Kimberly-Clark Worldwide Inc v. First Quality Products Inc et al
Filing
569
MEMORANDUM AND ORDER - AND NOW, this 31st day of Jan., 2012, upon consideration of defts.' mtn. for partial SJ 414 & plf.'s cross-mtn. for partial SJ 450 , & pursuant to the accompanying memorandum, it is ORDERED as follows: 1. Defts.' mtn. for partial SJ 414 is DENIED. 2. Plf.'s cross-motion for partial SJ 450 is DENIED. (See memo for complete details.) Signed by Honorable William W. Caldwell on 1/31/12. (am, )
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
KIMBERLY-CLARK WORLDWIDE, INC.,
Plaintiff
:
:
v.
CIVIL NO. 1:09-CV-1685
:
FIRST QUALITY BABY PRODUCTS, LLC,
FIRST QUALITY PRODUCTS, INC.,
FIRST QUALITY RETAIL SERVICES, LLC,
FIRST QUALITY HYGIENIC, INC.,
Defendants and
Counterclaim Plaintiffs
v.
:
:
:
:
KIMBERLY-CLARK CORPORATION,
KIMBERLY-CLARK WORLDWIDE, INC.,
KIMBERLY-CLARK GLOBAL SALES, LLC,
Counterclaim Defendants
:
:
MEMORANDUM
I.
Introduction
Presently before the court are a motion for partial summary judgment
(Doc. 414) filed by defendants First Quality Baby Products, LLC, First Quality
Products, Inc., First Quality Retail Services, LLC, and First Quality Hygienic, Inc.
(collectively “FQ”), and a cross-motion for partial summary judgment (Doc. 450) filed
by plaintiff Kimberly-Clark Worldwide Inc. (“KC”).
FQ seeks summary judgment of non-infringement on all of the asserted
claims of the Rajala Patents,1 as well as claim 1 of the Ungpiyakul Patent. KC
opposes this motion with a cross-motion, wherein it seeks summary judgment that
FQ’s products at issue have a section of elastic “across the crotch”—a feature
required by the relevant claims of the Rajala Patents. KC also argues that the court
should deny FQ’s motion.
After careful consideration, we will deny the motions.
II.
Legal Standard
Rule 56(a) provides that summary judgment should be granted "if the
movant shows that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law." FED . R. CIV. P. 56(a). We will
examine the motion under the well-established standard. See, e.g., Meditz v. City of
Newark, 658 F.3d 364, 369 (3d. Cir. 2011). “Once the moving party points to
evidence demonstrating no issue of material fact exists, the non-moving party has
the duty to set forth specific facts showing that a genuine issue of material fact
exists and that a reasonable factfinder could rule in its favor.” Id. (quoting Azur v.
Chase Bank, USA, Nat’l Ass’n, 601 F.3d 212, 216 (3d Cir. 2010)). The court must
credit the nonmovant’s evidence and draw “all justifiable inferences” in its favor. Id.
1
Specifically, the claims at issue are as follows: (1) claims 1-5, 7, 8, 11-14, 1618, 20, 21, and 26 of U.S. Patent No. 5,745,922; (2) claims 1, 2, 9, and 16 of U.S.
Patent No. 6,098203; (3) claims 1-7 of U.S. Patent No. 6,260,211; and (4) claims 1922 and 24-28 of U.S. Patent No. 7,000,260
2
The instant case requires us to analyze a patent infringement claim.
There are two steps to this analysis. See Markman v. Westview Instruments, Inc.,
52 F.3d 967, 976 (Fed. Cir. 1995). We have already completed the first step, which
is to determine the meaning and scope of the patent claims at issue. See id. The
second step requires us to compare the properly construed claims to the device
accused of infringing the patent. Id. Infringement is found if the accused device is
proven, by a preponderance of the evidence, to meet each element of the patent
claim, either literally or under the doctrine of equivalents. Seal-Flex, Inc. v. Athletic
Track & Court Constr., 172 F.3d 836, 842 (Fed. Cir. 1999).
III.
Discussion
A.
