Kimberly-Clark Corp. v. Johnson & Johnson

• Decision Date: 09 October 1984
• Docket Number: No. 83-1066,KIMBERLY-CLARK,83-1066
• Citation: 745 F.2d 1437,223 U.S.P.Q. 603
• Parties: CORPORATION, Appellant, v. JOHNSON & JOHNSON and Personal Products Company, Appellees. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1437

745 F.2d 1437

223 U.S.P.Q. 603

KIMBERLY-CLARK CORPORATION, Appellant, v. JOHNSON & JOHNSON and Personal Products Company, Appellees.

Appeal No. 83-1066.

United States Court of Appeals,

Federal Circuit.

Oct. 9, 1984.

C. Frederick Leydig, Chicago, Ill., argued for appellant. With him on brief were Phillip H. Mayer, Berton Scott Sheppard and Charles H. Mottier, Chicago, Ill.; Thomas M. Stanton and Howard Olevsky, Neenah, Wis., of counsel.

Thomas C. Morrison, New York City, New York, argued for appellees. With him on brief was Lynn P. Freedman, New York City.

Before RICH, Circuit Judge, SKELTON, Senior Circuit Judge, and KASHIWA, Circuit Judge.

RICH, Circuit Judge.

This appeal is from the February 4, 1983, March 15, 1983 (219 USPQ 214), and April 5, 1983, 573 F.Supp. 1179 (219 USPQ 217), judgments of the United States District Court for the Northern District of Illinois, Eastern Division, sitting without a jury, holding that Kimberly-Clark Corporation's Roeder patent No. 3,672,371 ('371) issued June 27, 1972, for "Sanitary Napkin with Improved Adhesive Fastening Means" was not infringed, "unenforceable" because of "fraud on the PTO," and invalid under 35 U.S.C. Sec. 103. We affirm the holding of non-infringement, reverse the holdings of obviousness and fraud, and remand.

Background

Kimberly-Clark Corporation (K-C), which manufactures and sells MAXI-PADS under its KOTEX and NEW FREEDOM marks, sued Johnson & Johnson (J & J) and its wholly owned subsidiary, Personal Products Company (PPC), which manufactures and sells similar products under its STAYFREE and SURE & NATURAL marks.

The patent in suit discloses a sanitary napkin having pressure-sensitive adhesive strips to secure it temporarily to a supporting undergarment, e.g., panties (see Fig. 3, below, at 19).

The preferred embodiment of the invention is shown in Fig. 1 of the patent, reproduced below. The top side in the drawing would be the underside in use, positioned as in Fig. 3.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The '371 patent has one independent claim. It reads (bracketed numbers from Fig. 1 inserted, emphasis ours):

1. In an elongate sanitary napkin structure provided with means for attaching said napkin to a supporting garment in which said means comprises pressure sensitive adhesive disposed on the bottom surface of said napkin [15, 16] and covered by a removable protective sheet , and said napkin comprises a pad of absorbent material enclosed in a fluid pervious non-woven wrapper comprising a substantially rectangular sheet enveloping said pad and overlapped on the bottom side thereof [12 to 12a], the improvement wherein said adhesive comprises at least two narrow lines of adhesive parallely spaced from each other and extending longitudinally of said bottom surface [15, 16], said spaced lines being centrally disposed thereon with respect to the sides and ends thereof, and said lines of adhesive penetrate both of said overlapped portions of said wrapper.

Fig. 1a, below, is a cross-sectional diagram taken on the line 1a-1a of Fig. 1, supra:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

It serves to illuminate the district court's finding of fact number 12, in which we have inserted the reference numerals of Fig. 1a, wherein the court set forth its view of the critical claim limitation. It reads:

12. I find that the Roeder patent covers a sanitary napkin enclosed in a non-woven wrapper in which all of the multiple lines of pressure sensitive adhesive [15, 16] must penetrate through the overlap of the non-woven wrapper [12 to 12a]. I also find that each of these multiple lines of adhesive [15, 16] must perform the two operations--attaching and sealing the non-woven wrapper--with a single application of adhesive.

