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

Filing 808

MEMORANDUM AND ORDER - AND NOW, this 28th day of May, 2013, upon consideration of defts.' motion 756 for partial SJ of non-infringement of all asserted claims of the Rajala Patents, & upon further consideration of plf.'s mtn. 634 for pa rtial SJ that the Suzuki reference is not prior art invalidating the Rajala Patents, & pur. to the accompanying memorandum, it is ORDERED that both mtns. are DENIED. (See memo for complete details.) Signed by Honorable William W. Caldwell on 5/28/13. (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 are the following motions for partial

summary judgment. First, Plaintiff and Counterclaim Defendants Kimberly-Clark
Worldwide, Inc., Kimberly-Clark Corporation, and Kimberly Clark Global Sales, LLC
(collectively, “KC”) seek summary judgment that the Suzuki reference is not prior art
and therefore cannot invalidate the Rajala Patents1 (see Doc. 634). Second,
Defendants and Counterclaim Plaintiffs First Quality Baby Products, LLC, First
Quality Products, Inc., First Quality Retail Services, LLC, and First Quality Hygienic,

1

The Rajala Patents at issue are U.S. Patent No. 5,745,922; U.S. Patent No.
6,098,203; U.S. Patent No. 6,260,211; and U.S. Patent No. 7,000,260. “Suzuki” refers
to European Patent Application No. 0626161 A1 to Suzuki et al.

Inc. (collectively, “FQ”) seek summary judgment of non-infringement of all asserted
claims of the Rajala Patents2 (see Doc. 756).
KC and FQ have each filed briefs opposing the other’s motions, and
supporting their own motions, and the motions are now ripe for our review. We
consider these two motions simultaneously because, as FQ has noted (see Doc.
710), a favorable ruling on its motion could render KC’s motion moot. For the
reasons that follow, we will deny both motions.

II.

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

judgment, but 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. Among other claims in this action, KC seeks damages for
infringement of the Rajala Patents. FQ denies infringement and claims that the
patents are invalid because Suzuki is prior art.
FQ previously moved for summary judgment of non-infringement of the
Rajala Patents (Doc. 414), but we denied this motion, finding genuine issues of
material fact as to whether FQ’s products at issue have elastic across the crotch or
a substantially equivalent feature (see Doc. 569). We also denied a cross-motion

2

The claims at issue are as follows: Claims 1-4, 7, 8, 11-14, 16, 17, 20, 21, and
26 of U.S. Patent No. 5,745,922; Claims 1, 9, and 16 of U.S. Patent No. 6,098,203;
Claims 1-7 of U.S. Patent No. 6,260,211; and Claims 19-22 and 24-28 of U.S. Patent
No. 7,000,260.
2

filed by KC (Doc. 450) on the same basis. FQ now renews its motion for summary
judgment of non-infringement of the Rajala Patents. In a separate motion, also
pending before us, KC seeks summary judgment that the Suzuki reference is not
prior art invalidating the Rajala Patents.

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.
FQ’s motion for summary judgment of non-infringement requires us to
analyze KC’s patent infringement claim. There are two steps to patent infringement
analysis. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.
1995). The first step is to determine the meaning and scope of the patent claims at
issue. See id. Although we have already completed this step, FQ’s motion invites
us to revisit our claim construction. The second step requires us to compare the
properly construed claims to the device accused of infringing the patent. Id.
3

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).
KC’s motion for summary judgment requires us to analyze FQ’s claim
that Suzuki is prior art invalidating the Rajala Patents. In order to establish that a
patent is invalid as a result of prior art, the party challenging the patent must prove
by clear and convincing evidence that the alleged invalidating reference is prior art.
Mahurkar v. CR Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996). If the alleged prior
art was published earlier than the filing date of the patent at issue, then the patent
may be held invalid under 35 U.S.C. § 102(a), unless the patent owner can prove
that the patent was reduced to practice3 on an earlier date. Id. at 1576-77.

IV.

Discussion
We will first address FQ’s motion for summary judgment of non-

infringement of the Rajala Patents, because a ruling in FQ’s favor on this motion
could render KC’s motion moot. After ruling on FQ’s motion, we will either analyze
the merits of KC’s motion for summary judgment that Suzuki is not prior art
invalidating the Rajala Patents, or we will deny it as moot.

3

Reduction to practice is proven by showing that the inventor “(1) constructed
an embodiment . . . that met all the claim limitations and (2) determined that the
invention would work for its intended purpose.” Teva Pharm. Indus. v. Astrazeneca
Pharms. LP, 661 F.3d 1378, 1383 (Fed. Cir. 2011). Reduction to practice is a
“question of law, based on subsidiary findings of fact.” Purdue Pharma L.P. v.
Boehringer Ingelheim GmbH, 237 F.3d 1359, 1365 (Fed. Cir. 2001).
4

A.

