Hemphill v. McNeil-Ppc, Inc., Civ.A. DKC 99-654.

• Decision Date: 12 March 2001
• Docket Number: No. Civ.A. DKC 99-654.,Civ.A. DKC 99-654.
• Citation: 134 F.Supp.2d 719
• Parties: Allegra D. HEMPHILL v. McNEIL-PPC, INC.
• Court: U.S. District Court — District of Maryland

134 F.Supp.2d 719

Allegra D. HEMPHILL v. McNEIL-PPC, INC.

No. Civ.A. DKC 99-654.

United States District Court, D. Maryland.

March 12, 2001.

Allegra D. Hemphill, Rockville, MD, pro se.

Vicki Ann Margolis, Venable, Baetjer & Howard, LLP, Baltimore, MD, Davida H. Isaacs, Terri L. Turner, Venable, Baetjer Howard and Civiletti, LLP, Washington, DC, for defendant.

MEMORANDUM OPINION

CHASANOW, Judge.

Plaintiff Allegra Hemphill, proceeding pro se, alleges that Defendant Johnson & Johnson, Inc. ("Johnson and Johnson") manufactures and distributes products which infringe on her patent, U.S. Patent 4,557,720 ("the '720 patent").¹ Presently pending and ready for resolution are three motions. Johnson & Johnson Consumer Companies, Inc. ("JJCCI") has filed a Motion for Leave to Permissively Intervene. Defendant McNeil has filed both a Motion for Summary Judgment for Noninfringement and a Motion to Bifurcate.² The issues are fully briefed and no hearing is deemed necessary. Local Rule 105.6. For the following reasons, the court shall deny JJCCI's Motion for Leave to Permissively Intervene and grant McNeil's Motion for Summary Judgment.³

I. Background

Ms. Hemphill filed her application for the '720 patent with the Patent and Trademark Office ("PTO") on June 11, 1984, and her patent was subsequently issued on December 10, 1985. Paper No. 46, Ex. D1. Bearing the title "Vaginal Applicator", the '720 patent describes a disposable vaginal swab or refresher meant either to cleanse or to treat the vaginal area with fragrances, medications, germicides, or deodorants. Id., Col. 1, lines 33-38. The '720 Patent has two independent claims, but only claim 2 is at issue in this litigation. Id., Ex. B, Deposition of Allegra Hemphill ("Hemphill Depo"), 10. The description contained in claim 2 of the Applicator is as follows:

a vaginal swab comprising an outer housing including an inner case member and an outer case member at least part of which is connected to and said overlies inner case member;

a core member, at least one layer of porous material secured to said core member, and housing means for both supporting and enclosing said core member, said core member being secured to said housing means, having at least two portions movable relative to one another between first and second positions for enclosing said core member when in said first position and for both, exposing said core member and the said porous padding secured thereto and for forming a handle for said swab when in said second position.

Id., Ex. D1, Col. 7-8, lines 1-10.

A. Prosecution of the '720 Patent

During the prosecution phase, Plaintiff narrowed her claims to distinguish her invention from prior art cited by the Examiner. For example, Plaintiff clarified the distinction between her invention and a patent awarded to M. Alvarez by explaining that:

[t]he Alvarez device does not allow for an elongated structure for the swabbing element to be introduced into the vaginal cavity nor does it provide a sufficient handle structure.

Id., Ex. D10, PTO 00313. She also differentiated between the porous material specified in the respective patents.

Alvarez teaches that a moisture absorbent layer is exposed after the protective covering is removed. There is a distinct difference between Absorbent and Adsorbent, to ab as in Alvarez, absorb is to take in, suck up, swallow, engross wholly, to take up or receive by chemical or molecular actions as of gases or liquids, and to ad as in Hemphill to adsorb is to take up and hold, to gather gas or liquid or dissolved material on a surface.

Id., Ex. D6, PTO 00336 (emphasis added).

Additionally, Plaintiff distinguished the "housing" in her invention from the "housing" in the patent issued to Albert Gelardin for a Cosmetic Holder. Plaintiff noted:

[t]he Hemphill device, after removing the outer housing serves as a handle structure, and still serves as a function for the device, unlike Gelardin that states that the cover is completely removed.

Id., Ex. D6, PTO 00342 (emphasis added).

B. Reexamination of the '720 Patent

On February 2, 1998, Plaintiff asked the PTO to re-examine her patent in light of the McNair patent ("McNair") for a Sanitary Napkin with wings. The description of the McNair patent states as follows:

The central element and side elements have fluid-impervious backing upon which is placed a thin layer adhesive which will not penetrate the absorbent materials placed thereon. The central element has a highly-absorptive pad means whereas the absorptive means on the side panels may be minimal. The backing element of the central portion of the invention contains a strip of adhesive covered by a protective tape until use.

