Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC , 431 F. App'x 884 ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
KIMBERLY-CLARK WORLDWIDE, INC. AND
KIMBERLY-CLARK GLOBAL SALES, LLC,
Plaintiffs-Appellees,
v.
FIRST QUALITY BABY PRODUCTS, LLC AND
FIRST QUALITY RETAIL SERVICES, LLC,
Defendants-Appellants.
__________________________
2010-1382
__________________________
Appeal from the United States District Court for the
Eastern District of Wisconsin in case no. 09-CV-0916,
Judge William C. Griesbach.
__________________________
Decided: June 1, 2011
__________________________
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, of Chi-
cago, Illinois, argued for plaintiffs-appellees. With him on
the brief were BRADLEY C. WRIGHT, Banner & Witcoff,
Ltd., of Washington, DC; MARC S. COOPERMAN, J. PIETER
VAN ES, MATTHEW P. BECKER, AIMEE B. KOLZ, MICHAEL L.
KIMBERLY-CLARK v. FIRST QUALITY 2
KRASHIN, and KATIE L. BECKER, of Chicago, Illinois. Of
counsel was CHRISTOPHER B. ROTH, of Washington, DC.
KENNETH P. GEORGE, Amster Rothstein & Ebenstein
LLP, of New York, New York, argued for defendants-
appellants. With him on the brief were IRA E. SILFIN and
MICHAEL V. SOLOMITA.
__________________________
Before DYK, FRIEDMAN, and PROST, Circuit Judges.
PROST, Circuit Judge.
Defendants-Appellants, First Quality Baby Products,
LLC and First Quality Retail Services, LLC (collectively,
“First Quality”), appeal the grant of a preliminary injunc-
tion by the United States District Court for the Eastern
District of Wisconsin in favor of Plaintiffs-Appellees
Kimberly-Clark Worldwide, Inc. and Kimberly-Clark
Global Sales (collectively, “Kimberly-Clark”). Kimberly-
Clark Worldwide, Inc. v. First Quality Baby Prods., LLC,
714 F. Supp. 2d 919 (E.D. Wis. May 20, 2010). Because
we find that First Quality has raised substantial ques-
tions of validity with respect to U.S. Patent Nos.
6,514,187; 7,156,939; and 6,888,143, we vacate the pre-
liminary injunction for these patents. We affirm the
district court’s grant of a preliminary injunction for U.S.
Patent No. 6,776,316.
I. BACKGROUND
This case involves training pants used by toddlers to
assist in toilet training. Kimberly-Clark, a major partici-
pant in the personal care industry, develops and manu-
factures disposable training pants with refastenable side
seams. These side seams attach through a hook and loop
3 KIMBERLY-CLARK v. FIRST QUALITY
fastening system, very similar to VELCRO®. Kimberly-
Clark obtained by assignment four patents directed to the
manufacturing of training pants: U.S. Patent Nos.
6,514,187 (“’187 patent”); 7,156,939 (“’939 patent);
6,888,143 (“’143 patent”); and 6,776,316 (“’316 patent”).
These patents disclose a machine-based method of folding
training pants at the crotch region, aligning and fastening
the side seams of the training pants, inspecting the train-
ing pants, and then folding the training pants for packag-
ing.
First Quality manufactures and supplies disposable
absorbent garments, including refastenable training
pants, to major retailers. In making these training pants,
First Quality uses processes similar to the manufacturing
methods taught by the four Kimberly-Clark patents.
Kimberly-Clark, believing that First Quality’s manufac-
turing processes infringe its patents, asserted the patents
in the underlying litigation. Thereafter, Kimberly-Clark
moved for a preliminary injunction to enjoin First Quality
from practicing the allegedly infringing manufacturing
methods. The following patent claims were at issue in the
preliminary injunction motion: Claims 1 and 3-5 of the
’187 patent; Claims 63-65, 67-68, and 142-143 of the ’143
patent; Claims 12, 19, and 29 of the ’939 patent; and
Claims 1, 5, 6, and 8 of the ’316 patent.
After holding a two-day evidentiary hearing, the dis-
trict court granted a preliminary injunction, finding, inter
alia, that Kimberly-Clark had established a reasonable
likelihood of success on the merits under all four patents.