FQ’s Motion for Summary Judgment of Non-Infringement of the
Rajala Patents

The four Rajala Patents describe the configuration of leg elastics in
adult incontinence products, such as protective underwear. In these four patents,
each leg elastic is described as having three sections. The second section extends
“across the crotch” of the garment, while the first and third sections generally follow
the leg edges of the garment, on either side of the crotch. Earlier in this litigation,
the parties disputed the meaning of the term “a . . . section of . . . elastic across the
crotch[.]” We initially construed it to mean “a . . . section of . . . elastic across the
crotch” and later clarified that “an elastic can be located ‘across the crotch’
regardless of whether it has been cut or severed.” (See Docs. 301, 344.)
On September 14, 2012, FQ requested Inter Partes Reexamination of
two of the Rajala Patents4 from the U.S. Patent and Trademark Office (PTO). FQ
argued that the Rajala Patents’ claims were invalid based on the Nomura Patent
and the Igaue Patent.5 The PTO granted FQ’s request for reexamination in part, but
it decided not to reexamine the Rajala claims with respect to Igaue. In reaching this
decision, the PTO noted that “[t]he majority of the crotch portion [of the Igaue article]
has no elastic at all” and then stated that “[i]t is not reasonable to conclude that the
article of Igaue has a [first] elastic with a [second] section across the crotch” (Doc.
757-10 at 13).

4

FQ requested reexamination of the ‘211 and ‘260 Rajala Patents.

5

The Nomura Patent is U.S. Patent No. 5,055,103, and the Igaue Patent is
U.S. Patent No. 4,743,241.
5

In the pending motion, FQ asserts that the elastic in the Igaue article is
just like the elastic in its products accused of infringement. FQ argues that if Rajala
Patents cannot cover the Igaue article, as the PTO concluded, then they cannot
cover FQ’s products either. FQ insists that no reasonable jury could reach a
contrary conclusion. Hence, FQ renews its motion for summary judgment of noninfringement of the Rajala Patents, despite the fact that we previously found a
genuine dispute of material fact as to whether FQ’s products have elastic “across
the crotch” (see Doc. 569).
The second new development that FQ cites as a reason for us to
revisit our earlier ruling is the production of KC’s expert report. Photographs in the
report show little or no elastic in the crotch portion of the products at issue. FQ
argues that these photographs conclusively show non-infringement, and that no
reasonable jury could conclude that the accused products have a second section of
elastic across the crotch, either literally or under the doctrine of equivalents.
FQ also asks this court to modify our construction of the claim
limitation “across the crotch,” to exclude any product in which the majority of the
crotch portion has no elastic. To support this request, FQ again points to the abovedescribed PTO ruling. FQ emphasizes that the PTO is required to give claim
limitations their broadest reasonable construction, but despite the breadth of this
legal standard, the PTO declared that it would be unreasonable to conclude that the
Igaue article has elastic across the crotch. FQ argues that, in light of this new
development, we should add a negative limitation to our claim construction, to
exclude any product in which a majority of the crotch portion has no elastic.
6

KC’s brief in opposition to FQ’s motion raises the following points.
First, KC characterizes the pending motion as a motion for reconsideration, and KC
argues that none of the limited grounds for granting reconsideration are applicable
here. We do not agree that the pending motion must satisfy the heavy
reconsideration burden. We find that FQ properly renewed its summary judgment
motion based on new developments—specifically, the PTO’s action on FQ’s request
for reexamination, and the production of KC’s expert report. We will therefore apply
the summary judgment standard set forth above, not the standard that applies to
motions for reconsideration.
KC notes that we adopted FQ’s proposed construction of “a
. . . section of . . . elastic across the crotch[,]” and later, FQ agreed that “an elastic
can be located ‘across the crotch’ regardless of whether it has been cut or severed.”
KC argues that, in light of this history, we should not consider FQ’s request to revisit
our claim construction decision. Although KC’s recitation of this history is correct,
we are not persuaded that these circumstances necessarily bar FQ from requesting
that we now add a negative limitation to our claim construction.6 We find it
appropriate to consider the merits of FQ’s request.

