Kimberly-Clark Corp. v. Procter & Gamble Distributing Co., Inc.

• Decision Date: 26 August 1992
• Docket Number: KIMBERLY-CLARK,90-1024,Nos. 92-1011,s. 92-1011
• Citation: 23 USPQ2d 1921,973 F.2d 911
• Parties: CORPORATION, Plaintiff-Appellant, v. The PROCTER & GAMBLE DISTRIBUTING CO., INC.; and the Procter & Gamble Company, Defendants/Cross-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 911

973 F.2d 911

23 U.S.P.Q.2d 1921

KIMBERLY-CLARK CORPORATION, Plaintiff-Appellant, v. The PROCTER & GAMBLE DISTRIBUTING CO., INC.; and the Procter & Gamble Company, Defendants/Cross-Appellants.

Nos. 92-1011, 90-1024.

United States Court of Appeals Federal Circuit.

Aug. 26, 1992.

V. Bryan Medlock, Jr. of Richards, Medlock & Andrews, Dallas, Tex., argued for plaintiff-appellant. With him on the brief were H. Blair White, William H. Baumgartner, Jr., Constantine L. Trela, and Jeffrey D. Mills of Sidley & Austin, Chicago, Ill.

Jerome G. Lee of Morgan & Finnegan, New York City, argued for defendants/cross-appellants. Of counsel were John C. Vassil, John F. Sweeney, Richard C. Komson, and Seth J. Atlas, of Morgan & Finnegan. Also on the brief were Richard C. Witte and Frederick H. Braun of Proctor & Gamble.

Before LOURIE, CLEVENGER, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

This is an appeal and cross-appeal from a judgment of the United States District Court for the Western District of Washington in a patent infringement case involving disposable baby diapers. Kimberly-Clark Corp. v. The Procter & Gamble Distrib. Co., No. C89-502WD (W.D.Wash. Sept. 10, 1991). The district court held that the Enloe patent assigned to Kimberly-Clark Corporation (K-C) was neither invalid nor infringed, that the Enloe patent had priority over the Lawson patent assigned to The Procter & Gamble Company (P & G), and that claims 1, 2, 4-7, 10-12, 14, 16, 19, 20, 23, 24 and 26 of the Lawson patent were accordingly invalid. The district court also held that no inequitable conduct occurred in the procurement of the Enloe patent. Because a comprehensive post-trial settlement agreement between K-C and P & G eliminated the controversy over the infringement issues, we vacate as moot that part of the judgment of the district court dealing with infringement. We affirm that part of the judgment relating to priority, including the invalidity of claims 1, 2, 4-7, 10-12, 14, 16, 19, 20, 23, 24, and 26 of the Lawson patent, and inequitable conduct. The district court also found that claims 3, 8, 9, 13, 15, 17, 18, 21, 22, 25, 27, and 28 of the Lawson patent were not invalid. Since the issues relating to the validity of these claims did not involve priority with respect to the Enloe patent, we do not address them here.

BACKGROUND

K-C and P & G are primary competitors in the multi-billion dollar disposable diaper market. By the early 1980's, both companies had made substantial improvements in their disposable diapers, but made little progress in containing a baby's bowel movements (BM's). The problem of BM leakage had increased in importance because doctors were placing a new emphasis upon breast feeding, and breast-fed babies apparently tend to have explosive, runny BM's. In the spring of 1982, Kenneth Enloe of K-C conceived the idea of adding stand-up elasticized flaps inboard of the elasticized leg openings of a diaper. He made prototype diapers and successfully tested them, finding the diapers remarkably successful in reducing runny BM leakage. This work eventually led to U.S. Patent 4,704,116 (the Enloe patent), which issued on November 3, 1987.

In January 1985, nearly three years after Enloe's work, Michael Lawson of P & G conceived of using inner flaps to control In its original complaint, K-C alleged that P & G's Pampers TM diapers infringed the Enloe patent. K-C also sought a declaration, pursuant to 35 U.S.C. § 291, that the Enloe patent had priority over the Lawson patent. P & G counterclaimed, alleging that K-C's Huggies TM diapers infringed its Lawson patent, that the Lawson patent had priority over K-C's Enloe patent, and that the Enloe patent was unenforceable because K-C failed to disclose the issuance of the Lawson patent during the prosecution of the Enloe patent application. P & G also amended its Answer to request the district court to order the naming of Buell and Blevins, ¹ along with Lawson, as inventors of the Lawson patent pursuant to 35 U.S.C. § 256. ² The district court issued findings of fact and conclusions of law holding that the Enloe patent was neither invalid nor infringed, and that the Enloe patent had priority over the Lawson patent. It therefore held certain claims of the Lawson patent invalid. The district court also held that the Enloe patent was enforceable and that no inequitable conduct occurred in the procurement of that patent.

