After chewing on a dispute between Wrigley and Cadbury over  patents covering their competing “ice” gum products for more than eight years, the courts have declared a draw.

On appeal from a trial court ruling that declared Wrigley’s patents invalid, and Cadbury’s not infringed, a divided panel of the Federal Circuit affirmed across the board.  Of most interest is the majority’s conclusion that Wrigley’s patent on the combination of menthol and a compound called “W-23” to achieve a cooling sensation was obvious.  Wrigley relied heavily on objective evidence of non-obviousness, in particular the notable commercial success of its ice gum products, and the fact that Cadbury’s internal documents showed that it recognized the superiority of the Wrigley formulation and quickly scrambled to copy it.   The majority was oddly unmoved by this rather compelling evidence, dismissing the commercial success as resulting not only from the superior cooling sensation achieved by the combination of menthol and W-23, but also from the way the gum was marketed and packaged.  Cadbury’s copying, the majority found, was “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.”

In dissent, Judge Pauline Newman chided the majority for its conclusion that Wrigley had not shown any “nexus” between the patented combination and the commercial success of its product or Cadbury’s copying of it.  She quoted from Cadbury’s own documents that specifically identifed the menthol/W-23 combination as a “newer, more advanced cooling system” and the “key drivers of [consumer] loyalty.”

The so-called secondary indicia of non-obviousness—commercial success, long-felt need, recognition, copying, unexpected results, etc.—have long been a bulwark against the tendency to employ hindsight in evaluating the obviousness of an invention in light of the prior art.  This decision is another in a long line of blows to patent owners.  Certainly, at least in the realm of consumer products, it will nearly always be the case that the patentee has touted the invention in is marketing, and there will be a history of competitors copying.  Lawyers representing patentees will find this one sticking to their shoe for a long time.

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