SCA Hygiene Products Aktiebolag et al v. First Quality Baby Products, LLC et al

Filing 61

CLAIMS CONSTRUCTION MEMORANDUM OPINION AND ORDER by Chief Judge Joseph H. McKinley, Jr. on 2/9/2012. For the reasons discussed herein, the Court has determined that the disputed claims are to be construed pursuant to this Claims Construction Memorandum Opinion and Order. cc: Counsel (CDF)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
BOWLING GREEN DIVISION
CIVIL ACTION NO. 1:10CV-00122-JHM
SCA HYGIENE PRODUCTS AKTIEBOLAG and
SCA PERSONAL CARE, INC.

PLAINTIFFS

v.
FIRST QUALITY BABY PRODUCTS, LLC,
FIRST QUALITY HYGIENIC, INC.,
FIRST QUALITY PRODUCTS, INC., and
FIRST QUALITY RETAIL SERVICES, LLC

DEFENDANTS

CLAIMS CONSTRUCTION MEMORANDUM OPINION AND ORDER
Plaintiffs SCA Hygience Products Aktiebolag and SCA Personal Care, Inc. (collectively
“SCA”) filed this case alleging that Defendants First Quality Baby Products, LLC, First Quality
Hygienic, Inc., First Quality Products, Inc., and First Quality Retail Services, LLC (collectively
“First Quality”) infringe the asserted claims of U.S. Patent No. 6,375,646 and its accompanying
Reexamination Certificate (collectively “the '646 Patent”). First Quality has filed a counterclaim
against SCA alleging claims of noninfringement and patent invalidity.
“A court’s first task in determining whether an accused device or process infringes a patent
is to construe the claims to ascertain their proper scope.” Rogers Indus. Products, Inc. v. HF Rubber
Machinery, Inc., 797 F. Supp. 2d 851 (N.D. Ohio June 17, 2011)(citing Lockheed Martin Corp. v.
Space Systems/Loral, Inc., 324 F.3d 1308 (Fed. Cir. 2003)). Accordingly, on December 29, 2011,
the Court conducted a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370
(1996). Prior to the hearing, the parties submitted a Final Joint Claims Construction Statement [DN
51], claims construction briefs [DN 52, DN 53], and response briefs [DN 58, DN 59]. Upon
consideration of the parties’ briefs and arguments, the Court construes the disputed terms as set forth
herein. This opinion does not address the merits of the patent infringement claim or any of the

counterclaims.
I. STANDARD OF REVIEW
“It is a bedrock principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (internal quotation marks omitted). The terms of a patent claim are to be given the
ordinary and customary meaning from the perspective of a person of ordinary skill in the art at the
time the patent is filed. Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir.
2008). “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the context of the entire
patent, including the specification.” Phillips, 415 F.3d at 1313.
When construing claim terms, the court should first look to sources in the intrinsic record.
Gen-Probe Incorporated v. Becton Dickinson and Co., 2011 WL 5553783, *1 (S.D. Cal. Nov. 15,
2011)(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996)). First, “‘the
claims themselves provide substantial guidance as to the meaning of particular claim terms.’” Id.
(quoting Phillips, 415 F.3d at 1314). Second, the claims “must be read in view of the specification,
of which they are a part.” Id. (quoting Phillips, 415 F.3d at 1315). The specification is usually
“dispositive,” as “it is the single best guide to the meaning of a disputed term.” Id. Third, “a court
should also consider the patent’s prosecution history.” Phillips, 415 F.3d at 1317. The prosecution
history consists of the complete record of proceedings before the Patent and Trademark Office
(“PTO”) and “includes the prior art cited during the examination of the patent.” Id.
The patent’s prosecution history “can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
2

