IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

WM. WRIGLEY JR. COMPANY, ) 

 ) 

 Plaintiff, ) 

 ) 

 v. ) CASE NO. 04-cv-346 

 ) 

CADBURY ADAMS USA LLC, ) Judge Robert M. Dow, Jr. 

 ) 

 Defendant. ) 

MEMORANDUM OPINION AND ORDER

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.1

 As set forth in greater 

detail below, Plaintiff’s motion is denied, for reasons that have as much to do with our adversary 

 

1

 Citations to the briefs submitted by the parties are given as “Wrigley Mem.” [298] and “Cadbury Mem.” 

[306]. 
2

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. 
3

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. 
4

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 among those 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 
5

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 committed legal error by 

expressly excluding “direction or guidance” from consideration. 

Wrigley has taken the quotation out of context, although the Court agrees that it might 

have worded this portion of the opinion with greater clarity. In the Court’s discussion of 

“direction or guidance,” the quoted language compared the obviousness analysis with the 

anticipation analysis. In pertinent part, the Court observed: “An obviousness analysis requires 

some suggestion or motivation to combine prior art teachings in a way that would render the 

patented subject matter obvious, but an anticipation analysis requires no such direction or 

guidance.” June Order at 26 (citations omitted). In other words, the opinion says that “direction 

or guidance” is not an essential ingredient in the anticipation analysis—“requires,” as used in the 

June Order, meant “requires, in order to win.” That reading is consistent with Wands and 

subsequent case law in the Federal Circuit. “[I]t is not necessary that a court review all the 

Wands factors to find a disclosure enabling. They are illustrative, not mandatory. What is 

relevant depends on the facts [of each case].” Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 

1200, 1213 (Fed. Cir. 1991). The point that the Court intended to convey in the June Order is 

that, given the facts in the record on undue experimentation as taken from “the viewpoint of one 

of ordinary skill in the art” (June Order at 23 (citation omitted)) and the Court’s conclusion on 
6

enablement, Wrigley’s presentation of arguments and evidence on the question of direction or 

guidance was insufficient to stave off summary judgment. Moreover, the June Order did address 

the question of direction or guidance. In particular, the June Order notes that the Shahidi patent 

describes chewing gums as preferred embodiments of the claimed invention. June Order at 9, 

25. Shahidi also listed cooling agents as a “preferred nonessential” component of the claimed 

invention. Id. at 10, 25. The cooling agents included those listed in the Rowsell patent, and 

Rowsell lists WS-3 and WS-23 as “particularly preferred cooling agents.” Id. at 10, 25. 

Besides the argument that the Court ignored Wands factors, Wrigley also intimates that 

the Court’s exclusion of “direction or guidance” from consideration was illustrative of a larger 

problem: according to Wrigley, the Court resolved disputed factual questions in favor of 

Cadbury. The Court respectfully disagrees. Because Wrigley’s motion for reconsideration 

suggests that the Court failed to consider evidence, the Court will discuss in greater detail the 

evidence that was before it at the time of the June Order. 

Wrigley’s argument that the Shahidi patent does not anticipate Claim 34 spans almost 

exactly two pages (although earlier in the brief, Wrigley included a section in which it discussed 

in general language the standards governing anticipation). The argument related to Shahidi 

appeared under the heading “Shahidi Does Not Anticipate Claim 34 Because One of Ordinary 

Skill in the Art Could Not Practice the Invention of Claim 34 Without Undue Experimentation.” 

The Court sets out Wrigley’s arguments below in full, emphasizing in boldface type (where 

made explicit) which of the Wands factors Wrigley aimed to address in each paragraph2

: 

Contrary to Cadbury’s assertion, Shahidi does not “specifically focus on the 

inclusion of WS-23 and/or WS-3 and menthol in Chewing Gum.” In reality 

Shahidi is directed to a composition which includes two essential ingredients, 

 

2

 The Court has omitted citations to fact statements throughout, although this opinion discusses specific 

fact statements where pertinent. 
7

xylitol and copper bis-glycinate, and a number of optional, non-essential 

categories of ingredients including flavoring agents and cooling agents. 

