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Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC

March 30, 2010


The opinion of the court was delivered by: Judge Robert M. Dow, Jr.


This case arises out of the parties' efforts to develop chewing gums that combine menthol, a cooling agent that produces a pleasant cooling sensation in one's mouth, with another cooling agent. Menthol, much like litigation, grows bitter in higher quantities. In order to reduce the bitterness (of the chewing gums) and hold onto the cooling sensation, the parties added different cooling agents to menthol for use in their chewing gums. Plaintiff, Wm. Wrigley Jr. Co. ("Wrigley"), used a cooling agent known as WS-23, and Defendant, Cadbury Adams USA LLC ("Cadbury"), used a cooling agent known as WS-3. On June 26, 2009, the Court issued a 65-page memorandum opinion and order (the "June Order") [295], which invalidated Claim 34 of Wrigley's '233 patent. Claim 34 described, in amounts spelled out in the patent, a chewing gum made up of gum base, bulking and sweetening agent, and WS-23 combined with menthol.

Before the Court is Plaintiff's motion for reconsideration [296] of the Court's June Order, which invalidated Claim 34 on anticipation and obviousness grounds.*fn1 As set forth in greater detail below, Plaintiff's motion is denied, for reasons that have as much to do with our adversary system of litigation as with patent law. The adversary system of litigation relies on parties to make their cases by squarely presenting issues to trial courts and by citing legal authorities that situate a case within the case law on a given topic: "[The law forum] requires the presentation of competing examples. The forum protects the parties and the community by making sure that competing analogies are before the court." Edward H. Levi, AN INTRODUCTION TO LEGAL REASONING 5 (1949). These principles are longstanding, can be found in Blackstone's Commentaries (Horne v. Flores, 129 S.Ct. 2579, 2617 (2009) (Breyer, J., dissenting)), and are often reiterated by the Supreme Court. See, e.g., Greenlaw v. United States, 128 S.Ct. 2559, 2564 (2008) (restating the general principle that our "adversary system is designed around the premise that parties know what is best for them"); Sanchez-Llamas v. Oregon, 548 U.S. 331, 357 (2006) (distinguishing the adversary system from the "sort of magistrate-directed, inquisitorial legal system" adopted in other countries); see also Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.5 (Fed. Cir. 2003) (concluding that a litigant forfeited an issue in the trial court). Wrigley's motion, or rather its resolution, reveals the importance of these principles, particularly in litigation that is laden with complex issues and accompanied by lengthy briefs and voluminous records. Cf. also Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. Cir. 2002) (stressing the role of advocacy as an aid to the court in resolving "difficult cases involving complex issues of law").

I. The June Order

The Court issued the June Order on June 26, 2009, in response to several motions by the parties. Two rulings in the 65-page opinion are the subject of Wrigley's motion for consideration. Wrigley challenges the Court's determinations that (1) Claim 34 was anticipated by the Shahidi patent and (2) Claim 34 is obvious.

II. Legal Standard

A motion to reconsider is proper only when "the Court has patently misunderstood a party, or has made a decision outside the adversarial issues presented to the Court by the parties, or has made an error not of reasoning but of apprehension." Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990). A motion to reconsider also may be appropriate if there has been "a controlling or significant change in the law or facts since the submission of the issue to the Court." Id. By contrast, because judicial opinions "are not intended as mere first drafts, subject to revision and reconsideration at a litigant's pleasure" (Quaker Alloy Casting Co. v. Gulfco Indus., Inc., 123 F.R.D. 282, 288 (N.D. Ill. 1988)), "motions to reconsider are not appropriate vehicles to advance arguments already rejected by the Court or new legal theories not argued before the ruling." Zurich Capital Mkts., Inc. v. Coglianese, 383 F. Supp. 2d 1041, 1045 (N.D. Ill. 2005). In view of these exacting standards, it is not surprising that the Seventh Circuit has emphasized that issues appropriate for reconsideration "rarely arise and the motion to reconsider should be equally rare." Bank of Waunakee, 906 F.2d at 1191.

III. Analysis

A. Anticipation

According to Wrigley, the Court (1) ignored the factors spelled out in In re Wands (858 F.2d 731 (Fed. Cir. 1988)) and similarly failed to draw factual inferences in Wrigley's favor, and (2) applied the wrong standard for anticipation. The Court respectfully disagrees: Wrigley is incorrect with regard to its first contention and too late with regard to its second contention.

1. Anticipation and the Wands Factors

In order for a prior art reference to be enabling, the prior art reference must teach those in the art to "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); see also Elan Pharm., Inc. v. Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1055 (Fed. Cir. 2003) (routine experimentation is permissible and undue experimentation is determined with respect to the viewpoint of one with ordinary skill in the pertinent art). Undue experimentation is a legal determination reached by considering underlying factual findings. Id. In In re Wands, the Federal Circuit taught that amongthose considerations were eight illustrative factors: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. 858 F.2d at 737.

But these factors do not exist for their own sake. Rather, they are aimed at the ultimate inquiry, which constitutes a reasonableness standard that gives "due regard for the nature of the invention and the state of the art." Wands, 858 F.2d at 737. "In Wands the court observed that 'the test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.'" Mayo Found., 346 F.3d at 1055 (quoting Wands, 858 F.2d at 737). That fact-laden lodestar, and Wrigley's failure to orient its arguments and evidence toward it, was critical to the outcome in the June Order. In particular Wrigley did not cite supportive record evidence with regard to the factors themselves, and Wrigley did not tie its arguments to the nature of the invention and the state of the art. Because Wrigley had the burden of marshaling evidence of non-enablement (June Order at 23 (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003))), summary judgment was appropriate.

Wrigley argues first that the Court improperly excluded Wands factors from the analysis. Specifically, Wrigley seizes upon the following statement in the June Order, which Wrigley altered with brackets: "anticipation analysis requires no [] direction or guidance." Wrigley Mem. at 2; see also June Order at 26. According to Wrigley, the Court ...

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