be.” Phillips, 415 F.3d at 1317. However, “because the prosecution history represents an ongoing
negotiation between the PTO and the applicant, rather than the final product of that negotiation, it
often lacks the clarity of the specification and thus is less useful for claim construction purposes.”
Id.; see also Gen-Probe Incorporated, 2011 WL 5553783, *1. “To balance the importance of public
notice and the right of patentees to seek broad patent coverage, [courts] have thus consistently
rejected prosecution statements too vague or ambiguous to qualify as a disavowal of claim scope.”
Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)(citing Schwing
GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324-25 (Fed. Cir. 2002) (“[P]rosecution
history . . . cannot be used to limit the scope of a claim unless the applicant took a position before
the PTO that would lead a competitor to believe that the applicant had disavowed coverage of the
relevant subject matter.”)). “Moreover, where a statement is subject to multiple reasonable
interpretations, at least one of which would not amount to a surrender of claim scope, as a matter
of law, prosecution history disclaimer is not applicable.” USHIP Intellectual Properties, LLC v.
United States, ___ Fed. Cl. ___, 2011 WL 6937460, *1 (Fed. Cl. Dec. 29, 2011). “Consequently,
for prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or
statements made during prosecution be both clear and unmistakable.” Omega Engineering, 334 F.3d
at 1325-26. See also LSI Industries, Inc. v. ImagePoint, Inc., 279 Fed. Appx. 964, 969 (Fed. Cir.
2008).
If ambiguities in the claim terms remain after consulting the intrinsic evidence, courts may
consider extrinsic evidence. Vitronics, 90 F.3d at 1584. Extrinsic evidence includes “expert and
inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317.
II. DISCUSSION
The invention described in the '646 Patent was developed by engineers at SCA’s Swedish
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research laboratories and relates to a pants-type disposable diaper for use by both potty-training
children and adults with incontinence issues. The inventors filed an initial patent application in
Sweden on March 4, 1992, and the '646 Patent issued in the United States on April 23, 2002, with
claims 1-28. Claims 29-38 were added during a reexamination which concluded on March 27, 2007.
Claims 1 and 15 are independent claims and the remainder of the claims depend from either claim
1 or 15.
Claims 1 and 15 of the '646 Patent contain identical preambles, both requiring a pants-type
diaper with a front part having side edges and an end edge; a back part having side edges and an end
edge; a crotch part between the front and back parts; at least two side-closure parts which mutually
join parts of the side-edges of respective front and back parts, so that the pants-type diaper will
present a waist opening and two leg openings; an elongated absorbent layer having a front and a rear
end part and an intermediate central part; an inner casing layer placed on that side of the absorbent
layer which is tended to face towards a wearer; and an outer casing layer which is placed on the
other side of the absorbent layer. ('646 Patent, col. 8, 48-col.9, 13; col. 10, 6-39.) The majority of
the claim terms in dispute are located in independent claims 1 and 15. Claim 1 provides in relevant
part that
the pants-type diaper further comprises at least one elastically stretchable region
covering essentially the whole of at least one of the respective front and back parts;
the crotch part being essentially non-stretchable in relation to said stretchable region;
at least one of the respective end parts of the absorbent layer being disposed within
one of said elastically stretchable regions; the central part of the absorbent layer
being disposed within the relatively non-stretchable crotch part of the diaper; and at
least one of the stretchable regions being disposed on the side of the absorbent layer
facing away from the inner casing layer, whereby those forces that are exerted by the
elastically stretchable region on at least one of the end part of the absorbent layer
function to hold the absorbent layer in sealing abutment with the wearer when the
pants-type diaper is worn.
('646 Patent, col. 8, 64- col. 9, 13.) Similarly, claim 15 provides that
4

at least one of the respective front and back parts has at least one elastically
stretchable region; the crotch part being essentially non-stretchable in relation to said
stretchable region; at least one of the respective end parts of the absorbent layer
being disposed within one of the respective end parts of the absorbent layer being
disposed within one of said elastically stretchable regions; the central part of the
absorbent layer being disposed within the relatively non-stretchable crotch part of
the diaper; and at least one of the stretchable regions being disposed on the side of
the absorbent layer facing away from the inner casing layer, whereby those forces
that are exerted by the elastically stretchable region on at least one of the end part of
the absorbent layer function to hold the absorbent layer in sealing abutment with the
wearer when the pants-type diaper is worn; and at least one of the end edge of the
front and the back parts has at the waist opening of the pants at least one elastically
stretchable waist part whose stretching and contraction power is greater than the
remainder of the stretchable region.
(‘646 Patent, col. 10, 21-39.)
The parties have identified six claim construction issues contained in the '646 Patent in
claims 1-11, 15-25, 29-33, and 35-38. The following chart lists the disputed claim terms and phrases
and the claims of the '646 Patent in which such terms and phrases are used.
Term/Phrase

Claim

1

“elastically stretchable region(s)” or “stretchable region(s)”

