Kimberly-Clark Worldwide Inc v. First Quality Products Inc et al

Filing 784

MEMORANDUM AND ORDER - AND NOW, this 19th day of March, 2013, upon consideration of defts.' mtn. for partial SJ 635 , & pur. to the accompanying memorandum, it is ORDERED that said mtn. is GRANTED in part and DENIED in part as follows: 1. The mtn. is GRANTED w/respect to claim 34. We hereby grant SJ that claim 34 is invalid for impermissible broadening in violation of 35 USC 305. 2. The mtn. is DENIED in all other respects. (See memo for complete details.) Signed by Honorable William W. Caldwell on 3/19/13. (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 is a motion for partial summary judgment

(Doc. 635), filed by defendants First Quality Baby Products, LLC, First Quality
Products, Inc., First Quality Retail Services, LLC, and First Quality Hygienic, Inc.
(collectively “FQ”). FQ seeks summary judgment of invalidity of claims 31, 32, and
34 of the Kuepper Patent on two grounds: (1) claim 34 is invalid as a matter of law
because, during the Kuepper Patent’s reexamination, it was broadened in violation
of 35 U.S.C. § 305, and (2) claims 31 and 32 are indefinite as a matter of law under
35 U.S.C. § 112, because they contain internally inconsistent claim requirements.

Plaintiff Kimberly-Clark Worldwide Inc. (“KC”) opposes FQ’s motion for
summary judgment. The parties have briefed the issues, and the motion is now ripe
for our review. For the reasons set forth below, we will grant FQ’s motion in part and
deny it in part. Specifically, we will grant summary judgment of invalidity of claim 34,
and deny summary judgment as to claims 31 and 32.

II.

Background
In February 2009, FQ filed a complaint in this court for a declaratory

judgment of invalidity and non-infringement of the Kuepper Patent. We dismissed
FQ’s complaint for lack of subject matter jurisdiction. Prior to our dismissal,
however, KC filed this patent infringement action in the U.S. District Court for the
Northern District of Texas, and this action was then transferred from Texas to this
court.
During the course of this litigation, an anonymous non-party requested
reexamination of the Kuepper Patent from the Patent Office. After reexamination,
the Patent Office concluded that none of the Kuepper Patent’s original 30 claims
were patentable. KC filed numerous new claims, and the Patent Office permitted
four of the new claims to issue—claims 31 to 34.
KC then accused FQ of infringement of claims 31, 32, and 34 of the
Kuepper Patent. On October 12, 2012, FQ filed the instant motion for summary
judgment of invalidity of claims 31, 32, and 34.

2

III.

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.
The pending summary judgment motion challenges the validity of three
patent claims. Each claim is presumed valid, and the party alleging invalidity bears
the burden of proving it by clear and convincing evidence. 35 U.S.C. § 282(a);
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1372 (Fed. Cir. 2005). The
issues presented in the instant motion—broadening and indefiniteness—are
questions of law, amenable to resolution at the summary judgment stage. Exxon
Research & Eng’g Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001)
(holding that indefiniteness “presents a question of law”); Predicate Logic, Inc. v.
Distributive Software, Inc., 544 F.3d 1298, 1302 (Fed. Cir. 2008) (holding that
questions of broadening are “a matter of claim construction”); see also Hockerson-

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Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1373 (Fed. Cir. 1999) (holding
that “[w]hether amendments made during reexamination enlarge the scope of a
claim is a matter of claim construction[,]” which is “a matter of law”).
In order to determine whether a claim has been impermissibly
enlarged, we must compare the scope of the original claim and the new claim. If the
new claim covers any subject matter that would not have fallen within the scope of
the original claim, then the new claim is broader. Predicate Logic, 544 F.3d at 1302;
see also Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1374 (Fed. Cir. 2006) (“A
reissue claim that is broader in any respect is considered to be broader than the
original claims even though it may be narrower in other respects.” (quoting Tillotson,
Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987))).
A patent claim is invalid for indefiniteness if it is “insolubly ambiguous,
and no narrowing construction can properly be adopted[.]” Exxon Research & Eng’g
Co., 265 F.3d at 1375. If, however, “the meaning of the claim is discernible, even
though the task may be formidable and the conclusion may be one over which
reasonable persons will disagree,” then the claim is “sufficiently clear to avoid
invalidity on indefiniteness grounds.” Id.

