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Crunchy on the outside and chewy on the inside: Cookies have been made this way for years. But pet food? In 2001, Mars Inc. patented a new kind of pet food that combined a crunchy cereal-based exterior with a lipid-based moist and chewy center. The new “dual-textured food” went into Mars’ Whiskas Temptation cat food treats, Pedigree dog food and other products. When Heinz put strikingly similar products — such as Pounce Purr-fections and Meaty Bone Savory Bites — on supermarket shelves, Mars cried infringement and sued. Mars’ lawyer — Fulbright & Jaworski litigator Linda Addison — lost the first round of the fight on summary judgment, and the case, it seemed, was in the doghouse. Then her luck changed. In July 2004 the U.S. Court of Appeals for the Federal Circuit disagreed with the lower court’s construction of Mars’ patent claims, and remanded the case to Los Angeles District Court Judge R. Gary Klausner. This past January, Klausner pulled a dramatic reversal and ruled on summary judgment that Mars’ patent had been infringed. Klausner left the question of whether the pet food patent was valid for the jury. So when trial began in late February, Addison’s main task was to deflect the defendant’s claims that the Mars pet food invention was obvious, not original, and should have never been patented. (Del Monte Corp. took over defense of the case when it acquired the rights to Heinz’s U.S. pet food lines in 2002.) Considering the steep burden of proof that challengers of a patent must meet to show invalidity, Addison’s job was relatively easy. “It was a very nice position for a plaintiff to be in,” says Addison, who’s based in Fulbright & Jaworski’s Houston office. Dreaming up new kinds of pet foods takes time, as Addison’s first witness at trial showed. Reviewing her lab notes, Mars food scientist Laura Paluch, an inventor on the pet food patent, recalled that she and other Mars scientists had spent roughly five years concocting various recipes to get the right texture and composition, and conducted numerous feeding tests with cats and dogs. “It took a lot of trial and error, and a lot of experimentation,” says Addison, who notes that the dual-textured food that the Mars scientists came up was a big hit with lab animals — especially the cats. “Cats would eat this stuff until they were sick — it was so good.” Lab cats know their market. Another Mars witness — James Fitzsimmons, the chief financial officer of the company’s pet food division — recalled that the company’s sales of its Whiskas Temptation cat food treats had declined steadily during much of the 1990s. But by late 2003, a few years after Mars began mixing in the dual-textured cat food morsels into the Whiskas product, Fitzsimmons noted that sales had nearly doubled to $68 million a year. That testimony also helped undercut the defense’s argument, since commercial success proves nonobviousness. “He said they’d never had a product that had been so successful in such a brief time,” recalls Fulbright & Jaworski partner Marc Delflache, who was part of Mars’ four-lawyer trial team. Besides claiming that the patent was obvious, Del Monte also argued that Mars wasn’t the first to invent dual-textured pet food. Del Monte’s lawyers from Covington & Burling called on retired Colorado State University professor Judson Harper, a specialist in chemical engineering and food processing, who testified that he knew of at least two instances where scientists had come up with their own dual-textured pet food. And he noted that one such formulation was plainly spelled out in a textbook on food manufacturing techniques. On cross, however, Fulbright & Jaworski’s Addison challenged Harper to show her the precise place in the textbook where the claims in the Mars pet food patent were actually spelled out. “There was a 12-minute pause, and he couldn’t do it,” recalls Delflache. “Linda did a very good job of undermining his testimony.” To make its case for damages, the Mars side called on Thomas Britven, a managing director of the Houston-based economics consulting firm LECG. Based on his reading of other food industry licensing agreements, Britven testified that he believed that Mars was entitled to 4 percent royalties on the sales of the infringing Heinz and Del Monte products, along with an up-front payment of at least $1.5 million for a total award of roughly $2.3 million. Addison says she believed that that amount was actually conservative, but she decided that Mars should stick with a lower damages request. “I think you’re better off with a conservative proposal,” she says. “We just thought we’d lay out the facts and let [the jury] do what they think is fair.” That strategy worked. Besides upholding the validity of the Mars patent, the jury handed the company $3.6 million in damages. In April, Klausner granted Mars’ posttrial motion to stop Del Monte from selling the infringing pet food products, and also ordered the company to destroy its existing inventory. At press time Del Monte had asked the judge to stay the injunction. Del Monte’s defense counsel, Covington partner Sonya Winner, declined comment on the case. But in a statement Del Monte noted that it was disappointed with the jury’s verdict and is considering an appeal. Bob Schroeder, Mars general counsel for technology, predicts it won’t be much of a dogfight if Del Monte does try to get the verdict overturned. “We think the record is very solid,” says Schroeder. “We’re confident in our case.”

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