1-4,6-7, 10, 15-16, 18-19, 21-22,
30, 32-33

2

A. “elastically stretchable region covering essentially the whole of at
least one of the respective front and back parts”
or
“stretchable region covers essentially the whole of at least one of the
respective front and back parts”

1, 35, 37

B. “elastically stretchable regions covering essentially the whole of each
of the respective front and back parts”

29, 31

3

“end parts of the absorbent layer . . . disposed within . . . elastically
stretchable region(s)”

1, 15, 33, 35, 37

4

“to hold the absorbent layer in sealing abutment with the wearer”

1, 15

5

“separate regions”

5, 8, 20, 23

6

“stretching and contraction power”

10, 15, 30, 32

17

A. Construction of “Elastically Stretchable Region(s)” and “Stretchable Region”
The parties propose the following competing constructions of the terms “elastically
5

stretchable region(s)” and “stretchable region.”
SCA’s Proposed Construction

First Quality’s Proposed Construction

An area (or areas) bounded by elastic An area (or areas) containing stretchable elastic
elements/material that is capable of being elements or material as illustrated in the figure
stretched and then, when not stretched, below by the yellow highlighted areas:
returning to its original form.

1. Claims and Specification
The language of the claim in question requires the pants-type diaper to have “at least one
elastically stretchable region covering essentially the whole of at least one of the respective front
and back parts.” (Id. at col. 8, 65-68 (emphasis added).) Claim 15 also requires, in part, “at least
one elastically stretchable region.” The '646 Patent specification describes the elastically stretchable
region of the diaper by reference to Figure 1 located in the patent.1 Specifically, the specification
1

6

provides that “the front and the back parts 1, 2 of the diaper pants will have regions 29, 30 which
are elastically stretchable essentially in the transverse direction of the diaper and which, in the FIG
1 embodiment, coincide essentially with the front and the back parts 1, 2.” (Id. at col. 7, 37-41.)
The specification further provides that “[i]nstead of elastic bands, ribbons, threads or the like, it is
conceivable for the stretchable regions 29, 30 to comprise an elastically stretchable material, for
instance an elastically stretchable film, an elastically stretchable non-woven material, laminate,
foamed material or the like.” (Id. at col. 7, 41-46.) Contrary to First Quality’s argument, nothing
in this cited language suggests that the claims require particular spacing and configuration of the
elastic elements within the elastically stretchable region. In fact, the specification clearly states that
“[t]he number of elastic elements provided is not restricted to the number shown in FIG.1, and the
number of elements 26 may be more or less than that shown.” (Id. at col. 7, 20-22.) Essentially, the
specification of the '646 Patent teaches that the number of elastic threads in the elastically
stretchable region, including the spacing of them, can be variable. Therefore, an examination of the
language of the claims and specification of the '646 Patent teaches that “elastically stretchable
region” or “stretchable region” means an area bounded by elastic elements and/or material and
capable of being stretched. Thus, the claim and the specification support SCA’s construction of the
claim term “elastically stretchable region(s)” and “stretchable region.”
2. Prosecution History
However, the prosecution history of the '646 Patent and the reexamination suggests a
narrower meaning of the terms “elastically stretchable region(s)” and “stretchable region(s).” As
discussed above, prosecution history disclaimer narrows the ordinary meaning of the claim only
“where the patentee has unequivocally disavowed a certain meaning to obtain his patent[.]” Omega
Engineering, 334 F.3d at 1324. “The doctrine of prosecution disclaimer ‘protects the public’s
7

reliance on definitive statements made during prosecution’ by ‘precluding patentees from
recapturing through claim interpretation specific meanings [clearly and unmistakably] disclaimed
during prosecution.’” Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.
Cir. 2008)(quoting Omega Engineering, 334 F.3d at 1323-24). “Claims should not be construed
‘one way in order to obtain their allowance and in a different way against accused infringers.’” Id.
(quoting Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (citation omitted)).
However, as discussed above, “for prosecution disclaimer to attach our precedent requires that
alleged disavowing actions or statements made during prosecution be both clear and unmistakable.”
Omega Engineering, 334 F.3d at 1325–26.
During the initial prosecution, the key prior art reference cited was the Japanese prior art
reference JP 3,205,053 (the “Honshu Paper”). Figure 12 of the Honshu Paper is shown below:

