HEMPHILL v. JOHNSON AND JOHNSON

Filing 17

MEMORANDUM OPINION. Signed by Judge Colleen Kollar-Kotelly on 1/29/13. (lcckk2)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
ALLEGRA HEMPHILL,
Plaintiff,
v.

Civil Action No. 12-279 (CKK)

JOHNSON & JOHNSON,
Defendant.

MEMORANDUM OPINION
(January 29, 2013)
For more than a decade, Plaintiff Allegra Hemphill has filed suit in federal courts seeking
to hold various companies liable for purportedly infringing United States Patent No. 4,557,720
(the “‘720 Patent”). This case represents the Plaintiff’s fifth complaint alleging infringement of
the ‘720 patent, and the second against Defendants Johnson & Johnson. Presently before the
Court is the Defendant’s [7] Motion to Dismiss Complaint Under Rule 12(b)(6). The motion is
fully briefed and ripe for adjudication. Upon consideration of the pleadings, the relevant legal
authorities, and the record as a whole, the Court finds as a matter of law the Plaintiff cannot
recover for any alleged infringement of the ‘720 patent by the Defendant. Accordingly, the
Defendant’s [7] Motion to Dismiss Complaint Under Rule 12(b)(6) is GRANTED and the
Complaint is DISMISSED.
I. BACKGROUND
For purposes of the Defendant’s motion to dismiss, the Court presumes all well-pleaded
factual allegations in the Complaint are true. Atherton v. D.C. Office of Mayor, 567 F.3d 672,
681 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 2064 (2010).

The Plaintiff filed a patent

application for a “vaginal applicator” on June 11, 1984, claiming a priority date of October 18,
1982. Compl., Ex. 1 (‘720 Patent) at 1. The United States Patent and Trademark Office issued
the ‘720 Patent on December 10, 1985 with two independent claims describing a disposable
vaginal swab, intended to be used for cleansing or treating the vaginal area. Id. at 1, 4-5. The
USPTO confirmed the patentability of both claims following reexamination proceedings in 1999.
Pl.’s Ex. 2 (1/26/1999 Reexamination Certificate) at 1-2.
The Plaintiff initially filed suit against Johnson & Johnson in United States District Court
for the District of Maryland in 1999, alleging Johnson & Johnson’s Stayfree, Carefree, and
Serenity sanitary napkins and adult incontinence products infringed claim 2 of the ‘720 Patent.
Hemphill v. McNeil-PPC, Inc., 134 F. Supp. 2d 719, 723 (D Md. 2001) (Hemphill I). The
Maryland District Court substituted McNeil-PPC as the proper defendant and granted summary
judgment of noninfringement in favor of the defendant. Id. at 721, 727-29. The Federal Circuit
affirmed the district court’s claim construction and findings of non-infringement on appeal.
Hemphill v. McNeil-PPC, Inc., 25 F. App’x 915 (Fed. Cir. 2001). The Plaintiff subsequently
filed three separate suits against Kimberly-Clark Corp. and Procter & Gamble Co. alleging
infringement of the ‘720 patent, all of which resulted in judgments in favor of the defendants.
See Hemphill v. Kimberly Clark Corp., 605 F. Supp. 2d 183, 186-87 (D.D.C. 2009); Hemphill v.
Kimberly-Clark Corp., 530 F. Supp. 2d 108, 110 (D.D.C. 2008), aff’d 335 F. App’x 964 (Fed.
Cir. 2008); Hemphill v. Procter & Gamble Co., 258 F. Supp. 2d 410, 413 (D. Md. 2003), aff’d 85
F. App’x 765 (Fed. Cir. 2004).
The Plaintiff filed the present Complaint on February 21, 2012, alleging Johnson &
Johnson’s Stayfree and Carefree feminine care products directly infringe the ‘720 Patent, and
that the Defendant induced infringement of the ‘720 Patent by a third party. See generally
2