IV.

Discussion
As noted above, FQ contends that claim 34 is invalid as a result of

impermissible broadening and claims 31 and 32 are invalid on the basis of
indefiniteness. We will address these arguments in turn.
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A.

Claim 34

FQ argues that claim 34 is broader than original claim 1 of the
Kuepper Patent. The Kuepper Patent claims a disposable diaper with an
elastomeric ear of a specific configuration. Claim 34 requires the second
connecting edge of the diaper’s ear to consist of two segments: one that is generally
parallel to the first connecting edge of the diaper’s ear, and one that is non-parallel
to the first connecting edge. By contrast, claim 1, and all the other original claims of
the Kuepper Patent, simply required that the “second connecting edge” be “nonparallel to [the] first connecting edge.” FQ argues that claim 34 covers subject
matter that was outside the scope of original claim 1, and therefore, claim 34 is
invalid for impermissible broadening.
FQ also contends that the law of the case compels this conclusion.
Earlier in this litigation, KC invited us to construe claim 1 to require that only a
portion of the second connecting edge be non-parallel to the first connecting edge.
However, we rejected KC’s proposed construction and ruled that the limitation at
issue should take its ordinary and customary meaning. We specifically stated that
“KC’s proposed construction would expand the disputed claim term beyond what is
specifically found in the claims and specification.” (Doc. 251 at 6).
In its briefs opposing the pending motion, KC now raises a similar
argument about the breadth of original claim 1. According to KC, claim 1 not only
encompasses ears with first and second connecting edges that are entirely non5

parallel; it also encompasses ears with first and second connecting edges that are
mostly, but not entirely, non-parallel. By contrast, KC argues, claim 34 covers only
the latter embodiment, and not the former. Thus, KC contends that original claim 1
is broader than claim 34. To support its interpretation of claim 1, KC points to
testimony from both parties’ experts, Mr. Butterworth and Mr. Blevins, that one
connecting edge may be non-parallel to another even if the connecting edges are
not entirely non-parallel. KC argues that one of ordinary skill in the art would
recognize this as the plain and ordinary meaning of the term at issue.
We find KC’s argument unconvincing. Even if we assume, arguendo,
that original claim 1 is as broad as KC contends—specifically, if it encompass ears
with edges that are mostly but not entirely non-parallel—claim 34 is broader still.1
The scope of claim 34 is not restricted to ears with edges that are mostly nonparallel. For instance, an ear design in which the second connecting edge consists
of two equal segments—one parallel to the first connecting edge, and the other nonparallel to the first connecting edge—would come within the scope of claim 34.
However, such a design is not mostly non-parallel, because the two segments would
be equal in length. The same could be said if the parallel segment were longer than
the non-parallel segment.

1

In light of this conclusion, it is unnecessary to resolve the parties’ differing
interpretations of our claim construction ruling and the ordinary meaning of the phrase
“the second connecting edge is non-parallel to the first connecting edge.”
6

Hence, claim 34 covers at least some subject matter that would not
have fallen within the scope of original claim 1, and therefore, it is invalid for
impermissibly broadening the scope of the Kuepper Patent.

B.

Claims 31 and 32

Claim 31 requires the second connecting edge of the diaper’s ear to
have a segment that is “generally parallel” to the first connecting edge of the ear.
Claim 32 depends from claim 31 and includes all of its limitations. Claims 31 and 32
are also dependent upon original claim 1, which, as noted above, requires the
second connecting edge to be “non-parallel” to the first connecting edge. FQ argues
that these two requirements are insolubly ambiguous because they inherently
contradict each other, and thus, claims 31 and 32 are invalid for indefiniteness.
KC maintains that claims 31 and 32 are not indefinite. As described
above, KC interprets claim 1 broadly, to cover ears with edges that are mostly but
not entirely non-parallel. Hence, under KC’s interpretation of claim 1, there is
nothing contradictory in claims 31 and 32.2

