Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC

• Decision Date: 29 September 2012
• Docket Number: Case No. 09–C–0916.
• Citation: 900 F.Supp.2d 903
• Parties: KIMBERLY–CLARK WORLDWIDE, INC., and Kimberly–Clark Global Sales, LLC, Plaintiffs, v. FIRST QUALITY BABY PRODUCTS, LLC, First Quality Retail Services, LLC, and First Quality Consumer Products, LLC, Defendants.
• Court: U.S. District Court — Eastern District of Wisconsin

900 F.Supp.2d 903

KIMBERLY–CLARK WORLDWIDE, INC., and Kimberly–Clark Global Sales, LLC, Plaintiffs,

v.FIRST QUALITY BABY PRODUCTS, LLC, First Quality Retail Services, LLC, and First Quality Consumer Products, LLC, Defendants.

Case No. 09–C–0916.

United States District Court,

E.D. Wisconsin.

Sept. 29, 2012.

Aimee B. Kolz, Janice V. Mitrius, Jason S. Shull, Jonathan Pieter Van Es, Joseph J. Berghammer, Katherine L. Fink, Katie L. Becker, Marc S. Cooperman, Matthew P. Becker, Michael L. Krashin, Sean Jungels, Thomas K. Pratt, Banner & Witcoff Ltd, Andrew G. Klevorn, Chad J. Doellinger, Katten Muchin Rosenman LLP, Chicago, IL, Anthony S. Baish, Godfrey & Kahn SC, Milwaukee, WI, Daniel T. Flaherty, Godfrey & Kahn SC, Appleton, WI, Vicki Margolis, Kimberly–Clark Corporation, Neenah, WI, for Plaintiffs.

Brian A. Comack, Charles R. Macedo, David A. Boag, Ira E. Silfin, Kenneth P. George, Michael J. Kasdan, Michael V. Solomita, Amster Rothstein & Ebenstein, New York, NY, David A. Caine, Kalina V. Laleva, Wilson Sonsini Goodrich & Rosati, Palo Alto, CA, David Michael Underhill, Edward H. Takashima, Eric J. Maurer, Michael A. Brille, Boies Schiller & Flexner LLP, Washington, DC, Gregory B. Conway, Thomas Wickham Schmidt, Liebmann Conway Olejniczak & Jerry SC, Green Bay, WI, Gregory J. Wallace, Wilson Sonsini Goodrich & Rosati, San Francisco, CA, Jose C. Villarreal, Wilson Sonsini Goodrich & Rosati, Austin, TX, for Defendants.

DECISION AND ORDER GRANTING FIRST QUALITY'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF CLAIMS 8–10 OF THE '067 PATENT

WILLIAM C. GRIESBACH, District Judge.

Plaintiffs Kimberly–Clark Worldwide, Inc. and Kimberly–Clark Global Sales, LLC (K–C) sued Defendants First Quality Baby Products, LLC, First Quality Retail Services, LLC, and First Quality Consumer Products, LLC (First Quality) for infringement of various K–C patents related to disposable absorbent training pants and the process used to manufacture and assemble these training pant products. Before me now is First Quality's motion for summary judgment (ECF No. 555) on its affirmative defense that Claims 8–10 of U.S. Patent No. 6,849,067 (the '067 Patent) are invalid as obvious under 35 U.S.C. § 103(a). For the reasons set forth below, First Quality's motion will be granted. K–C's related motion for summary judgment (ECF No. 611) on its claim that First Quality's product infringes the '067 Patent will be denied as moot.

BACKGROUND

Training pants are intended to transition young children from diapers to underwear and to help them with their toilet training. K–C introduced its Pull–Ups® disposable training pants to the market in 1989. Disposabletraining pants differ from disposable diapers in that they have the appearance of underwear that can be pulled on while the child is standing, unlike an article that must be fastened around the child while he or she is lying down. This is believed to give the child a sense that he or she is no longer a baby and increases motivation for toilet training. At the same time, because they are simply thrown away when accidents occur, disposable training pants offer the convenience of disposable diapers.

