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Court Affirms Summary Judgment of Noninfringement

01-1391
November 27, 2001
Kacedon, D. Brian

Decision icon Decision

Last Month at the Federal Circuit - December 2001

Judges: Dyk (author), Clevenger, and Gajarsa

In Hemphill v. McNeil-PPC, Inc., No. 01-1391 (Fed. Cir. Nov. 27, 2001) (nonprecedential decision), the Federal Circuit affirmed a district court’s grant of SJ of noninfringement of U.S. Patent No. 4,557,720 (“the '720 patent”).

The ‘720 patent, owned by Allegra Hemphill, relates to a disposable vaginal swab. Claim 2, the claim at issue in the appeal, was directed to a vaginal swab comprising an outer housing, a core member, at least one layer of porous material, and a housing means. McNeil-PPC, Inc.’s (“McNeil”) accused products were sanitary napkins. The parties agreed that the accused products were not designed to be used or placed internally in the body and did not have handles or absorbent material.

Hemphill brought suit in the United States District Court for the District of Maryland for infringement of the ‘720 patent by McNeil’s sanitary napkins. The district court had interpreted claim 2 of the ‘720 patent to require a vaginal swab to be used within the vaginal canal. The district court had also interpreted the term “outer housing” as a housing that functions as a handle and that is not designed to be removed and thrown away. In addition, the district court had interpreted the term “core member” to require a fairly rigid core member with an annular band or ring at its base that can fit into the band or ring of the outer housing.

Based on this interpretation, the district court had found that the accused products did not infringe the ‘720 patent, either literally or under the DOE. With regard to literal infringement, the district court had found that the accused product was not designed for use within the vaginal canal, nor did it have an outer housing, a rigid core member, or an annular band, as required by the ‘720 patent. With regard to the DOE, the district court had found that the difference between the accused products and the ‘720 patent was not insubstantial.

On appeal, Hemphill argued that the district court had improperly construed claim 2 by reading limitations from the specification and prosecution history into claim 2. Hemphill also argued that the district court had improperly used the prosecution history of claim 1 of the ‘720 patent to limit the scope of claim 2. The Federal Circuit found that the district court had properly looked to the specification and the prosecution history for the definition of terms in the claims. In addition, the Court observed that it was proper for the district court to use the prosecution history of claim 1 to construe claim 2 because the prosecution history of claim 1 related to the same structure as that of claim 2.

The Federal Circuit found that the specification clarified that Hemphill had designed the vaginal swab to enter into the vaginal cavity. Further, during prosecution of the patent, Hemphill had argued the patentability of her invention based on the inclusion of structure to allow the swabbing element to be introduced into the vaginal cavity. Hemphill had also distinguished her invention based on the fact that the outer-housing element transformed into a handle structure that was not designed to be removed and thrown away. Finally, both the specification and prosecution history explained that the core member was rigid and included an annular band at its base.

The Federal Circuit also agreed with the district court that the accused products do not literally infringe the ‘720 patent based on this interpretation of claim 2. First, the Federal Circuit found that the size and shape of the accused products prevent them from being used internally. Second, the Court found that the accused products lack a handle structure. Instead, the accused products have an outer wrapping that is discarded once the sanitary napkin is utilized. Finally, the accused products lack a rigid core member and an annular band. Therefore, the accused products do not literally infringe the ‘720 patent.

The Federal Circuit also agreed with the district court that the accused products do not infringe the ‘720 patent under the DOE. The Court noted that Hemphill did not offer a single assertion illustrating that the differences between the elements of her invention and the accused products were insubstantial.