Kimberly-Clark Worldwide Inc. v. First Quality Baby Products LLC
| Decision Date | 01 June 2011 |
| Docket Number | 2010-1382 |
| Court | U.S. Court of Appeals — Federal Circuit |
| Parties | KIMBERLY-CLARK WORLDWIDE, INC. AND KIMBERLY-CLARK GLOBAL SALES, LLC, Plaintiffs-Appellees, v. FIRST QUALITY BABY PRODUCTS, LLC AND FIRST QUALITY RETAIL SERVICES, LLC, Defendants-Appellants. |
NOTE: This disposition is nonprecedential.
Appeal from the United States District Court for the Eastern District of Wisconsin in case no. 09-CV-0916, Judge William C. Griesbach.
CONSTANTINE L. TRELA, Jr., Sidley Austin LLP, of Chicago, Illinois, argued for plaintiffs-appellees. With him on the brief were BRADLEY C. WRIGHT, Banner & Witcoff, Ltd., of Washington, DC; MARC S. COOPERMAN, J. PIETER VAN ES, MATTHEW P. BECKER, AIMEE B. KOLZ, MICHAEL L.KRASHIN, AND KATIE L. BECKER, of Chicago, Illinois. Of counsel was CHRISTOPHER B. ROTH, of Washington, DC.
KENNETH P. GEORGE, Amster Rothstein & Ebenstein LLP, of New York, New York, argued for defendants-appellants. With him on the brief were IRA E. SILFIN and MICHAEL V. SOLOMITA.
Before DYK, FRIEDMAN, and PROST, Circuit Judges.
Defendants-Appellants, First Quality Baby Products, LLC and First Quality Retail Services, LLC (collectively, "First Quality"), appeal the grant of a preliminary injunction by the United States District Court for the Eastern District of Wisconsin in favor of Plaintiffs-Appellees Kimberly-Clark Worldwide, Inc. and Kimberly-Clark Global Sales (collectively, "Kimberly-Clark"). Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 714 F. Supp. 2d 919 (E.D. Wis. May 20, 2010). Because we find that First Quality has raised substantial questions of validity with respect to U.S. Patent Nos. 6,514,187; 7,156,939; and 6,888,143, we vacate the preliminary injunction for these patents. We affirm the district court's grant of a preliminary injunction for U.S. Patent No. 6,776,316.
This case involves training pants used by toddlers to assist in toilet training. Kimberly-Clark, a major participant in the personal care industry, develops and manufactures disposable training pants with refastenable side seams. These side seams attach through a hook and loopfastening system, very similar to VELCRO®. Kimberly-Clark obtained by assignment four patents directed to the manufacturing of training pants: U.S. Patent Nos. 6,514,187 ("'187 patent"); 7,156,939 ("'939 patent); 6,888,143 ("'143 patent"); and 6,776,316 ("'316 patent"). These patents disclose a machine-based method of folding training pants at the crotch region, aligning and fastening the side seams of the training pants, inspecting the training pants, and then folding the training pants for packaging.
First Quality manufactures and supplies disposable absorbent garments, including refastenable training pants, to major retailers. In making these training pants, First Quality uses processes similar to the manufacturing methods taught by the four Kimberly-Clark patents. Kimberly-Clark, believing that First Quality's manufacturing processes infringe its patents, asserted the patents in the underlying litigation. Thereafter, Kimberly-Clark moved for a preliminary injunction to enjoin First Quality from practicing the allegedly infringing manufacturing methods. The following patent claims were at issue in the preliminary injunction motion: Claims 1 and 3-5 of the '187 patent; Claims 63-65, 67-68, and 142-143 of the '143 patent; Claims 12, 19, and 29 of the '939 patent; and Claims 1, 5, 6, and 8 of the '316 patent.
After holding a two-day evidentiary hearing, the district court granted a preliminary injunction, finding, inter alia, that Kimberly-Clark had established a reasonable likelihood of success on the merits under all four patents. Kimberly-Clark, 714 F. Supp. 2d at 936, 938. In particular, the district court held that Kimberly-Clark would likely prove First Quality's infringement of the four patents at issue and that these four patents would withstand validity and enforcement challenges. Id. at 936.On May 26, 2010, First Quality timely appealed the district court's preliminary injunction decision. We have jurisdiction under 28 U.S.C. § 1292(c)(1).1
After the parties filed their appeal briefs but before oral argument, the district court issued its claim construction order. See Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, No. 09-C-916, 2011 WL 196509 (E.D. Wis. Jan. 20, 2011). In this order, the court departed from some of the claim constructions it had previously relied upon in granting the preliminary injunc-tion.2
This court reviews a decision to grant a preliminary injunction for abuse of discretion. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1298 (Fed. Cir. 2009). "A plaintiff seeking a preliminary injunction must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and[4] that an injunction is in the public interest." Winter v. Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374 (2008); see also AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1049 (Fed. Cir. 2010). "Although the factors are not applied mechanically, a movant must establish the existence of both of the first two factors to be entitled to a preliminary injunction." Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 1005 (Fed. Cir. 2009) (citing Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001)).