(SCA-FQ00256522.) The Patent Examiner initially rejected SCA’s claims finding that the Honshu
Paper disclosed an elastically stretchable region covering essentially the whole of the front part of
the diaper. (SCA-FQ00256617-18.) In response to this rejection, SCA submitted a revised
translation of the Honshu Paper and argued:
since the stretchable body 5 is the only elastic part of the waist band, it cannot be
fairly stated that the elastic body 5 and the elastic materials 13 together define an
elastically stretchable region that covers essentially the whole of at least one of the
8

front and back parts of the diaper . . . . The drawing figures of the Honshu Paper
clearly show only two narrow strips of elastic 5,5 and 13, respectively, whereas the
present application shows a continuous region incorporating numerous elastic
elements 26.
(September 28, 2000, Request for Rehearing, SCA-FQ00256630.) SCA did not consider the whole
front part of the diaper in the Honshu Paper to be an elastically stretchable area. In fact, in relying
on a revised translation of the Honshu Paper, SCA indicated that the “separate sheet” between the
elastic waist band 5 and the elastic material 13 in the Honshu Paper was not elastic as originally
defined, but instead described as stretchable in a corrected translation. (SCA-FQ00256629.) Thus,
to overcome the prior art, SCA argued that an elastically stretchable region that covers essentially
the whole of the front part of the diaper must be “a continuous region incorporating numerous elastic
elements.” (SCA-FQ00256630.)
Adopting SCA’s position, the Patent Office Board of Appeals granted the motion for
rehearing stating:
Without the separate sheet being elastic in the Japanese reference, appellants argue
(request, page 6) that the Board’s conclusion at the end of page 13 of the decision is
no longer fairly based since the stretchable elastic material 5 and stretchable elastic
material 13 together cannot be fairly said to define an elastically stretchable region
that covers essentially the whole of at least one of the front and back parts of the
diaper . . . . As perceived by appellants, the Japanese reference shows only two
narrow strips of elastic 5, 5, and 13 whereas with the present invention a continuous
region incorporates numerous elastic elements 26.
In light of appellants’ commentary and our present understanding of the
Japanese reference, we share the view that the applied Japanese document does not
address at least one elastically stretchable region covering essentially the whole of
at least one of the front and back parts of the pants-type diaper of claim 14.
(July 30, 2001, Decision on Rehearing at SCA-FQ00156659-60.)

9

Two years after the '646 Patent issued, it was the subject of a reexamination proceeding in
the Patent Office at SCA’s request. SCA asked the Patent Office to consider the validity of the '646
Patent in view of a prior art patent, U.S. Patent No. 5,414,649 (“Watanabe”). Figure 3 of the
Watanabe patent is shown below:

(SCA-FQ00256917.) The Patent Examiner initially rejected all of the '646 Patent claims because
Watanabe disclosed an elastically stretchable region covering essentially the whole of the front
and/or back parts. In response to the patent rejection, SCA argued that “Figure 3 shows elastic
members 8a, 8b of the waist flap and elastic members 16a, 16b spaced from the waist flap and
spaced from each other.” (March 15, 2006 Reply; SCA-FQ00256869.) SCA noted that “there are
clearly significant portions of the front and back parts of the article of Watanabe et al. which are not
covered by the disclosed stretchable regions. . . . Specifically, applicant’s point out the small area
of coverage of the body-surrounding elastic members 16a, 16b of the diaper of Watanabe et al and,
more specifically, the significant gap between the body-surrounding elastic members 16a, 16b and
the elastic members 8a, 8b of the waist flap.” (Id.)
Significantly, in addition to these statements, SCA also identified the parts of the Watanabe
diaper it considered to be in the elastically stretchable region. SCA represented to the Patent Office
that areas A and C of Figure 3 of Watanabe were the only elastically stretchable regions and that
10

areas B and D were not elastically stretchable regions because they did not contain elastic.
(September 22, 2006, After-Final Reply; SCA-FQ00256902-903.) SCA identified the particular
regions in the figure below:

Specifically, SCA stated:
In fact, applicants have attached a copy of Figure 3 of Watanabe et al. which
shows areas A, B, C and D. Areas A-D constitute the entire front part of the
Watanabe et al. diaper. Areas A and C are elastic areas. Areas B and D do not have
elastic areas. The heights of each of the areas are presented below:

