Solomon v. Kimberly-Clark Corp.

• Decision Date: 30 June 2000
• Docket Number: KIMBERLY-CLARK
• Parties: (Fed. Cir. 2000) SANDRA SOLOMON, Plaintiff-Appellant, v.CORPORATION, Defendant-Appellee. 00-1033 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1372

216 F.3d 1372 (Fed. Cir. 2000)

SANDRA SOLOMON, Plaintiff-Appellant, v. KIMBERLY-CLARK CORPORATION, Defendant-Appellee.

00-1033

United States Court of Appeals for the Federal Circuit

DECIDED: June 30, 2000

Appealed from: United States District Court for the District of Arizona Chief Judge Robert C. Broomfield

[Copyrighted Material Omitted]

Jeffrey L. Weiss, Harry M. Weiss & Associates, P.C., of Scottsdale, Arizona, argued for plaintiff-appellant. Of counsel was Harry M. Weiss.

William H. Baumgartner, Jr., Sidley & Austin, of Chicago, Illinois, argued for defendant-appellee. With him on the brief were V. Bryan Medlock, Jr., Sidley & Austin, of Dallas, Texas; and Joseph S. Miller, Sidley & Austin, of Washington, DC. Of counsel were Carter G. Phillips; and Harry M. Beggs, Carson Messinger, of Phoenix, Arizona.

Before LOURIE, CLEVENGER, and BRYSON, Circuit Judges.

LOURIE, Circuit Judge.

Sandra Solomon appeals from the decision of the United States District Court for the District of Arizona granting Kimberly-Clark Corporation's motion for summary judgment that the claims of U.S. Patent 4,560,381 are invalid as indefinite under 35 U.S.C. § 112, ¶ 2. See Solomon v. Kimberly-Clark Corp., No. CIV 96-2000 PHX RCB (D. Ariz. Sept. 2, 1999) ("Solomon II"). Because the district court erred in holding the claims invalid under that provision of the statute, we reverse.

BACKGROUND

A. The Claimed Invention

Sandra Southwell (now Sandra Solomon) is the named inventor on the '381 patent, which is directed to disposable panties and panty liners for use during a woman's menstrual cycle. Independent claim 1, which is representative of the claims at issue, reads as follows:

1. A disposable woman's protective menstrual panty for holding a feminine napkin comprising:

a relatively thick layer of disposable absorbent material; and

a depression means in said relatively thick layer of disposable absorbent material, said depression means including a substantially thinner layer of disposable absorbent material operably disposed longitudially [sic] in the crotch area of said panty and extending at least partially upward thereof in both front and rear areas, said depression means being dimensioned for receiving said feminine napkin therein for positioning same during use.

'381 patent, col. 17, l. 65 to col. 18, l. 9. Figures 1 and 2 of the '381 patent, which have been modified for clarity, depict the preferred embodiment of the claimed invention in the following manner:

[Tabular or Graphical Material Omitted]

As illustrated by the figures, panty 21 is divided into body portion 22, waist portion 23, crotch portion 24, and leg portions 25. See id. at col. 5, ll. 58-60. Body portion 22 is itself divided at division line 28 into top portion 26 and bottom portion 27. See id. at col. 5, ll. 60-62. Top portion 26 is preferably made of lightweight open mesh-type material or fabric, and the outer surface of bottom portion 27 may be made of the same or different material, e.g., a woven, hydrophobic material. See id. at col. 5, l. 62 to col. 6, l. 27. The inner surface of bottom portion 27, however, is composed of a highly absorbent, thick layer 51. See id. at col. 6, ll. 37-43. Crotch portion 24 of lower portion 27 contains an elongated, oval-shaped depression 43 that is bounded on both sides by thick layer 51 (specifically labeled 44 in the crotch region) and contains a relatively thin layer of absorbent material at its base. See id. at col. 7, ll. 40-65. The depression functions to receive and to hold a commercially available feminine napkin or pad. See id. at col. 8, ll. 48-60.

B. Procedural History

Solomon sued Kimberly-Clark, alleging that its Personals panty infringed all fifty-nine claims of the '381 patent.¹ The district court granted Kimberly-Clark's motion for summary judgment of noninfringement, holding that the Personals panty did not infringe the claims of the patent either literally or under the doctrine of equivalents. On appeal, we upheld the district court's claim construction, as well as its conclusion that there was no genuine issue of material fact that the accused panties did not literally infringe. See Solomon v. Kimberly-Clark Corp., No. 97-1571, 1998 WL 279346, at *2-*5 (Fed. Cir. May 26, 1998) ("Solomon I"). However, we vacated the judgment and remanded for further proceedings in view of our conclusion that genuine issues of material fact existed regarding infringement under the doctrine of equivalents. See id. at *4-*7.