Kimberly-Clark, 714 F. Supp. 2d at 936, 938. In particu-
lar, the district court held that Kimberly-Clark would
likely prove First Quality’s infringement of the four
patents at issue and that these four patents would with-
stand validity and enforcement challenges. Id. at 936.
KIMBERLY-CLARK v. FIRST QUALITY 4
On May 26, 2010, First Quality timely appealed the
district court’s preliminary injunction decision. We have
jurisdiction under 28 U.S.C. § 1292(c)(1). 1
After the parties filed their appeal briefs but before
oral argument, the district court issued its claim con-
struction order. See Kimberly-Clark Worldwide, Inc. v.
First Quality Baby Prods., LLC, No. 09-C-916, 2011 WL
196509 (E.D. Wis. Jan. 20, 2011). In this order, the court
departed from some of the claim constructions it had
previously relied upon in granting the preliminary injunc-
tion. 2
II. DISCUSSION
This court reviews a decision to grant a preliminary
injunction for abuse of discretion. Abbott Labs. v. Sandoz,
Inc., 566 F.3d 1282, 1298 (Fed. Cir. 2009). “A plaintiff
seeking a preliminary injunction must establish [1] that
he is likely to succeed on the merits, [2] that he is likely to
suffer irreparable harm in the absence of preliminary
relief, [3] that the balance of equities tips in his favor, and
1 A more complete discussion of the factual and pro-
cedural background can be found in the district court’s
preliminary injunction opinion. See Kimberly-Clark, 714
F. Supp. 2d at 919.
2 Also after the parties filed their appeal briefs but
before oral argument, the United States Patent and
Trademark Office (“USPTO”) granted First Quality’s
request for an inter partes reexamination of Claims 1-15
and 19-25 of the ’187 patent. The USPTO subsequently
rejected all of these claims in a December 14, 2010 initial
office action as obvious under 35 U.S.C. § 103. The re-
jected claims included all ’187 patent claims covered by
the preliminary injunction ruling.
5 KIMBERLY-CLARK v. FIRST QUALITY
[4] that an injunction is in the public interest.” Winter v.
Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374 (2008);
see also AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042,
1049 (Fed. Cir. 2010). “Although the factors are not
applied mechanically, a movant must establish the exis-
tence of both of the first two factors to be entitled to a
preliminary injunction.” Altana Pharma AG v. Teva
Pharm. USA, Inc., 566 F.3d 999, 1005 (Fed. Cir. 2009)
(citing Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239
F.3d 1343, 1350 (Fed. Cir. 2001)).
“For a patentee to establish that it is likely to succeed
on the merits, it ‘must demonstrate that it will likely
prove infringement of one or more claims of the patents-
in-suit, and that at least one of those same allegedly
infringed claims will also likely withstand the validity
challenges presented by the accused infringer.’” Astra-
Zeneca, 633 F.3d at 1050 (quoting Amazon, 239 F.3d at
1351); see also Erico Int’l Corp. v. Vutec Corp., 516 F.3d
1350, 1354 (Fed. Cir. 2008). “A preliminary injunction
should not issue if an alleged infringer raises a substan-
tial question regarding either infringement or validity,
i.e., the alleged infringer asserts an infringement or
invalidity defense that the patentee has not shown lacks
substantial merit.” AstraZeneca, 633 F.3d at 1050. In
attempting to prove invalidity when seeking a prelimi-
nary injunction, the accused infringer does not face the
clear and convincing evidence burden of proof applicable
at trial. See Altana, 566 F.3d at 1006; Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1372 (Fed. Cir.
2005). Instead, “[v]ulnerability is the issue at the pre-
liminary injunction stage, while validity is the issue at
trial.” Altana, 566 F.3d at 1006 (quoting Amazon, 239
F.3d at 1359).
