Kao Corp. v. Unilever U.S., Inc., Civ. No. 01-680-SLR.

• Decision Date: 03 September 2004
• Docket Number: Civ. No. 01-680-SLR.
• Citation: 334 F.Supp.2d 527
• Parties: KAO CORPORATION and The Andrew Jergens Company, Plaintiffs, v. UNILEVER UNITED STATES, INC. and Conopco, Inc., Defendants.
• Court: U.S. District Court — District of Delaware

334 F.Supp.2d 527

KAO CORPORATION and The Andrew Jergens Company, Plaintiffs, v. UNILEVER UNITED STATES, INC. and Conopco, Inc., Defendants.

Civ. No. 01-680-SLR.

United States District Court, D. Delaware.

September 3, 2004.

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Richard L. Horowitz, David E. Moore, Potter Anderson & Corroon LLP, Wilmington, DE, for Plaintiffs. Of Counsel: Arthur I. Neustadt, Stephen G. Baxter, Richard L. Chinn, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Alexandria, VA.

Mary B. Graham, Morris, Nichols, Arsht & Tunnel, Wilmington, DE, for Defendants. Of Counsel: George F. Pappas, Kevin B. Collins, David Farnum, Lisa Marie Kattan, Venable LLP, Washington, D.C.

OPINION

SUE L. ROBINSON, Chief Judge.

I. INTRODUCTION

On October 9, 2001, Kao Corporation and The Andrew Jergens Company (collectively "plaintiffs") filed a patent infringement action under 35 U.S.C. § 271 against Chesebrough-Pond's USA Co. (D.I. 1) Plaintiffs allege that Chesebrough-Pond's USA Co. infringed U.S. Patent No. 6,299,605 (the "'605 patent") by manufacturing and selling its Pond's clear pore strips in the United States. (Id. at ¶ 6) On May 12, 2001, plaintiffs filed a first amended complaint to remove Chesebrough-Pond's USA Co. as a defendant and to add Unilever United States, Inc. and Conopco Inc. as defendants (collectively "defendants").¹ (D.I. 3) On November 15, 2001, plaintiffs filed a second amended complaint alleging inducement of infringement of U.S. Patent No. 6,306,382 (the "'382 patent"). (D.I. 25 at ¶ 7)

On December 14, 2001, defendants answered plaintiffs' three complaints denying all infringement allegations. (D.I. 12) Defendants raised affirmative defenses of noninfringement and invalidity of the '605 and '382 patents for failure to comply with the patent laws of the United States and unenforceability of the '382 patent due to inequitable conduct. (Id. at ¶¶ 10, 11, 12) Defendants likewise filed a declaratory judgment counterclaim against plaintiffs seeking a declaration that the '605 and '382 patents are not infringed and invalid and that the '382 patent is unenforceable due to inequitable conduct. (Id. at ¶¶ 13-15) Defendants further counterclaimed that plaintiffs infringed U.S. Patent No. 6,106,857 (the "'857 patent'') by the sale and offer for sale of Biore ULTRA nose strips in the United States. (Id. at ¶ 17)

On January 25, 2002, plaintiffs denied defendants' counterclaims and asserted affirmative defenses. (D.I. 14) Plaintiffs also filed a counterclaim seeking a declaratory judgment of noninfringement and invalidity of the '857 patent. (Id.) On February 14, 2002, defendants responded to plaintiffs' counterclaim re-asserting infringement of the '857 patent and denying that the '857 patent is invalid. (D.I. 16) The court has jurisdiction over this suit pursuant to 28 U.S.C. §§ 1331, 1338(a).

During fact discovery, the parties agreed to dismiss all claims relating to both the '605 patent and the '857 patent. (D.I. 66 at 1) Subsequently, plaintiffs withdrew their claim for damages related to the '382 patent, leaving only claims for injunctive relief and attorney fees in suit. (Id. at 2)

For three days in October 2003, the parties tried before the court the issues of: (1) claim construction; (2) infringement; (3) invalidity based upon inadequate written description, indefiniteness, and obviousness; and (4) unenforceability based on inequitable conduct. The following are the court's findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).

II. FINDINGS OF FACT

A. The Parties

1. Plaintiff Kao Corporation is a Japanese corporation with its corporate headquarters in Tokyo, Japan. (D.I. 77 at ¶ 1)

2. Plaintiff The Andrew Jergens Company is a Delaware corporation with its corporate headquarters in Cincinnati, Ohio. (Id. at ¶ 2)

3. Defendant Unilever United States, Inc. is a Delaware corporation with its corporate headquarters in New York, New York. (Id. at ¶ 3)

4. Defendant Conopco, Inc. is a New York corporation with its headquarters in New York, New York. (Id. at ¶ 4)

B. The '382 Patent

5. The application which matured into the '382 patent was filed on November 12, 1996 and entitled "Keratotic Plug Remover."