Accordingly, the front part is 19 mm tall; the elastic areas (A and C) occupy 9 mm;
the non-elastic areas occupy 10 mm. Thus, the elastically stretchable region covers
47.4% (9/19) of the front parts of the diaper shown in Fig. 3 of Watanabe et al. A
coverage of 47.4% is not a coverage of essentially the whole. It is not even coverage
of half the area.
(SCA-FQ00256902-903.)
After reviewing the prosecution history, the Court finds that SCA clearly and unmistakably
disclaimed its proposed construction of

“elastically stretchable region(s)” and “stretchable

region(s)” through statements made during prosecution and reexamination. During the initial
prosecution history, SCA defined an “elastically stretchable region” as a continous region
11

incorporating numerous elastic elements. Similarly, during the reexamination, SCA distinguished
its design from prior art by noting that the prior art had significant gaps between the elastically
stretchable regions which it identified as containing elastic areas. Contrary to SCA’s arguments, to
gain approval of the patent, SCA disclaimed any interpretation of “elastically stretchable region(s)”
and “stretchable region(s)” as including considerable areas of non-elastic material that are not
covered by elastic elements or materials, i.e. gaps. Therefore, the prosecution history precludes SCA
“from regaining, through litigation, coverage of subject matter relinquished during prosecution of
the application of the patent.” Wang Labs. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1577–78
(Fed. Cir. 1997). See also Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 22 (1966) (holding
that claims narrowed to obtain issuance over prior art during prosecution may not subsequently be
interpreted by the specification to cover what was disclaimed before the U.S. Patent Office).
Thus, in light of the intrinsic evidence, the Court defines the phrase “elastically stretchable
region(s)” and “stretchable region(s)” as: “an area bounded by elastic elements/material
incorporating a continuous number of elastic elements/material that is capable of being stretched.”2
B. Construction of the “elastically stretchable region covering essentially the
whole of at least one of the respective front and back parts” or “stretchable
region covers essentially the whole of at least one of the respective front and
back parts”
The parties propose the following competing constructions of the terms “elastically
stretchable region covering essentially the whole of at least one of the respective front and back
parts” or “stretchable region covers essentially the whole of at least one of the respective front and

2

The Court declines to incorporate First Quality’s use of pictures in the construction of
the utility patent. The case law reflects that utility patents claims are expressed with words,
where the use of pictures has been held appropriate in design patent claims. See Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). Defendants fail to offer any
persuasive authority otherwise.
12

back parts.”
SCA’s Proposed Construction

First Quality’s Proposed Construction

An area bounded by elastic elements/material
that is capable of being stretched and then,
when not stretched, returning to its original
form, which coincides with substantially the
entirety of the front and/or back parts, and
having enough elastic elements/material
extending transversely across the area to render
essentially the whole of the front and/or back
parts elastically stretchable, but which does not
require the elastic elements/material to cover
all or almost all of the area.

An elastically stretchable region covering
almost all of at least one of the respective front
and back parts, as illustrated below by Figure
A, but not by Figure B. Elastically stretchable
regions in the below figures are highlighted in
yellow and the front/back parts are outlines in
red:
Figure A: “Covering Almost All”

Figure B- Not “Covering Almost All”

The language of the claim in question requires that the “elastically stretchable region cover[]
essentially the whole of at least one of the respective front and back parts.” ('646 Patent, col. 8, 6568.) Having addressed the meaning of “elastically stretchable region,” the current dispute focuses
on the meaning of “covering essentially the whole of at least one of the respective front and back
13