KIMBERLY-CLARK v. FIRST QUALITY 6
A. The ’187 Patent
First Quality contests the validity of Claims 1 and 3-5
of the ’187 patent. Claim 1 covers a method of folding
training pants where the pants, lying open and flat,
proceed down a conveyer belt to a folding area (“folding
nip”). Under this claim, roughly half of the training pant
(“leading half”) proceeds past the folding nip and onto a
second conveyor belt. The other half (“trailing half”)
remains on the first conveyer belt. At this point, two
vacuum rolls positioned near the folding nip work with
the conveyor belt to move the training pant through the
nip, which results in the folding of the training pant at
the crotch region. Claim 1 also teaches that as the folding
occurs, two “separation members” employ to keep the
leading and trailing halves of the pant separate from each
other. These separation members must be placed be-
tween the two conveyor belt devices, “disposed on opposite
sides of a machine center line,” and “disposed outward
from the machine center line.” Claims 3-5 further limit
Claim 1 by requiring the following: “mating mechanical
fastening components” on the training pants; “transport-
ing the leading half [of the training pant] past the folding
nip;” and implementing folding blades to push the train-
ing pant into the folding nip. Below is a figure illustrat-
ing the training pant folding process disclosed in the ’187
patent.
7 KIMBERLY-CLARK v. FIRST QUALITY
In raising its invalidity defense, First Quality as-
serted a prior art reference teaching nearly the same
invention disclosed by Claims 1 and 3-5 of the ’187 patent.
This reference, an Italian patent application to Famec-
canica, disclosed a method for folding products such as
diapers and underwear. The undergarments folded
according to this method lie open and flat on a conveyor
belt guided by rollers and are transported to a folding
area. Upon reaching the folding area, the leading half of
the undergarment proceeds past the folding point and
onto a second conveyer belt, while the trailing half re-
mains on the first conveyer belt. With the aid of a
“pusher” and vacuum suction, the undergarment moves
through the folding area, resulting in the folding of the
undergarments at the crotch region. The vacuum suction
taught by Fameccanica, however, originates from the
conveyor belts, not the rollers. Below is a figure illustrat-
ing Fameccanica’s training pant folding process.
KIMBERLY-CLARK v. FIRST QUALITY 8
The Fameccanica reference differs from the ’187 pat-
ent in two major respects. First, Fameccanica does not
disclose vacuum rolls; it discloses vacuum conveyors.
Second, Fameccanica does not disclose plates that sepa-
rate the leading and trailing halves of the training pant
while the pant is folded at the crotch region.
The district court relied on the fact that Fameccanica
teaches a vacuum conveyor instead of a vacuum roll in
distinguishing this reference from the ’187 patent. See
Kimberly-Clark, 714 F. Supp. 2d at 933. First Quality
argues, however, that any difference between vacuum
belts and vacuum rolls is trivial and unpatentable as
obvious. While the ultimate question of obviousness is
not before us, the practical difference between using
vacuum rolls instead of vacuum conveyors appears very
minimal. Indeed, the vacuum belts taught by Famec-
canica and the vacuum rolls taught by the ’187 patent
serve the same purpose in the training pant manufactur-
ing process: pulling the training pants through the folding
nip. Kimberly-Clark’s own expert acknowledged that the
9 KIMBERLY-CLARK v. FIRST QUALITY
vacuum rolls were known before the ’187 patent’s priority
date, and that such rolls could have been used in the
Fameccanica invention. For these reasons, First Quality’s
argument that the vacuum conveyors are an obvious
variant of the vacuum rolls did not lack substantial merit.
See In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed.
Cir. 2007) (“[O]bvious variants of prior art references are
themselves part of the public domain.”).
The second noteworthy difference between the Famec-
canica reference and Claims 1 and 3-5 of the ’187 patent
is that Fameccanica does not teach “separation members”
that keep the leading and trailing halves of the training
pant separate during folding. First Quality argues,
however, that the Herrmann reference (U.S. Patent No.
5,626,711) teaches separation members, and that it would
be obvious to combine Herrmann and Fameccanica.
The Herrmann reference discloses a machine that, in-
ter alia, folds elasticized undergarment products. Under
Herrmann, an undergarment lies flat and open while
travelling through a mechanism that folds the leading
half of the undergarment over the trailing half. At the
time of folding, rods deploy between the two halves of the
undergarment.