Shahidi labels both cooling agents and flavoring agents as non-essential 

categories of ingredients. With respect to flavoring agents, Shahidi discloses that 

the flavoring agent could be one flavoring agent or a mixture of flavoring agents. 

In this regard, Shahidi discloses menthol as one of 23 potentially compatible 

ingredients each of which could also be a compatible ingredient when mixed with 

another. Shahidi, therefore, suggests over a million flavoring agent combinations 

that would not include “menthol.” Similarly, Shahidi discloses another optional 

category of ingredients, a cooling agent or a combination of cooling agents. 

Incorporating by reference at least five patents, each of which includes at least 

one cooling agent and many of which include a number of different cooling 

agents, Shahidi discloses a large number of cooling agent combinations that do 

not include WS-23. Therefore, the sheer quantity of experimentation necessary 

to arrive at the combination of WS-23 and menthol is extensive. See In re 

Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993) (finding that the method “would 

have required extensive experimentation that would preclude patentability”). 

Indeed Shahidi does not contain any working examples that include either WS23 or menthol. Therefore, Shahidi provides no direction or guidance to select 

WS-23 from the large grouping of optional cooling agents, and menthol from 

another large grouping of optional flavoring ingredients, much less combining the 

two in a chewing gum composition as set forth in Claim 34. 

Additionally, Shahidi incorporates by reference [the Rowsell patent]. Rowsell is 

directed to replacements for menthol, not combinations with menthol. In fact, the 

performance of WS-23 in combination with menthol in chewing gum applications 

would not have been predicted by one of ordinary skill in the art. Thus, the state 

of the prior art was such that one skilled in the art would not look to combine 

WS-23 and menthol as required by Claim 34. 

Contrary to Cadbury’s assertion, Shahidi would not enable one of ordinary skill in 

the art to practice the invention of Claim 34 without undue experimentation. 

There is ample evidence that: (1) extensive experimentation would be necessary; 

(2) Shahidi offers no direction or guidance toward the invention of Claim 34; (3) 

Shahidi contains no working examples containing WS-23 or menthol; (4) the state 

of the prior art was such that one skilled in the art would not look to combine WS23 and menthol as required by Claim 34; and (5) the performance of the invention 

of Claim 34 was unpredictable in view of the prior art. Simply put, one of 

ordinary skill in the art would not have been able to practice the invention of 

Claim 34 from Shahidi’s disclosure. Numerous questions of material fact exist 

that preclude summary judgment of invalidity. 

Pl. Summ. J. Mem. at 12-14. 
8

In the first paragraph of Wrigley’s argument, Wrigley focuses on the fact that Shahidi 

does not specifically highlight the inclusion of either WS-3 plus menthol or WS-23 plus menthol, 

or both. As the June Order noted, the Federal Circuit has “reject[ed] the notion that one [of a 

number] of ingredients cannot anticipate because it appears without special emphasis in a longer 

list.” June Order at 27 (citing Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. 

Cir. 2005)). In rejecting the argument, the Perricone Court cited Hewlett-Packard v. Mustek 

Sys., Inc., in which the Federal Circuit stated: “The anticipation analysis asks solely whether the 

prior art reference discloses and enables the claimed invention, and not how the prior art 

characterizes that disclosure or whether alternatives are also disclosed.” 340 F.3d at 1324 n.6. 

The better argument, at least conceptually, was in the second paragraph quoted above. 

That argument also relates to the number of ingredients mentioned in the Shahidi patent. The 

argument is that the long list of ingredients, in conjunction with Shahidi’s teaching that the listed 

ingredients could be mixed with one another, means that the sheer quantity of experimentation 

necessary to arrive at the combination of menthol and WS-23 militates against enablement. 