parts.” From a review of the claims and the specification, the Court finds that “covering essentially
the whole of at least one of the respective front and back parts” means “covering almost all of the
front or the back part.”
This construction is also consistent with SCA’s statements during the reexamination of the
'646 Patent. SCA argued that the term “essentially the whole” must be given its plain and ordinary
meaning, which it stated would be “almost or substantially the whole.” Specifically, SCA stated in
relevant part:
Here, the term “essentially the whole” has not been given a unique meaning
by the applicants. Thus, “essentially the whole” must be given its normal meaning
as that term would be understood by persons of skill in the art.
A reasonable interpretation of the term “essentially the whole” could be
almost or substantially the whole. That is how one skilled in the art reading the
claim, in view of the specification, prosecution history and prior art, would
reasonably interpret the term “essentially the whole.”
(SCA-FQ00256902.)
In an effort to construe the claim broadly, SCA’s proposed construction of this term adds the
additional clauses: “having enough elastic elements/material extending transversely across the area
to render essentially the whole of the front and/or back parts elastically stretchable, but which does
not require the elastic elements/material to cover all or almost all of the area.” However, SCA’s
proposed construction directly contradicts the prosecution history. During reexamination of the '646
Patent, SCA specifically represented to the Patent Office that the claim term “elastically stretchable
region covering essentially the whole of at least one of the respective front and back parts” required
elastic which covered “almost or substantially the whole” of the front or back parts of the diaper.
SCA successfully distinguished the Watanabe prior art by arguing that since B and D did not have
elastic, Watanabe did not have an elastically stretchable region covering the whole of the front part

14

of the diaper. In fact, SCA stated that the only elastically stretchable region of the Watanabe prior
art was in the elastic areas of A and C. (SCA-FQ00256902-03).3 Under SCA’s proposed
construction, Watanabe’s area B would be considered to be part of the elastically stretchable region
because it is bounded by elastically stretchable regions A and C. However, SCA specifically
excluded area B from the elastically stretchable region in distinguishing the Watanabe prior art. (Id.)
Considering the intrinsic evidence, the Court defines the phrases “elastically stretchable
region covering essentially the whole of at least one of the respective front and back parts” or
“stretchable region covers essentially the whole of at least one of the respective front and back parts”
as: “an area bounded by elastic elements/material incorporating a continuous number of elastic
elements/material that is capable of being stretched covering almost all or substantially all of the
front or the back part.”
C. Construction of “elastically stretchable regions covering essentially the
whole of each of the respective front and back parts”
The parties propose the following competing constructions of the claim term “elastically
stretchable regions covering essentially the whole of each of the respective front and back parts.”
SCA’s Proposed Construction

First Quality’s Proposed Construction

Areas bounded by elastic elements/material that
are capable of being stretched and then, when
not stretched, returning to their original form,
which coincides with substantially the entirety
of the front and back parts, and having enough
elastic elements/material extending

Elastically stretchable regions covering almost
all of both of the respective front and back
parts, as illustrated below by Figure A, but not
by Figure B. Elastically stretchable regions in
the below figures are highlighted in yellow and
the front/back parts are outlines in red:

3

15

transversely across the areas to render
essentially the whole of the front and back parts
elastically stretchable, but which do not require
the elastic elements/material to cover all or
almost all of the area.

Figure A: “Covering Almost All”

Figure B- Not “Covering Almost All”

The parties agree that the claim term “elastically stretchable regions covering essentially the
whole of each of the respective front and back parts” should be construed consistent with “elastically
stretchable region covering essentially the whole of at least one of the respective front and back
parts.” For the reasons set forth above, the Court defines this claim term as: “an area bounded by
elastic elements/material incorporating a continuous number of elastic elements/material that is
capable of being stretched covering almost all or substantially all of the front and the back parts.”
D. Construction of phrase “end parts of the absorbent layer . . . disposed within
. . . elastically stretchable region(s)”
The parties propose the following competing constructions of the term “end parts of the
16

absorbent layer . . . disposed within . . . elastically stretchable region(s).”
SCA’s Proposed Construction

First Quality’s Proposed Construction

Ordinary and customary meaning as understood
by a person of ordinary skill in the art at the
time of the invention in the context of the
claimed invention.

The ends of the absorbent pad are located
inside an area or areas containing stretchable
elastic elements or material and those
elastically stretchable elements or material
extend over the end(s) of the absorbent pad as
illustrated in the figure below. In the below
figure, areas containing elastically stretchable
elements are highlighted in yellow and are
shown extending over the ends of the absorbent
pad which pad is outlined in red:

First Quality suggests that the Court should interpret “end parts of the absorbent layer . . .
disposed within . . . elastically stretchable region(s)” to mean the “elastically stretchable elements
or material extend over the end(s) of the absorbent pad.” The Court disagrees. The term “disposed
within” does not lend itself to a construction of “extend over” when viewed in light of the other
instances “disposed within” is used in the claims. For example, claim 1 also requires “the central
part of the absorbent layer being disposed within the relatively non-stretchable crotch part of the
diaper.” ('646 Patent, col. 9, 4-6 (emphasis added).)
17

