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

Filing 815

MEMORANDUM AND ORDER - AND NOW, this 8th day of July, 2013, upon consideration of defts.' mtn. for partial SJ that the Kellenberger & Melius Patents are invalid for obviousness 682 , it is ORDERED that said mtn. is DENIED. (See memo for complete details.) Signed by Honorable William W. Caldwell on 7/8/13. (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
This litigation concerns a variety of patents relating to disposable

absorbent products, such as diapers and incontinence products. Presently before
the court is a motion filed by Defendants and Counterclaim Plaintiffs First Quality
Baby Products, LLC, First Quality Products, Inc., First Quality Retail Services, LLC,
and First Quality Hygienic, Inc. (collectively, “FQ”) for partial summary judgment that
the Kellenberger and Melius Patents1 are invalid for obviousness (see Doc. 682).
For the reasons that follow, we will deny the motion.

1

The patents at issue are U.S. Patent No. 5,147,343 to Kellenberger and U.S.
Patent No. 5,601,542 to Melius et al.

II.

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

judgment, but we dismissed that complaint for lack of subject matter jurisdiction.
Prior to our dismissal, however, Plaintiff Kimberly-Clark Worldwide, Inc. (“KC”) filed
this patent infringement action in the U.S. District Court for the Northern District of
Texas, which was then transferred from Texas to this court. Among other claims,
KC accuses FQ of infringing the Kellenberger and Melius Patents.2 FQ denies
infringement and contends these patents are invalid.

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.

2

Specifically, KC asserts infringement of Kellenberger Patent Claims 1, 2, 7-9,
12, 20, 21, 24, 30, 41, 42, and 44, and Melius Patent Claims 16-19, 22, 23, 25, 73, 74,
79, 83, 84, and 88.
2

Patent claims are presumed to be valid, and the party alleging
invalidity bears the burden of proving it by clear and convincing evidence. 35 U.S.C.
§ 282; Microsoft Corp. v. i4i Ltd. P’ship, ___ U.S. ___, 131 S. Ct. 2238, 2242 (2011).
Invalidity might be established in a variety of ways. In order to determine whether a
patent is invalid for obviousness, the court must examine whether “the differences
between the claimed invention and the prior art are such that the claimed invention
as a whole would have been obvious . . . to a person having ordinary skill in the
art[.]” 35 U.S.C. § 103. Obviousness presents a question of law; however, it is
based on the following factual inquiries set forth in Graham v. John Deere Co.: (1)
“the scope and content of the prior art[,]” (2) “differences between the prior art and
the claims at issue[,]” (3) “the level of ordinary skill in the pertinent art[,]” and (4)
“secondary considerations” that may indicate obviousness or lack thereof, such as
“commercial success, long felt but unsolved needs, failure of others, etc.” 383 U.S.
1, 17-18 (1966).

IV.

Discussion
First Quality claims that the Kellenberger and Melius Patents are

invalid for obviousness because the only feature distinguishing them from prior art is
their use of a new “superabsorbent polymer” (“SAP”) in the product’s absorbent
core, to replace an older, less effective SAP.3 FQ argues that it was obvious to

3

The absorbent core of a diaper or incontinence product consists of a mix of
fibers and superabsorbent polymers (“SAPs”), which are chemical compounds
capable of absorbing ten or more times their own weight in fluid. SAP particles are
dispersed among the spaces between fibers.
3

substitute new, improved SAPs for old ones. FQ also notes that KC did not invent
the improved SAPs—rather, it obtained them from its suppliers—and FQ insists that
KC cannot obtain a patent for something it did not invent.
KC admits that it did not create the new SAPs, or invent their chemical
composition, but KC disputes the assertion that it merely substituted one SAP for
another. According to KC, its inventors discovered specific combinations of
characteristics (described in further detail below) that provided superior absorbency
under pressure and eliminated a problem known as “gel blocking,” which was
commonly associated with the use of SAP in absorbent products.4 KC and its
inventors then took their discoveries to SAP suppliers, who provided SAPs with the
characteristics that KC sought.
With respect to the Kellenberger Patent, KC first describes Stanley
Kellenberger’s invention of the AUL test.5 AUL is an acronym for “absorbency under
load,” and the AUL test measures the amount of liquid an SAP can absorb while
under a specified amount of confining pressure. After inventing the AUL test,
Kellenberger discovered key AUL values that would yield enhanced absorbency.
4