Rajala Patents
Each of the relevant claims of the Rajala Patents requires that the product
have a section of elastic “across the crotch.” FQ contends that no reasonable jury
could find that its products at issue have elastic “across the crotch” or a substantially
equivalent feature, and therefore, the court should enter summary judgment of noninfringement in FQ’s favor. KC brings a cross-motion for summary judgment,
wherein it argues that KC, not FQ, is entitled to summary judgment, because there
can be no dispute that FQ’s products do indeed have a section of elastic “across the
crotch.”
The parties do not dispute the actual structure of FQ’s products at issue.
Their dispute concerns whether a certain section of elastic is or is not properly
3
characterized as extending “across the crotch.” FQ states that its products have a
gap with no elastic at all—for example, a size large product has a gap measuring
approximately 2 inches across the crotch. KC observes that, in our order clarifying
the claim construction, we found that “an elastic can be located ‘across the crotch’
regardless of whether it has been cut or severed.” (Doc. 344). KC invokes this
language to argue that this section of elastic is “across the crotch,” although it has
been cut or severed, leaving a gap between the severed ends.
We will reject KC’s motion for summary judgment, because we do not
agree that there is no genuine issue of material fact as to the existence of a section
of elastic “across the crotch” in FQ’s products. We reaffirm our prior holding that a
cut or severed piece of elastic can extend “across the crotch” of a garment;
however, we are not persuaded that the section of elastic at issue here necessarily
does so. This elastic is not only cut, but significantly, it is cut with an appreciable
gap in the area of the product covering the crotch. A reasonable fact-finder might
therefore conclude that the elastic does not extend “across the crotch.”2
2
For similar reasons, we reject KC’s argument that Mr. Silwanowicz’s
declaration is fatally flawed. KC contends that Mr. Silwanowicz’s declaration
improperly contradicts the claim construction, by noting the above-described gap and
declaring that there is no elastic across the crotch. According to KC, “there can be a
gap because the Court construed ‘across the crotch’ to mean that the elastic across
the crotch can be cut or severed[.]” (Doc 453 at 15.) We disagree. Our claim
construction simply held that “an elastic can be located ‘across the crotch’ regardless
of whether it has been cut or severed.” (Doc. 344). It did not explicitly permit gaps of
an appreciable size between cut or severed ends of elastic. Indeed, it did not address
the significance of gaps. Hence, we find no contradiction between our claim
construction, which said nothing about gaps, and Mr. Silwanowicz’s declaration.
4
However, we will also reject FQ’s motion for summary judgment on this
issue, because we are not convinced that the existence of the gap necessarily
compels a reasonable juror to conclude that there are no elastics “across the
crotch.” This issue presents a genuine dispute of material fact.
As noted above, we have construed “across the crotch” to include the
possibility that “elastics can be located ‘across the crotch’ regardless of whether said
elastics have been ‘cut’ or ‘severed.’” (Doc. 344). KC takes the position that gaps
are therefore permitted. By contract, FQ’s position is that an elastic could be cut
and still extend “across the crotch” if the ends did not retract—if, for instance, the
elastic were glued in place before it was cut. We note that, under either
interpretation, the cut would leave some gap in the elastic—at least a minimal gap.
Hence, the existence of a gap is not dispositive.
Assuming, arguendo, that we adopted FQ’s reading of our claim
construction, and found no literal infringement as a result of the two-inch gap, we
would nevertheless conclude that a reasonable jury could find infringement under
the doctrine of equivalents. FQ urges us not to apply the doctrine of equivalents, on
the basis that it improperly vitiates the Rajala Patents’ requirement of elastic across
the crotch. We reject this argument. The difference between the two-inch gap that
actually exists in FQ’s products, and the minimal gap that would hypothetically exist
if a piece of elastic were glued in place and subsequently cut, is simply a difference
in degree. A reasonable fact-finder could conclude that leg elastics which have
5
been cut, leaving a gap across the crotch, are equivalent to elastics which extend
across the crotch completely. We therefore conclude that claim vitiation does not
apply, and the jury may consider equivalence.3
In sum, there are genuine issues of material fact as to whether elastics
“across the crotch” are literally found in the products at issue, or whether
infringement can be found under the doctrine of equivalents. Both KC’s and FQ’s
motions for summary judgment on this issue will be denied.
