Hemphill v. Procter & Gamble Co.

• Decision Date: 15 April 2003
• Docket Number: No. CIV.A. DKC2002-3736.,CIV.A. DKC2002-3736.
• Citation: 258 F.Supp.2d 410
• Parties: Allegra D. HEMPHILL v. PROCTER & GAMBLE CO., et al.
• Court: U.S. District Court — District of Maryland

258 F.Supp.2d 410

Allegra D. HEMPHILL v. PROCTER & GAMBLE CO., et al.

No. CIV.A. DKC2002-3736.

United States District Court, D. Maryland.

April 15, 2003.

COPYRIGHT MATERIAL OMITTED

Kenneth R. Adamo, Jones Day, Cleveland, OH, William H. Baumgartner, Jr., Sidley Austin Brown and Wood, Chicago, IL, Russell E. Cass, Sidley Austin Brown and Wood, Chicago, IL, Blaney Harper, Jones Day, Washington, DC, Michael B. Mac Williams, George F. Pappas, Venable Baetjer and Howard LLP, Baltimore, MD, David M. Maiorana, Joseph D. Pollack, Jones Day, Cleveland, OH, Virgil Bryan Medlock, Jr., Sidley Austin Brown and Wood, Dallas, TX, James P. Ulwick, Kramon and Graham, Baltimore, MD, for Defendants.

MEMORANDUM OPINION

CHASANOW, District Judge.

Presently pending and ready for resolution are the motions for summary judgment of noninfringement filed by Defendants Kimberly-Clark Corporation ("Kimberly-Clark") and The Procter & Gamble Co. ("Procter & Gamble"), as well as Defendants' counterclaims for declaratory judgments of noninfringement. The issues have been fully briefed, and no hearing is deemed necessary. Local Rule 105.6. For reasons that follow, the court shall grant Defendants' motions for summary judgment and dismiss the counterclaims without prejudice.

I. Background

A. Procedural History

This is the second lawsuit brought in this court by Plaintiff Allegra D. Hemphill against manufacturers of personal care products for alleged infringement of her U.S. Patent No. 4,557,720 (the "'720 patent"). In the first lawsuit, Hemphill v. McNeil-PPC, Inc. ("Hemphill I'"), Plaintiff alleged that the defendant's STAYFREE and CAREFREE feminine sanitary napkins and SERENITY adult napkins products infringed claim 2 of her '720 patent. In that case, after ruling on the meaning of the claim terms and concluding that the accused products do not infringe claim 2 of the '720 patent, the court granted the defendant's motion for summary judgment. See Hemphill v. McNeil-PPQ Inc., 134 F.Supp.2d 719 (D.Md.2001). The Court of Appeals for the Federal Circuit affirmed the decision on November 27, 2001 in an unpublished opinion. 25 Fed.Appx. 915 (Fed.Cir.2001).

In November 2002, Plaintiff filed the current action alleging infringement by Kimberly-Clark's KOTEX and POISE product lines and Procter & Gamble's ALWAYS and TAMPAX product lines ("the accused products").¹ Products bearing the KOTEX and ALWAYS brand names are feminine sanitary napkins, products bearing the KOTEX SECURITY and TAMPAX names are tampons, and those bearing the POISE brand name are adult napkins.² Defendants Kimberly-Clark and Procter & Gamble filed separate motions for summary judgment of noninfringement with regard to their accused products. Each Defendant has asserted a counterclaim for a declaratory judgment of noninfringement, but has said that it would consent to dismissal without prejudice of the counterclaim if its motion for summary judgment is granted.

B. Background of the '720 Patent

Plaintiff 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. See Paper no. 1, Ex. A. 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., Ex. A, Col. 1, lines 33-38. The '720 patent has two independent claims, but only claim 1 is at issue in this litigation. The description contained in claim 1 of the Applicator is as follows:

1. A vaginal swab comprised of an outer housing having a closed and open end on opposing ends thereof, said housing including an annular band defining said open end and a plurality of frangible seams that together define a pair of removable members and a pair of housing segments hingably secured to said annular band following removal of said members, a swab core member having a predetermined exterior shape, said core member having an annular base with an outer diameter equal to the inner diameter of said annular band and an adsorbent member secured to said core member, said core member being secured within said housing so that said adsorbent member is enclosed therein.

Id., Ex. A, Col. 6, line 1-Col. 7, line 5.

Claim 2, which was the claim at issue in Hemphill I, provides as follows:

2. 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. A, Col. 7, line 6-Col. 8, line 10.

