By Peter Reap, J.D., LL.M.
In a dispute on remand from the U.S. Supreme Court, most of the accused pants-type diaper products manufactured by defendants First Quality Baby Products, First Quality Hygienic, First Quality Products, and First Quality Retail Services (collectively, "First Quality") did not infringe the patent asserted by plaintiffs SCA Hygiene Products Aktiebolag and SCA Personal Care (collectively, "SCA"), the federal district court in Bowling Green, Kentucky, has determined. Specifically, First Quality’s motion for summary judgment of non-infringement was granted with respect to the defendants’ "Design 1 products" and "Design 2 products," but was denied with respect to the defendants’ "Design 3 products," based on disputed issues of material fact (SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, April 10, 2017, Stivers, G.).
SCA asserted U.S. Patent No. 6,375,646 and its accompanying Reexamination Certificate (collectively, the "‘646 Patent"). The ‘646 Patent describes a pants-type diaper for use by both potty-training children and adults with incontinence.
After the district court granted summary judgment for First Quality on grounds of laches and equitable estoppel, SCA appealed. The Federal Circuit affirmed the district court’s grant of summary judgment as to laches, reversed as to equitable estoppel, and remanded for further consistent proceedings. SCA petitioned the U.S. Supreme Court for writ of certiorari as to the Federal Circuit’s decision on First Quality’s laches defense, and the Supreme Court granted SCA’s petition. Recently, the Supreme Court vacated the Federal Circuit’s ruling, in part, and remanded for further consistent proceedings.
Motion for Summary Judgment
The court began by observing that only a few of the limitations found in the ‘646 patent’s two independent claims—claims 1 and 15—were relevant for purposes of the present motion: the requirements of claim 1 that the pants-type diaper have: (1) "at least one elastically stretchable region covering essentially the whole of at least one of the respective front and back parts" (the "essentially the whole limitation") and (2) that "at least one of the respective end parts of the absorbent layer [be] disposed within one of said elastically stretchable regions" (the "disposed within limitation"); and the requirements of claim 15 that: (1) "at least one of the respective front and back parts [have] at least one elastically stretchable region" and (2) "at least one of the respective end parts of the absorbent layer [be] disposed within one of said elastically stretchable regions".
The ultimate question for resolving First Quality’s motion for partial summary judgment was whether the opinion of SCA’s expert witness, Earle Sherrod—that the accused First Quality products, referred to the parties as three separate groups of "Design products," meet the claims terms above—was sufficient to preclude summary judgment, the court explained.
Design 1 products. The parties referred to SCA-AP-020, 050, and 056 as "Design 1 products." Both claims 1 and 15 recite the disposed within limitation, while only claim 1 recites the essentially the whole limitation. Therefore, if the Court determined that no reasonable jury could find that the Design 1 products meet the disposed within limitation, summary judgment of non-infringement would be appropriate because that limitation is found in both independent claims.
In support of its position that a genuine factual dispute existed as to whether each Design 1 product meets the disposed within limitation, SCA offered Sherrod’s opinion. For each Design 1 product, Sherrod stated in his declaration that the elastics are deactivated (cut) over the front and back end parts of the absorbent pad, and he testified that there is no difference between an area where elastics have been deactivated and an area where there are simply no elastics. Yet, in each Design 1 product, Sherrod included these areas of no elastic in larger "elastically stretchable regions" and concluded that because the end parts of the products’ absorbent layers extended into those larger regions, each meets the disposed within limitation.
Sherrod failed to explain how one of ordinary skill in the art could reach such a conclusion in light of the court’s construction of the phrase elastically stretchable region as an "an area bounded by elastic elements/material incorporating a continuous number of elastic elements/material that is capable of being stretched," the court noted. Because the areas in the front and back of each Design 1 product where the pad is located have no elastic, Sherrod’s opinion flew in the face of the court’s construction of the patent limitation that the absorbent pad be disposed within an elastically stretchable region, the court said.
Sherrod’s opinion lacked support and directly contravened the court’s claim construction opinion because the Design 1 products have significant regions of no elastic in their front and back parts, and these "gaps" are where the end parts of the products’ absorbent layers are disposed, i.e., located. There is no elasticwhere the end parts of the Design 1 products’ absorbent layers are located—either over or under the absorbent layers. The end parts are located in a gap, devoid of elastic elements or material, not an elastically stretchable region. No reasonable jury could conclude otherwise, the court held. Therefore, summary judgment of non-infringement was appropriate with regard to the Design 1 products on this basis alone.