The district court distinguished these rods from the
separation members disclosed in the ’187 patent by ex-
plaining that the rods were used for a completely different
purpose and implemented at a different time than the
separation members. See Kimberly-Clark, 714 F. Supp.
2d at 931-32. While this may be true, the Herrmann
specification explicitly teaches that the rods lie between
the leading and trailing halves of the training pant during
the folding process. See U.S. Patent No. 5,626,711 col.7
l.53-60. This design is similar to the ’187 patent’s disclo-
KIMBERLY-CLARK v. FIRST QUALITY 10
sure, which teaches “separation members” that separate
the leading half of the training pant from the trailing half
during folding. Whether the placement of the two rods
between the leading and trailing halves as disclosed in
Herrmann constitutes the type of “separation” described
in the ’187 patent is an issue that the parties and district
court can address during the litigation. At the time the
district court granted the preliminary injunction, how-
ever, First Quality’s argument that the Herrmann refer-
ence taught the separation panels disclosed in the ’187
patent did not lack substantial merit.
In sum, through Fameccanica, First Quality asserted
a prior art reference teaching nearly every element con-
tained in the asserted ’187 patent claims. First Quality
addressed the elements not present in Fameccanica by
providing a obviousness argument regarding the vacuum
rolls and asserting the Herrmann reference. As a result,
First Quality has raised a substantial question of validity
for Claims 1 and 3-5 of the ’187 patent that cannot be
characterized as substantially meritless. Therefore, the
district court abused its discretion in granting a prelimi-
nary injunction for these claims. 3
3 As mentioned, the USPTO rejected Claims 1 and
3-5 of the ’187 patent in an inter partes reexamination
proceeding after the district court issued its preliminary
injunction ruling. We have explained that “the current
posture of . . . inter partes reexamination proceedings at
the PTO” is relevant “when evaluating . . . the likelihood
of success on the merits” at the preliminary injunction
stage. Procter & Gamble Co. v. Kraft Foods Global, Inc.,
549 F.3d 842, 847 (Fed. Cir. 2008). In particular, the
examiner’s decision regarding patentability can be con-
sidered when discerning the likelihood of success. Id.Although the rejection issued after the district court’s
preliminary injunction ruling, we note that the rejection
provides further support for First Quality’s position that
11 KIMBERLY-CLARK v. FIRST QUALITY
B. The ’143 Patent
First Quality contests the validity of Claims 63-65, 67-
68, and 142-143 of the ’143 patent (the claims covered by
the preliminary injunction order). These claims cover a
method of inspecting pre-fastened training pants to
ensure they are assembled properly at the side seams.
More specifically, after the training pants are folded at
the crotch region and then connected at the sides, the
patented invention teaches the pulling of the front and
back portions of the pants so as to induce tension at the
engagement seam (i.e., the side seams). This enables the
inspection of the training pants from the side, rather than
from above, and ensures proper alignment at the engage-
ment seam. Claims 142 and 143 add the additional
requirement that an image be captured during the inspec-
tion process.
First Quality argued at the preliminary injunction
stage that a machine designed to manufacture training
pants (“TP3 machine”) anticipated all of the asserted ’143
patent claims under 35 U.S.C. § 102(b). 4 The district
court rejected this argument in its preliminary injunction
ruling after construing the “pre-fastened disposable
pants” claim term to cover only pants with refastenable
side seams. 5 Kimberly-Clark, 714 F. Supp. 2d at 933.
the ’187 patent claims are “vulnerable.” See Erico, 516
F.3d at 1357.
4 Kimberly-Clark disputes whether the TP3 ma-
chine qualifies as prior art. The district court assumed it
did for purposes of its preliminary injunction analysis.
See Kimberly-Clark, 714 F. Supp. 2d at 930-31. We do the
same.
5 This claim term is contained in Claims 63-65, 67-
68, and 142-143 of the ’143 patent (i.e., all ’143 claims
subject to the preliminary injunction ruling).
KIMBERLY-CLARK v. FIRST QUALITY 12
Under this construction, the TP3 machine could not
qualify as anticipating prior art because it only produced
training pants with permanently bonded side seams. See
Kimberly-Clark, 714 F. Supp. 2d at 933-34. Thus, the
district court’s claim construction significantly under-
mined First Quality’s invalidity position.
