Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC

Because a new claim contained more material than the original claim, the claim was enlarged and the patent was invalid.

Opinion (CALDWELL): Kimberly-Clark sued First Quality alleging infringement of its patent covering a disposable diaper ear design. During reexamination of the patent, all of the claims of the original patent were found to be non-patentable. Kimberly-Clark filed several additional claims, four of which were allowed by the Patent and Trademark Office. Those additional claims are the subject of the current suit. First Quality moved for summary judgment of invalidity for three of the claims, arguing that one (claim 34) had been impermissible enlarged, while the other two were invalid of indefiniteness (the court denied this latter motion). Whether amendments made during reexamination impermissibly broadened the scope of a claim is a matter of claim construction. The court compared the scope of the original claim to the new claim and found that since additional subject matter was covered, the claim has been enlarged. “Claim 34 requires the second connecting edge of the diaper's ear to consist of two segments: one that is generally parallel to the first connecting edge of the diaper's ear, and one that is non-parallel to the first connecting edge.” Claim 1 of the original patent only required that the second edge be non-parallel to the first. Kimberly-Clark argued that claim 1 covered both first and second edges that were entirely non-parallel and edges that were mostly, though not completely, non-parallel; while claim 34 only covers edges that are mostly non-parallel. The Court disagreed. Finding that claim 34 would cover designs where the second edge was half parallel and half non-parallel to the first, while such a design would not be covered by claim 1. Because that construction would encompass additional subject matter, the court found that claim 34 impermissibly broadened the scope of the original patent, and was therefore invalid. Accordingly, the Court GRANTED summary judgment as to the invalidity of claim 34.