Kimberly Clark Loses “Broadened” Patent Claim

Scott Daniels | March 20, 2013

With all the activity surrounding the new AIA inter partes review trials, it is easy to forget that accused infringers are still getting good results from traditional ex parte reexamination, even where the patent emerges from the Patent Office with patentable claims.

Yesterday, for instance, Judge William Caldwell of the Middle District of Pennsylvania granted summary judgment in Kimberly Clark v. First Quality Baby Prods., 2013 U.S. Dist. LEXIS 37493 (M.D. Pa. March 19, 2013), holding that claim 34 of U.S. Patent No. 5,496,298 was invalid because it had been broadened in reexamination.  The Patent Statute states in part that “[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.”  35 U.S.C. § 305.  To determine whether a claim has been impermissibly broadened, the courts “compare the scope of the original claim and the new claim [, and if] the new claim covers any subject matter that would not have fallen within the scope of the original claim, then the new claim is broader.”

Here, an anonymous party – perhaps the accused infringer First Quality – requested reexamination of the ‘298 patent.  After a series of exchanges between the Patent Office and patentee Kimberley Clark, the original claims were canceled and replaced with new claims 31-34, three of which are the claims-in-suit.  Later, in the present infringement action, First Quality challenged claim 34 for being broader than the original ‘298 claims.[1]

The claim recites a disposable diaper including a “pair of elastic ears” having a specific edge structure.  Judge Caldwell carefully compared the scope of claim 34 with original claim 1 – he found that even though the old claim was broader in some respects that the new claim, the new claim was broader than the old claim in other respects.

Even if we assume, arguendo, that original claim 1 is as broad as KC contends-specifically, if it encompass ears with edges that are mostly but not entirely non-parallel-claim 34 is broader still.  The scope of claim 34 is not restricted to ears with edges that are mostly non-parallel. For instance, an ear design in which the second connecting edge consists of two equal segments-one parallel to the first connecting edge, and the other non-parallel to the first connecting edge-would come within the scope of claim 34.  However, such a design is not mostly non-parallel, because the two segments would be equal in length. The same could be said if the parallel segment were longer than the non-parallel segment.

Interestingly, the Judge did not defer to the implicit conclusion of the patent examiner that claim 34 complied with 35 U.S.C. § 305, but instead rolled up his sleeves and made his own judgment regarding the scope of the claims.

[1] First Quality also moved for summary judgment against claims 31 and 32 for indefiniteness, but Judge Caldwell denied that aspect of First Quality’s motion.

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