The opinion of the court was delivered by: William W. Caldwell United States District Judge
Presently before the court is defendants' First Quality Baby Products, LLC, First Quality Products, Inc., and First Quality Retail Services, LLC (collectively "First Quality") motion for summary judgment seeking invalidity of all asserted claims of plaintiff Kimberly-Clark Worldwide, Inc.'s ("KC") U.S. Patent No. 5,496,298 ("Kuepper Patent"). First Quality contends that asserted Claims 1, 2, 10-14 and 30 of the Kuepper Patent are invalid because the alleged invention was previously disclosed in U.S. Patent No. 5,019,073 ("Roessler Patent"). KC argues that summary judgment should be denied because there are numerous factual issues in dispute and First Quality has failed to prove by clear and convincing evidence that the Roessler Patent anticipates or renders obvious the asserted claims of the Kuepper Patent.
We will examine the motion under the well-established standard. Lawrence v. City of Philadelphia, 527 F.3d 299, 310 (3d. Cir. 2008). Upon careful review of the briefs and the record, we will deny defendants' motion.
This controversy originally began in February 2009 when defendants filed a complaint in this court seeking declaratory judgment of invalidity and noninfringment of the Kuepper Patent. See First Quality Baby Prods., LLC v. Kimberly-Clark Worldwide, Inc., Case No. 09-354. KC moved for dismissal arguing that we lacked subject matter jurisdiction over the declaratory judgment action. We agreed and dismissed the case. See First Quality Baby Prods., LLC v. Kimberly-Clark Worldwide, Inc., No. 09-0354, 2009 WL 1675088 (M.D. Pa. June 15, 2009). Prior to our dismissal, however, KC filed a patent infringement action in the United States District Court for the Northern District of Texas. On August 31, 2009, KC's infringement action was transferred from the Northern District to this court. On January 5, 2009, First Quality filed the instant motion for summary judgment claiming that the asserted claims of the Kuepper Patent are invalid based on anticipation and obviousness.
A patent is presumed valid, 35 U.S.C. § 282, and this presumption can only be overcome by clear and convincing evidence. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000). The burden is on the attacker to prove invalidity, and this burden never shifts. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984).
When an attacker...produces prior art or other evidence not considered in the PTO, there is, however, no reason to defer to the PTO so far as its effect on validity is concerned. Indeed, new prior art not before the PTO may so clearly invalidate a patent that the burden is fully sustained merely by proving its existence and applying the proper law; but that has no effect on the presumption or on who has the burden of proof...What the production of new prior art or other invalidating evidence not before the PTO does is to eliminate, or at least reduce, the element of deference due the PTO, thereby partially, if not wholly, discharging the attacker's burden, but neither shifting nor lightening it or changing the standard of proof...When new evidence touching validity of the patent not considered by the PTO is relied on, the tribunal considering it is not faced with having to disagree with the PTO or with deferring to its judgment or with taking its expertise into account. The evidence may, therefore, carry more weight and go further toward sustaining the attacker's unchanging burden.
Id. at 1359-60 (case citations omitted)(emphasis in original). Nonetheless, we must take into account all evidence bearing on its validity regardless of whether considered it was by the PTO.
In determining whether a patent is invalid, a district court must engage in a two-part analysis. See Helifix, 208 F.3d at 1346; see also Lemelson v. General Mills, Inc. 968 F.2d 1202, 1206 (Fed. Cir. 1992). We must first construe the disputed claims terms, and then compare the terms to the prior art. See Helifix, 208 F.3d at 1346.
Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)(en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). "It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which a patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)(quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The words of a claim are generally given their "ordinary and customary meaning." Id. (quoted case omitted). "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art...at the time of the invention." Id. at 1313. We determine this meaning primarily through intrinsic evidence, i.e. the claim language, the specification and the prosecution history. See Power-One, Inc. v. Artesyn Technologies, Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010); see also Phillips, 381 F.3d at 1312-17 (defining intrinsic evidence); Arlington Indus., Inc. V. Bridgeport Fittings, Inc., No. 01-0485, 2008 WL 542966, at *1 (M.D. Pa. Feb. 25, 2008). We may also consider extrinsic evidence, such as dictionaries, treatises, and expert testimony, to shed light on claim construction, but such evidence "is less significant than the intrinsic record" and "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Phillips, 381 F.3d at 1317-19.
In some instances, the ordinary meaning of claim language "as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction...involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. A patentee, however, "may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Thus, it is necessary for a court to review the specification to determine whether a patentee has used any terms in a manner different from their ordinary meaning. Id. Nonetheless, a court must avoid the danger of importing limitations from the specification into the claim. Phillips, 415 F.3d at 1323. "[T]he line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if [a] court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms." Id. Although a specification may describe certain embodiments of an invention, the Federal Circuit cautions against confining the claims to those embodiments. Id. Nevertheless, the Federal Circuit makes clear that if a claim term is construed in a manner that would render an embodiment in the specification outside ...