Id., Ex. E2, AH 0222. Plaintiff differentiated her invention from McNair by stating that "Hemphill [vaginal swab] improves absorbing on the McNair cover sheet because of an adsorbency characteristic." Id., Ex. E1, AH 0230. Thus, the McNair patent required an absorbent porous sheet, whereas Plaintiffs patent specified adsorbent porous material.

Ultimately, the PTO denied Plaintiff's request for reexamination after finding that the McNair patent "did not raise a substantial new question of patentability.". Id., E4, AH 0227. Specifically, the PTO stated that the McNair patent "discloses none of the structural features recited [in Plaintiffs claims]" in light of Plaintiffs invention having a particular core member and housing. Id.

Plaintiff also applied for reexamination of her patent on May 20, 1998, this time over a patent held by Srinivasan, et al. Id., Ex. F2, U.S. Letters Patent No. 3,973,567 ("the Srinivasan patent"). The Srinivasan patent describes a "wrapped" sanitary napkin that includes plastic outer packaging and a napkin that affixes to an undergarment using an adhesive. The patent contains this description of the invention:

A sanitary napkin having an adhesive element thereon for attaching to an undergarment is provided with means for protecting the napkin and the adhesive element prior to use and for disposing of the napkin after use. The means comprise providing the napkin with a wrapper sheet of flexible material overlying one major surface, and the sides of the napkin and at least partially overlapping on the second major surface of the napkin. The sheet is releasably adhered to and held in place by the adhesive element.

Id., Ex. F1, PTO 00509.

The PTO granted Plaintiff's request for reexamination, finding that "[a] substantial new question of patentability affecting Claim 2" was raised by the Srinivasan patent. Id., Ex. F3, PTO 00481. Agreeing to compare claim 2 and the Srinivasan patent more closely, the PTO acknowledged the possibility that Srinivasan had the claimed structure, such as "a core member surrounded by a layer of porous material, an outer housing, and housing means with 2 positions (one position that protects the core member and another position that exposes the core member for use)." Id.

In an effort to get her claim reissued, Plaintiff stated the Srinivasan patent lacked both the "housing means" and "a band" at the base of the core member, found in her invention. Id., Ex. F4, PTO 00484. Plaintiff emphasized that the missing band was particularly significant to her invention because "[t]he band is the means or intermediary in both positions from the closed location to the open state", Id., Ex. F4, PTO 00486 (emphasis in original), allowing users "to keep sticky fingers off the fibers." Id., Ex. F2, PTO 00447. Furthermore, Plaintiff distinguished her vaginal swab by stating: "[i]t should be well understood that Hemphill does not behave, operate, or function like a sanitary napkin. Srinivasan does not have the components or parts to be vaginal swab." Id., Ex F2, PTO 00451 (emphasis in original).

On January 26, 1999, the PTO issued a reexamination certificate for the '720 Patent over Srinivasan for the following reasons:

Claim 1 of the patent to Hemphill (4557720) is considered patentable over the patent to Srinivasan, et al. (3973567) because Srinivasan simply does not disclose the claimed structure, such as an open end opposite a closed end, an annular band, and frangible seams.

Claim 2 of the patent to Hemphill (4557720) is considered patentable over the patent to Srinivasan, et al., (3973567) because Srinivasan does not disclose the housing means of Hemphill and does not disclose a structure that could be considered equivalent to the housing means of Hemphill.

Id., Ex. F6, PTO 00490.

According to Defendant, beginning in 1994 and continuing for the next four years, Plaintiff sent letters to Johnson & Johnson executives alleging that the company's sanitary and adult napkins incorporate her patented technology. Specifically, Plaintiff has alleged that the Stayfree sanitary napkin, Carefree sanitary napkin, and Serenity adult napkin product lines infringe upon her patent.⁴ Moreover, Plaintiff testified that she considers these respective product lines to be structurally equivalent to each other. Id., Ex. B, 363, 368, 372-74, 376-77.

Defendant agrees that the three different product lines are nearly identical in design. Id., Ex. A, McCoy Decl., ¶ 5. Defendant has provided the following undisputed description of these products:

The Accused Napkins are sold in multiple units in large plastic bags, inside of which are individual napkins packaged in plastic wrappers. (Ex. A, McCoy Decl., ¶ 6). Each of these individual units is composed of absorbent material with a flexible thin porous membrane that is attached on one side to a flexible plastic sheet that has an adhesive on the other side. Id., ¶ 7. In its packaging, the side of the plastic sheet containing the adhesive is attached to a thin paper sheet. Id., ¶ 7. In order to use the napkin, the consumer removes the plastic packaging, and peels off the thin paper sheet. Id., ¶ 9. Then, the consumer presses the side with the adhesive to the undergarment in order to attach the napkin to the undergarment. Id. The...