Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, 060111 FEDFED, 2010-1382

Docket Nº:2010-1382
Opinion Judge:Prost, Circuit Judge.
Attorney:Constantine L. Trela, Jr., Sidley Austin LLP, of Chi
Judge Panel:Before Dyk, Friedman, and Prost, Circuit Judges.
Case Date:June 01, 2011
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit




No. 2010-1382

United States Court of Appeals, Federal Circuit

June 1, 2011

This disposition is nonprecedential.

Appeal from the United States District Court for the Eastern District of Wisconsin in case no. 09-CV-0916, Judge William C. Griesbach.

Constantine L. Trela, Jr., Sidley Austin LLP, of Chi­cago, Illinois, argued for plaintiffs-appellees. With him on the brief were Bradley C. Wright, Banner & Witcoff, Ltd., of Washington, DC; Marc S. Cooperman, J. Pieter Van Es, Matthew P. Becker, Aimee B. Kolz, Michael L. Krashin, and Katie L. Becker, of Chicago, Illinois. Of counsel was Christopher B. Roth, of Washington, DC.

Kenneth P. George, Amster Rothstein & Ebenstein LLP, of New York, New York, argued for defendants-appellants. With him on the brief were Ira E. Silfin and Michael V. Solomita.

Before Dyk, Friedman, and Prost, Circuit Judges.

Prost, Circuit Judge.

Defendants-Appellants, First Quality Baby Products, LLC and First Quality Retail Services, LLC (collectively, "First Quality"), appeal the grant of a preliminary injunc­tion by the United States District Court for the Eastern District of Wisconsin in favor of Plaintiffs-Appellees Kimberly-Clark Worldwide, Inc. and Kimberly-Clark Global Sales (collectively, "Kimberly-Clark"). Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 714 F.Supp.2d 919 (E.D. Wis. May 20, 2010). Because we find that First Quality has raised substantial ques­tions of validity with respect to U.S. Patent Nos. 6, 514, 187; 7, 156, 939; and 6, 888, 143, we vacate the pre­liminary injunction for these patents. We affirm the district court's grant of a preliminary injunction for U.S. Patent No. 6, 776, 316.

I. Background

This case involves training pants used by toddlers to assist in toilet training. Kimberly-Clark, a major partici­pant in the personal care industry, develops and manu­factures disposable training pants with refastenable side seams. These side seams attach through a hook and loop fastening system, very similar to VELCRO®. Kimberly-Clark obtained by assignment four patents directed to the manufacturing of training pants: U.S. Patent Nos. 6, 514, 187 ("'187 patent"); 7, 156, 939 ("'939 patent); 6, 888, 143 ("'143 patent"); and 6, 776, 316 ("'316 patent"). These patents disclose a machine-based method of folding training pants at the crotch region, aligning and fastening the side seams of the training pants, inspecting the train­ing pants, and then folding the training pants for packag­ing.

First Quality manufactures and supplies disposable absorbent garments, including refastenable training pants, to major retailers. In making these training pants, First Quality uses processes similar to the manufacturing methods taught by the four Kimberly-Clark patents. Kimberly-Clark, believing that First Quality's manufac­turing processes infringe its patents, asserted the patents in the underlying litigation. Thereafter, Kimberly-Clark moved for a preliminary injunction to enjoin First Quality from practicing the allegedly infringing manufacturing methods. The following patent claims were at issue in the preliminary injunction motion: Claims 1 and 3-5 of the '187 patent; Claims 63-65, 67-68, and 142-143 of the '143 patent; Claims 12, 19, and 29 of the '939 patent; and Claims 1, 5, 6, and 8 of the '316 patent.

After holding a two-day evidentiary hearing, the dis­trict court granted a preliminary injunction, finding, inter alia, that Kimberly-Clark had established a reasonable likelihood of success on the merits under all four patents. Kimberly-Clark, 714 F.Supp.2d at 936, 938. In particu­lar, the district court held that Kimberly-Clark would likely prove First Quality's infringement of the four patents at issue and that these four patents would with­stand validity and enforcement challenges. Id. at 936. On May 26, 2010, First Quality timely appealed the district court's preliminary injunction decision. We have jurisdiction under 28 U.S.C. § 1292(c)(1).1

After the parties filed their appeal briefs but before oral argument, the district court issued its claim con­struction order. See Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, No. 09-C-916, 2011 WL 196509 (E.D. Wis. Jan. 20, 2011). In this order, the court departed from some of the claim constructions it had previously relied upon in granting the preliminary injunction.2

II. Discussion

This court reviews a decision to grant a preliminary injunction for abuse of discretion. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1298 (Fed. Cir. 2009). "A plaintiff seeking a preliminary injunction must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and that an injunction is in the public interest." Winter v. Natural Res. Def. Council, Inc., 129 S.Ct. 365, 374 (2008); see also AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1049 (Fed. Cir. 2010). "Although the factors are not applied mechanically, a movant must establish the exis­tence of both of the first two factors to be entitled to a preliminary injunction." Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 1005 (Fed. Cir. 2009) (citing, Inc. v., Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001)).

"For a patentee to establish that it is likely to succeed on the merits, it 'must demonstrate that it will likely prove infringement of one or more claims of the patents-in-suit, and that at least one of those same allegedly infringed claims will also likely withstand the validity challenges presented by the accused infringer.'" Astra-Zeneca, 633 F.3d at 1050 (quoting Amazon, 239 F.3d at 1351); see also Erico Int'l Corp. v. Vutec Corp., 516 F.3d 1350, 1354 (Fed. Cir. 2008). "A preliminary injunction should not issue if an alleged infringer raises a substan­tial question regarding either infringement or validity, i.e., the alleged infringer asserts an infringement or invalidity defense that the patentee has not shown lacks substantial merit." AstraZeneca, 633 F.3d at 1050. In attempting to prove invalidity when seeking a prelimi­nary injunction, the accused infringer does not face the clear and convincing evidence burden of proof applicable at trial. See Altana, 566 F.3d at 1006; Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1372 (Fed. Cir. 2005). Instead, "[v]ulnerability is the issue at the pre­liminary injunction stage, while validity is the issue at trial." Altana, 566 F.3d at 1006 (quoting Amazon, 239 F.3d at 1359).

A. The '187 Patent

First Quality contests the validity of Claims 1 and 3-5 of the '187 patent. Claim 1 covers a method of folding training pants where the pants, lying open and flat, proceed down a conveyer belt to a folding area ("folding nip"). Under this claim, roughly half of the training pant ("leading half") proceeds past the folding nip and onto a second conveyor belt. The other half ("trailing half") remains on the first conveyer belt. At this point, two vacuum rolls positioned near the folding nip work with the conveyor belt to move the training pant through the nip, which results in the folding of the training pant at the crotch region. Claim 1 also teaches that as the folding occurs, two "separation members" employ to keep the leading and trailing halves of the pant separate from each other. These separation members must be placed be­tween the two conveyor belt devices, "disposed on opposite sides of a machine center line, " and "disposed outward from the machine center line." Claims 3-5 further limit Claim 1 by requiring the following: "mating mechanical fastening components" on the training pants; "transport­ing the leading half [of the training pant] past the folding nip;" and implementing folding blades to push the train­ing pant into the folding nip. Below is a figure illustrat­ing the training pant folding process disclosed in the '187 patent.


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