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

October 18, 2010

WM WRIGLEY JR. COMPANY, A DELAWARE CORPORATION, PLAINTIFF,
v.
CADBURY ADAMS USA LLC, A DELAWARE LIMITED LIABILITY COMPANY, DEFENDANT.



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

MEMORANDUM OPINION AND ORDER

Before the Court are two related motions, one filed by each party in this patent case. In its motion [319], Defendant Cadbury Adams USA LLC ("Cadbury" or "Defendant") renews its request for Federal Rule of Civil Procedure 54(b) certification and also requests deferral of certification to permit resolution of its inequitable conduct and literal infringement counterclaims. In its motion [322], Plaintiff Wm. Wrigley Jr. Company ("Wrigley" or "Plaintiff") seeks entry of judgment under Rule 54(b) and a stay of the remaining Cadbury counterclaims. For the reasons set forth below, Plaintiff's motion [322] is granted and Defendant's motion [319] is granted in part and denied in part. Having determined that an interlocutory appeal is warranted, the Court respectfully disagrees with Defendant that certification should be deferred pending trial on two of its remaining counterclaims.

I. Background

Because the procedural background of this case is somewhat complex, a short summary is appropriate.*fn1 On January 20, 2004, Plaintiff filed a complaint [1] against Defendant, alleging infringement of Claim 34 of U.S. Patent No. 6,627,233 (the "'233 patent")*fn2. The '233 patent is related to what Wrigley claims is a novel chewing gum composition containing physiological cooling agents. On March 2, 2005, Cadbury filed a Fourth Amended Answer and Counterclaim [66], alleging infringement of U.S. Patent No. 5,009,893 (the "'893 patent")*fn3 and seeking declaratory judgments of invalidity and non-infringement of Claim 34 of the '233 patent and unenforceability of the '233 patent due to inequitable conduct. In Wrigley's Reply and Counterclaims to Cadbury's Fourth Amended Answer and Counterclaim [75], Wrigley filed counterclaims of antitrust, unfair competition, false patent marking and sought declaratory judgments of invalidity and non-infringement of the '893 patent and unenforceability of the '893 patent due to patent misuse.

On April 22, 2005, Judge Zagel (the judge to whom this case previously was assigned) stayed Wrigley's antitrust counterclaim pending the resolution of the patent infringement claims. Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 2005 WL 936928, at *2 (N.D. Ill. April 22, 2005). On May 18, 2007, Judge Zagel construed the meaning of certain disputed claim terms. Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 500 F. Supp. 2d. 922, 929-936 (N.D. Ill. 2007). On December 6, 2007, the case was reassigned to this Court's docket.

In its order of June 26, 2009, the Court resolved several motions for summary judgment, finding that: (1) Claim 34 of Wrigley's '233 patent is invalid; (2) Cadbury's '893 patent is not invalid; and (3) the use of WS-23 in Wrigley's commercial chewing gum products did not infringe Cadbury's '893 patent either literally or under the doctrine of equivalents. Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 631 F. Supp. 2d 1010, 1025-1052 (N.D. Ill. 2009) (hereinafter the "June Order"). In the June Order, the Court also denied Cadbury's cross-motion for summary judgment of literal infringement of the '893 patent by Wrigley's experimental chewing gum formulas, finding that disputed issues of fact prevented resolution of the claim on summary judgment.

On July 10, 2009, Wrigley filed a motion for reconsideration of the Court's ruling on invalidity of Claim 23 of the '233 patent. [296]. Shortly thereafter, on July 27, 2009, Cadbury moved for Rule 54(b) certification on the Court's ruling that Wrigley's commercial products had not infringed the '893 patent. [302]. In its filings, Cadbury took the position that the June Order "resolved allmatters regarding Cadbury's infringement claim against Wrigley commercial products." Id. Cadbury further explained that its doctrine of equivalents ("DOE") claim was directed against specific Wrigley products, and the "DOE claim has been finally decided" by the June Order. (Mem. in Support of Request for Certification for Appeal [303], at 1). Cadbury argued that the Court's decision was "based on a pure issue of law" and the question had "no overlapping factual or legal considerations with any of the claims still pending between the parties." (Id. at 1) (emphasis in original). Specifically, Cadbury asserted that its still-pending claim of literal infringement of the '893 patent by Wrigley's experimental products "has no factual overlap" with its doctrine of equivalents claim which, as noted above, was directed against other "distinct" Wrigley commercial products. Id. at 3. At the time of its original request for certification for appeal, Cadbury recognized that in all likelihood Wrigley would seek certification of the Court's ruling on the invalidity of the '233 patent. Id. at n. 1. Cadbury asserted that "the interests of judicial economy are best served by consideration of both decisions together by the appellate court." Id.

The Court did not immediately rule on Cadbury's motion for certification; instead, the parties stipulated that Cadbury's motion for certification for appeal would be stayed pending the Court's ruling on Wrigley's motion for reconsideration. [307]. On March 30, 2010, the Court denied Wrigley's motion for reconsideration, [313], and denied Cadbury's motion for Rule 54(b) certification without prejudice [314]. This Court, however, allowed the parties to file Rule 54(b) motions in light of the disposition of Wrigley's motion for reconsideration. [314].

On April 29, 2010, the parties filed a joint status report [318], which identified eight claims pending before the Court:

A. Wrigley's Remaining Claims

1. Declaratory Judgment of Unenforceability due to patent misuse by Cadbury concerning the '893 patent

2. Declaratory Judgment for Non-infringement of the '893 patent by Wrigley

3. False Patent Marking

4. Unfair Competition -- ...


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