"For a patentee to establish that it is likely to succeed on the merits, it 'must demonstrate that it will likely prove infringement of one or more claims of the patents-in-suit, and that at least one of those same allegedly infringed claims will also likely withstand the validity challenges presented by the accused infringer.'" Astra-Zeneca, 633 F.3d at 1050 (quoting Amazon, 239 F.3d at 1351); see also Erico Int'l Corp. v. Vutec Corp., 516 F.3d 1350, 1354 (Fed. Cir. 2008). "A preliminary injunction should not issue if an alleged infringer raises a substantial question regarding either infringement or validity, i.e., the alleged infringer asserts an infringement or invalidity defense that the patentee has not shown lacks substantial merit." AstraZeneca, 633 F.3d at 1050. In attempting to prove invalidity when seeking a preliminary injunction, the accused infringer does not face the clear and convincing evidence burden of proof applicable at trial. See Altana, 566 F.3d at 1006; Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1372 (Fed. Cir. 2005). Instead, "[v]ulnerability is the issue at the preliminary injunction stage, while validity is the issue at trial." Altana, 566 F.3d at 1006 (quoting Amazon, 239 F.3d at 1359).
First Quality contests the validity of Claims 1 and 3-5 of the '187 patent. Claim 1 covers a method of folding training pants where the pants, lying open and flat, proceed down a conveyer belt to a folding area ("folding nip"). Under this claim, roughly half of the training pant ("leading half") proceeds past the folding nip and onto a second conveyor belt. The other half ("trailing half") remains on the first conveyer belt. At this point, two vacuum rolls positioned near the folding nip work with the conveyor belt to move the training pant through the nip, which results in the folding of the training pant at the crotch region. Claim 1 also teaches that as the folding occurs, two "separation members" employ to keep the leading and trailing halves of the pant separate from each other. These separation members must be placed between the two conveyor belt devices, "disposed on opposite sides of a machine center line," and "disposed outward from the machine center line." Claims 3-5 further limit Claim 1 by requiring the following: "mating mechanical fastening components" on the training pants; "transporting the leading half [of the training pant] past the folding nip;" and implementing folding blades to push the training pant into the folding nip. Below is a figure illustrating the training pant folding process disclosed in the '187 patent.
In raising its invalidity defense, First Quality asserted a prior art reference teaching nearly the same invention disclosed by Claims 1 and 3-5 of the '187 patent. This reference, an Italian patent application to Famec-canica, disclosed a method for folding products such as diapers and underwear. The undergarments folded according to this method lie open and flat on a conveyor belt guided by rollers and are transported to a folding area. Upon reaching the folding area, the leading half of the undergarment proceeds past the folding point and onto a second conveyer belt, while the trailing half remains on the first conveyer belt. With the aid of a "pusher" and vacuum suction, the undergarment moves through the folding area, resulting in the folding of the undergarments at the crotch region. The vacuum suction taught by Fameccanica, however, originates from the conveyor belts, not the rollers. Below is a figure illustrating Fameccanica's training pant folding process.
The Fameccanica reference differs from the '187 patent in two major respects. First, Fameccanica does not disclose vacuum rolls; it discloses vacuum conveyors. Second, Fameccanica does not disclose plates that separate the leading and trailing halves of the training pant while the pant is folded at the crotch region.
The district court relied on the fact that Fameccanica teaches a vacuum conveyor instead of a vacuum roll in distinguishing this reference from the '187 patent. See Kimberly-Clark, 714 F. Supp. 2d at 933. First Quality argues, however, that any difference between vacuum belts and vacuum rolls is trivial and unpatentable as obvious. While the ultimate question of obviousness is not before us, the practical difference between using vacuum rolls instead of vacuum conveyors appears very minimal. Indeed, the vacuum belts taught by Famec-canica and the vacuum rolls taught...
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