Compl., ECF No. [1]. Johnson & Johnson now moves to the dismiss the Complaint as untimely
and barred by res judicata.
II. LEGAL STANDARD
Federal Rule of Civil Procedure 12(b)(6) provides that a party may challenge the
sufficiency of a complaint on the grounds it “fail[s] to state a claim upon which relief can be
granted.” Fed. R. Civ. P. 12(b)(6). “[A] complaint [does not] suffice if it tenders ‘naked
assertion[s]’ devoid of ‘further factual enhancement.’” Ashcroft v. Iqbal, 556 U.S. 662, 129 S.
Ct. 1937, 1949 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 557 (2007)). Rather, a
complaint must contain sufficient factual allegations that, if accepted as true, “state a claim to
relief that is plausible on its face.” Twombly, 550 U.S. at 570. “A claim has facial plausibility
when the plaintiff pleads factual content that allows the court to draw the reasonable inference
that the defendant is liable for the misconduct alleged.” Iqbal, 129 S. Ct. at 1949. Additionally,
in deciding a Rule 12(b)(6) motion, a court may consider “the facts alleged in the complaint,
documents attached as exhibits or incorporated by reference in the complaint,” or “documents
upon which the plaintiff’s complaint necessarily relies even if the document is produced not by
[the parties].” Ward v. D.C. Dep’t of Youth Rehab. Servs., 768 F. Supp. 2d 117, 119 (D.D.C.
2011) (citations omitted).
III. DISCUSSION
The Defendant argues the Complaint should be dismissed for two reasons: (1) Plaintiff’s
claims are precluded by the doctrine of res judicata; and (2) Plaintiff’s claims are untimely. The
Court finds that the Plaintiff’s claims of direct and indirect infringement were not timely
asserted. Therefore, the Court does not reach the Defendant’s res judicata argument.
Several sections of Title 35 of the United States Code in combination govern the
3

availability of a remedy for Plaintiff’s claim of infringement. Section 271, on which Plaintiff
bases her claim of infringement, provides in relevant part:
(a) Except as otherwise provided in this title, whoever without authority makes,
uses, offers to sell, or sells any patented invention, within the United States or
imports into the United States any patented invention during the term of the patent
therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an
infringer.
35 U.S.C. § 271. As the text of section 271 indicates, a defendant is only liable for any
infringing activity that took place “during the term of the patent.”
Section 154(c)(1) defines the term of the ‘720 Patent as the later of (1) seventeen years
from the date the patent issued; or (2) twenty years from the earliest filing date of an application
on which the patent’s priority date is based. In other words, the term of the ‘720 patent is the
later of (1) seventeen years from December 10, 1985—December 10, 2002; or (2) twenty years
from October 18, 1982—October 18, 2002.
The Plaintiff implies in her Opposition that the reexamination certificate issued by the
United States Patent and Trademark Office on January 26, 1999, somehow altered the term of
‘720 Patent. To the contrary, reexamination certificates do not alter the term of a patent, even if
a new claim is added or an original claim is amended during reexamination. See 35 U.S.C.
§ 307(b) (incorporating by reference 35 U.S.C. § 252). The reexamination certificate simply
confirmed that the claims were patentable when the ‘720 patent issued in December 1985.
Compl., Ex. 2 at 2 (“As a result of reexamination, it has been determined that: The patentability
of claims 1 and 2 is confirmed.”) (emphasis added). Regardless of reexamination, the ‘720
patent expired on December 10, 2002, and Johnson & Johnson is not liable for any infringement
(direct or induced) of the claims of the patent that might have occurred after that date.
4

The final statutory provision relevant to the Defendant’s motion is section 286, which
states that “no recovery shall be had for any infringement committed more than six years prior to
the filing of the complaint.” 35 U.S.C. § 286. For purposes of the present Complaint, the
Plaintiff cannot recover for any infringement committed before February 21, 2006—over three
years after the expiration of the ‘720 Patent. In combination, sections 271 and 286 bar the
Plaintiff from recovering for any alleged infringement of the ‘720 patent by Johnson & Johnson.
As a matter of law, the Plaintiff cannot recover for any infringing activity that took place during
the term of the ‘720 patent, therefore the Complaint must be dismissed.
IV. CONCLUSION
For the foregoing reasons, the Court finds the Plaintiff’s claims are untimely. The ‘720
patent expired on December 10, 2002. The Plaintiff can only recover for infringing conduct that
took place (1) before the patent expired; and (2) within six years of the date the complaint was
filed. The Plaintiff filed her Complaint on February 10, 2012. Because the patent expired more
than six years prior to the filing of the Complaint, as a matter of law, the Plaintiff cannot recover
for any purportedly infringing conduct. Accordingly, the Defendant’s [7] Motion to Dismiss
Complaint Under Rule 12(b)(6) is GRANTED
An appropriate Order accompanies this Memorandum Opinion.

/s/
COLLEEN KOLLAR-KOTELLY
UNITED STATES DISTRICT JUDGE

5