2

KC also points to the Patent Office’s allowance of claims 31 and 32, and KC
contends that this indicates that, during reexamination, the Patent Office concluded
that claims 31 and 32 were not indefinite. In response to this point, FQ argues that
the Patent Office applies a broader standard for claim interpretation than this court.
Specifically, the Patent Office must interpret pending claims “as broadly as their terms
reasonably allow.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). No such
requirement applies to this court. For this reason, we decline to rely on the Patent
Office’s allowance of claims 31 and 32 as a basis to conclude that these claims are
not indefinite, as KC invites us to do. We will rely on our own interpretation of the
terms at issue.
7

FQ contends that claims 31 and 32 are inherently contradictory
because, under FQ’s interpretation of original claim 1, the two connecting edges
must be “entirely” non-parallel. FQ insists that our construction of the claim
language at issue compels this conclusion, but we do not agree. In our claim
construction ruling (Doc. 251 at 6-7), we were persuaded that the phrase “said
second connecting edge being non-parallel to said first connecting edge” should be
given its ordinary and customary meaning because the language is clear,
unambiguous, and speaks for itself. We construed it to mean that “the second
connecting edge is non-parallel to the first connecting edge.” (Id. at 7). We did not
dictate, however, that the two connecting edges must be entirely non-parallel.
Furthermore, FQ has failed to persuade us that the ordinary meaning
of non-parallel is entirely non-parallel. As noted above, KC has presented testimony
from both parties’ experts, Mr. Butterworth and Mr. Blevins, indicating that the
second connecting edge of a diaper’s ear can be non-parallel to the first connecting
edge even if the two edges are not entirely non-parallel. We recognize that Mr.
Butterworth and Mr. Blevins were not necessarily applying the court’s claim
construction when they testified on this point. However, we find it noteworthy that
they agreed on this application of the term non-parallel. This evidence tends to
indicate that people of ordinary skill in the art would agree that, under the ordinary
and customary meaning of the non-parallel limitation, the two edges need not be
entirely non-parallel. The Federal Circuit has held that “the ordinary and customary

8

meaning of a claim term is the meaning that the term would have to a person of
ordinary skill in the art[.]” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005).
In sum, the inherent contradiction urged by FQ is premised on FQ’s
own interpretation of the non-parallel limitation—specifically, its understanding of the
term “non-parallel” to mean “entirely non-parallel.” However, FQ has not proven that
this interpretation reflects the ordinary meaning of non-parallel. Nor does our claim
construction compel this interpretation, because our claim construction held that the
non-parallel limitation should be given its ordinary meaning. At most, FQ has shown
that reasonable minds may disagree over the meaning of the non-parallel limitation,
but that fact is insufficient to establish indefiniteness. See Exxon Research & Eng’g
Co., 265 F.3d at 1375 (holding that a claim is not invalid on the basis of
indefiniteness if “the meaning of the claim is discernible, even though the task may
be formidable and the conclusion may be one over which reasonable persons will
disagree”). Therefore, with respect to claims 31 and 32, FQ has not satisfied its
burden of proving invalidity by clear and convincing evidence.

V.

Conclusion
For the reasons set forth above, we will grant summary judgment of

invalidity of claim 34, and deny summary judgment as to claims 31 and 32.

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We will issue an appropriate order.

/s/ William W. Caldwell
William W. Caldwell
United States District Judge

Date: March 19, 2013

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 19th day of March, 2013, upon consideration of
Defendants’ motion for partial summary judgment (Doc. 635), and pursuant to the
accompanying memorandum, it is ORDERED that said motion is GRANTED in part
and DENIED in part as follows:
1.

The motion is GRANTED with respect to claim 34. We hereby
grant summary judgment that claim 34 is invalid for
impermissible broadening in violation of 35 U.S.C. § 305

2.

The motion is DENIED in all other respects.

/s/ William W. Caldwell
William W. Caldwell
United States District Judge