Specifically, Wrigley points out that with 23 ingredients that could be combined with one 

another, there would be over one million combinations of ingredients (without menthol). The 

argument is clever, but ultimately unpersuasive, as it elides critical distinctions and does not 

speak to Wrigley’s summary judgment burden on the enablement question. 

In support of the million-plus figure, Wrigley cited to Paragraph 123

 of its L.R. 56.1 

Statement of Additional Facts. The fact statement in turn cites the declaration of an expert 

witness, Dr. Craig B. Warren. But Warren’s declaration is conclusory and therefore was 

disregarded under Federal Circuit law. “Conclusory expert assertions cannot raise triable issues 

 

3

 Actually it pointed to Paragraph 17, but Paragraph 12 contained the pertinent information and was cited 

in the immediately preceding sentence in the brief, so that the information was immediately at hand. 
9

of material fact on summary judgment.” Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. 

Cir. 2008); In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991) (ruling that “an expert’s opinion 

on the ultimate legal issue [of enablement] must be supported by something more than a 

conclusory statement.”). 

Wrigley is correct, of course, that extensive experimentation militates against 

enablement. Chugai Pharm., 927 F.2d at 1213; Wands, 858 F.2d at 737. Although Wrigley has 

not described, and the cited portion of the Warren declaration does not explain, how the millionplus estimate was derived, it appears that Wrigley based its estimate on the undefended 

assumption that a person of ordinary skill in the art would seek to blend a complex concoction of 

ingredients. Specifically, by assuming that a gum maker would use 11 or 12 ingredients, drawn 

from a pool of 23 possible ingredients, there would indeed be well over a million combinations 

of ingredients. That number, then, could have been obtained by anyone with a scientific 

calculator or a willingness and inclination to spend some time doing factorials by hand—the 

patent law inquiry relates to how one of ordinary skill in the art would have perceived the list of 

ingredients. Instead, the million-plus figure, without more, indicates how much experimentation 

might be necessary for an average person to make the claimed invention if 23 vials were laid 

before her. Skill in the art serves a gap-filling role when reading a prior art patent: “[A] 

specification itself * * * [need not] necessarily describe how to make and use every possible 

variant of the claimed invention, for the artisan’s knowledge of the prior art and routine 

experimentation can often fill gaps, interpolate between embodiments, and perhaps even 

extrapolate beyond the disclosed embodiments, depending on the predictability of the art.” AK 

Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). Again, regardless of the 

number of possible combinations, Wrigley had to show, in order to stave of summary judgment 
10

using this Wands factor, that the sheer quantity of experimentation for a person of skill in the art

would be particularly high. See Wands, 858 F.2d at 740 (“No evidence was presented by either 

party on how many hybridomas would be viewed by those in the art as requiring undue 

experimentation to screen. However, it seems unlikely that undue experimentation would be 

defined in terms of the number of hybridomas that were never screened.”); cf. also id. at 737 

(noting that the “test is not merely quantitative, since a considerable amount of experimentation 

is permissible”). 

And Wrigley did not show that for one skilled in the art, the amount of experimentation 

would be particularly high. In fact, one skilled in the art may well have crossed several 

ingredients off the list altogether (cf. AK Steel Corp., 344 F.3d at 1244), or determined that 

combining 11 or 12 different ingredients—the number of ingredients drawn from a pool of 23 to 

arrive at the million-plus figure—would have been less than ideal in a chewing gum. That 

conclusion might have followed quite naturally in light of the state of the prior art (another 

Wands factor), which explicitly singles out WS-3 and WS-23 as promising ingredients. See June 

Order at 5; id. at 23 (discussing Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 

1368, 1379 (Fed. Cir. 2001)); see also Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1365 (Fed. 

Cir. 2006) (discussing “professional journal[]” articles in the context of an enablement analysis). 