The district court’s construction, however, conflicted
with the ’143 specification, a point which the district court
acknowledged in its subsequent January 20, 2011 claim
construction order. See Kimberly-Clark, 2011 WL 196509,
at *8. The specification makes clear that the claimed
invention is not limited to refastenable articles and can be
used in conjunction with pants having permanently
bonded side seams. See ’143 patent col.9 l.11-24, col.14
l.54-57. Indeed, relying on this specification language in
its January 20, 2011 claim construction order, the district
court amended its previous construction of the “pre-
fastened disposable pants” term to include training pants
with permanently bonded side seams. See Kimberly-
Clark, 2011 WL 196509, at *8. This amended construc-
tion significantly strengthens First Quality’s invalidity
position regarding the ability of the TP3 machine to
anticipate the claimed invention. Clearly, the fact that
the district court applied an improper claim construction
of the “pre-fastened disposable pants” term and relied on
that construction heavily in its preliminary injunction
analysis of the ’143 patent’s validity undermines its
conclusion that a preliminary injunction was appropriate.
See Jack Guttman, Inc. v. Kopykake Enters., 302 F.3d
1352, 1361-62 (Fed. Cir. 2002) (“Our precedent supports
the proposition that grounding a decision on a prelimi-
nary injunction on a claim construction at odds with an
13 KIMBERLY-CLARK v. FIRST QUALITY
unambiguous definition in the intrinsic evidence consti-
tutes an abuse of discretion.”).
Regarding the TP3 machine, First Quality proffered
evidence and argument at the preliminary injunction
proceedings in support of its position that this machine
shares the features claimed by the ’143 patent. Kimberly-
Clark responded by arguing that the TP3 machine fails to
disclose the ’143 patent’s “tension” limitation, supporting
this argument with evidence purportedly showing that
the training pant hangs loose, or sags, on the paddles
during the inspection process. 6 The district court sided
with Kimberly-Clark on this issue. See Kimberly-Clark,
714 F. Supp. 2d at 934.
We do not conclude that the district court’s factual
findings regarding the TP3 machine and tension are
incorrect. Indeed, as explained in more detail below in
Section D, such factual findings made at the preliminary
injunction stage “deserve tolerance by reviewing courts.”
See Reebok Int’l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1557
(Fed. Cir. 1994). The tension issue, however, is a closely
contested one that could change based on evidence sub-
mitted during discovery. Moreover, the court’s conclusion
regarding the tension issue does not detract from the fact
that (1) the TPC machine has an inspection system very
similar to the inspection methods taught by the ’143
patent and (2) the TP3 machine’s permanently bonded
side seam limitation does not prevent the machine from
anticipating the claims under a proper construction of the
“pre-fastened” claim term. Therefore, we conclude that
6 Tensioning the training pant during inspection is
explicitly required by Claims 68, 142, and 143 of the ’143
patent.
KIMBERLY-CLARK v. FIRST QUALITY 14
First Quality has raised a substantial question of validity
for Claims 63-65, 67-68, and 142-143 of the ’143 patent
that cannot be characterized as substantially meritless.
As a result, we hold that the district court abused its
discretion in granting a preliminary injunction for these
claims.
C. The ’939 Patent
The ’939 patent teaches a method of strengthening
the engagement seam of the training pant. 7 The pre-
ferred type of fastening at the engagement seam taught
by the ’939 patent involves hook and loop fastening very
similar to VELCRO®. When one applies a shear stress to
such a system (e.g., by moving the engaged hook and loop
faces in a parallel, opposite direction from each other),
more hooks can snag into the loops, thereby strengthen-
ing the bond between the hook and loop components.
First Quality contests the validity of Claims 12, 19,
and 29 of the ’939 patent. These claims cover a method of
applying “shear stress” to the engagement seam of a “pre-
fastened” disposable garment, which is designed to pro-
mote “increased engagement” at the seam. In raising a §
102(b) defense, First Quality asserted the Lindqvist
reference as anticipatory prior art. This reference dis-
closes a hook and loop fastening system on a refastenable
training pant that passes through two mating rollers.
