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Edgewell Personal Care Brands, LLC v. Albaad Massuot Yitzhak, Ltd.

United States District Court, D. Delaware

March 27, 2018

EDGEWELL PERSONAL CARE BRANDS, LLC, Plaintiff,
v.
ALBAAD MASSUOT YITZHAK, LTD. and ALBAAD USA, INC., Defendants.

          Thomas C. Grimm, Stephen J. Kraftschik, Morris, Nichols, Arsht & Tunnell LLP, Counsel for Plaintiffs

          Of Counsel: Daniel J. Burnham, Jason T. Kunze, Deanna R. Kunze, Sorinel Cimpoes Nixon Peabody LLP, Jason C. Kravitz, Nixon Peabody LLP

          John G. Day, Andrew C. Mayo, Ashby & Geddes, Counsel for Defendants

          Of Counsel: Guy Yonay, David A. Loewenstein, Clyde Shuman, Pearl Cohen Zedek Latzer Baratz LLP

          MEMORANDUM OPINION

          JORDAN, CIRCUIT JUDGE.

         I. Introduction

         The present patent dispute requires me to consider whether claiming particular ratios derived from measurements of a known device constitutes a patentable invention. It does not, at least not in this case. Edgewell Personal Care Brands, LLC sued Albaad Massuot Yitzhak, Ltd. and Albaad USA, Inc. for infringing, among other things, Claims 1, 2, 5, and 6 of U.S. Patent No. 6, 432, 075 (the '"075 Patent"). Those are the only claims still in suit. Before me now are Edgewell's Motion for Summary Judgment of No Invalidity (Docket Index ("D.I.") 147), Albaad's Motion for Summary Judgment of Patent Invalidity (D.I. 152), Edgewell's Motion for Summary Judgment of Infringement (D.I. 144), Albaad's Motion for Summary Judgment of Non-Infringement and No Willful Infringement (D.I. 155), Edgewell's Motion to Exclude Brad Thompson From Offering Any Opinions at Trial Regarding Lost Profits and/or Damages Generally (D.I. 150), and Albaad's Motion to Exclude the Testimony of Plaintiff s Damages Expert, Jennifer Vanderhart (D.I. 158). For the reasons that follow, I will grant Albaad's Motion for Summary Judgment of Patent Invalidity (D.I. 152), and deny the remaining motions (D.I. 144, 147, 150, 155, 158).

         II. Background[1]

         Edgewell manufactures and sells feminine hygiene products under the Playtex brand, including the Playtex Sport tampon, which is marketed to women with an active lifestyle and incorporates patented technology directed at the tampon applicator. Albaad also manufactures tampons, which it markets, imports, and sells under private labels at U.S. retail outlets. Edgewell alleges that Albaad's private label tampons directly infringe its tampon applicator patent.

         A. The '075 Patent[2]

         The '075 Patent claims a tampon applicator and, specifically, two geometric ratios related to the applicator's tip. Titled "Applicator for Tampons, " the '075 Patent issued on August 13, 2002, from a patent application filed on November 8, 2000, and having a foreign priority date of November 19, 1999. Of its six claims, Claims 1, 5, and 6 are independent. Claim 1 is illustrative of the other independent claims, and it stakes right to a tampon applicator comprising, among other things, a tip "wherein a ratio of a radius of an outer face at an inflection point of a boundary between a maximum diameter portion of said first diameter portion and said curved face portion to an axial length of the outer face from the inflection point to the leading end of said curved face portion is at most 0.8, " and "wherein a ratio of a length of said valves to a width of root ends of said valves is 1.0 to 2.0." (D.I. 149, Ex. 3 at col 7 ll. 24-44.)

         In other words, as discussed in detail and in diagrams in the parties' briefing, the '075 Patent claims two geometric ratios of the applicator tip. The first ratio is A/B, which represents the ratio of the radius of the forward portion at the first inflection point to the axial length from the first inflection point to the leading end, taken after the petals are shaped into a curved state. The second ratio is L/W, which represents the ratio of the straight tip length between the first inflection point and the leading end of the petals to the width of a petal at its root end. The '075 Patent claims an applicator having a tip with an A/B ratio of at most 0.8 and an L/W ratio of 1.0 to 2.0.