Likewise, as the Court pointed out in the June Order (see id. at 22), the Rowsell patent (which 

Shahidi incorporates) lists WS-23 as a preferred cooling agent. But the larger point is that 

Wrigley did not direct to the Court’s attention meaningful evidence regarding the amount of 

experimentation, as it was required to do to defeat summary judgment. See Contilli v. Local Int’l 

Bhd. of Teamsters Pension Fund, 559 F.3d 720, 724 (7th Cir. 2009). Wrigley offered only its 

conclusion about the number of possible combinations, and the record evidence before the Court 
11

suggested that it would not take undue experimentation for a person of ordinary skill in the art of 

making chewing gum to make a gum with WS-23 and menthol. See also June Order at 24 

(observing that Claim 34 does not mention “any special effect obtained through the combination 

of WS-23 and menthol”); Mayo Found., 346 F.3d at 1055 (“The determination of what level of 

experimentation is ‘undue,’ so as to render a disclosure non-enabling, is made from the 

viewpoint of persons experienced in the field of the invention.”). 

Accordingly, the Court does not agree that Wrigley’s citation (Wrigley Mem. at 4-5) to 

Crown Operations in its motion for reconsideration is “instructive.” In Crown Operations, the 

parties offered competing testimony from expert witnesses about the quantity of experimentation 

that would have been necessary to practice the claimed invention. See Crown Operations Int’l, 

Ltd. v. Solutia Inc., 289 F.3d 1367, 1379 (Fed. Cir. 2002). The underlying technology in that 

case related to layered films used to create safety and solar control glass. The disputed issue 

related to whether or not a person of ordinary skill in the pertinent art could have overcome “any 

ambiguities in the wave index calculation without undue experimentation,” which was the key 

question for enablement in that case. See id. But as the Federal Circuit’s analysis in that case 

shows, the experts provided more than their own conclusions in creating the factual dispute. Id.

at 1379-81. 

In sum, there was no way for a finder of fact reasonably to draw the inference that, from 

the standpoint of a person of ordinary skill in the art, the “sheer quantity of experimentation 

necessary to arrive at the combination of WS-23 and menthol is extensive.” Wrigley Summ. J. 

Mem. at 13. A reasonable trier of fact could not have drawn the inference because Wrigley did 

not present sufficient record evidence to draw it. 
12

Wrigley’s argument in the third paragraph of its summary judgment argument is simple: 

because there were no working examples in Shahidi of WS-23 and menthol, Shahidi does not 

provide direction or guidance, a Wands factor that militates against enablement. The problem for 

Wrigley is that working examples is not the sine qua non of the direction-or-guidance inquiry, as 

these are separate Wands factors. Wrigley effectively seeks to use the lack of working examples 

twice—once as its own factor and then second to support the conclusion that Shahidi offers no

direction or guidance. But that argument seeks to squeeze out too much from the lack of 

working examples, particularly because “[w]orking examples are desirable in complex 

technologies * * *.” In re Strahilevitz, 668 F.2d 1229, 1232 (C.C.P.A. 1982). In contrast, as the 

Court noted elsewhere in the June Order, Shahidi “lists WS-23 along with WS-3 as a 

‘particularly preferred’ cooling agent. The Rowsell patent, incorporated by reference, instructs 

that WS-23 can be used in amounts from 0.1 to 5 percent by weight in chewing gum.” Id. at 27 

(citations omitted). And the undisputed facts revealed that the gum recipes in Claim 34 are 

“conventional” (Wrigley Resp. Cadbury SOF [207] ¶ 124

); hence the absence of working 

examples, standing on its own, was not sufficient to create a genuine issue of material fact. 