KC describes gel blocking as a problem that occurred when SAPs expanded
into the spaces between the fibers and blocked further absorption of fluid into the
product’s absorbent core. KC explains that, once swollen, the SAPs would block fluid
“like a dam[.]” (Doc. 739 at 10).
5

FQ contends that it was actually Sanyo Chemical Industries, Inc., one of KC’s
suppliers, and not Kellenberger who developed the AUL test. KC asserts that the AUL
test developed by Sanyo was a different and less effective test than Kellenberger’s
AUL test, and that Sanyo later adopted Kellenberger’s test because it was a better
predictor of SAP performance. For purposes of ruling on the pending motion, we must
credit KC’s evidence, and we find the evidence sufficient to support a finding that
Kellenberger did, in fact, invent the AUL test claimed in the Kellenberger Patent.
4

Furthermore, KC also describes Kellenberger’s discovery that the key to avoiding
gel blocking was in the relationship between the size of the SAP particles and the
median pore size.6 KC claims that this particle to pore size relationship was not
disclosed in any prior art, and Kellenberger discovered it.
With respect to the Melius Patent, KC claims that its inventors
discovered new parameters for SAP performance, called the PAI test, an acronym
for “pressure absorbency index.” The PAI value is calculated by adding together
four AUL values, measured at four different specified pressures. KC also asserts
that these inventors “invented the combination of an absorbent composite with the
claimed (1) percentage of SAP, (2) PAI values of the SAP, and (3) levels of
extractables.” (Doc. 739 at 17).
In response, FQ argues that the alleged invention of the AUL and PAI
testing protocols is not material, because the patent claims cover the diaper itself,
not the method of testing the SAP used in the diaper. FQ reminds the court that our
claim construction ruling held that Kellenberger and Melius have no process
limitations and do not require the use of AUL or PAI testing protocols—they simply
require the article to have the specified superabsorbent properties.

6

“Pore size” refers to a measure of the space between fibers. According to KC,
Kellenberger discovered that if at least 50% (and preferably more) of the SAP particles
were larger than the pore size, then they could push the fibers apart as they swell.
This would avoid gel blocking and create additional space for fluids to be channeled
and absorbed into the absorbent core of the product.
5

FQ is correct that our claim construction decision so held,7 but we do
not agree that this compels us to disregard the new testing methods entirely, simply
because the patent claims do not cover these protocols. KC describes the AUL and
PAI testing protocols as part of a larger narrative through which KC argues against
FQ’s claim of obviousness. KC’s argument is that the Kellenberger and Melius
Patents were not obvious because they claim superabsorbent materials with specific
characteristics that were previously unknowable, until new testing methods made it
possible to identify these characteristics. Contrary to FQ’s contentions, this
argument does not raise a claim construction issue, nor is it irreconcilable with our
claim construction ruling.
FQ also contends that it is irrelevant that the AUL and PAI values were
previously unknowable characteristics of SAP, prior to the development of the AUL
and PAI tests. FQ cites Atlas Powder Co. v. IRECO Inc. for its holding that
“discovery of a previously unappreciated property of a prior art composition . . . does
not render the old composition patentably new.” 190 F.3d 1342, 1347 (Fed. Cir.
1999); see also In re Crish, 393 F.3d 1253, 1258 (Fed. Cir. 2004) (“[T]he discovery
of properties of a known material does not make it novel.”).
KC urges us to reject this argument on the basis that it confuses the
issues of anticipation by inherency and obviousness, which are distinct issues.
Anticipation by inherency concerns the existence of an unrecognized property
7

