United States District Court, D. Delaware
C. Grimm, Stephen J. Kraftschik, Morris, Nichols, Arsht &
Tunnell LLP, Counsel for Plaintiffs
Counsel: Daniel J. Burnham, Jason T. Kunze, Deanna R. Kunze,
Sorinel Cimpoes Nixon Peabody LLP, Jason C. Kravitz, Nixon
G. Day, Andrew C. Mayo, Ashby & Geddes, Counsel for
Counsel: Guy Yonay, David A. Loewenstein, Clyde Shuman, Pearl
Cohen Zedek Latzer Baratz LLP
JORDAN, CIRCUIT JUDGE.
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).
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.
The '075 Patent
'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.)
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.
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[.]" (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.
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.
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.
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.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
as described above, there are six motions pending. On March
2, 2018, 1 held oral argument on those motions.
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).
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).
Summary Judgment Motions on Invalidity
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.
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
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.
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).
"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."). 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).
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
Claim 1 of the '075 Patent is Obvious
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. 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.").)
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
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 ...