Kimberly-Clark Corporation v. Johnson & Johnson and Personal Products Company

This appeal is from the February 4, 1983, March 15, 1983 (219 USPQ 214), and April 5, 1983, 573 F.Supp. 1179 (219 USPQ 217), judgments of the United States District Court for the Northern District of Illinois, Eastern Division, sitting without a jury, holding that Kimberly-Clark Corporation’s Roeder patent No. 3,672,371 (’371) issued June 27, 1972, for “Sanitary Napkin with Improved Adhesive Fastening Means” was not infringed, “unenforceable” because of “fraud on the PTO,” and invalid under 35 U.S.C. § 103. We affirm the holding of non-infringement, reverse the holdings of obviousness and fraud, and remand.

Background

Kimberly-Clark Corporation (K-C), which manufactures and sells MAXI-PADS under its KOTEX and NEW FREEDOM marks, sued Johnson & Johnson (J & J) and its wholly owned subsidiary, Personal Products Company (PPC), which manufactures and sells similar products under its STAY-FREE and SURE & NATURAL marks. *1441The patent in suit discloses a sanitary napkin having pressure-sensitive adhesive strips to secure it temporarily to a supporting undergarment, e.g., panties (see Fig. 3, below, at 19).

The preferred embodiment of the invention is shown in Fig. 1 of the patent, reproduced below. The top side in the drawing would be the underside in use, positioned as in Fig. 3.

The ’371 patent has one independent claim. It reads (bracketed numbers from Fig. 1 inserted, emphasis ours):

1. In an elongate sanitary napkin structure [13] provided with means for attaching said napkin to a supporting garment in which said means comprises pressure sensitive adhesive disposed on the bottom surface of said napkin [15, 16] and covered by a removable protective sheet [17], and said napkin comprises a pad of absorbent material enclosed in a fluid pervious non-woven wrapper [11] comprising a substantially rectangular sheet enveloping said pad and overlapped on the bottom side thereof [12 to 12a], the improvement wherein said adhesive comprises at least two narrow lines of adhesive parallely spaced from each other and extending longitudinally of said bottom surface [15, 16], said spaced lines being centrally disposed thereon with respect to the sides and ends thereof, and said lines of adhesive penetrate both of said overlapped portions of said wrapper.

Fig. la, below, is a cross-sectional diagram taken on the line . la-la of Fig. 1, supra:

It serves to illuminate the district court’s finding of fact number 12, in which we have inserted the reference numerals of Fig. la, wherein the court set forth its view of the critical claim limitation. It reads:

12. I find that the Roeder patent covers a sanitary napkin enclosed in a non-woven wrapper [11] in which all of the multiple lines of pressure sensitive adhesive [15, 16] must penetrate through the overlap of the non-woven wrapper [12 to 12a]. I also find that each of these multiple lines of .adhesive [15, 16] must perform the two operations — attaching and sealing the non-woven wrapper — with a single application of adhesive.

We agree with this construction of the ’371 patent claims as calling for a single application of adhesive in at least two parallel lines serving the dual function of penetrating and sealing the overlap and leaving *1442enough adhesive on the surface to provide attachment to a garment.

On February 4, 1983, the district court ruled orally that the ’371 patent was not infringed by J & J’s competing product, a schematic cross-sectional diagram of which is here reproduced. It is to be understood, of course, that this is an exploded view and that in reality the layers are in contact.