On remand, Kimberly-Clark again moved for summary judgment, alleging that the patent was invalid under 35 U.S.C. § 102(f)² because Solomon was not the true inventor of the claimed invention, or alternatively under 35 U.S.C. 112, ¶ 2,³ because Solomon failed to claim the subject matter that she regarded as her invention. See Solomon II, slip op. at 4. Kimberly-Clark based its allegations in part on Solomon's deposition testimony, in which she allegedly stated on several occasions that the depression limitation in the claimed invention was made of material having a uniform, rather than varying, thickness. See id. at 3. Kimberly-Clark contended that those statements were contrary to what was claimed in the patent, apparently based on our (and the district court's) construction of "depression" to mean a portion of the panty "formed by surrounding a region of substantially thinner material with a region of thicker material." Solomon I, 1998 WL 279346, at *2. Kimberly-Clark also based its arguments on Solomon's DX13 prototype of the claimed invention, which depicts an area of uniform thickness in the region where the depression is located. See Solomon II, slip op. at 3-4.

The district court held that Kimberly-Clark had not proven that the claims of the patent were invalid under section 102(f), because Kimberly-Clark failed to name the "true inventor" on the patent. See id. at 9-10. The court reasoned that even if it were legally correct to invalidate patent claims under section 102(f) in the absence of proof of the identity of the true inventor, Kimberly-Clark had nonetheless failed to prove by clear and convincing evidence that Solomon was not the true inventor. See id. The district court concluded, however, that Solomon's deposition testimony revealed that "her patent does not accurately depict her invention" and thus held that there was no genuine issue of material fact that the patent was invalid under section 112, paragraph 2, for failure to claim "the subject matter which the applicant regards as his invention." Id. at 13-14. While acknowledging that this case did not involve a "typical" validity challenge under section 112, paragraph 2, the district court noted that it could "see little reason to ignore the mandate of § 112 in such a case." Id. at 14. The court also held that Solomon's affidavit attesting to her inventorship was insufficient to prevent summary judgment on that issue. See id. at 14-16.

Solomon appealed the district court's invalidity ruling to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

DISCUSSION

A. Standard of Review

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). "The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). We review the grant of a motion for summary judgment de novo, reapplying the summary judgment standard. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1359, 54 USPQ2d 1308, 1312 (Fed. Cir. 2000).

The determination whether a claim recites "the subject matter which the applicant regards as his invention," like a determination whether a claim is sufficiently definite, "is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." See Personalized Media Communications, LLC v. ITC, 161 F.3d 696, 705, 48 USPQ2d 1880, 1888 (Fed. Cir. 1998) (setting forth this reasoning in the context of definiteness). Thus, as with claim construction, a determination under either portion of section 112, paragraph 2, is a question of law that we review de novo. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1378, 53 USPQ2d 1225, 1227 (Fed. Cir. 1999) (setting forth this standard in the context of definiteness).

B. Invalidity under Section 112, Paragraph 2

Solomon argues that the district court erred in invalidating the claims of the '381 patent under section 112, paragraph 2, asserting that a court evaluates compliance with that provision by comparing the claims to the disclosure in the specification, not by comparing the claims to an inventor's deposition testimony. Solomon alternatively contends that even if the testimony and other evidence are considered, Kimberly-Clark has still failed to prove invalidity by clear and convincing evidence. Solomon also asserts that Kimberly-Clark's evidence and arguments really relate to inventorship, not definiteness, and such a challenge should have been raised under section 102(f). Kimberly-Clark responds that the language of section 112, paragraph 2, plainly states that patent claims must specify what "the applicant regards as his invention," and that therefore claims may be invalid if inventor testimony conflicts with the recitations of the claims. Kimberly-Clark further contends that based on the evidence it presented, it did succeed in proving that the claims of the '381 patent are invalid under section 112, paragraph 2.

We agree with Solomon that the district court erred in invalidating the claims of the '381 patent under section 112, paragraph 2, based on Solomon's deposition testimony. As an initial matter, we note that for a claim...