         Claims 2, 5, and 6 either are dependent on Claim 1 or are largely the same as Claim 1 with additional limitations. Claim 6 is an independent claim that is largely the same as Claim 1, but adds that the applicator be "made of a thermoplastic resin[.]"[3] (D.I. 149, Ex. 3 at col. 8 ll. 29-51.) Claim 2 is dependent on Claim 1, and adds the limitation "wherein the root ends of said valves are located substantially at the inflection point." (D.I. 149, Ex. 3 at col. 7 ll. 46-47.) Claim 5 is an independent claim that is largely the same as Claim 1, but adds "a first inflection point at the root end of said valve and a second inflection point adjacent to the leading end of said valves, a curvature radius for said first inflection point being larger than a curvature radius for said second inflection point[.]" (D.I. 149, Ex. 3 at col. 8 ll. 7-28.)[4]

         B. Procedural History

         On December 21, 2015, Edgewell filed this patent infringement action against Albaad under 35 U.S.C. §§ 271, 281, 283, 284, and 285. In its second amended complaint, Edgewell alleged that Albaad infringed the '075 Patent, as well as U.S. Patent Nos. 9, 192, 522 and 8, 551, 034. At this stage of the litigation, Edgewell only asserts Claims 1, 2, 5, and 6 of the '075 Patent. On April 5, 2017, this Court held a Markman hearing and, on May 9, 2017, issued an opinion construing disputed claim terms.[5]

         Edgewell submitted an expert report by Mr. Donald Sheldon on infringement. Albaad submitted an expert report by Mr. Raymond J. Hull, Jr. on invalidity. Both of those expert witnesses filed supplemental rebuttal reports, and both were deposed, as were Edgewell's Federal Rule of Civil Procedure 30(b)(6) technical experts, Mr. Yinka Abdul and Mr. Erik Rahner. Additionally, Edgewell submitted a damages expert report by Dr. Jennifer Vanderhart, and Albaad submitted a damages expert report by Mr. Brad Thompson. Both damages experts were deposed.

         On July 17, 2017, the Patent Trial and Appeal Board ("PTAB") denied Albaad's petition requesting an inter partes review ('TPR") of Claims 1-6 of the '075 Patent because "the information presented ... [did] not establish a reasonable likelihood that [Albaad] would prevail in challenging [C]laims 1-6 of the '075 [P]atent as unpatentable." (D.I. 149, Ex. 1 at 2.) Albaad submitted evidence to the PTAB based on measurements it took from a drawing in U.S. Patent No. D25O, 663 (the "Koch patent"). The PTAB concluded that the Koch patent did not anticipate Claims 1-5 because the specific A/B and L/W ratios claimed in the '075 Patent could not be measured from the Koch patent's imprecise and unsealed illustration. For those same reasons, it summarily rejected Albaad's argument that Claim 6 was invalid for obviousness in light of the Koch patent.[6]Importantly, Albaad never argued to the PTAB that Claims 1, 2, and 5 were obvious over the Koch patent standing alone. The PTAB also rejected Albaad's anticipation and obviousness challenges based on other patents.

         Presently, as described above, there are six motions pending. On March 2, 2018, 1 held oral argument on those motions.

         III. Legal Standards

         Summary judgment is proper only if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of proving that no genuine issue of material fact exists. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585 n. 10 (1986). "A dispute about a material fact is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1381 (Fed. Cir. 2003) (internal quotation marks and citation omitted).

         If the moving party has demonstrated an absence of material fact, the nonmoving party then "must come forward with 'specific facts showing that there is a genuine issue for trial:" Matsushita, 475 U.S. at 587 (quoting Fed.R.Civ.P. 56(e) (1968)). The Court "view[s] the evidence in a light most favorable to the non-movant, and draw[s] all reasonable inferences in its favor." Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045 (Fed. Cir. 2001). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient to defeat summary judgment; there must be enough evidence to enable a reasonable jury to find for the nonmoving party on that issue. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).

         IV. Summary Judgment Motions on Invalidity

         The parties have filed cross-motions for summary judgment regarding the validity of Claims 1, 2, 5, and 6 of the '075 Patent. Albaad moves for summary judgment of patent invalidity, while Edgewell moves for summary judgment of no invalidity. I begin with Albaad's motion, in which Albaad argues that Claims 1, 2, 5, and 6 of the '075 Patent are invalid as obvious, that those claims are also invalid for lack of written description, and that Claim 5 suffers from the additional fatal flaw of indefiniteness. Edgewell of course responds that those claims are not invalid. Because I agree with Albaad that the asserted claims of the '075 Patent are invalid for obviousness, I will grant the motion for summary judgment of patent invalidity. That also effectively decides Edgewell's motion for summary judgment of no invalidity.

         A claimed invention is unpatentable if the differences between it 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 pertinent art. 35 U.S.C. § 103; Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 13-14 (1966). Whether the claimed subject matter would have been obvious at the time of invention to one of ordinary skill in the pertinent art is a question of law based on several underlying facts: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved need, and failure of others. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham, 383 U.S. at 17-18. When "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment [on the issue of obviousness] is appropriate." KSR, 550 U.S. at 427.

         The analysis of obviousness is not subject to any "rigid rule" that requires an express "discussion of obvious techniques or combinations" in the prior art. Id. at 419. Rather, other factors, such as "market demand, " "any need or problem known in the field of endeavor at the time of invention and addressed by the patent, " "the inferences and creative steps that a person of ordinary skill in the art would employ, " and "common sense" may evidence obvious "design trends ... that would occur in the ordinary course without real innovation[.]" Id. at 418-20.