6. The '382 patent was granted on October 23, 2001.

7. The named inventors include Tomohiro Uemura, Masanori Tanahashi, and Yoshinao Kono. Plaintiffs jointly own the '382 patent. (Id. at Ex. A)

8. The '382 patent claims priority as a divisional application to U.S. Application No. 463,274 filed on June 5, 1995, which claims priority as a continuation-in-part of U.S. Application No. 210,778² filed on March 21, 1994, which claims priority as a continuation-in-part of U.S. Application No. 882,979 filed on May 14, 1992.

9. The '382 patent generally discloses a keratotic plug remover composition and method of removing keratotic plugs from the skin. ('382 patent, col. 1 at ll. 13-16)

10. The specification describes 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 face and used the preparation on their faces at an application rate of 0.1 ml/cm 2." ('382 patent, col. 6 at 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." ('382 patent, col. 7 at ll. 21-23) Similarly, example 3 describes 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. Nevertheless, these examples offer formulations in terms of percent weight, like the formulations described in examples 1-3.

11. The '382 patent contains seven claims in total. Plaintiffs asserted only independent claim 1 and dependent claim 3 against defendants.

12. Claim 1 recites:

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.³

('382 patent col. 12 at ll. 58-66; col. 13 at ll. 1-9)

13. Claim 3 recites:

The method of claim 1, wherein said substrate is a non-woven cloth.

('382 patent, col. 13 at ll. 12-13)

14. Claims 6 and 7 are also dependent claims, each reciting respectively:

6. The method of claim 1, wherein said layer comprises 5 to 70 wt. % based on the total weight of said layer of said copolymer.

7. The method of claim 1, wherein said layer comprises 5 to 40 wt. % based on the total weight of said layer of said copolymer.

('382 patent, col. 14 at ll. 6-11)

15. The specification of the '382 patent does not define the term "cosmetic article" as used in claim 1. Instead, the specification 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." ('382 patent, col. 5 at ll. 19-25) The specification further states that "[t]he manner of removing keratotic plugs by the use of the keratotic plug remover of the invention is the same as the manner of using ordinary packs and poultice. Namely, when a pack preparation is used, it is first applied to the part of the skin which has keratotic plugs, particularly likely to the nose, chin, and forehead, and after dried, it is peeled off."⁴ ('382 patent, col. 5 at ll. 26-28) 16. The specification of the '382 patent does not define the term "amount effective" as used in claim 1. The specification only states that "[t]he preferable amount of the polymer to be incorporated into the keratotic plug remover preparation according to the invention is from 0.01 to 70% by weight, preferably 5 to 40% by weight based on the total weight of the preparation." ('382 patent, col. 3 at ll. 27-30) The specification also discloses that the polymers are dissolved in solvent and that the amount of solvent is modified depending on the properties of the polymer compounds and is generally from 30 to 99.99% by weight, and preferably from 60 to 95% by weight, based on the total weight of the composition. (See '382 patent, col. 3 at ll. 31-41) The examples describe polymer amounts in the 5 to 40% range by weight, primarily from 15 to 35% by weight. (See '382 patent, col. 6-col. 12)

C. The Prosecution History of the '382 Patent

17. Plaintiffs filed the application, which granted as the '382 patent, with eighteen claims. (See PX 41 at 45-47) On March 24, 1997, plaintiffs canceled claim 1 and added claims 19-28 by preliminary amendment. (See id. at 56-59)

18. On November 1, 1997, plaintiffs amended claim 19 and added new claims 29-31. (See id. at 86-87) Plaintiffs also submitted a declaration from Mr. Tomoshiro Uemura ("the 1997 Uemura declaration") to overcome the rejection of claims 19-28 as obvious under 35 U.S.C. § 103(a) over U.S. Patent No. 4,026,552 ("the Gueret '552 patent") or U.S. Patent No. 4,948,585 in view of JP 53-27344. (Id. at 87-95) Mr. Uermura compared the effectiveness of keratotic plug removal for various salt-forming polymers as claimed in the ' 382 patent and various non-ionic polymers. Mr. Uemura specifically tested the non-ionic polymer polyvinyl alcohol because the compound was the...