B.
Ungpiyakul Patent
With respect to the Ungpiyakul Patent, FQ asserts that the relevant patent
claim requires a backsheet layer that is “substantially liquid impermeable” as well as
a separate, smaller “patch of web material that (a) includes a registered graphic and
(b) is secured to the backsheet layer.” (See Doc. 415 at 7, 22, 24, 26.) FQ argues
that it is entitled to summary judgment of non-infringement, because no reasonable
jury could find that FQ’s products at issue in this case feature separate material, with
a registered graphic, secured to a liquid impermeable backsheet layer, or an
equivalent thereto. Opposing FQ’s motion, KC argues that it should be denied
3
See Trading Techs. Int’l, Inc. v. Espeed, Inc., 595 F.3d 1340, 1355 (Fed. Cir.
2010) (holding that claim vitiation “does not apply when there is a ‘subtle difference in
degree’”); Wright Medical Tech, Inc. v. Osteonics Corp., 122 F.3d 1440, 1445 (Fed.
Cir. 1997) (concluding that a fact-finder must consider equivalence, where the device
at issue featured a rod that did not extend entirely through a defined area, and the
patent claim required that the rod extend entirely through the area).
6
because a reasonable juror could find that FQ’s products either literally infringe the
Ungpiyakul Patent or infringe it under the doctrine of equivalents.
The parties agree that the products at issue consist of the following layers:
a liquid permeable topsheet layer, an absorbent layer, a layer of “polymer film” or
“poly laminate” material (which includes a registered graphic), a non-woven outer
layer, and a “landing zone,” where the parent fastens the diaper. However, the
parties dispute which of these layers is properly characterized as a “backsheet” or a
smaller piece of “web material.”
FQ insists the layer of polymer film is the backsheet, and there is no
smaller patch of web material, with a registered graphic, secured to it.4 FQ also
argues that no reasonable jury could conclude that the non-woven outer cover is a
“substantially liquid impermeable” backsheet layer, because liquid can pass through
it.5 Furthermore, FQ contends that, for the same reasons, no reasonable jury could
find infringement under the doctrine of equivalents.
By contrast, KC contends that the non-woven outer layer is the backsheet,
and the poly laminate layer is a smaller patch of web material, with a registered
graphic, secured to the backsheet. KC relies on the testimony of Ms. O’Connell, the
4
FQ calls the landing zone a smaller patch of web material. The landing zone
neither includes a registered graphic, nor is it secured to the layer of polymer film,
which FQ characterizes as the backsheet layer.
5
According to FQ, the polymer film layer is the layer that provides a liquidimpermeable barrier, and the non-woven outer layer’s purpose is simply to provide the
product with a soft, cloth-like texture.
7
Director of Product Development for First Quality Baby Products, LLC, to establish
that the poly laminate layer could be considered a smaller piece of web material,.
Ms. O’Connell testified that this layer is a piece of web material, and its width is
slightly narrower than the width of the non-woven outer cover, which KC
characterizes as the backsheet layer. (Doc. 453 at 22-23.) There is no dispute that
this polymer film or poly laminate layer is secured to the non-woven outer layer.
KC cites the following evidence to support the conclusion that the nonwoven outer cover is a backsheet. First, Ms. O’Connell testified that she considered
this layer to be the backsheet layer. (Id. at 21.) Second, FQ’s engineering drawings
refer to this layer as the “nonwoven backsheet.” (Id.) Third, FQ’s bills of materials
for the products at issue refer to this layer as the backsheet. (Id. at 22.) Fourth, FQ
refers to this layer as the backsheet in communications with customers. (Id.)
In addition, KC attempts to show that the non-woven outer cover is
“substantially liquid impermeable,” as the Ungpiyakul Patent requires the backsheet
layer to be. Specifically, KC submits evidence from its expert, Mr. Butterworth, who
tested the material and concluded that it is substantially liquid impermeable. (Id. at
25-26.) According to Mr. Butterworth’s testing methods, 5 mL of liquid pooled on the
surface of the material without permeating it.