         "Before the Supreme Court's decision in KSR, [the Federal Circuit] required that a patent challenger show that a person of ordinary skill in the art would have had motivation to combine the prior art references and would have had a reasonable expectation of success in doing so." Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). In KSR, however, the Supreme Court instructed courts "to take a more 'expansive and flexible approach' in determining whether a patented invention was obvious at the time it was made." Id. (quoting KSR, 550 U.S. at 415). The Court particularly "emphasized the role of 'common sense': '[r]igid preventative rules that deny factfinders recourse to common sense ... are neither necessary under our case law nor consistent with it.'" Id. (alteration in original) (quoting KSR, 550 U.S. at 421).

         Nevertheless, "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 550 U.S. at 418. "When determining whether a patent claiming a combination of known elements would have been obvious, we 'must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.'" TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1341 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 417). "Answering this question usually entails considering the 'interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.'" Id. at 1341 (quoting KSR, 550 U.S. at 418). That factual inquiry, and "the legal determination of obviousness[, ] may include recourse to logic, judgment, and common sense" and is "appropriate for resolution on summary judgment or JMOL." Wyers, 616 F.3d at 1239-40; see also Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) ("We therefore hold that... an analysis of obviousness ... may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.").[7] The defendant "has the burden to prove invalidity by clear and convincing evidence." Stryker Corp. v. Zimmer, Inc., 837 F.3d 1268, 1272 (Fed. Cir. 2016).

         I will analyze each claim separately, beginning with Claim 1, then Claim 6, followed by Claim 2, and finally Claim 5. I ultimately conclude that all of those claims would have been obvious, and therefore are invalid as a matter of law, under § 103.

         1. Claim 1 of the '075 Patent is Obvious

         Albaad argues that Claim 1 would have been obvious in light of the Koch patent, which is a design patent, when combined with common sense and the background knowledge of a person having ordinary skill in the art.[8] First and foremost, the parties agree that tapered tips for tampon applicators were well known in the art before the claimed invention in the '075 Patent. Devices with tapered tips that inserted material into a human body were the subject of patents dating back to 1939. (D.I. 154, Ex. 2 at ¶¶ 58-59; D.I. 154, Ex. 3.) More specifically, a tampon applicator product called the "Rely and Petal Soft" was marketed in the 1980s as having a "plastic inserter with a tapered tip[.]" (D.I. 154, Ex. 2 at ¶¶ 73-74; D.I. 154, Ex. 4 at P&G000011, P&G000015.) Moreover, Edgewell's expert, Mr. Sheldon, testified that a prior art patent depicted a tampon applicator having a tip that was "more elongated than a hemisphere." (D.I. 154, Ex. 5 at 69:10-11.) No one argues that a tapered tip, by itself, is an inventive component of the '075 Patent. Rather, it is a specific characteristic of those known tapered tips that is at issue. (See D.I. 171 at 9 ("[T]he '075 [P]atent is focused on a specific type of tapered tip defined by petals having a very specific geometry - specifically, the A/B ratio and the L/W ratio.").)

         The dispute between the parties centers on whether the claimed A/B and L/W ratios were disclosed in the prior art, either explicitly or by what the prior art would have taught a person having ordinary skill in the art. (See D.I. 153 at 9 ("The only differences Edgewell has asserted between [C]laim 1 and the prior art are the taper ratio A/B and the petal ratio L/W, and Edgewell admits all other claim elements were in the prior art[.]"); D.I. 154, Ex. 5 at 98:16-99:5 (testimony from Edgewell's expert that the only "major elements" lacking from the Koch patent appear to be the A/B and L/W ratios); D.I. 171 at 7 ("In the instant case, Albaad fails to show that the claimed ranges related to the petals and the tip - the A/B ratio and L/W ratio - are taught by the 'prior art."'); D.I. 215 at 87:12-88:2 (counsel for Edgewell admitting that, with respect to obviousness, the only disputed elements of Claim 1 are the A/B and L/W ratios).) Therefore, there is no dispute that the Koch patent teaches all claim elements but the claimed ratios, and the analysis that follows focuses on whether those ratios are present in or obvious from the prior art.

         The Koch patent, which issued in 1978, contains a single design claim "for a tampon inserter, " and the claimed design is depicted below. (D.I. 154, Ex. 6.) The patent describes the depiction as "an isometric illustration of a tampon inserter[.]" (D.I. 154, Ex. 6.) "The design is cylindrical and the side not shown is a mirror image of the side shown." (D.I. 154, Ex. 6.) Even though the Koch patent does not expressly disclose any specific A/B or L/W ratios, "[a] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests." McGinley ...


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