We agree with this construction of the '371 patent claims as calling for a single application of adhesive in at least two parallel lines serving the dual function of penetrating and sealing the overlap and leaving On February 4, 1983, the district court ruled orally that the '371 patent was not infringed by J & J's competing product, a schematic cross-sectional diagram of which is here reproduced. It is to be understood, of course, that this is an exploded view and that in reality the layers are in contact.

enough adhesive on the surface to provide attachment to a garment.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

J & J's product consists of absorbent fluff [A] partially surrounded on the bottom and sides by a sheet-plastic "poly baffle" [B], held in place by tissue wrap [C] during the cutting stage of manufacture. All these components [A, B, and C] are enclosed in a non-woven wrapper [D] which is sealed by one adhesive strip [F] represented by plural parallel lines. Components [A-D] are made in very long strips which are cut up into pads. The diagram, submitted by K-C, shows another adhesive strip [G] sealing the tissue wrap [C] within the circle [H]. J & J argues that penetration of the overlap [C-Ca] by the other adhesive strip [G] is neither necessary nor intended. Rather, it is applied to the cover [D] for the sole purpose of garment attachment.

K-C argues that the components [C] and [D] constitute nothing more than individual plies of the product's 2-ply cover, in which each ply overlap [C-Ca] and [D-Da] is sealed by a single adhesive strip, [G] and [F], respectively.

In reaching its determination of non-infringement, the district court found as facts that J & J's product cover [D] was made with non-woven material, e.g., paper, that tissue [C] which is used to hold the internal component parts together during manufacture is not part of the cover, and that adhesive line [G] does not function to seal the cover overlap as required by claim 1.

With respect to dependent claim 3, which requires that the adhesive "also penetrate partially into said pad," the district court found no infringement because neither of the two adhesive strips used in defendants' accused product penetrates into the pad because it cannot penetrate the polyethylene poly baffle [B].

On April 5, 1983, the district court issued its "Memorandum Opinion and Order" finding the Roeder '371 patent invalid for "obviousness" and "unenforceable" because of "fraud on the Patent Office."

As to "fraud," the district court held that "The plaintiff [K-C] failed to disclose the Tyrrell, Beery, and Joa patents" and "prior work done by plaintiff's research department, specifically by Carolyn Mobley and John Champaigne...."

Tyrrell discloses a disposable, plastic-backed shield to be adhered to a garment, which uses two strips of transfer adhesive tape to adhere the waterproof backing of the shield to the garment. Fig. 1, reproduced below, shows the underside of the shield with adhesive strips 28 having release-coated removable protective strips 36.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In discussing Tyrrell, the district court said:

Of the two features of the double lines, (1) being longitudinal and (2) centrally disposed with respect to the sides and ends, the Tyrrell patent discloses the first. The fact that the Tyrrell lines are not also centrally disposed with respect to the sides and ends of the pads does not sufficiently distinguish Tyrrell from the Roeder invention. The Tyrrell patent was material and more pertinent than the Both Joa and Beery disclose an adhesive composition for sealing sanitary napkin covers which is applied to the cover overlap to penetrate and seal the cover. The adhesive in Joa is applied as a fine spray which penetrates the cover. In Beery the thermoplastic adhesive is heated and subjected to pressure to promote the penetration. The trial court stated, "The use of penetration and sealing was thus fully disclosed by the Beery and Joa patents."

prior art actually cited to the Patent Office.

As to the K-C in-house research, there are two items which the district court treated as "prior art" under Sec. 103. First, there is the work of John F. Champaigne, Jr., exemplified by the invention disclosed in U.S. patent No. 3,665,923, discussed and illustrated infra. The district court found that

The Champaigne napkin is identical to the Roeder napkin except that Champaigne uses only a single, wide adhesive strip in the center of the pad and Roeder uses two, narrow, centrally disposed, parallel adhesive strips.

Also, at a later point in the opinion, the court said:

The napkin developed by Champaigne ... was a duplicate of the Roeder napkin except that [it] used only one adhesive line.

Second, the district court also treated as prior art an in-house experiment at K-C conducted by Carolyn Mobley to determine "whether the adhesives would penetrate." The court's conclusion was that "[t]hey did, and that [the] discovery was noted in her laboratory notebook."

The court, in addition to finding Roeder aware of the aforesaid references and prior work, found them to be both material and the most relevant prior art, and that K-C's failure to make disclosure thereof to the examiner constituted "fraud on the Patent Office."

Finally, the district court held the claimed invention in Roeder's '371 patent obvious under 35 U.S.C. Sec. 103, saying:

The prior art showed the use of emulsion adhesives to seal napkin covers and some of those adhesives penetrated into the pad. To use two lines rather than one is obvious. It is a mere duplication of elements.

Issues on Appeal

Whether the district court erred in holding:

1. the invention claimed in the Roeder '371 patent obvious from the prior art;

2. that K-C committed fraud in the PTO; and,

3. noninfringement by J & J or PPC.

OPINION

I. Obviousness

The district court began its discussion of obviousness by stating: "Patents are presumed to be valid, but that presumption is weakened when, as in this case relevant prior art is not cited to...