Cole v. Kimberly-Clark Corp., KIMBERLY-CLARK

• Decision Date: 06 December 1996
• Docket Number: No. 95-1505,KIMBERLY-CLARK,95-1505
• Citation: 41 USPQ2d 1001,102 F.3d 524
• Parties: , 41 U.S.P.Q.2d 1001 Shelley K. COLE, Plaintiff-Appellant, v.CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 524

102 F.3d 524

65 USLW 2416, 41 U.S.P.Q.2d 1001

Shelley K. COLE, Plaintiff-Appellant, v. KIMBERLY-CLARK CORPORATION, Defendant-Appellee.

No. 95-1505.

United States Court of Appeals,

Federal Circuit.

Dec. 6, 1996.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Feb. 18, 1997. ^*

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, DC, argued, for plaintiff-appellant. On the brief were Morgan Chu, Richard De Bodo, Gary N. Frischling, and Flavio M. Rose, Irell & Manella, Los Angeles, CA. Also on the brief was J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC.

V. Bryan Medlock, Jr., Richards, Medlock & Andrews, Dallas, TX, argued, for defendant-appellee. Of counsel on the brief were William H. Baumgartner, Jr., Constantine L. Trela, Jr., and Susan M. Davies, Sidley & Austin, Chicago, IL. Of counsel was Harry M. Beggs, Carson Messinger Elliott Laughlin & Ragan, P.L.L.C., Phoenix, AZ.

Before RICH, NEWMAN, and RADER, Circuit Judges.

Opinion for the court filed by Circuit Judge RICH. Dissenting opinion filed by Circuit Judge RADER.

RICH, Circuit Judge.

Plaintiff-appellant Shelley K. Cole (Cole) appeals from a judgment of the U.S. District Court for the District of Arizona in a patent infringement case, Cole v. Kimberly-Clark Corp., No. CIV 93-2010 (D. Ariz. filed 27 July 1995). The district court entered the judgment against Cole following its grant of a summary judgment motion by defendant-appellee Kimberly-Clark Corporation (K-C). The district court held that K-C's accused products do not literally infringe Cole's U.S. Patent No. 4,743,239 ('239 patent), and that Cole's claims for infringement under the doctrine of equivalents are barred by prosecution history estoppel. We affirm.

I BACKGROUND

The '239 patent issued 10 May 1988 and is entitled, "Disposable Brief Having an Area of Relatively Thin Absorbent Material and an Area of Relatively Thick Absorbent Material." Briefs are close-fitting, legless underpants. The claimed invention consists of a disposable brief for use during toilet training. Among other features, the claimed brief has a combination of three separate absorbent layers of varying thickness and sides that can be easily torn open so that a soiled brief can be removed without pulling it over the legs. The only independent claim of Cole's '239 patent reads, with our emphasis, as follows:

1. A disposable training brief comprising, in combination:

outer impermeable layer means;

first absorbent layer means, including a first relatively thin outer absorbent layer and a first relatively thin inner absorbent layer, substantially coextensive with the outer impermeable layer;

second absorbent layer means including a relatively thick absorbent layer secured to the first absorbent layer means and disposed between the first outer absorbent layer and the first inner absorbent layer for providing a relatively highly absorbent layer;

waist band means for securing the training brief to the user;

leg band means through which the user's legs extend;

perforation means extending from the leg band means to the waist band means through the outer impermeable layer means for tearing the outer impermeable side zones on the outer impermeable layer means adjacent to the perforation means at which the first absorbent layer means terminates.

layer means for removing the training brief in case of an accident by the user, and

On 1 December 1986, slightly less than one month after she had filed her patent application, Cole sent a copy of it to K-C with a letter explaining her idea for disposable training briefs. K-C, however, was developing its own disposable training brief and was apparently not interested in Cole's brief.

In 1989, K-C began marketing disposable training briefs that have three absorbent layers of varying thickness and sides that can be easily torn open. Cole filed suit against K-C on 19 October 1993, alleging that K-C's Huggies TM Pull-Ups TM and Huggies TM GoodNites TM (accused products) infringe the '239 patent. Both Cole's claimed design and K-C's accused products can be torn apart along the sides.

K-C filed a motion for summary judgment of noninfringement on 28 July 1994. By an order entered 31 March 1995, the district court ruled that K-C was entitled to summary judgment on Cole's literal infringement claim, but not on her claim of infringement under the doctrine of equivalents.