K–C's original Pull–Ups® training pants are described in U.S. Patent No. 4,940,464 to Van Gompel, which is owned by K–C. (Van Gompel Patent, ECF No. 558–2.) Van Gompel claimed a disposable incontinence garment or training pant consisting of an absorbable assembly comprised of a liquid-impervious outer cover, a liquid-pervious liner, and an absorbent medium in between. ( Id. col. 1 lns. 9–12, col. 2 lns. 14–18.) Extending out from the ends of this assembly were front and back stretchable or elastomeric side-panels that were permanently bonded together to form a waist opening and a pair of leg openings. ( Id. Abstract.) An elastic or other gathering means around the waist and leg openings, along with the elastic side-panels insured that the training pants fit snugly around the waist and crotch area. ( Id.) Figure 2 in Van Gompel, shown below, provides an illustration of this type of article:

IMAGE

In 2003, K–C introduced to the market a disposable training pant with refastenable side-seams called Pull–Ups® training pants with Easy Open Sides. This product practices the invention claimed in K–C's '067 Patent, entitled “Absorbent Articles With Refastenable Side Seams,” which is the subject of First Quality's current summary judgment motion. The '067 Patent has an application date of November 22, 1999, and was issued on February 1, 2005. The primary difference between K–C's original Pull–Ups® training pants and the newer Easy Open Pull–Ups® is that the newer version features seams with hook and loop fastening elements ( i.e., Velcro®) along the sides of the training pants as worn by the child. This allows several advantages. When convenient, the training pants can be placed on the child like a diaper without completely removing the child's outer clothing or shoes. ('067 Patent col. 1, lns. 44–48, ECF No. 559–2.) The refastenable seams allow the parent or custodian to easily open the training pants to check for wetness or soiling, and then to close them back up if none is found. In the event of an accident, the refastenable seams also allow for easier removal of the training pants with less risk of a mess. ('067 Patent col. 2, lns. 39–46, ECF No. 559–2.) The following figure from the title page of the '067 Patent shows a disposable training pant that incorporates the refastenable seams:

IMAGE

First Quality contends that Claims 8–10 of the '067 Patent, which set forth the refastenable seams, are invalid as obvious in light of K–C's original Pull–Ups® training pant and U.S. Patent No. 4,610,680 to LaFleur (LaFleur). LaFleur was filed on April 29, 1985, and issued on September 9, 1986, and thus constitutes prior art. (LaFleur Patent, Molee Decl. Ex. 15, ECF No. 559–7.) LaFleur discloses a disposable training pant with “overlapping flaps which can be secured to each other by hook and pile fastening straps.” (LaFleur Patent, Abstract, ECF No. 559–7.) The problem LaFleur addresses is the difficulty of removing training pants after they become soiled: “In particular, once a garment has become soiled, removal of the garment can substantially increase the spread of soilage, especially since the garment must be pulled over the child's legs.” (LaFleur Patent col. 1, lns. 34–37, ECF No. 559–7.) LaFleur purports to solve this problem through several iterations of an openable training pant, thus obviating the need to remove the article by pulling it down over the child's legs. The iteration relevant to our purposes here is LaFleur's disclosure of refastenable seams on the sides of the article, contained in Claims 14–17.

Although LaFleur does not disclose the elastic side-panels that were present in K–C's original Pull–Ups® and are included in independent Claim 8 of the ' 067 Patent, First Quality contends that combining the two would have been obvious to anyone skilled in the art at the time the application for the ' 067 Patent was filed. First Quality argues that “because there is no genuine issue of material fact that the combination of the original Pull–Ups with the refastenable seams of the LaFleur Patent was obvious, and that this combination teaches each and every limitation of the asserted claims, summary judgment of invalidity of all asserted claims is warranted.” (First Quality's Br. in Supp. of Mot. for S.J. on '067 Patent at 2, ECF No. 556.)

SUMMARY JUDGMENT STANDARD

A motion for summary judgment should be granted when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). “Material” means that the factual dispute must be outcome-determinative under law. Contreras v. City of Chicago, 119 F.3d 1286, 1291 (7th Cir.1997). A “genuine” issue must have specific and sufficient evidence that, were a jury to believe it, would support a verdict in the non-moving party's favor. Fed.R.Civ.P. 56(e); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party has the burden of showing there are no facts to support the non-moving party's claim. Celotex, 477 U.S. at 322, 106 S.Ct. 2548 (1986). In determining whether to order a motion for summary judgment, the court should consider the evidence presented in the light most favorable to the non-moving party. Anderson, 477 U.S. at 255, 106 S.Ct. 2505. When the record, taken as a whole, could not lead a rational jury to find for the nonmoving party, there is no genuine issue and therefore no reason to go to trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

ANALYSIS

A. Patent Validity and Obviousness

A patent is invalid as obvious “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). Obviousness is a question of law based on the following underlying factual determinations: “(1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others.” Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed.Cir.2010) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)). Obviousness must be assessed at the time the invention was made and the Court must avoid engaging in hindsight analysis. In re Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litigation, 676 F.3d 1063, 1073 (Fed.Cir.2012) (citing Ortho–McNeil Pharm., Inc. v. Mylan...