In addition to claiming a "vaginal swab," both claims require the "outer housing" and "core member" that were construed by the court in Hemphill I.³

C. Accused Products

KOTEX sanitary napkins, ALWAYS sanitary napkins, and POISE adult napkins are sold in bags or boxes containing multiple napkins, which are individually wrapped in plastic. See Declaration of Herbert E. Grube, Paper no. 22, Ex. Al, ¶ 5 ("Grube Decl."); Declaration of Mary Jo Meyer, Paper no. 22, Ex. A2, ¶ 5 ("Meyer Decl."); Declaration of Thomas W. Osborn III, Paper no. 23, Ex. 2, ¶ 4 ("Osborn Decl"). The sanitary napkins are composed of an absorbent core material placed between a flexible liquid-pervious topsheet and a liquid-impervious plastic backsheet that has an adhesive on the outside for attaching the napkin to an undergarment. See Grube Decl. ¶ 6; Meyer Decl. ¶ 6; Osborn Decl. ¶¶ 4-5. The side of the plastic backsheet containing the adhesive has a thin paper sheet attached to it to protect the adhesive. See Grube Decl. ¶ 6; Meyer Decl. ¶ 7; Osborn Decl. ¶ 5.

In order to use the sanitary napkins, the consumer removes the plastic wrapper from the product, peels off the thin paper sheet, and affixes the adhesive side to the undergarment. See Grube Decl. ¶ 7; Meyer Decl. ¶ 8; Osborn Decl. ¶¶ 6,7. The napkins are intended to passively collect fluid during use. See Grube Decl. ¶ 9; Meyer Decl. ¶ 10; Osborn Decl. ¶ 7. The napkins are not designed to be used or placed internally into the vagina. See Grube Decl. ¶ 11; Meyer Decl. ¶ 12; Osborn Decl. ¶ 9. After use, the consumer removes the napkin from the undergarment and discards it, either directly or by first wrapping it in the plastic wrapper of the next napkin. See Grube Decl. ¶ 8; Meyer Decl. ¶ 9; Osborn Decl. ¶ 8.

KOTEX SECURITY tampons and TAMPAX tampons are also generally sold in bags or boxes containing multiple individually-wrapped tampons. See Grube Decl. ¶ 16; Osborn Decl. ¶ 21. Each tampon is composed of a piece of absorbent material made from cotton and/or rayon surrounded by a liquid-pervious overwrap. A string is attached to the bottom of the absorbent piece, which is compressed into a plastic applicator. See Grube Decl. ¶ 17; Osborn Decl. ¶ 20. To use the tampon, the customer removes the plastic wrapper, inserts the applicator into the vagina and expels the tampon from the applicator into the vagina by pressing the inner tube up into the outer tube. See Grube Decl. ¶¶ 8,19; Osborn Decl. ¶ 23. The applicator is then removed, leaving the tampon in the vagina to passively collect fluid. See Grube Decl. ¶ 19; Osborn Decl. ¶ 23. After use, the consumer removes the tampon by pulling on the string and then discards it either directly or by wrapping the used tampon in the plastic wrapper of the next tampon. See Grube Decl. ¶ 20; Osborn Decl. ¶ 23.

II. Standard of Review

In patent cases, as well as in other cases, a motion for summary judgment will be granted only if there exists no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Clark v. Alexander, 85 F.3d 146, 150 (4th Cir.1996). The moving party bears the burden of showing that there is no genuine issue of material fact. Fed. R.Civ.P. 56(c); Pulliam, 810 F.2d at 1286 (citing Charbonnages de France v. Smith, 597 F.2d 406, 414 (4th Cir.1979)).

When ruling on a motion for summary judgment, the court must draw all reasonable inferences in favor of and construe the facts in the light most favorable to the non-moving party. Tinsley v. First Union Nat'l Bank, 155 F.3d 435, 437 (4th Cir. 1998). A properly supported motion for summary judgment may not be defeated by "the mere existence of some alleged factual dispute between the parties." Anderson, 477 U.S. at 247-48, 106 S.Ct. 2505. Further, while the court is charged with liberally construing a complaint filed by a pro se litigant to allow the development of a potentially meritorious case, the requirement of liberal construction does not mean that the court can assume the existence of a genuine issue of material fact where none exists. Welter v. Dep't of Social Services, 901 F.2d 387, 391 (4th Cir.1990); Beaudett v. City of Hampton, 775 F.2d 1274, 1277 (4th Cir. 1985).

Although an infringement analysis usually involves both questions of fact and law, summary judgment of noninfringement may still be proper. Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994); Chemical Eng'g Corp. v. Essef Indus. Inc., 795 F.2d 1565, 1571 (Fed.Cir.1986). A good faith dispute about the meaning and scope of asserted claims does not, in and of itself, create a genuine dispute to preclude summary...