Our claim construction ruling declined to construe the verbs “can” and “has”
to mean that “material is ‘specifically selected based on its having the’ claimed
properties[,]” because construing them in that manner would “improperly . . . add a
process limitation into an apparatus claim.” (Doc. 301 at 16-17.)
6

inherent in a single prior art reference—a characteristic that is necessarily present in
the prior art, but not known.8 By contrast, obviousness is an issue concerning what
a person of ordinary skill in the art would have known at the time of the invention.
KC cites In re Rijckaert for the proposition that “[o]bviousness cannot be predicated
on what is unknown.” 9 F.3d 1531, 1534 (Fed. Cir. 1993).
FQ agrees that anticipation and obviousness are distinct doctrines, but
FQ argues that “an inherent teaching of a prior art reference” is relevant to both.
See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995); In re Kao, 639 F.3d 1057, 1070
(Fed. Cir. 2011); Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir.
2012). FQ asserts that the SAPs, which KC did not invent, had the specified AUL
and PAI values inherently, and according to FQ, that fact is sufficient to establish
obviousness of the Kellenberger and Melius Patents.
KC contends that the cases cited by FQ—cases in which inherency is
a consideration that supports a finding of obviousness—are distinguishable from the
instant case. KC argues that in the cases cited by FQ, the inherent properties at
issue were acknowledged or known to be present in prior art, but by contrast, the
AUL and PAI values at issue in this case were previously unrecognized and
unknown. We agree with this distinction. Although a finding of obviousness could in
some cases arise from the fact that certain properties were inherent in prior art, we

8

KC insists that the doctrine of anticipation does not apply in this case, not only
because FQ failed to raise this theory in the pending motion, but also because there is
no single prior art reference that discloses the inventions of the Kellenberger or Melius
Patents.
7

are not convinced that, in this case, the AUL and PAI values are the type of inherent
properties that would render the Kellenberger and Melius Patents obvious.
When viewed in the light most favorable to KC, the evidence in this
case could support a ruling against FQ’s claim of obviousness. As noted above,
obviousness is a question of law based on underlying factual inquiries, including
differences between the prior art and the claims at issue. FQ contends that KC
simply took a new SAP invented by a third-party manufacturer and included it in a
preexisting diaper design, and that it was obvious to do so. However, KC’s
evidence, if credited, could support a different conclusion. KC’s evidence suggests
that, at a time when there was no clear industry consensus as to how to maximize
absorbency under pressure and how to avoid gel blocking, KC’s inventors
discovered key characteristics for superior SAP performance that addressed these
issues. Furthermore, KC’s evidence indicates that, without the benefit of its AUL
and PAI tests, it might have been unclear which of the SAPs provided by its
suppliers would yield the best performance.9 In light of this evidence, which we
must credit at this juncture, FQ’s argument that it would have been obvious to
substitute a new SAP for an old one is unpersuasive. We conclude that the
underlying factual inquiries do not necessarily support a finding of obviousness by

9

Indeed, KC cites evidence that a different AUL test developed by Sanyo (see
supra note 5) did not measure absorbency under pressure as well as Kellenberger’s
AUL test did. According to KC, Sanyo made two lots of an SAP called “PA200,” and
the two lots had equal AUL values under Sanyo’s AUL test, but under KC’s AUL test,
the first lot’s AUL value was almost double the AUL value of the second lot.
8

clear and convincing evidence.10 A reasonable jury could reject FQ’s obviousness
claim. Therefore, FQ’s motion for summary judgment must be denied.

V.

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

summary judgment that the Kellenberger and Melius Patents are invalid for
obviousness. We will issue an appropriate order.

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

Date: July 8, 2013

10

KC also relies on “secondary considerations” as evidence that the
Kellenberger and Melius Patents are not obvious, including the commercial success of
products practicing these patents, and the fact that other industry participants took
licenses of these patents. In response, FQ argues that secondary considerations
cannot overcome a strong prima facie showing of obviousness, which FQ contends
that it has made in this case. For the reasons set forth above, we do not agree that
FQ has made such a strong prima facie showing of obviousness that the secondary
considerations presented by KC are rendered immaterial to our analysis.
FQ also argues that KC’s evidence concerning these secondary considerations
is insufficient. For purposes of ruling on the pending motion, however, we need not
discuss the merits of KC’s evidence on this point. The evidence discussed above,
concerning the differences between the prior art and the claims of the Kellenberger
and Melius Patents, is sufficient to persuade us that FQ is not entitled to summary
judgment on the issue of obviousness. Thus, no further discussion of secondary
considerations is necessary.
9

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 8th day of July, 2013, upon consideration of
Defendants’ motion for partial summary judgment that the Kellenberger and Melius
Patents are invalid for obviousness (Doc. 682), it is ORDERED that said motion is
DENIED.

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