6

We are similarly unpersuaded by KC’s argument that the court may not
engage in “rolling” claim construction. KC undermined its own argument by taking the
opposite position approximately six months ago, when it urged the court to revise its
construction of another claim (see Doc. 659 at 21). Indeed, KC relied on the very
case it now criticizes FQ for relying on: Jack Guttman, Inc. v. KopyKake Enters. Inc.,
302 F.3d 1352 (Fed. Cir. 2002). Regardless of the merits of the claim construction
revision requested by FQ, KC’s arguments fail to convince us that we should not even
consider FQ’s request to modify the claim construction.
7

Turning to the PTO’s action, KC characterizes it as a preliminary, nonfinal action, and KC argues that we should take no action in response to it, because
it lacks finality. We reject this argument, because the ongoing portion of the PTO’s
reexamination proceedings deals with separate issues, not with the issue raised in
FQ’s pending motion. The only portion of the PTO’s decision that is relevant to FQ’s
motion is its conclusion that the Rajala claims do not cover the Igaue article, and this
portion of the PTO’s decision is final, not ongoing.
KC also disputes the relevance of what the PTO said about Igaue.
KC distinguishes Igaue from the Rajala Patents on the basis that the state of the art
reflected in Igaue involved “cut and paste” technology, in which two elastics are
separately placed on either side of the crotch of the article, whereas the Rajala
Patents disclose three sections of elastic extending across the article. According to
FQ, however, KC is merely speculating that “cut and paste” technology is used in
Igaue. Indeed, KC admits that Igaue provides no description whatsoever of how the
elastics are placed in the product (see Doc. 772 at 13). FQ also argues that even if
the Igaue article does involve “cut and paste” technology, this distinction is
irrelevant, because the asserted claims of the Rajala Patents are product claims, not
process claims.7 KC’s argument in reply is that “[t]he teachings of Igaue, including
how the elastics are placed, is highly relevant to understanding the differences
between the claimed inventions in [the] Rajala Patents and Igaue.” (Doc. 787 at 3.)

7

See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir.
2008) (“[T]he process by which a product is made is irrelevant to the question of
whether that product infringes a pure apparatus claim[.]”).
8

We note that KC offers no legal support for this position. Furthermore, even if it
were a legally sound argument, the fact that Igaue is silent on how its elastics are
placed would still make this argument unpersuasive. Thus, we are not convinced
that this alleged distinction necessarily renders the PTO’s decision irrelevant.
Turning to the merits of the claim construction proposed by FQ, KC
criticizes it for improperly reading a preferred embodiment out of the claims.
Specifically, KC points to Figures 7 and 12 of the ‘922 Rajala Patent, which show
illustrated embodiments in which the elastic is cut (see Doc. 757-1 at 8, 13), and KC
notes that the patent’s description of Figure 12 notes that “the cut portions of the
[elastic] threads retract to positions” where “the path of the threads [are] adhesively
held” (Doc. 757-1 at 22, 15:35-55). We find the evidence insufficient to establish
that Figures 7 and 12 are, in fact, “preferred” embodiments, and therefore, KC’s
argument on this point fails.
KC also contends that there is nothing in the claims, the specification,
the file histories of the four Rajala Patents, or the PTO’s action to support the
negative limitation that FQ seeks to add to our claim construction. KC also argues
that referring to a majority of the crotch portion places an improper numerical
limitation on the scope of the claims, which is not supported by the claims,
specification, or file history. In response to these points, FQ maintains that negative
limitations and numerical limitations are acceptable, and that the proposed limitation
is appropriate in this case, because it is consistent with the claim language and with
the PTO’s decision. Like FQ, we find no inconsistency between the proposed
limitation and the claim language. However, that fact alone does not justify adding
9

the proposed limitation to our claim construction. Furthermore, we do not agree with
FQ’s argument that the PTO’s decision compels us to adopt the proposed limitation.
We have already properly construed the claim in light of the relevant
considerations—primarily, the claim language and specification. The PTO’s
statement that the Igaue article does not have elastic across the crotch does not
impact our construction of the Rajala Patents’ “across the crotch” claim limitation; it
simply rejects the notion that this limitation could cover the Igaue article.8 This
decision neither contradicts our claim construction nor suggests that a revision is
needed. Therefore, after careful consideration, we are not convinced that any
changes to our claim construction are warranted.
Finally, we turn to the question of whether summary judgment is
proper. KC emphasizes that FQ simply re-raises the same issue presented in its
earlier motion for summary judgment of non-infringement of the Rajala Patents. KC
contends that our ruling on the earlier motion should not change. According to KC,
we correctly found a genuine dispute of material fact as to whether the accused
products have elastics “across the crotch,” correctly rejected FQ’s arguments
concerning the gap in the elastic, and correctly concluded that claim vitiation does
not apply. KC argues that the jury must decide whether there is literal infringement,