Lindqvist, WO 98/15248 p. 7, 9, 18. The figure below
illustrates the hook and loop fastening system as it passes
through the rollers.
7 According to the district court’s claim construction
order, the “engagement seam” is the point at which the
front and back panels of the garment connect. Kimberly-
Clark, 2011 WL 196509, at *9.
15 KIMBERLY-CLARK v. FIRST QUALITY
The district court distinguished Lindqvist, finding
that this reference did not disclose the “shear stress”
limitation required by the ’939 patent. Kimberly-Clark,
714 F. Supp. 2d at 935. In particular, the court concluded
that when the top and bottom sheets of the Lindqvist
fastening system pass through the rollers, a relative
displacement occurs involving compression or bending
forces, not a shear stress. Id.If the force causing the “relative displacement” in
Lindqvist qualifies as a “shear stress” as that term is
defined in the ’939 patent, Lindqvist would provide First
Quality with a sound invalidity argument. Therefore, the
’939 patent’s specification support for the “shear stress”
claim term, and the court’s construction of that claim
term, are relevant. See Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“It is well-
settled that, in interpreting an asserted claim, the court
should look first to the intrinsic evidence of the record . . .
including the specification.”).
Kimberly-Clark argues that a shear stress as defined
by the ’939 patent only occurs when the entire top sheet of
the hook and loop fastener system is pulled in an opposite
KIMBERLY-CLARK v. FIRST QUALITY 16
direction from the bottom sheet, and that Lindqvist does
not teach this type of action. The district court adopted a
narrow construction of “shear stress” in its preliminary
injunction infringement analysis, defining the term to
mean a force “generally parallel to the face of the material
and pulling in opposite directions.” See Kimberly-Clark,
714 F. Supp. 2d at 927. 8
The ’939 specification, however, does not require such
a narrow reading of the “shear stress” term. Indeed, this
specification makes clear that a shear stress can result
from other techniques besides pulling the top and bottom
sheets in opposite directions (such as by applying a force
to only one of the fastening components). See ’939 patent
col.34 l.11-18. Moreover, the district court, relying on this
specification language, rejected its own initial construc-
tion of “shear stress” (from the preliminary injunction
proceeding) and re-construed the term more broadly in its
January 20, 2011 claim construction order to mean “force
generally parallel to the face of the material.” Kimberly-
Clark, 2011 WL 196509, at *11.
This broader construction substantially enhances
First Quality’s argument that the force generated by the
mating of the rollers in Lindqvist qualifies as a “shear
stress” as defined by the ’939 patent. In particular, the
Lindqvist reference states that “the hook members of the
second portion and the surface of the topsheet . . . effect a
relative displacement in a direction substantially parallel
to the surface of the topsheet.” Lindqvist, WO 98/15248
p.9 ln.3-6. Lindqvist also explains that “the relative
displacement of the hook members and the surface of the
article in a direction substantially parallel to the surface
8 The district court did not apply this definition in
its validity analysis of the ’939 patent.
17 KIMBERLY-CLARK v. FIRST QUALITY
of the article causes the hook members to ‘jiggle’ between
the fibers and loops of the surface material and become
snagged thereon.” Id. at p.9 ln. 22-27 (emphases added).
This language in Lindqvist encroaches upon the definition
of shear stress provided by the district court in its Janu-
ary 20, 2011 claim construction order (i.e., “force gener-
ally parallel to the face of the material”). For these
reasons, First Quality’s argument that Lindqvist meets
the ’949 patent’s shear stress element does not lack
substantial merit.
In addition to the shear stress element, the district
court concluded that Lindqvist did not disclose the ’939
patent’s “promote increased engagement” element. The
methods taught by Claims 12, 19, and 29 of the ’939
patent require that the shear stress at the engagement
seam “promote increased engagement between the fasten-
ing components.” The district court concluded that
Lindqvist did not satisfy this element because that refer-
ence dealt with preparing products for storage, which
meant that there was “no need to promote increased
engagement between fastening components.” Kimberly-
Clark, 714 F. Supp. 2d at 935.
