Kao Corp. v. Unilever U.S., Inc.
| Decision Date | 21 March 2006 |
| Docket Number | No. 05-1049.,No. 05-1038.,05-1038.,05-1049. |
| Parties | KAO CORPORATION and THE ANDREW JERGENS COMPANY, Plaintiffs-Cross Appellants, v. UNILEVER UNITED STATES, INC. and CONOPCO, INC., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria, Virginia, argued for plaintiffs-cross appellants. With him on the brief were Stephen G. Baxter and Richard L. Chinn.
George F. Pappas, Covington & Burling, of Washington, DC, argued for defendants-appellants. With him on the brief was Kevin B. Collins. Of counsel were Scott C. Weidenfeller and Roderick R. McKelvie.
Before NEWMAN, MAYER, and GAJARSA, Circuit Judges.
Opinion for the Court filed by Circuit Judge GAJARSA. Opinion concurring in part and dissenting in part filed by Circuit Judge NEWMAN. Opinion concurring in part and dissenting in part filed by Circuit Judge MAYER.
This is an action for patent infringement. Defendants-Appellants Unilever United States, Inc., and Conopco, Inc. (collectively, "Unilever") and Plaintiffs-Cross Appellants Kao Corporation and The Andrew Jergens Company (collectively, "Kao") appeal a judgment of the U.S. District Court for the District of Delaware ruling that Kao's U.S. Patent No. 6,306,382 (the "'382 Patent") was valid and enforceable but not infringed by Unilever's accused product. Kao Corp. v. Unilever U.S., Inc., 334 F.Supp.2d 527 (D.Del.2004). The district court exercised jurisdiction pursuant to 28 U.S.C. § 1338. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). For the reasons set forth below, we affirm the judgment of the district court.
This case involves a dispute over the patent rights to a cosmetic skin-care product used to remove "keratotic plugs" — commonly known as blackheads — from facial skin. Kao is the owner of a keratotic plug removing product and holder of the patent in suit. Unilever produces the allegedly infringing product, Pond's Clear Pore Strips.
The application that matured into the '382 Patent was filed on November 12, 1996, and entitled "Keratotic Plug Remover." The patent, which issued on October 23, 2001, contains seven claims. Kao asserted only independent claim 1 and dependent claim 3 against Unilever. Claim 1 recites as follows:
A method for removing keratotic plugs from skin with a cosmetic article, which comprises:
wetting the skin or said cosmetic article; applying onto the skin said cosmetic article; and peeling off said cosmetic article after drying; wherein said cosmetic article comprises:
i) a substrate selected from the group consisting of woven cloth, non-woven cloth and a plastic film; and
ii) on said substrate, a layer comprising a copolymer, in an amount effective to remove keratotic plugs, wherein said copolymer is a poly(alkyl vinyl ether/maleic acid) copolymer or a polyalkylvinyl ether/maleic anhydride) copolymer.1
'382 Patent, col. 12, ll. 58-66; col. 13, ll. 1-9 (emphasis added). Claim 3 recites "The method of claim 1, wherein said substrate is a non-woven cloth." Id. at col. 13, ll. 12-13.
The underlined language in claim 1 is central to this controversy. It was added as an amendment to the claim. Kao explained:
[t]he claim has further been amended to clarify the steps of the method. The addition of the wetting step is not further limiting since the wetting step was implied in the previously submitted claim. No new matter would be added by entry of this amendment.
The written description provides eight examples relating to the preparation and use of a liquid or semi-solid copolymer preparation. The examples do not mention drying the liquid or semi-solid copolymer onto a substrate, but instead discuss applying the copolymer directly to the face. Example 1 specifically states: "A panel washed their [sic] face and used the preparation on their faces at an application rate of 0.1 ml/cm2." Id. at col. 6, ll. 6-8. Example 2 states: "The polymers were individually prepared into an aqueous 20-30% by weight solution, and members of the panel used in the same manner as in Example 1." Id. at col. 7, ll. 21-23. Similarly, Example 3 appears to describe liquid formulations that were applied as described in Example 1. Examples 4-8 do not expressly state that the keratotic plug remover was applied as a liquid formulation, but offer formulations in terms of percent weight, like the formulations described in Examples 1-3.