In Wrigley’s fourth paragraph of summary judgment argument, Wrigley contends that 

“Rowsell is directed to replacements for menthol, not combinations with menthol” and that “the 

performance of WS-23 in combination with menthol in chewing gum applications would not 

have been predicted by one of ordinary skill in the art.” Accordingly, the argument goes, one 

 

4

 Although Wrigley responded “[d]isputed as stated” to Cadbury’s fact statement, Wrigley then failed to 

say exactly what about Cadbury’s statement it took issue with. Just as summary judgment is the “put up 

or shut up” moment in the life of a case when it comes to marshaling evidence (e.g., Eberts v. Goderstad, 

569 F.3d 757, 767 (7th Cir. 2009)) through its L.R. 56.1 statements, a party that denies a fact statement 

must state what it is denying and then cite record evidence that supports the denial. The requirements for 

a response under Local Rule 56.1 are “not satisfied by evasive denials that do not fairly meet the 

substance of the material facts asserted.” Bordelon v. Chicago Sch. Reform Bd. of Trs., 233 F.3d 524, 528 

(7th Cir. 2000). 
13

skilled in the art would not have looked to combine WS-23 and menthol, and the performance of 

WS-23 in combination with menthol would not have been predicted.5

 For this statement, 

Wrigley again relied on the declaration of Dr. Craig B. Warren. See Wrigley SOAF [208] ¶ 18; 

id., Ex. 6. As for the Warren declaration, Wrigley points to Paragraph 28. In Paragraph 28, 

Warren states that experts would have been “skeptical” of using WS-23 with menthol at the time 

Wrigley patented its invention. But the “skepticism” was partially due to the cost of WS-23 as 

compared to WS-3, which does not speak to whether or not a person could build the invention.6 

Celeritas Techs., Ltd. v. Rockwell, Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (teaching 

that a “reference is no less anticipatory if, after disclosing the invention, the reference then 

disparages it.”). And the other reason that Warren offered is that “WS-23 has a significantly 

lower cooling intensity than menthol and WS-3.” But the fact that there might have been better 

inventions is not a silver bullet on the question of whether one skilled in the art could make the 

invention without undue experimentation.7

 The question is unpredictability, not inclination: 

“Enablement does not require an inventor to meet lofty standards for success in the commercial 

marketplace. Title 35 does not require that a patent disclosure enable one of ordinary skill in the 

art to make and use a perfected, commercially viable embodiment absent a claim limitation to 

 

5

 Predictability is one of the Wands factors, but Wrigley’s arguments and underlying evidence more 

obviously speak to direction or guidance and the question of “teaching away,” which the first paragraph 

of Wrigley’s summary judgment argument, and the June Order, addressed. 

 

6

 See also Wrigley SOAF [208], Ex. 10, at CA026055 and CA026137, which documents Wrigley cites in 

its statement of additional facts and which apparently supported Warren’s declaration. (It is unclear 

because Warren’s declaration cited to “deposition exhibits” rather than the set of exhibits that was 

provided to the Court.) 

7

 Note also that Wrigley’s argument on enablement is a bit at war with itself: on the one hand, Wrigley 

argues in paragraph two of its summary judgment argument that there were over a million different 

combinations of cooling ingredients; on the other hand, Wrigley suggests in paragraph four that an 

inventor would look only to the ingredient with the right “cooling intensities.” This reinforces the 

importance of introducing evidence about the amount of experimentation necessary in terms of a person 

of ordinary skill in the art. 
14

that effect.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003); see also 

Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1085 (Fed. Cir. 2008) (stating in its Wands 

factor analysis that predictability or unpredictability relates to “the specific area of science or 

technology.”); id. (discussing the unpredictable properties of enantiomers). 

Also cited in support of the fourth paragraph (or rather cited in support of the fact 

statements that Wrigley cited in its summary judgment brief), is the Parrish article. According to 

Wrigley, the Parrish article teaches that one skilled in the art would not look to combine WS-23 

and menthol. That is based on Wrigley’s characterization of the article as describing “the 

disadvantages of menthol in consumer products.” Again, for anticipation purposes, a prior art 

reference is no less anticipatory if it teaches away from it after disclosing and enabling it. 