Additionally, none of the Design 1 products meet the essentially the whole limitation; therefore, they did not infringe claim 1. It was apparent that SCA-AP-020, 050, and 056 do not have elastically stretchable regions covering almost all of their front or back parts.
In sum, SCA failed to produce evidence that would allow a reasonable jury to conclude that any of the Design 1 products literally meet the disposed within limitation or the essentially the whole limitation. Summary judgment of non-infringement with respect to the Design 1 products was granted.
Design 2 products. SCA-AP-016 and 051 were accused of infringing claim 15 and various dependent claims of the ‘646 patent. The only issue for the court to resolve was whether SCA produced evidence creating a genuine factual dispute as to whether these products literally meet the disposed within limitation. For many of the same reasons that there was no genuine dispute as to whether the Design 1 products literally meet the disposed within limitation, there was no genuine dispute that SCA-AP-016 and 051 fail to literally meet that limitation, the court held.
Sherrod’s opinion that SCA-AP-016 and 051 meet the disposed within limitation again ran contrary to the court’s claim construction opinion and was insufficient to create a genuine dispute of material fact; no reasonable jury could conclude that SCA-AP-016 and 051 infringed claim 15 based on his opinion alone. As a result, summary judgment of non-infringement with respect to SCA-AP-016 and 051 was granted.
Like SCA-AP-016 and 051, SCA-AP-001 and 004 were accused of infringing claim 15 and various dependent claims of the ‘646 patent. These products were addressed separately because the part of the thigh elastics transecting the products’ absorbent layers are not cut or otherwise deactivated, the court noted. For SCA-AP-001 and 004 to infringe claim 15, they must have an elastically stretchable region in either their front or back parts within which one of the end parts of their absorbent layers is disposed. But, even if regions B and D constituted elastically stretchable regions, and were in the front and back parts of the products, the end parts of SCA-AP-001’s and 004’s absorbent layers are not located withinthem, the court explained. No reasonable jury could conclude that SCA-AP-001 and 004 literally meet the disposed within limitation based on Sherrod’s opinion alone. As a result, summary judgment of non-infringement was granted with respect to SCA-AP-001 and 004.
Design 3 products. SCA accused SCA-AP-010 of infringing claims 1 and 15 as well as various dependent claims of the ‘646 Patent. First Quality’s expert, Daniel Gardner, opined that the Design 3 products do not meet the disposed within limitation. Gardner explained in his declaration that "the portion of elastic laminate material that overlaps with the absorbent pad is not stretchable, since the elastic property of the film has been rendered ineffective" as a result of being glued to the underlying material. He further noted that this area is known in the industry as a "deactivated region," and that Sherrod testified in his deposition that gluing is a method of deactivating elastics.
Unlike the Design 1 and 2 products, Sherrod did not admit that any portion of the elastic laminate material found in the front part of the Design 3 products is deactivated. As a result, there was a genuine dispute of material fact as to whether the elastic material in the front parts of the Design 3 products where the end parts of the absorbent layers are disposed has been deactivated to such a degree that it can no longer be considered part of an elastically stretchable region. There was also a genuine dispute of material fact as to whether the essentially the whole limitation was met. Therefore, summary judgment of non-infringement as to SCA-AP-010 was denied as to claims 1 and 15.
The case is No. 1:10-cv-00122-GNS-HBB.
Attorneys: E. Kenly Ames (English Lucas Priest & Owsley, LLP) and Kevin M. Flannery (Dechert LLP) for SCA Hygiene Products Aktiebolag and SCA Personal Care, Inc. Charles R. Macedo (Amster Rothstein & Ebenstein, LLP) and Cory J. Skolnick (Frost Brown Todd LLC) for First Quality Baby Products, LLC, First Quality Hygienic, Inc., First Quality Retail Services, LLC and First Quality Products, Inc.
Companies: SCA Hygiene Products Aktiebolag; SCA Personal Care, Inc.; First Quality Baby Products, LLC; First Quality Hygienic, Inc.; First Quality Retail Services, LLC; First Quality Products, Inc.
MainStory: TopStory Patent KentuckyNews
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