The written description of the '382 Patent does not define the term "cosmetic article" as used in claim 1. Instead, the written description states that "[t]he keratotic plug remover according to this invention may take a form of a poultice using cotton cloth, rayon cloth, tetron cloth, nylon cloth, either woven or non-woven, or using a plastic film sheet, beside pack preparations." Id. at col. 5, ll. 19-22. The written description further states that Id. at col. 5, ll. 26-31.
The district court concluded, and the parties do not dispute, that "[i]n the context of cosmetics, the term `pack' means `a cosmetic paste applied to the skin and allowed to dry'"; the term "`poultice' means `a moist, soft mass of bread, meal, clay, cloth, or other adhesive substance, usually heated, spread on cloth, and applied to warm, moisten, or stimulate an aching or inflamed part of the body.'" Kao Corp., 334 F.Supp.2d at 534 n. 4.
The district court also construed what it termed the "copolymer limitation" of claim 1 — the language stating "wherein said copolymer is a poly(alkyl vinyl ether/maleic acid) copolymer or a polyalkylvinyl ether/maleic anhydride) copolymer" — to mean "either poly(alkyl vinyl ether/maleic acid) copolymer or poly(alkylvinyl ether/maleic acid anhydride) copolymer, but not the salt form thereof." Id. at 545. Concluding that "a salt copolymer is a distinct chemical entity from both an acid copolymer and an anhydride copolymer," the court declined "to broaden the plain language of the claim by reading a salt limitation into it." Id. at 546. It also cited elements of the prosecution history in favor of such a limitation, including — but not limited to — the fact that after filing the application for the '382 Patent, Kao filed another application "with claims specifically directed to the salts of the copolymers claimed in the '382 patent." Id. The district court took this as evidence that the '382 Patent does not cover salt forms.
Unilever's Pond's Clear Pore Strips are advertised to remove blackheads and unclog pores. The strips consist of a coated non-woven fabric, and list the ingredients as PVM/MA copolymer and aminomethyl propanol ("AMP"). The coating for the Pond's strips is prepared by mixing 98% by weight of a solution of PVM/MA with 2% by weight of AMP. The AMP reacts with the PVM/MA to form what Unilever and the district court describe as a salt. The instructions provided on the accused product involve wetting the strip, applying it to the face, letting it dry for fifteen minutes, and then removing it.
Kao sued Unilever for damages and injunctive relief in November of 2001, alleging that the Pond's product infringed the '382 Patent. It later dropped the claim for damages. In October of 2003, the district court held a three-day bench trial, at the close of which it dismissed Kao's willful infringement claim. On September 3, 2004, the district court issued a ruling that the '382 Patent was valid and enforceable, but not infringed by the Pond's product. The district court found, inter alia, that the '382 Patent adequately described the claimed step of wetting a dried preparation before applying it to the skin; that although Unilever had made out a prima facie case of obviousness, Kao successfully rebutted that case with evidence of unexpected results; and that Kao did not engage in inequitable conduct in the prosecution of its patent when it with-held negative data from the examiner.
The district court concluded that Kao complied with the written description requirement set forth in 35 U.S.C. § 112. Because compliance with the written description requirement is a question of fact, we review the trial court's determination for clear error. Lampi Corp. v. Am. Power Prods., Inc., 228 F.3d 1365, 1378 (Fed. Cir.2000). Clear error review "does not entitle this court to reverse the district court's finding simply because it would have decided the case differently." Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 874 (Fed.Cir.1993). We must uphold the trial court's determination if it is "plausible in light of the entire record or where it chooses one of two permissible views of the evidence." Id.
Section 112 of the Patent Act states that the "specification shall contain a written description of the invention." 35 U.S.C. § 112. We have held that "[t]o fulfill the written description requirement, the patent specification must describe an invention in sufficient detail that one skilled in the art can clearly conclude that the inventor invented what is claimed." Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed.Cir.2003). We have cautioned, however, that "[t]he disclosure as originally filed does not ... have to provide in haec verba support for the claimed subject matter at issue." Id.
Here, the district court based its conclusion that Kao satisfied the written description requirement on two premises. First, it stated that the words of the claim itself "plainly and...
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