Cerleritas Techs., 150 F.3d at 1361. In any event, Wrigley reads the Parrish article for more than 

it is worth: the quoted text does not say something along the lines of “do not use menthol and 

WS-23.” It says that menthol is used in “toilet preparations, confectionary, etc.,” but has 

disadvantages. The language simply does not speak to the question of whether WS-23 is an 

exclusive substitute or an ingredient to be used in conjunction with menthol. The entire context 

of the Parrish article suggests that the authors were leaving the matter open, particularly given 

that Parrish intimates that there may be toxicity-related limitations of WS-23 and WS-3 when 

used for flavor modification and enhancement. Parrish Article at 2; see also id. (“[WS-23 and 

WS-3] provide a broad scope for innovation in the fields of foodstuffs * * *.”). Wrigley’s 

narrow reading of the Parrish article is not supported by the article’s language. 

Similar to its Parrish article argument, Wrigley submitted that Rowsell conceived of WS23 as a replacement for Menthol rather than a compliment. Wrigley SOAF [208] ¶ 17 (citing 

Rowsell, 1:38-47). But the cited text in Rowsell does not support Wrigley’s characterization: 
15

Although menthol is well established as a physiological coolant its use, in some 

compositions, is circumscribed by its strong minty odour. 

The present invention is based on the discovery that certain other organic 

compounds, which can be readily synthesized, have a physiological cooling effect 

similar to that obtained with menthol, but do not have the strong minty odour. 

* * * Such compounds therefore find utility as additives in a wide range of 

ingestible and topical compositions. * * * 

The compounds having a physiological cooling effect and utilisable in accordance 

with the present invention are amides of the formula * * * [formula omitted]. 

Rowsell, 1:33-47 (emphasis added). At best, the text Wrigley relies on is agnostic when it comes 

to combining menthol with WS-23. 

In sum, the Court acknowledges that it might have said “dispositive” where it said 

“irrelevant,” with respect to both the direction-or-guidance question and Wrigley’s lack-ofspecial-emphasis argument. However, summary judgment was granted because, based on the 

briefs of the parties and the pertinent law, Wrigley failed to meet its summary judgment burden. 

The Federal Circuit teaches that “when an accused infringer asserts that a prior art patent 

anticipates specific patent claims, the infringer enjoys a presumption that the anticipating 

disclosure also enables the claimed invention.” Impax Labs., Inc. v. Aventis Pharm., Inc., 545 

F.3d 1312, 1316 (Fed. Cir. 2008). And that enablement analysis had to be placed within the 

context of the invention itself. See, e.g., Novo Nordisk, 424 F.3d at 1356 (considering how one 

of ordinary skill in the art would have understood “standard recombinant DNA techniques.”). 

Because Wrigley failed to create a genuine issue of material fact, summary judgment on the issue 

of enablement was appropriate. 

2. Wrigley Cannot Reclaim Now that which it Ceded at Summary 

Judgment 

In opposing Cadbury’s motion for summary judgment, Wrigley chose to fight only on the 

issue of enablement. The adversary system at once permits and requires parties to pick their 
16

battles (Allen Eng’g, 299 F.3d at 1356), and it is plain that Wrigley made choices about its 

litigation strategy. While Wrigley fought Cadbury’s argument that the Furman patent anticipated 

Claim 34 by arguing that Furman failed to disclose each of the Claim 34’s limitations (Wrigley 

Summ. J. Mem. at 11), Wrigley opposed Cadbury’s anticipation argument regarding the Shahidi 

patent on the question of enablement. Wrigley’s motion for reconsideration argues that the 

Court failed to grapple with case law teaching that a prior art reference “must not only disclose 

all elements of the claim within the four corners of the document, but must also disclose those 

elements ‘arranged as in the claim.’” Wrigley Mem. at 6-7 (quoting Net MoneyIN, Inc. v. 

