Greenblum & Bernstein, P.L.C.
Recent Litigation News in Intellectual Property
In This Issue
· Federal Circuit Affirms Grants Of Summary Judgment
· Federal Circuit Remands Case For Willfulness Determination
· Federal Circuit Affirms Summary Judgment Of No Contributory Infringement But Vacates Summary Judgment Of No Induced Infringement
In WM. Wrigley Jr. Co. v. Cadbury Adams USA LLC (Appeal Nos. 2011-1140, 1150), the Federal Circuit affirmed the district court’s grant of cross-motions for summary judgment.
WM Wrigley Jr. Co and Cadbury Adams USA LLC compete in the chewing gum market. Wrigley owns U.S. Patent No. 6,627,233 (the ‘233 patent) which claims a chewing gum that combines menthol with WS-23, a cooling agent. Cadbury owns U.S. Patent No. 5,009,893 (the ‘893 patent), which claims a chewing gum that combines menthol with WS-3, another type of cooling agent. After Wrigley introduced its WS-23/menthol chewing gum, Cadbury reformulated some of its chewing gum products to include WS-23. Wrigley sued Cadbury for infringement of the ‘233 patent. Cadbury counterclaimed accusing Wrigley of infringing the ‘893 patent.
Both parties moved for summary judgment. Cadbury’s motion sought to have the asserted claim of the ‘893 patent declared invalid on the grounds of anticipation and obviousness; while Wrigley’s motion sought a finding of non-infringement of the patent.
The district court granted Wrigley’s motion for summary judgment of non-infringement refusing to apply the doctrine of equivalents as urged by Cadbury. That finding was later confirmed by the Federal Circuit.
With respect to Cadbury’s invalidity motion, the Court found that a prior art reference, Shahidi, disclosed a number of different combinations of cooling and flavoring elements, including a combination of menthol, which was identified as one of the “most suitable” flavoring agents, with WS-23, which the reference identified along with WS-3 as among a group of three “particularly preferred cooling agents.” Based on the disclosure of the combination of those components, the Federal Circuit affirmed the district court’s holding of invalidity for anticipation.
Additionally, the Federal Circuit stated that there was a strong case of obviousness based on the prior art references of record. The prior art reference Luo taught the physiological cooling effect from combining menthol with WS-3, and the prior art reference Parrish showed that WS-3 and WS-23 were the two most attractive cooling agents for commercial use from among 1,200 cooling agents tested. Further, Shahidi taught the combination of menthol and cooling agents, of which WS-3 and WS-23 were two of the three most preferred candidates. The Federal Circuit held that a person of ordinary skill in the art would find it “obvious to try” the claimed combination, and affirmed the district court’s conclusion that, even in light of the evidence of secondary considerations, the asserted claim would have been obvious in light of Luo and Parrish.
With respect to Wrigley’s non-infringement motion, the issue was whether there was infringement under the doctrine of equivalents. The Federal Circuit considered the prosecution history of the ‘893 patent, and held that the inventors were on notice of the potential interchangeability of WS-23 and WS-3, yet they drafted the claims of the patent narrowly to recite certain N-substituted-p-menthane carboxamides, not a broader category of carboxamides that would include WS-23. Thus, the Federal Circuit affirmed that Cadbury could not expand the coverage of its ‘893 patent to include WS-23 through the doctrine of equivalents, and the summary judgment of non-infringement was affirmed.
Judge Newman filed a dissent.
Federal Circuit Remands Case For Willfulness Determination
In Bard Peripheral v. W.L. Gore, (Appeal No. 2010-1510), the Federal Circuit remanded the issue of willfulness for the district court.
The Federal Circuit stated that in In re Seagate Technology, LLC, a two-pronged test was established for proving willful infringement. To establish willful infringement, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Once the “threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer.” The Federal Circuit stated further that the threshold determination of objective recklessness entails an objective assessment of potential defenses based on the risk presented by the asserted patent. The Federal Circuit reasoned that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.
The Federal Circuit concluded that the district court had failed to address the objective prong of willfulness as a separate legal test from Seagate’s subjective component. Gore had asserted several defenses that it says were “reasonable”: inventorship, inadequate written description, obviousness, and anticipation. Accordingly, the Federal Circuit remanded the case to determine, “based on the record ultimately made in the infringement proceedings,” whether a “reasonable litigant could realistically expect” those defenses to succeed.
Federal Circuit Affirms Summary Judgment Of No Contributory Infringement But Vacates Summary Judgment Of No Induced Infringement
In Toshiba Corporation v. Imation Corp. et al. (Appeal No. 2011-1204) the Federal Circuit affirmed the district court’s grant of summary judgment of no contributory infringement, but vacated the grant of summary judgment of no induced infringement.
On the issue of contributory infringement, the Federal Circuit found that Toshiba had the burden of proof, but failed to introduce evidence sufficient to create a genuine issue of material fact as to whether using unfinalized DVDs was not a substantial non-infringing use. Therefore, the Federal Circuit affirmed the district court’s grant of summary judgment of no contributory infringement.
On the issue of induced infringement, the Federal Circuit stated that there was ample evidence showing that Appellees had designed their DVDs to comply with the DVD standards, instructed users to use them in an infringing manner, and some recommended against using the DVDs in a non-infringing manner. Appellees also advertised their DVDs as compliant with industry standards. Such evidence was sufficient to create a triable issue of fact of whether the Appellees had induced infringement, such that the grant of summary judgment on the issue was improper. Accordingly, the Federal Circuit vacated the summary judgment of no induced infringement and remanded the case.
Judge Dyk concurred in part and dissented in part.