FQ responds with numerous criticisms of Mr. Butterworth’s test and
conclusions. A jury may find these criticisms persuasive, but a court reviewing a
summary judgment motion must view the evidence in the light most favorable to the
8
non-moving party. Applying the proper standard, we conclude that summary
judgment is not warranted.6 KC’s evidence is sufficient to create a genuine dispute
of material fact as to whether FQ’s products at issue have a “substantially liquid
impermeable” backsheet layer and a smaller piece of web material, with a registered
graphic, secured to the backsheet layer, or functional equivalents of these
elements.7 Summary judgment must therefore be denied.
KC’s final argument is that FQ is bound by a settlement agreement wherein it
is admitted that another product, with the same relevant components as its products at
issue, infringes the Ungpiyakul Patent. KC contends that, at a minimum, the
admissions contained in said agreement raise issues of material fact concerning
infringement. We are not convinced that the settlement agreement has the
significance that KC attributes to it. However, other evidence in the record persuades
us that there are genuine issues of material fact precluding summary judgment.
6
7
KC observes that the non-woven outer cover is adhesively bonded to the poly
laminate layer, which is liquid impermeable. KC argues that a reasonable jury might
therefore conclude that the non-woven outer layer is an equivalent structure to a liquid
impermeable backsheet layer, and find infringement under the doctrine of equivalents.
FQ urges us to reject KC’s reasoning. According to FQ, the Ungpiyakul Patent
requires the liquid impermeable backsheet layer to be a separate, distinct structure
from the smaller patch of web material. To support this position, FQ quotes language
from the Ungpiyakul Patent requiring the web material to be “secured” to the
backsheet layer, and FQ cites Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 400
(Fed. Cir. 1994).
We find Dolly distinguishable from the instant case. In Dolly, the patent at
issue explicitly required panels formed independently, but the Ungpiyakul Patent lacks
such clear language (e.g., “independent” or “separate”)—it merely implies that the
layers should be distinct. We conclude that there is a question of fact as to whether
equivalence can be found under the circumstances of this case. See Eagle
Comtronics, Inc. v. Arrow Commun. Labs., Inc., 305 F.3d 1303, 1317) (Fed. Cir. 2002)
(“[W]hen two elements of the accused device perform a single function of the patented
invention . . . , and the doctrine of equivalents may still apply if the difference are
insubstantial. . . . ‘[O]ne-to-one correspondence of components is not required.’”).
9
IV.
Conclusion
We conclude that genuine disputes of material fact preclude the entry of
summary judgment on the claims discussed above. We will issue an appropriate
order.
/s/ William W. Caldwell
William W. Caldwell
United States District Judge
Date: January 31, 2012
10
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
KIMBERLY-CLARK WORLDWIDE, INC.,
Plaintiff
:
:
v.
CIVIL NO. 1:09-CV-1685
:
FIRST QUALITY BABY PRODUCTS, LLC,
FIRST QUALITY PRODUCTS, INC.,
FIRST QUALITY RETAIL SERVICES, LLC,
FIRST QUALITY HYGIENIC, INC.,
Defendants and
Counterclaim Plaintiffs
v.
:
:
:
:
KIMBERLY-CLARK CORPORATION,
KIMBERLY-CLARK WORLDWIDE, INC.,
KIMBERLY-CLARK GLOBAL SALES, LLC,
Counterclaim Defendants
:
:
ORDER
AND NOW, this 31st day of January, 2012, upon consideration of
Defendants’ motion for partial summary judgment (Doc. 414) and Plaintiff’s crossmotion for partial summary judgment (Doc. 450), and pursuant to the accompanying
memorandum, it is ORDERED as follows:
1.
Defendants’ motion for partial summary judgment
(Doc. 414) is DENIED.
2.
Plaintiff’s cross-motion for partial summary
judgment (Doc. 450) is DENIED.
/s/ William W. Caldwell
William W. Caldwell
United States District Judge
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