to teaching away), more modest objective indicia can suffice. In the next post on Transocean, we’ll see that sometimes showings existing across several distinct types of indicia, which taken alone might not be very compelling or nexus’ed with the claims, can sometimes in combination yield better results against strong obviousness showings. Nonetheless, the upshot is to still be cautious and exacting when hanging one’s hat on objective indicia of nonobviousness. If you’re resorting to secondary considerations because of an unassailable obviousness attack, bring evidence that is strong, clearly fits the claim, and isn’t vitiated by the teachings of the applied art.
Comment: I think the majority got the obviousness issue correct, but what is up with their dismissing the evidence of copying? Cadbury admitted that they copied every aspect of Wrigley’s product including menthol + WS-23. But this was dismissed because copying was common in the gum market and Cadbury copied other aspects of the product. So basically patentees in industries where copying is rampant can’t avail themselves of the copying as a secondary consideration of nonobviousness? That doesn’t make sense. As to copying more than what is claimed, what if a copyist is simply too stupid to figure out that a claimed combo is driving a product’s superiority, so s/he copies everything to cover all bases? Why isn’t that decent evidence of nonobviousness? I think the majority should have been a little more careful with these reasonings.
Also, given the strong prima facie case here, it’s somewhat relieving that Agrizap wasn’t used to procedurally dismiss the secondary considerations without discussion. The majority at least addressed the secondary considerations, even to dismiss them, whereas Agrizap seems to stand for the proposition that secondary considerations need not even be addressed over a strong prima facie case.
Lastly, the majority calls this a case of “obvious to try” but I don’t see it. There was a pretty clear statement of equivalency in the prior art that provided a motivation for the substitution; this was not really a blind trial among a finite number of candidates to arrive at a claimed combination as seen in most “obvious to try” cases. If anything, the anticipation aspect of the opinion had a more (and improper) “obvious to try” feel to it.