8

If we accepted FQ’s assertion that the elastic in its products is exactly like the
elastic in the Igaue article, then the PTO’s decision could suggest that a finding of
infringement would be unreasonable. However, this fact alone would still not be
sufficient to convince us that our claim construction must be revised in light of the
PTO’s decision. A “claim is construed in the light of the claim language . . . not in light
of the accused device.” SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1118 (Fed.
Cir. 1985) (emphasis in the original).
10

or infringement under the doctrine of equivalents. In support of this point, KC points
to the report of its expert, Ms. Balogh, who opines that FQ’s products literally meet
the “across the crotch” claim limitation, or in the alternative, have the equivalent.
In response, FQ argues that KC’s expert report cannot “manufacture”
an issue of fact. We do not agree that Ms. Balogh’s opinion is insufficient to create
an issue of fact.9 In ruling on FQ’s summary judgment motion, we must credit KC’s
evidence and draw “all justifiable inferences” in its favor. It may be unlikely that a
reasonable finder of fact would do the same after weighing all the evidence, but
nevertheless, it is not our task to weigh the evidence as a factfinder does. Instead,
we credit the nonmoving party’s evidence as we consider whether a reasonable
factfinder could rule in its favor. We find that KC’s evidence, if credited, could lead a
reasonable juror to conclude that FQ’s products infringe the Rajala Patents. We will
therefore deny FQ’s motion for summary judgment of non-infringement.

B.

KC’s Motion for Summary Judgment that Suzuki is Not Prior Art

We turn now to KC’s motion for summary judgment that Suzuki is not
prior art invalidating the Rajala patents. There is no dispute that Suzuki was
published on November 30, 1994, before the Rajala Patents’ application was filed.
9

We note that the case cited by FQ is not on point. In related litigation
between KC and FQ in the U.S. District Court for the Eastern District of Wisconsin, the
Honorable William C. Griesbach was considering an affirmative defense of
obviousness. In this context, he held that “[a]n expert cannot be used to manufacture
an issue of fact as to what the prior art teaches when that prior art is clear on its face.”
See Kimberly-Clark Worldwide, Inc., et al. v. First Quality Baby Products, LLC, et al.,
No. 09-CV-0916, ECF No. 804 at 10 (E.D. Wis. Sept. 29, 2012). This holding is
inapposite to the motion before us, which does not involve obviousness or present a
question about what is taught in prior art.
11

Hence, Suzuki may be prior art that invalidates the Rajala Patents under 35 U.S.C.
§ 102(a), unless KC can prove that the Rajala Patents were reduced to practice on
an earlier date.
In the pending motion, KC contends that the Rajala Patents were
reduced to practice by April 1994, and based on this chronology, Suzuki is not prior
art to the Rajala Patents and cannot invalidate them. As noted above (supra note
3), the requirements for proving reduction to practice include showing that the
inventor constructed an embodiment meeting all the claim limitations. KC offers
testimony and documentary evidence on this point, including drawings of products
that were constructed for testing. KC alleges that the products contained all the
limitations of the Rajala inventions. However, FQ argues that KC’s evidence is not
sufficient to prove this assertion, and summary judgment should be denied.
We agree that KC is not entitled to summary judgment on this issue.
Under the same reasoning by which we found a genuine issue of material fact as to
the existence of a section of elastic “across the crotch” in FQ’s products accused of
infringement, we likewise find a genuine issue of material fact as to whether KC’s
products made for testing met this claim limitation. A reasonable fact-finder might
conclude that the elastic in those products did not extend “across the crotch.”10
10

KC primarily contends that its products have elastic “across the crotch,” but in
the alternative, KC argues that if its products do not, then neither does Suzuki, and KC
is entitled to summary judgment under either scenario. To support the connection
between its products and Suzuki, KC points to the opinion of FQ’s expert, Mr.
Gardner, who opined that Suzuki discloses products with elastics that are severed
such that a gap is left across the crotch region of the product. We find this evidence
insufficient to establish that summary judgment is warranted, because a reasonable
fact finder could conclude that KC’s test products and the Suzuki article are not alike.
12

If so, the products would not qualify as an embodiment meeting all the Rajala
Patents’ claim limitations. We will therefore deny KC’s motion for summary
judgment.

V.

Conclusion
For the reasons stated above, we will deny FQ’s motion for summary

judgment of non-infringement of the Rajala Patents, and we will also deny KC’s
motion for summary judgment that Suzuki is not prior art invalidating the Rajala
Patents. We will issue an appropriate order.

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

Date: May 28, 2013

13

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 28th day of May, 2013, upon consideration of
Defendants’ motion (Doc. 756) for partial summary judgment of non-infringement of
all asserted claims of the Rajala Patents, and upon further consideration of
Plaintiff’s motion (Doc. 634) for partial summary judgment that the Suzuki reference
is not prior art invalidating the Rajala Patents, and pursuant to the accompanying
memorandum, it is ORDERED that both motions are DENIED.

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