VeriSign, Inc. 545 F.3d 1359, 1369 (Fed. Cir. 2008)). According to Wrigley, such precedent 

“highlights the Court’s error in its anticipation ruling.” 

The Court respectfully disagrees: it was Wrigley’s task to make its case and respond to 

Cadbury’s arguments about why summary judgment was appropriate. See, e.g., Greenlaw, 128 

S.Ct. at 2564; Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986) (“One of the principal 

purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims 

or defenses, and we think it should be interpreted in a way that allows it to accomplish this 

purpose.”); cf. also The Fair v. Kohler Die & Specialty Co., 228 U.S. 22, 24 (1913) (Holmes, J.) 

(“[T]he party who brings suit is master to decide what law he will rely upon.”); Clock Spring, 

L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1329 (Fed. Cir. 2009) (concluding that a litigant 

waived an issue when, in its summary judgment opposition, it “essentially conceded” that if one 

claim was invalid then other claims were invalid); In re Cygnus Telcomms. Tech., LLC, Patent 

Litig., 536 F.3d 1343, 1356 n.3 (Fed. Cir. 2008) (waiver of issue before the Federal Circuit by 

failing to include the issue in its opening brief); In re Gabapentin Patent Litig., 503 F.3d 1254, 

1261 (Fed. Cir. 2007) (waiver of issue by limiting arguments in summary judgment brief). 
17

Wrigley fought summary judgment only on the issue of enablement, and it was Wrigley’s 

job to create a genuine issue of material fact on that issue. Arthur A. Collins, Inc. v. N. Telecom 

Ltd., 216 F.3d 1042, 1046 (Fed. Cir. 2000). Under the Federal Rules of Civil Procedure, Wrigley 

cannot use a motion for reconsideration to change legal positions midstream by advancing a new 

argument. Jolly Group, Ltd. v. Medline, Inc., 435 F.3d 717, 720 (7th Cir. 2006). 

Having ceded a portion of the anticipation inquiry, Wrigley had to present to the Court 

“persuasive evidence” of non-enablement. Impax Labs., 545 F.3d at 1316. Wrigley failed to do 

so, and therefore summary judgment was appropriate. 

B. Obviousness 

Wrigley argues that the Court committed legal error by requiring that the novel aspect of 

Claim 34 be the “sole reason for Cadbury’s copying and both Wrigley and Cadbury’s 

commercial success.” Further Wrigley argues that the Court misallocated burdens, failed to 

draw reasonable inferences in Wrigley’s favor, and ignored Wrigley’s evidence. That 

characterization is at odds with the June Order. See id. at 30-42. The Court’s ruling was issued 

after studying the evidence presented by the parties; the Court concludes that the June Order 

demonstrates the Court’s careful consideration of the parties’ properly presented arguments. 

Although Wrigley’s motion for reconsideration nominally focuses on perceived errors in the 

Court’s analysis, the motion in essence seeks to re-hash rejected arguments.8

 The Court will let 

the opinion speak for itself. 

 

8

 Wrigley’s argument that the Court failed to consider some of the evidence in its favor contends that the 

Court failed to discuss the declarations of Roberts or Warren. However, Wrigley, too “did not mention 

the declarations of Wrigley’s experts” (Wrigley Mem. at 12 n.8) in its summary judgment brief. Nor was 

it error not to specifically discuss in the June Order an argument that was raised in a single footnote. See 

also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (ruling that 

“arguments raised in footnotes are not preserved” and collecting cases); Vulcan Golf, LLC v. Google Inc., 

552 F. Supp. 2d 752, 765 n.6 (N.D. Ill. 2008). 
18

IV. Conclusion

For the foregoing reasons, Wrigley’s motion for reconsideration [296] is respectfully 

denied. 

Dated: March 30, 2010 

 ____________________________________ 

 Robert M. Dow, Jr. 

 United States District Judge