Additionally, First Quality’s reliance on the statements made by SCA during the prosecution
history and reexamination history regarding how the elastically stretchable region “overlies” the
absorbent pad, is “outside” the absorbent pad, and is facing away and remote from the inner casing
layer do not support First Quality’s construction of the term “end parts of the absorbent layer . . .
disposed within . . . elastically stretchable region(s).” (SCA-FQ00256630, SCA-FQ00256540, SCAFQ00256557.) Contrary to First Quality’s argument, these statements are not disclaimers of the
term “disposed within” but are instead an explanation or recitation of the language of claim 1.
Claim 1 specifically requires “at least one of the stretchable regions being disposed on the side of
the absorbent layer facing away from the inner casing layer, whereby those forces that are exerted
by the elastically stretchable region on at least one of the end part of the absorbent layer function
to hold the absorbent layer in sealing abutment with the wearer when the pants-type diaper is worn.”
('646 Patent, Claim 1.) These additional terms located in claim 1 account for the statements made
in the prosecution and reexamination history.
Accordingly, given that the parties do not dispute the construction of the term absorbent pad
and in light of the Court’s construction of the phrase “elastically stretchable region,” the Court
accords the phrase “end parts of the absorbent layer . . . disposed within” its ordinary and customary
meaning as understood in the context of the claimed invention by one skilled in the art at the time
of the invention.
E. Construction of phrase “to hold the absorbent layer in sealing abutment
with the wearer”
The parties propose the following competing constructions of the term “to hold the absorbent
layer in sealing abutment with the wearer.”

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SCA’s Proposed Construction

First Quality’s Proposed Construction

Ordinary and customary meaning as understood The pad of the pants-type diaper is held against
by a person of ordinary skill in the art at the the wearer in such a way that there is no
time of the invention in the context of the leakage.
claimed invention.
A review of the claim and the specification suggest that the term “to hold the absorbent layer
in sealing abutment with the wearer” should be accorded its ordinary and customary meaning. One
skilled in the art at the time of the invention reading the phrase in the context of the claimed
invention would understand that the phrase describes the end part of the absorbent layer being held
against the wearer’s body. This construction of the phrase is consistent with the statements made
by SCA in the prosecution history. For example, SCA stated that “[t]he principal idea is to achieve
a strong elastic force pressing the absorbent layer against the abdomen and back of the wearer.”
(SCA-FQ00256557.)
First Quality’s proposed construction requires the diaper to be held against the wearer in such
a way to assure no leakage. First Quality cites the reexamination history in support of its
construction. In its initial rejection of the claims, the Patent Examiner cited “Test Example 1 in col.
8 leak and slip test” as evidence to show that Watanabe taught sealing abutment. In response to this
evidence, SCA stated that:
Watanabe et al. do not teach or suggest any relationship between the elastic
regions of the front or back parts and the absorbent layer, more specifically, no
relationship where the elastically stretchable region holds the absorbent layer in
sealing abutment with the wearer. The Office cites Test Example 1 in column 8 and
slip tests from Watanabe et al. However, the test states that “artificial urine was
supplied until a leak occurred . . . .” Column 8, line 49. Such a test and disclosure
do not teach or suggest that the forces that are exerted by the elastically stretchable
region on a[t] least one of the end parts of the absorbent layer function to hold the
absorbent layer in sealing abutment with the wearer when the pants-type diaper is
worn. Instead, the test and disclosure teach, if anything, that the absorbent layer is
not held in sealing abutment because leakage occurs.
Thus, the combination of Watanabe et al. and the cited art does not disclose,
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teach or suggest the element of claim 15 of the present patent.
(SCA-FQ00256876-77.) See also SCA-FQ00256904 (“A test that shows a leak cannot be the
support relied up to teach the claimed invention.”) First Quality argues that SCA’s statements
regarding the leak test qualify as a prosecution disclaimer and, therefore, dictate the construction
of the claim term “to hold the absorbent layer in sealing abutment with the wearer” to mean “no
leakage.” In contrast, SCA suggests that the statements set forth above demonstrate that throughout
the reexamination, SCA questioned the propriety of a leak test to show that Watanabe teaches
sealing abutment. In fact, SCA distinguished Watanabe noting that the leak test “relates to the
(potential) sealing effects of the waist and leg openings,” not “the forces exerted on at least one of
the end parts of the absorbent layer that holds the absorbent layer in sealing abutment with the
wearer.” (SCA-FQ00256905.)
As discussed above, “where a statement is subject to multiple reasonable interpretations, at
least one of which would not amount to a surrender of claim scope, as a matter of law, prosecution
history disclaimer is not applicable.” USHIP Intellectual Properties, 2011 WL 6937460 at *1.
“[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions
or statements made during prosecution be both clear and unmistakable.” Omega Engineering, 334
F.3d at 1325-26. When viewed in the context of the written exchanges between the Patent Examiner
and SCA during reexamination, the statements in question do not reflect a clear and unmistakable
disclaimer that the claimed invention does not leak.
Finally, First Quality argues that its proposed construction is further supported by statements
recently made by SCA in a lawsuit relating to the foreign counterpart of the '646 Patent in a civil
action in France. In the pleadings, SCA described the pants-type diaper disclosed as “effectively
waterproof.” The Court declines to consider the extrinsic evidence regarding statements made by
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SCA before the French tribunal. See also Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d
1408, 1414 (Fed. Cir. 2000) (cautioning federal trial judges to “turn[ ] to extrinsic evidence only
when the intrinsic evidence is insufficient to establish the clear meaning of the asserted claim”).
Additionally, even if the Court were to consider such evidence, SCA did not characterize the diaper
as waterproof or never leaking. Rather, SCA stated that the diaper is “effectively waterproof.” This
extrinsic evidence does not support First Quality’s construction of the claim term.
For these reasons, the Court accords the claim term “to hold the absorbent layer in sealing
abutment with the wearer” its ordinary and customary meaning as understood in the context of the
claimed invention by one skilled in the art at the time of the invention.
F. Construction of phrase “separate region”
The parties propose the following competing constructions of the term “separate region.”
SCA’s Proposed Construction