In focusing on the storage characteristics of the
Lindqvist system, the district court however, failed to
accord proper weight to Lindqvist’s explicit statement
that subjecting the hook and loop system to a relative
displacement “significantly increased retention force
between the hook members . . . and the topsheet.”
Lindqvist, WO 98/15248 p.9 ln.6-12. Because of this
language, First Quality’s argument that the Lindqvist
system “promote[s] increased engagement between the
fastening components” as required by Claims 12, 19, and
29 of the ’939 patent does not lack substantial merit.
KIMBERLY-CLARK v. FIRST QUALITY 18
In sum, in asserting the Lindqvist reference, First
Quality has raised a substantial question of validity for
Claims 12, 19, and 29 of the ’939 patent that cannot be
characterized as substantially meritless. As a result, we
hold that the district court abused its discretion in grant-
ing a preliminary injunction for these claims.
D. The ’316 Patent
The district court’s preliminary injunction ruling for
the ’316 patent covered Claims 1, 5, 6, and 8. These
claims disclose a method of tucking the side seams of
refastenable training pants in between the front and back
panels of the garment. The invention achieves this result
by implementing vacuum conveyor devices to hold the
front and back portions of the pant apart from each other
while blades push the refastenable side seams towards
the center of the garment, thereby folding the diaper. The
area where the vacuum conveyor device contacts, and
thus suctions, the diaper is called the “vacuum zone.”
First Quality, on appeal, challenges the district court’s
finding that Kimberly-Clark established a likelihood of
success in proving validity and infringement regarding
the ’316 patent.
First, with respect to validity, First Quality proffered
an obviousness defense based on two prior art machines
that manufactured training pants (the P&G Machine and
the Drypers Machine). The district court distinguished
these machines from the claims at issue, however, be-
cause the machines only produced training pants with
permanently bonded side seams, not training pants with
refastenable side seams. Kimberly-Clark, 714 F. Supp. 2d
at 934.
19 KIMBERLY-CLARK v. FIRST QUALITY
On appeal, First Quality argues that it would have
been obvious to use the P&G and Drypers Machines to
manufacture training pants with refastenable side seams.
In support of this argument, First Quality relies on a
statement made by Kimberly-Clark in 1994 while oppos-
ing a European patent application involving refastenable
training pants: “[t]he provision of releasable and refas-
tenable fastening means on training pants was entirely
routine and obvious at priority date . . . . [T]he concept of
releasably fastened training pants was widely known as
were the benefits of such a feature by 1994 . . . .” J.A.
1619-1620. The district court dismissed this admission,
explaining that “while [Kimberly-Clark] may have
thought at the time that it would be obvious to use known
manufacturing methods to produce refastenable training
pants, this does not mean that it did not learn otherwise
when it embarked on its own project . . . .” Kimberly-
Clark, 714 F. Supp. 2d at 938.
The record contains evidence showing that Kimberly-
Clark did in fact learn otherwise when it embarked on its
own project. In particular, Kimberly-Clark proffered
evidence and testimony showing that the ’316 patent
resulted from unexpected difficulties encountered after
1994 when it tried to develop a process for folding its
prefastened, refastenable training pants for packaging.
Id. at 934. For instance, Robert Popp, a technical special-
ist at Kimberly-Clark, testified that his design team did
not anticipate any problems with folding its refastenable
training pants for packaging but eventually discovered
that if the fold fell on the refastenable engagement seam,
the hook and loop system “didn’t function very well . . .
[and] would pop open.” Id. To solve these problems,
Kimberly-Clark designed a tucking method that could
control the location of the longitudinal fold. Id. This
tucking method forms the basis of the ’316 patent.
KIMBERLY-CLARK v. FIRST QUALITY 20
The ’316 specification discusses these unexpected dif-
ficulties, as well, explaining that the claimed invention
originated to address the engagement problems associ-
ated with folding training pants with refastenable side
seams. See ’316 patent col.6 l.29–63. The importance of
the refastenability feature in the ’316 patent is also
evident in the claims, as each claim covered by the court’s
preliminary injunction order contains a refastenability
limitation.
