Preview:

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND : ALLEGRA D. HEMPHILL : v. PROCTER & GAMBLE CO., et al. : MEMORANDUM OPINION Presently pending and ready for resolution are the motions for summary judgment of noninfringement filed by Defendants KimberlyClark Corporation ("Kimberly-Clark") and The Procter & Gamble Co. ("Procter & Gamble"), as well as Defendants' counterclaims for declaratory judgments of noninfringement. The issues have been Local Rule : Civil Action No. DKC 2002-3736 (Exempt from ECF) :

fully briefed, and no hearing is deemed necessary. 105.6.

For reasons that follow, the court shall grant Defendants'

motions for summary judgment and dismiss the counterclaims without prejudice. I. Background A. Procedural History

This is the second lawsuit brought in this court by Plaintiff Allegra D. Hemphill against manufacturers of personal care products for alleged infringement of her U.S. Patent No. 4,557,720 (the "`720 patent"). In the first lawsuit, Hemphill v. McNeil-PPC,

Inc., Civ. A. No. DKC 99-654 ("Hemphill I"), Plaintiff alleged that the defendant's STAYFREE and CAREFREE feminine sanitary napkins and

SERENITY adult napkins products infringed claim 2 of her `720 patent. In that case, after ruling on the meaning of the claim

terms and concluding that the accused products do not infringe claim 2 of the `720 patent, the court granted the defendant's motion for summary judgment. See Hemphill v. McNeil-PPC, Inc., 134 F.Supp.2d 719 (D.Md. 2001). Circuit affirmed the The Court of Appeals for the Federal on November 27, 2001 in an

decision

unpublished opinion.

25 Fed. Appx. 915 (Fed. Cir. 2001).

In November 2002, Plaintiff filed the current action alleging infringement by Kimberly-Clark's KOTEX and POISE product lines and Procter & Gamble's ALWAYS and TAMPAX product lines ("the accused products").1 Products bearing the KOTEX and ALWAYS brand names are

feminine sanitary napkins, products bearing the KOTEX SECURITY and TAMPAX names are tampons, and those bearing the POISE brand name are adult napkins.2 Defendants Kimberly-Clark and Procter & Gamble

Although TAMPAX is not expressly mentioned in the complaint, Plaintiff's opposition suggests that she regards TAMPAX as an accused product, and Procter & Gamble has included the product in its summary judgment motion. See Paper no. 32, at 29; Ex. C3. Accordingly, the court will include TAMPAX in this opinion. The court will not, however, rule on Procter & Gamble's summary judgment motion with respect to the ALLDAYS pantiliner product and the ENVIVE miniform product which are not mentioned anywhere by Plaintiff, but are included by Defendant "for the sake of completeness." The opinion will be limited to the allegedly infringing products actually before the court. Plaintiff's complaint accuses Kimberly-Clark's KOTEX products of infringement, but does not make clear whether she is referring to KOTEX sanitary napkins, KOTEX SECURITY tampons, or both. Her opposition, while not a model of clarity, suggests that (continued...) 2
2

1

filed separate motions for summary judgment of noninfringement with regard to their accused products. Each Defendant has asserted a

counterclaim for a declaratory judgment of noninfringement, but has said that it would consent to dismissal without prejudice of the counterclaim if its motion for summary judgment is granted. B. Background of the `720 Patent

Plaintiff filed her application for the `720 patent with the Patent and Trademark Office ("PTO") on June 11, 1984, and her patent was subsequently issued on December 10, 1985. See Paper no. 1, Ex. A. Bearing the title "Vaginal Applicator", the `720 patent

describes a disposable vaginal swab or refresher meant either to cleanse or to treat the vaginal area with fragrances, medications, germicides, or deodorants. Id., Ex. A, Col. 1, lines 33-38. The

`720 patent has two independent claims, but only claim 1 is at issue in this litigation. The description contained in claim 1 of

the Applicator is as follows: 1. A vaginal swab comprised of an outer housing having a closed and open end on opposing ends thereof, said housing including an annular band defining said open end and a plurality of frangible seams that together define a pair of removable members and a pair of housing segments hingably secured to said annular band following removal of said members, a swab core member having a predetermined exterior shape, said core member

(...continued) she is accusing both types of products. The court's infringement analysis will therefore include both KOTEX sanitary napkins and KOTEX SECURITY tampons. 3

2

having an annular base with an outer diameter equal to the inner diameter of said annular band and an adsorbent member secured to said core member, said core member being secured within said housing so that said adsorbent member is enclosed therein. Id., Ex. A, Col. 6, line 1-Col. 7, line 5. Claim 2, which was the claim at issue in Hemphill I, provides as follows: 2. a vaginal swab comprising an outer housing including an inner case member and an outer case member at least part of which is connected to and said overlies inner case member; a core member, at least one layer of porous material secured to said core member, and housing means for both supporting and enclosing said core member, said core member being secured to said housing means, having at least two portions movable relative to one another between first and second positions for enclosing said core member when in said first position and for both, exposing said core member and the said porous padding secured thereto and for forming a handle for said swab when in said second position. Id., Ex. A, Col. 7, line 6-Col. 8, line 10. In addition to claiming a "vaginal swab," both claims require the "outer housing" and "core member" that were construed by the court in Hemphill I.3 C. Accused Products

For a description of the prosecution history of the `720 patent and reexamination proceedings, see Hemphill I, 134 F.Supp.2d at 721-23. 4

3

KOTEX sanitary napkins, ALWAYS sanitary napkins, and POISE adult napkins napkins, which are sold in bags or boxes containing in multiple See

are

individually

wrapped

plastic.

Declaration of Herbert E. Grube, Paper no. 22, Ex. A1,

Download Hemphill v. Procter & Gamble.pdf

Maryland Law