First Quality’s Proposed Construction

Ordinary and customary meaning as understood Discrete locations.
by a person of ordinary skill in the art at the
time of the invention in the context of the
claimed invention.
At the Markman hearing, the parties agreed on the construction of the claim term “separate region”
to be defined as: “different areas.”
G. Construction of phrase “stretching and contraction power”
The parties propose the following competing constructions of the term “stretching and
contraction power.”
SCA’s Proposed Construction

First Quality’s Proposed Construction

Ordinary and customary meaning as understood
by a person of ordinary skill in the art at the
time of the invention in the context of the
claimed invention.

The ability [of the elastic part of the diaper] to
be deformed when a force is applied as
calculated using the modulus of elasticity
formula.

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The language of the claim in question requires “at least one of the end edge of the front and
the back parts has at the waist opening of the pants at least one elastically stretchable waist part
whose stretching and contraction power is greater than the remainder of the stretchable region.”
('646 Patent col. 10, 36-39 (emphasis added).) The parties agree that the claim language “stretching
and contraction power” refers to a relative comparison of the elasticity between two portions of the
stretchable region. First Quality argues that the phrase “stretching and contraction power” should
be construed in accordance with the modulus of elasticity. In support of this argument, First Quality
maintains that the statements by SCA made during reexamination support such a construction.
The Court disagrees. First Quality fails to point to any part of the prosecution history where
SCA defined “stretching and contraction power” in terms of the modulus of elasticity. The
prosecution history reflects that SCA discussed modulus of elasticity only in relation to language
contained in dependent claims 13 and 27 which relate to the spacing of the elastic threads in the
crotch region. In fact, it appears that SCA only defined the modulus of elasticity for the examiner
upon noting that the examiner was improperly applying the modulus to the claim limitation of
dependent claims 13 and 27. (SCA-FQ00256907.) Claims 13 and 27 are not asserted in this
litigation. As a result, the Court rejects First Quality’s attempt to limit the claims to a specific
mathematical formula. Instead, the Court accords the phrase “stretching and contraction power” its
ordinary and customary meaning as understood in the context of the claimed invention by one
skilled in the art at the time of the invention.
III. CONCLUSION
For the reasons discussed herein, the Court has determined that the disputed claims are to

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be construed pursuant to this Claims Construction Memorandum Opinion and Order.
IT IS SO ORDERED.

cc: counsel of record
February 9, 2012

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