Because the ’316 patent (and related evidence) focuses
so strongly on refastenable side seams and on solving the
problems associated with folding such seams, the district
court did not err in rejecting First Quality’s obviousness
argument. On this record, given the absence of contrary
evidence from First Quality on the obviousness issue, the
district court did not err in finding that First Quality
failed to raise a substantial issue of patentability.
Second, with regard to infringement, all four of the
claims at issue have a limitation requiring the vacuum
zone to have “a transverse width about equal to a desired
folded transverse width of the body portion in contact
with the vacuum zone” (“Equal Width Limitation”). ’316
patent col.15 l.57-59. First Quality argues that the ma-
chine accused of infringement does not meet the Equal
Width Limitation because the transverse widths of the
machine’s vacuum zones are 68 mm and 85 mm, while the
transverse width of the body portion of the training pant
manufactured by the machine is 115 mm. As a result,
First Quality asserts that the transverse width of the
vacuum is not “about equal” to the transverse width of the
body portion of the training pant. In support of this
argument, First Quality provided Computer-aided design
(“CAD”) drawings of its machine and elicited testimony
during the two-day evidentiary hearing.
21 KIMBERLY-CLARK v. FIRST QUALITY
Conversely, Kimberly-Clark argues that the vacuum
zone utilized by the First Quality machine does span the
transverse width of the body portion of the training pant.
In making this argument, Kimberly-Clark relies primar-
ily on photographs it took while inspecting First Quality’s
facilities, as well as testimony on those photographs. The
district court ruled in Kimberly-Clark’s favor, explaining
that First Quality “inexplicably did not provide its own
photographs and video of its own machine.” Kimberly-
Clark, 714 F. Supp. 2d at 927. As a result, the court held
that Kimberly-Clark was “likely to prevail in its conten-
tion that First Quality literally infringes the ’316 patent.”
Id.“[M]otions for a preliminary injunction may come for
decision before significant discovery has occurred.” Gutt-
man, 302 F.3d at 1361. Therefore, we remain “mindful
that all findings of fact and conclusions of law at the
preliminary injunction stage are subject to change upon
the ultimate trial on the merits.” Purdue Pharma L.P. v.
Boehringer Ingelheim GmbH, 237 F.3d 1359, 1363 (Fed.
Cir. 2001). As a result, the district court’s findings at the
preliminary injunction stage “deserve tolerance by review-
ing courts so they can tailor procedures of adjudication to
the case at hand.” Reebok, 32 F.3d at 1557.
Here, the district court held an evidentiary hearing
and viewed evidence on the width of the vacuum zones in
First Quality’s allegedly infringing machine, a critical
element in the infringement analysis for Claims 1, 5, 6,
and 8 of the ’316 patent. The court accorded little weight
to First Quality’s evidence because this evidence consisted
of CAD files instead of actual photographs of its own
machine. We see no error in the district court’s conclu-
sion and reasoning on this issue. Therefore, the court did
not abuse its discretion in holding that Kimberly-Clark
KIMBERLY-CLARK v. FIRST QUALITY 22
had shown a reasonable likelihood of success in proving
infringement of Claims 1, 5, 6, and 8 of the ’316 patent.
Finally, we see no error in the district court’s conclu-
sions and reasoning regarding the remaining preliminary
injunction factors (i.e., the irreparable harm factor, the
balance of harms factor, and the public interest factor).
See Kimberly-Clark, 714 F. Supp. 2d at 936-37. There-
fore, the district court did not abuse its discretion in
deciding that these factors favored the grant of a prelimi-
nary injunction for Claims 1, 5, 6, and 8 of the ’316 pat-
ent.
III. CONCLUSION
For the above reasons, we conclude that the district
court abused its discretion in granting Kimberly-Clark’s
motion for a preliminary injunction for Claims 1 and 3-5
of the ’187 patent; Claims 63-65, 67-68, and 142-143 of the
’143 patent; Claims 12, 19, and 29 of the ’939 patent.
Therefore, we vacate the order of the district court with
respect to these claims. We affirm, however, the district
court’s decision to grant a preliminary injunction under
Claims 1, 5, 6, and 8 of the ’316 patent.
COSTS
Each party shall bear its own costs.
AFFIRMED-IN-PART AND VACATED-IN-PART