                leakage in disposable diapers.   P & G filed a patent application naming Lawson as the sole inventor on October 11, 1985;  this issued as U.S. Patent 4,695,278 (the Lawson patent) on September 22, 1987.   Lawson worked alone and was completely unaware of earlier work done by other P & G employees.   One of these employees was Kenneth Buell, who in 1979 and 1982 made a disposable diaper with inboard flaps.   Buell was also unaware of Lawson's work, until 1988 or 1989, long after the Lawson patent issued
                

On May 4, 1992, just prior to oral argument in this court, the parties notified the court by letter that an agreement had been signed and that K-C had granted P & G "a non-exclusive immunity from suit under the Enloe patent-in-suit. P & G in turn, has granted K-C a non-exclusive immunity from suit under the Lawson patent-in-suit." The parties also released each other from damage claims relating to past infringement of the respective patents. Nevertheless, they assert that this appeal and cross-appeal, at least as far as validity and enforceability of the patents are concerned, should proceed to decision by this Court, stating that:

[w]e believe that various validity (including priority) and enforceability issues arising under 35 U.S.C. § 291 are not moot, despite this partial settlement of the litigation.... In particular, the prevailing party on the validity and enforceability issues may be entitled to royalty payments from third parties, and K-C and P & G disagree with respect to who is entitled to the patent rights that may give rise to such royalty payments.

DISCUSSION

A. Jurisdiction

Article III, section 2, of the United States Constitution limits the federal judicial power to enumerated cases and controversies. Moot cases do not present live controversies, and therefore federal courts have no jurisdiction to decide them. Iron Arrow Honor Soc'y v. Heckler, 464 U.S. 67, 70, 104 S.Ct. 373, 374, 78 L.Ed.2d 58 (1983) (per curiam). A case may become moot even on appeal. E.g., Gibraltar Indus., Inc. v. United States, 726 F.2d 747, 749 (Fed.Cir.1984). Thus, we cannot reach the merits of the priority issue unless we find that the parties' settlement did not render that matter moot.

Generally, settlement of a dispute does render a case moot. Local No. 8-6, Oil, Chemical & Atomic Workers International Union v. Missouri, 361 U.S. 363, 368-69, 80 S.Ct. 391, 395, 4 L.Ed.2d 373 (1960). However, there are situations "in which one issue in a case has become moot, but the case as a whole remains alive because other issues have not become moot." University of Texas v. Camenisch, 451 U.S. 390, 394, 101 S.Ct. 1830, 1833, 68 L.Ed.2d 175 (1981). Here, K-C and P & G settled the infringement issues by granting each other immunity from suit and releasing one another from past infringement damages. We therefore vacate that part of the district court's judgment relating to infringement, as such vacation eliminates judgments on which review has now been foreclosed. United States v. Munsingwear, Inc., 340 U.S. 36, 39-40, 71 S.Ct. 104, 107, 95 L.Ed. 36 (1950); see also U.S. Philips Corp. v. Windmere Corp., 971 F.2d 728 (Fed.Cir.1992); Federal Data Corp. v. SMS Data Products Group, Inc., 819 F.2d 277, 280 (Fed.Cir.1987).

However, nothing in the settlement agreement moots the priority issues in this case. Because the Lawson patent and the Enloe patent are conceded to interfere, validity, priority, and issues relating thereto have a source of jurisdiction under 35 U.S.C. § 291, distinct from that of the infringement action. See Albert v. Kevex Corp., 729 F.2d 757, 760-61 (Fed.Cir.1984) (the sole basis for jurisdiction under § 291 is whether the patents do in fact interfere).

Section 291 provides in pertinent part:

The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part.

(Emphasis added). The jurisdictional question we must resolve, before evaluating the question of priority, is whether two patent owners, who once did but are no longer accusing each other of patent infringement under section 271, may still be entitled to "relief" under section 291. We conclude that jurisdiction does exist, that a declaration of priority and the subsequent elimination of an invalid patent that claims the same subject matter as claimed in one's patent are "relief" under the statute.

The rights to which one is entitled by ownership of a patent are principally the right to exclude others from making, using, and selling patented subject matter. 35 U.S.C. § 271(a) ("Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention ... infringes the patent"). The fact that the Patent and Trademark Office issued patents to both K-C and P & G on the same invention is a serious impediment to the enjoyment of this essential right to exclude. Neither patent owner knows if its patent is valid in light of the other's patent, the presumption of validity provided by 35 U.S.C. § 282 having been eroded by the grant of an "interfering" patent. One owner has a patent which it will lose if asserted against third parties, thereby incurring for itself, the accused infringer, and the public unneeded expense. See 35 U.S.C. § 102(g). The other has to assert or defend its patent before its presumption of validity, at least regarding priority of invention, is meaningful. Section 291 provides a means for resolving the...