As to the literal infringement claim, the district court found that there was no genuine issue of material fact with respect to Cole's contention that K-C's training briefs employ "perforation means." It found that "[t]he only reasonable reading of this language is that the sides of her invention tear by means of a perforation, but K-C's accused products do not have perforations." Instead, K-C's training briefs "have seams which have been bonded together and are capable of tearing. When the side seams are torn, it becomes obvious that the sides are not held together by perforations as they leave a jagged tear line." The district court thus granted summary judgment of no literal infringement by K-C after first concluding that, "as used in Cole's patent, a 'perforation means' is a perforation," and then concluding that none of K-C's accused products includes perforations.

As to the claim of infringement under the doctrine of equivalents, the district court stated in its 31 March Order that genuine issues of material fact existed with respect to equivalents and prosecution history estoppel, because of conflicting expert testimony. The court ruled that it could not resolve the prosecution history estoppel arguments in the context of a motion for summary judgment and declined to hold that Cole was precluded by prosecution history estoppel from claiming a range of equivalents that would include K-C's accused products. The court found that a factual issue existed with respect to how one of ordinary skill in the art would interpret Cole's distinguishing, in the PTO, of U.S. Patent No. 4,619,649 (the Roberts patent), which describes disposable briefs that use "perforate side seams" to facilitate tearing and removal. The court also declined to hold on summary judgment that an estoppel arose from Cole's distinguishing, in her 25 April 1991 reexamination petition, of U.S. Patent No. 4,610,681 (the Strohbeen patent) and U.S. Patent No. 4,205,679 (the Repke patent)--both of which disclose disposable briefs with ultrasonic-bonded side seams.

Both Cole and K-C moved for reconsideration. By an order entered 20 June 1995, the district court granted K-C's motion and denied Cole's. On the issue of literal infringement, Cole argued that the district court erred because the "perforation means ... for tearing" element of her claims was a "means-plus-function" element under 35 U.S.C. § 112, p 6, and thus must be construed to encompass all embodiments disclosed in the specification and their equivalents. The specification of the Cole patent refers to scoring, scored sides, and perforations. The court found, however, that the "perforation means" element cannot qualify as a means-plus-function element under section 112, p 6, because it includes the word "perforation" and therefore refers to a definite structure to perform the tearing function. Thus, it adhered to its prior grant of K-C's motion for summary judgment of no literal infringement.

On reconsideration of the issue of infringement under the doctrine of equivalents, however, the district court did not, in its 20 June Order, adhere to its prior ruling. Here, K-C urged reconsideration in view of this court's decision in Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.Cir.) (in banc), aff'd, --- U.S. ----, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), which issued less than a week after the district court initially ruled. K-C argued that Markman 's announcement that prosecution history is to be evaluated as a matter of law in the context of claim construction made clear that prosecution history estoppel also presents a legal question for the court. K-C also argued that the district court erred in its evaluation of Cole's effort to distinguish the Strohbeen and Repke patents by focusing only on what those patents claimed, rather than what they disclosed. The district court agreed with these arguments. It then examined the prosecution history of Cole's '239 patent, particularly with regard to the Roberts, Strohbeen, and Repke patents. The court concluded that, because of prosecution history estoppel, "perforation means" cannot be read to include the seams formed by the ultrasonic welds in K-C's accused products. The district court therefore also granted K-C's motion for summary judgment of no infringement under the doctrine of equivalents.

After K-C elected not to pursue its counterclaims seeking a declaratory judgment that Cole's patent is invalid and unenforceable, the district court directed entry of judgment on Cole's complaint in a final judgment dated 27 July 1995. This appeal followed.

II INFRINGEMENT

A district court should approach a motion for summary judgment on the fact issue of infringement with great care. Palumbo v. Don-Joy Co., 762 F.2d 969, 974, 226 USPQ 5, 7 (Fed.Cir.1985) (citing D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1573, 225 USPQ 236, 238 (Fed.Cir.1985)), overruled on other grounds by Markman, 52 F.3d at 976-79, 34 USPQ2d at 1327-29. Our review of a grant of summary judgment is plenary. KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1449, 27 USPQ2d 1297, 1301 (Fed.Cir.1993). We must determine whether "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 district court properly noted that analysis of patent...